Case 6:16-cv-00679-RBD-TBS Document 1 Filed 04/21/16 Page 1 of 9 PageID 1
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`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
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`LIGHTING SCIENCE GROUP
`CORPORATION,
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`Civil Action No.
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`JURY TRIAL DEMANDED
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`Plaintiff,
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` E L S, INC.
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`Defendant
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`COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff Lighting Science Group Corporation, through its attorneys, alleges the following:
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`PARTIES
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`1.
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`Plaintiff Lighting Science Group Corporation (“LSG”) is a corporation organized
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`and existing under the laws of Delaware, with its principle place of business at 1830 Penn Street,
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`Melbourne, Florida, 32901.
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`2.
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`Upon information and belief, Defendant S E L S, Inc. (“SELS”) is a company
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`organized and existing under the laws of North Carolina but does business throughout the United
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`States, including Florida.
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`JURISDICTION AND VENUE
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`3.
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`This is a claim for patent infringement and arises under the patent laws of the United
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`States, Title 35 of the United States Code. This Court has jurisdiction over the subject matter of
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`this claim under 28 U.S.C. §§ 1331 and 1338(a).
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`4.
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`This Court has personal jurisdiction over Defendant because Defendant is
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`Case 6:16-cv-00679-RBD-TBS Document 1 Filed 04/21/16 Page 2 of 9 PageID 2
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`transacting business within this District and has committed acts and, on information and belief,
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`will continue to commit acts within this District giving rise to this action, including offering to sell
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`and selling infringing products and/or placing infringing products, directly or through
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`intermediaries (including distributors, retailers, and others), into the stream of commerce in such
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`a way as to reach customers in this District. Defendant has purposefully and voluntarily sold one
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`or more of its infringing products with the expectation that they will be purchased by consumers
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`in this District. These infringing products have been and continue to be purchased by consumers
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`in this District. Defendant has committed acts of patent infringement within the United States and
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`more particularly, within this District.
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`5.
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`6.
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`7.
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`Venue is proper in this District under 28 U.S.C. §§ 1391(b) and 1400(b).
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`COUNT I
`(Infringement of U.S. Patent No. 8,201,968)
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`Plaintiff repeats and re-alleges Paragraphs 1-5 as though fully set forth herein.
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`Plaintiff is the owner by assignment of United States Patent No. 8,201,968, entitled
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`“Low Profile Light,” which was duly and legally issued by the United States Patent and Trademark
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`Office (“USPTO”) on June 19, 2012 (the “‘968 Patent”). A true and correct copy of the ‘968 Patent
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`is attached hereto as Exhibit A.
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`8.
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`The ‘968 Patent is valid and enforceable and Plaintiff has the full right to recover
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`for past infringement damages and the right to recover future royalties, damages and income.
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`9.
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`To the extent any marking or notice was required by 35 U.S.C. § 287, Plaintiff, and
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`all predecessors in interest and/or implied or express licensees of the ‘968 Patent, if any, have
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`complied with the marking requirements of 35 U.S.C. § 287 by placing a notice of the ‘968 Patent
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`Case 6:16-cv-00679-RBD-TBS Document 1 Filed 04/21/16 Page 3 of 9 PageID 3
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`on all goods made, offered for sale, sold, and/or imported into the United States that embody one
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`or more claims of that patent and/or providing actual or constructive notice to Defendant.
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`10.
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`Upon information and belief, Defendant has infringed and will continue to infringe
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`at least Claim 1 of the ‘968 Patent by, among other activities, making, using, selling or offering to
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`sell in or importing into the United States its LED Down Light DL-4IN-CW and DL-4IN-WW
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`products. Defendant is liable for direct infringement, either literally or under the doctrine of
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`equivalents, as well as indirect infringement by way of inducement and or contributory
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`infringement of the ‘968 Patent pursuant to 35 U.S.C. § 271 (a), (b), (c), and/or (f).
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`11.
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`Upon information and belief, Defendant has been and is continuing to induce
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`infringement of the ‘968 Patent under 35 U.S.C. § 271(b) and contributes to infringement of the
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`‘968 Patent under 35 U.S.C. § 271(c), in conjunction with such act of making, using, offering for
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`sale, and or importing into the United States, without authority, products that fall within the scope
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`of one or more claims of the ‘968 Patent. Such infringement occurs directly by the distributors,
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`retailers, resellers, customers, users and or licensees of the infringing products. The infringing
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`products have no substantial non-infringing uses.
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`12.
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`Plaintiff has at no time either expressly or impliedly licensed Defendant to practice
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`the ‘968 Patent.
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`13.
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`Defendant’s infringement has injured Plaintiff, and Plaintiff is entitled to recover
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`damages adequate to compensate it for such infringement.
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`14.
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`Defendant’s acts of infringement are willful, warranting the assessment of
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`increased damages pursuant to 35 U.S.C. § 284, and warrant a finding that this is an exceptional
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`case, pursuant to 35 U.S.C. § 285.
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`15.
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`Defendant’s infringing activities have injured and will continue to injure Plaintiff,
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`Case 6:16-cv-00679-RBD-TBS Document 1 Filed 04/21/16 Page 4 of 9 PageID 4
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`unless and until this Court enters an injunction prohibiting further infringement and, specifically,
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`enjoining further manufacture, use, sale, importation, and/or offer for sale of products that come
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`within the scope of the claims of the ‘968 Patent.
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`COUNT II
`(Infringement of U.S. Patent No. 8,672,518)
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`16.
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`17.
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`Plaintiff repeats and re-alleges Paragraphs 1-5 as though fully set forth herein.
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`Plaintiff is the owner by assignment of United States Patent No. 8,672,518 entitled
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`“Low Profile Light And Accessory Kit For The Same,” which was duly and legally issued by the
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`USPTO on March 3, 2015 (the “‘518 Patent”). A true and correct copy of the ‘518 Patent is
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`attached hereto as Exhibit B.
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`18.
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`The ‘518 Patent is valid and enforceable and Plaintiff has the full right to recover
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`for past infringement damages and the right to recover future royalties, damages and income.
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`19.
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`To the extent any marking or notice was required by 35 U.S.C. § 287, Plaintiff, and
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`all predecessors in interest and/or implied or express licensees of the ‘518 Patent, if any, have
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`complied with the marking requirements of 35 U.S.C. § 287 by placing a notice of the ‘518 Patent
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`on all goods made, offered for sale, sold, and/or imported into the United States that embody one
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`or more claims of that patent and/or providing actual or constructive notice to Defendant.
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`20.
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`Upon information and belief, Defendant has infringed and will continue to infringe
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`at least Claim 1 of the ‘518 Patent by, among other activities, making, using, selling or offering to
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`sell in or importing into the United States its LED Down Light DL-4IN-CW, DL-4IN-WW, SELS-
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`RD4-9W-XXE, and SELS-RD6-11W-XXE products. Defendant is liable for direct infringement,
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`either literally or under the doctrine of equivalents, as well as indirect infringement by way of
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`Case 6:16-cv-00679-RBD-TBS Document 1 Filed 04/21/16 Page 5 of 9 PageID 5
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`inducement and or contributory infringement of the ‘518 Patent pursuant to 35 U.S.C. § 271 (a),
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`(b), (c), and/or (f).
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`21.
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`Upon information and belief, Defendant has been and is continuing to induce
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`infringement of the ‘518 Patent under 35 U.S.C. § 271(b) and contributes to infringement of the
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`‘518 Patent under 35 U.S.C. § 271(c), in conjunction with such act of making, using, offering for
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`sale, and or importing into the United States, without authority, products that fall within the scope
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`of one or more claims of the ‘518 Patent. Such infringement occurs directly by the distributors,
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`retailers, resellers, customers, users and or licensees of the infringing products. The infringing
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`products have no substantial non-infringing uses.
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`22.
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`Plaintiff has at no time either expressly or impliedly licensed Defendant to practice
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`the ‘518 Patent.
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`23.
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`Defendant’s infringement has injured Plaintiff, and Plaintiff is entitled to recover
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`damages adequate to compensate it for such infringement.
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`24.
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`Upon information and belief, Defendant’s acts of infringement are willful,
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`warranting the assessment of increased damages pursuant to 35 U.S.C. § 284, and warrant a finding
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`that this is an exceptional case, pursuant to 35 U.S.C. § 285.
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`25.
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`Defendant’s infringing activities have injured and will continue to injure Plaintiff,
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`unless and until this Court enters an injunction prohibiting further infringement and, specifically,
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`enjoining further manufacture, use, sale, importation, and/or offer for sale of products that come
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`within the scope of the claims of the ‘518 Patent.
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`26.
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`27.
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`COUNT III
`(Infringement of U.S. Patent No. 8,967,844)
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`Plaintiff repeats and re-alleges Paragraphs 1-5 as though fully set forth herein.
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`Plaintiff is the owner by assignment of United States Patent No. 8,967,844 entitled
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`“Low Profile Light And Accessory Kit For The Same,” which was duly and legally issued by the
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`USPTO on March 3, 2015 (the “‘844 Patent”). A true and correct copy of the ‘844 Patent is
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`attached hereto as Exhibit C.
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`28.
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`The ‘844 Patent is valid and enforceable and Plaintiff has the full right to recover
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`for past infringement damages and the right to recover future royalties, damages and income.
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`29.
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`To the extent any marking or notice was required by 35 U.S.C. § 287, Plaintiff, and
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`all predecessors in interest and/or implied or express licensees of the ‘844 Patent, if any, have
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`complied with the marking requirements of 35 U.S.C. § 287 by placing a notice of the ‘844 Patent
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`on all goods made, offered for sale, sold, and/or imported into the United States that embody one
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`or more claims of that patent and/or providing actual or constructive notice to Defendant.
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`30.
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`Upon information and belief, Defendant has infringed and will continue to infringe
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`at least Claim 1 of the ‘844 Patent by, among other activities, making, using, selling or offering to
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`sell in or importing into the United States its LED Down Light DL-4IN-CW, DL-4IN-WW, and
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`SELS-RD6-11W-XXE products and Claims 1 and 24 of the ‘844 Patent by, among other activities,
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`making, using, selling or offering to sell in or importing into the United States its SELS-RD4-9W-
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`XXE product. Defendant is liable for direct infringement, either literally or under the doctrine of
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`equivalents, as well as indirect infringement by way of inducement and or contributory
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`infringement of the ‘844 Patent pursuant to 35 U.S.C. § 271 (a), (b), (c), and/or (f).
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`31.
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`Upon information and belief, Defendant has been and is continuing to induce
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`Case 6:16-cv-00679-RBD-TBS Document 1 Filed 04/21/16 Page 7 of 9 PageID 7
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`infringement of the ‘844 Patent under 35 U.S.C. § 271(b) and contributes to infringement of the
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`‘844 Patent under 35 U.S.C. § 271(c), in conjunction with such act of making, using, offering for
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`sale, and or importing into the United States, without authority, products that fall within the scope
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`of one or more claims of the ‘844 Patent. Such infringement occurs directly by the distributors,
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`retailers, resellers, customers, users and or licensees of the infringing products. The infringing
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`products have no substantial non-infringing uses.
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`32.
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`Plaintiff has at no time either expressly or impliedly licensed Defendant to practice
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`the ‘844 Patent.
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`33.
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`Defendant’s infringement has injured Plaintiff, and Plaintiff is entitled to recover
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`damages adequate to compensate it for such infringement.
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`34.
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`Defendant’s acts of infringement are willful, warranting the assessment of
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`increased damages pursuant to 35 U.S.C. § 284, and warrant a finding that this is an exceptional
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`case, pursuant to 35 U.S.C. § 285.
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`35.
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`Defendant’s infringing activities have injured and will continue to injure Plaintiff,
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`unless and until this Court enters an injunction prohibiting further infringement and, specifically,
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`enjoining further manufacture, use, sale, importation, and/or offer for sale of products that come
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`within the scope of the claims of the ‘844 Patent.
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff respectfully asks this Court to enter judgment against Defendant
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`and against its respective subsidiaries, successors, parents, affiliates, offices, directors, agents,
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`servants, and employees, and all persons in privity or active concert or participation with
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`Defendant, granting the following relief:
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`A. the entry of judgment in favor of Plaintiff and against Defendant;
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`B. a preliminary injunction prohibiting further infringement of each of the ‘968
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`Patent, the ‘518 Patent, and the ‘844 Patent by Defendant, their agents,
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`employees, representatives, successors and assigns and those acting in privity or
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`in concert with them;
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`C. a permanent injunction prohibiting further infringement of each of the ‘968
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`Patent, the ‘518 Patent, and the ‘844 Patent by Defendant, their agents,
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`employees, representatives, successors and assigns and those acting in privity or
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`in concert with them;
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`D. an award of actual damages against Defendant for damages arising from the
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`infringement of each of the ‘968 Patent, the ‘518 Patent, and the ‘844 Patent,
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`including treble damages for willful infringement, pursuant to 35 U.S.C. § 284;
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`E. an award of damages against Defendant for pre-judgment and post-judgment
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`interest on the damages awarded, including an award of prejudgment interest,
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`pursuant to 35 U.S.C. § 284, from the date of each act of infringement of the ‘968
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`Patent, the ‘518 Patent, and the ‘844 Patent by Defendant to the day a damages
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`judgment is entered and a further award of post-judgment interest, pursuant to 28
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`U.S.C. § 1961, continuing until such judgment is paid, at the maximum rate
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`allowed by law;
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`F. the entry of judgment that this case is exceptional, and award treble damages,
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`attorney fees, and the costs of this action, pursuant to 35 U.S.C. § 285;
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`G. in the event a final injunction is not granted, a compulsory ongoing royalty; and
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`Case 6:16-cv-00679-RBD-TBS Document 1 Filed 04/21/16 Page 9 of 9 PageID 9
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`triable.
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`H. such other relief to which Plaintiff is entitled under law, and any other and further
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`relief that this Court or a jury may deem just and proper.
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`JURY DEMAND
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`Pursuant to Fed. R. Civ. P. 38(b), Plaintiff demands a trial by jury on all issues so
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`/s/Mark F. Warzecha
`Mark F. Warzecha
`Florida Bar No. 95779
`WIDERMAN MALEK PL
`1990 W. New Haven Ave., Ste. 201
`Melbourne, Florida 32904
`Tel. (321) 255-2332
`Fax (321) 255-2351
`MFW@USLegalTeam.com
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