Case 1:16-cv-25210-DPG Document 1 Entered on FLSD Docket 12/15/2016 Page 1 of 25
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`UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF FLORIDA
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`Case No. ___________________
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`JURY TRIAL DEMANDED
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`)))))))))))))
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`SONY CORPORATION,
`
`Plaintiff,
`
`v.
`
`FUJIFILM HOLDINGS CORPORATION,
`FUJIFILM CORPORATION, FUJIFILM
`HOLDINGS AMERICA CORPORATION,
`and FUJIFILM RECORDING MEDIA U.S.A.,
`INC.,
`
`Defendants.
`
`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff Sony Corporation (“Sony”) hereby submits this complaint against Defendants
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`Fujifilm Holdings Corporation, Fujifilm Corporation, Fujifilm Holdings America Corporation,
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`and Fujifilm Recording Media U.S.A., Inc. (collectively, “Fujifilm” or “Defendants”) and alleges
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`as follows:
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`INTRODUCTION
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`1.
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`Sony brings this action against Fujifilm to seek remedies for Fujifilm’s
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`infringement of U.S. Patents Nos. 7,016,137 (the “’137 patent”); 6,345,779 (the “’779 patent”);
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`6,896,959 (the “’959 patent”); and 7,115,331 (the “’331 patent”) (collectively, the “Asserted
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`Patents”).
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`PARTIES
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`2.
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`Plaintiff Sony Corporation is a corporation duly organized and existing under the
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`laws of Japan, with a principal place of business located at 1-7-1 Konan, Minato-ku, Tokyo 108-
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`0075, Japan.
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`3.
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`Defendant Fujifilm Holdings Corporation (“FHC”) is a corporation organized and
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`existing under the laws of Japan. On information and belief, Fujifilm Holdings Corporation’s
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`principal place of business is 7-3 Akasaka 9-chome, Minato-ku, Tokyo 107-0052, Japan. On
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`information and belief, FHC was formed on October 1, 2006, when Fuji Photo Film Co., Ltd.,
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`was transformed into a holding company. FHC is the ultimate parent corporation under which
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`all Defendants operate as subsidiaries. On information and belief, in this position, FHC exerts
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`control over the activities and processes associated with the development, manufacture and sale
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`of Fujifilm-branded magnetic tape media.
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`4.
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`Defendant Fujifilm Corporation (“FFC”) is a corporation organized and existing
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`under the laws of Japan. Fujifilm Corporation asserts that its principal place of business is
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`located at 7-3 Akasaka 9-chome, Minato-ku, Tokyo 107-0052, Japan. On information and belief,
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`FFC was formed on October 1, 2006 as an operating company to administer the businesses that
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`were previously owned by Fuji Photo Film Co., Ltd. On information and belief, FFC operates
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`the imaging and information businesses of FHC, which includes responsibility for the design,
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`manufacture, and sale of magnetic tape media and thereby exerts control over the activities and
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`processes associated with these responsibilities in the United States. On information and belief,
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`FFC is a wholly owned subsidiary of FHC.
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`5.
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`Defendant Fujifilm Holdings America Corporation (“FHAC”) is a corporation
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`organized and existing under the laws of Delaware. On information and belief, FHAC’s
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`principal place of business is located at 200 Summit Lake Drive, Valhalla, New York 10595. On
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`information and belief, FHAC is the holding company for U.S-based Fujifilm corporate entities,
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`including those companies having responsibility for the marketing and sales of magnetic tape
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`media. On information and belief, FHAC is a wholly owned subsidiary of FFC.
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`6.
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`Defendant Fujifilm Recording Media U.S.A., Inc. (“FRMU”), is a corporation
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`organized and existing under the laws of Delaware. On information and belief, FRMU’s
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`principal place of business is located at 45 Crosby Dr., Bedford, MA 01730-1401. On
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`information and belief, FRMU also has offices located at 200 Summit Lake Drive, Valhalla, NY
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`10595 in Westchester County. On information and belief, FRMU is a wholly owned subsidiary
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`of FHAC, which is in turn a wholly owned subsidiary of FFC. On information and belief,
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`FRMU is the U.S.-based manufacturing, marketing and sales arm for FFC’s professional
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`broadcast video and data tape recording facility.
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`7.
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`All of the Defendants operate under and identify with the trade name, “Fujifilm.”
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`Upon information and belief, each of the Defendants directly or indirectly imports, develops,
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`designs, manufactures, distributes, markets, offers to sell and/or sells products and services in the
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`United States, including in the State of Florida and in this District, and otherwise purposefully
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`directs activities to the same. Upon information and belief, the Defendants have been and are
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`acting in concert and are otherwise liable jointly, severally or in the alternative for a right to
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`relief with respect to or arising out of the same transaction, occurrence, or series of transactions
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`or occurrences related to the making, using, importing into the United States, offering for sale or
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`selling of at least one infringing product or process.
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`JURISDICTION AND VENUE
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`8.
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`This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and 1338(a)
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`because this lawsuit is a civil action for patent infringement arising under the patent laws of the
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`United States, 35 U.S.C. § 101 et seq.
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`9.
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`On information and belief, this Court has personal jurisdiction over each of the
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`Defendants because each has committed acts of patent infringement and/or contributed to or
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`induced acts of patent infringement by others in the State of Florida and in this District. This
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`Court has personal jurisdiction over each of the Defendants because each has substantial contacts
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`and/or conducts business in the State of Florida and in this judicial district and has been
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`infringing claims of the Asserted Patents in Florida and elsewhere. This Court has personal
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`jurisdiction over each of the Defendants because each has committed a tortious act causing injury
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`within Florida, namely, one or more of the acts of patent infringement alleged herein. As such,
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`each of the Defendants has established sufficient minimum contacts with this District such that it
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`should reasonably and fairly anticipate being called into court in this District and has
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`purposefully directed activities at residents of this State and this District.
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`10.
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`Venue is proper in this District under 28 U.S.C. §§ 1391 and 1400 at least because
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`acts amounting to or in furtherance of patent infringement have been committed in this District
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`and/or the Defendants are subject to personal jurisdiction in this District.
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`SONY’S PATENTED TECHNOLOGY
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`11.
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`Sony has been involved in the development of magnetic tape media and products
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`for reading from and writing to such media for over 60 years. In 1949, Sony completed its first
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`magnetic tape recorder prototype, and less than a year later Sony launched its first magnetic
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`recording tape—the Soni-Tape KA. Sony’s first cassette tape, the C-60, debuted in 1963, and
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`was followed in 1972 by the D-300, which was specifically designed to record computer data.
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`12.
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`By the mid-1970s, Sony had brought its first Betamax magnetic tape products to
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`market, signaling the beginning of the age of home video. Sony introduced its first metal
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`magnetic tape in the late 1970s, which was followed in 1979 by the release of the Walkman®,
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`one of the most influential consumer electronics products of all time. In the 1980s, Sony debuted
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`its first metal video cassette tape for the digital VCR format. Sony also led the way in
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`developing magnetic floppy disk technology and introduced the digital audio tape (DAT) format,
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`which stored information on a magnetic tape medium in digital rather than analog form.
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`13.
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`Sony continued to develop its magnetic tape media products in the 1990s. For
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`example, in 1990, Sony received an Emmy award for its metal tape technology—the first time
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`that such an award was given for metal tape. In or around the 1996-97 time frame, Sony
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`introduced its proprietary Advanced Intelligent Tape (“AIT”) high-speed magnetic tape data
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`storage format, which was specifically designed for computer applications and preceded the
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`Linear Tape-Open (“LTO”) format specification.
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`14.
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`The LTO format was developed by an organization known as the LTO
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`Consortium, which was originally formed by International Business Machines (“IBM”), Hewlett
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`Packard (“HP”) and Seagate (now Quantum)1 in 1998. Because of their stewardship role, IBM,
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`HP, and Quantum are called the “technology provider companies” (or “TPCs”). The LTO
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`Consortium promulgates written technical specifications (i.e., standards) for the LTO magnetic
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`tape data storage format with input from prospective tape media manufacturers.
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`15.
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`In the early 2000s, Sony began introducing magnetic tape cartridge products in a
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`number of different formats, including tapes compliant with the LTO format specification.
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`These products started with Sony’s first LTO Ultrium generation 1 tape (the “LTX100G”
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`product). Sony has continued to introduce LTO tape products with each successive update to the
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`LTO format specification (i.e., the LTO standard), from the first version (LTO-1) through the
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`current and latest version, LTO-7 (the “LTX6000G” product). Sony is one of only two suppliers,
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`along with Fujifilm, to have been certified for the sale of LTO-7 compliant tape cartridges.
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`1 Seagate’s magnetic tape division was spun off as Seagate Removable Storage
`Solutions, later renamed Certance, which was subsequently acquired by Quantum.
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`16.
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`Authorization to manufacture, sell, and distribute any generation of LTO tape
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`products is contingent on a participant’s acceptance of the terms and conditions of an agreement
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`with the TPCs. The agreements pertaining to the LTO-4, LTO-5, and LTO-6 tape products
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`require participants to license certain patents relevant to the practice of the standards. Sony
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`understands its licensing obligations under the agreements and accordingly engaged Fujifilm in
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`the negotiation of a cross-license that would cover Fujifilm’s LTO tape products. Rejecting
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`Sony’s efforts to work amicably toward a fair and reasonable licensing arrangement—and in
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`breach of numerous obligations associated with participation in the LTO format—Fujifilm
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`instead initiated numerous infringement actions against Sony. Because Fujifilm has refused to
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`license Sony’s LTO-related patents and acted as an unwilling licensee by refusing to engage in
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`good faith negotiations regarding the execution of a fair and reasonable licensing agreement,
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`Sony now seeks to stop Fujifilm’s continuing infringement of Sony’s intellectual property rights.
`
`17.
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`Sony’s wholly-owned indirect subsidiary Sony Latin America Inc. (“SOLA”) is
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`responsible for the Sony® branded LTO tape business in the United States, Latin America and
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`Canada and sells LTO tape products in the United States on behalf of Sony. SOLA is a
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`corporation duly organized and existing under the laws of Florida, with a principal place of
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`business located at 5201 Blue Lagoon Drive, Miami, Florida 33126.
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`18.
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`SOLA is generally responsible for sales, marketing, warehousing, distributing,
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`and providing customer support for Sony® branded LTO tape media sold in the United States,
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`Latin America and Canada.
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`19.
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`SOLA employs approximately thirty-three individuals in the United States who
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`have responsibility for tape media, including LTO. These employees are primarily located at
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`SOLA’s Miami facility and are responsible for management, logistics, supply chain, distribution,
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`customer service and support, sales and marketing regarding Sony® branded LTO tape media.
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`20.
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`Sony, on its own and through its subsidiaries, has been involved in the
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`development, manufacture and sale of magnetic tape-based storage media products for more than
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`a half century and has been a driving force in the adoption of such media for use by consumers in
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`the United States. Through these efforts, Sony has also built a portfolio of patents.
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`21.
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`One such patent is the ’137 patent, referred to above. The ’137 patent is titled
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`“Tape Drive Apparatus, Recording and/or Reproducing Method, and Recording Medium” and
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`issued on March 21, 2006, naming Tatsuya Kato, Masaki Yoshida, Katsumi Ikeda, and
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`Yoshihisa Takayama as inventors. A true and correct copy of the ’137 patent is attached as
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`Exhibit A to this Complaint. Sony owns by assignment the right, title, and interest in the ’137
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`patent.
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`22.
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`The ’137 patent is generally directed to a tape cartridge equipped with a memory
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`capable of storing “management information” and tape drives for use with such cartridges. For
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`example, Figure 3A conceptually depicts an internal structure of a tape cassette equipped with a
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`remote memory chip that accommodates items of information about each tape cassette:
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`23.
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`The management information is used by a tape drive to manage the recording
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`and/or reproduction of data to and/or from the magnetic tape (in the cartridge). The management
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`information stored in this memory includes information concerning locations on the magnetic
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`tape and use history of the tape. The management information also includes information
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`regarding the format state of the magnetic tape. Some of the format state designation
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`information is written to the memory at the time the cartridge is initialized and is not thereafter
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`changed.
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`24. When data is recorded or reproduced on the tape by the drive, the drive accesses
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`the management information area and updates the relevant information consistent with the
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`recording or reproduction to prepare for the next recording operation. If the management
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`information is included on the magnetic tape itself, access time for operations on the tape are
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`increased and the time before a single write or read operation can be performed is delayed. To
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`avoid this delay, a nonvolatile memory is installed in the tape cartridge with the magnetic tape.
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`However, that does not alone solve the issue of improving security without unwanted delay.
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`This is because, if the memory is removed such that the management information is changed (or
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`is otherwise unavailable), the cartridge may be used in a manner for which it was not intended
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`(because the drive is unaware of any restrictions on the use of the tape).
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`25.
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`The claimed inventions of the ’137 patent addresses this problem by use of both a
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`memory and the tape itself. The tape cartridge of the ’137 patent includes a memory that can be
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`read from and written to by a tape drive. The memory of the ’137 tape cartridge includes
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`management information. Information consistent with this is also found on the tape itself, which
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`is compared to management information from the memory based on a read operation of the tape.
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`26.
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`In 2015, Sony acquired a portfolio of patents from Imation Corporation
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`(“Imation”), an American company based in Oakdale, Minnesota which has a long history in the
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`magnetic tape business. Imation was formed in the mid-1990s, when 3M spun-off its data
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`storage division, which had been doing development work on magnetic tapes since the 1940s.
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`Among the patents that Sony acquired from Imation are the ’779 patent, ’959 patent, and ’331
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`patent, all of which are asserted against Fujifilm here.
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`27.
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`The ’779 patent is titled “Data Storage Cartridge Having a Retainer For a Leader
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`Pin” and issued on February 12, 2002, naming G. Phillip Rambosek as inventor. A true and
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`correct copy of the ’779 patent is attached as Exhibit B to this Complaint. Sony owns by
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`assignment the right, title, and interest in the ’779 patent.
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`28.
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`The ’779 patent relates generally to a data storage cartridge having a retainer for a
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`leader pin and a two-piece housing that connects close to the leader pin. Cartridges typically
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`have a housing including a base and a cover, as well as a tape access opening through which the
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`tape is accessed. The end of the tape stored within the cartridge is generally attached to the
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`leader pin, which is secured within the cartridge. For example, Figure 1 depicts a data tape
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`cartridge in accordance with the ’779 patent invention:
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`29.
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`One of the problems associated with this design is that it requires proper
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`alignment for assembly. Another is that having the leader pin adjacent to the tape access
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`opening makes it difficult for a screw to be utilized in close proximity to the leader pin.
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`Therefore, in the immediate area of the leader pin there can typically be a portion of the housing
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`which is not as securely fastened, causing a problem during handling or if the cartridge is
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`dropped, wherein the leader pin may become dislodged because it is not held firmly in place
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`between the cover and the base.
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`30.
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`To overcome these problems, the cartridge of the ’779 patent employs springs
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`within the cartridge housing that are operatively connected to the housing itself, and used to fix
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`the leader pin in place and prevent it from becoming accidentally dislodged.
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`31.
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`The ’959 patent is titled “Magnetic Recording Medium Having Narrow Pulse
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`Width Characteristics” and issued on May 24, 2005, naming Bruce H. Edwards as inventor. A
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`true and correct copy of the ’959 patent is attached as Exhibit C to this Complaint. Sony owns
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`by assignment the right, title, and interest in the ’959 patent.
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`32.
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`The ’959 patent relates to the magnetic layer of recording media, such as tape.
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`Specifically, the ’959 patent is directed to a magnetic recording media having multiple layers
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`wherein the upper magnetic layer contains certain metallic pigments (e.g., particle pigments
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`having a coercivity of greater than about 2000 Oersteds (Oe)) with particles having lengths of
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`less than about 100 nanometers (nm), preferably less than 80 nm at a volume concentration of
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`greater than about 35%. This formulation results in improved performance over prior art
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`magnetic media.
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`33.
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`The ’331 patent is titled “Magnetic Recording Medium Having Narrow Pulse
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`Width Characteristics” and issued on October 3, 2006, naming Bruce H. Edwards as inventor.
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`The ’331 patent is a continuation of the ’959 patent. A true and correct copy of the ’331 patent is
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`attached as Exhibit D to this Complaint. Sony owns by assignment the right, title, and interest in
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`the ’331 patent.
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`34.
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`The ’331 patent is directed to a dual-layer recording medium including a non-
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`magnetic substrate having a front side and a back side, a lower support layer formed over the
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`front side and a magnetic upper recording layer formed over the lower layer. In particular, the
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`magnetic layer contains a volume concentration of at least 35% of a magnetic metallic particulate
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`pigment having a coercivity of at least about 2000 Oe, and a binder system for the pigment. The
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`high magnetic coercivity and high volume concentration of the magnetic particles results in tape
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`media that exhibits narrower pulse-width characteristics and lower remanence-thickness, thereby
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`improving the performance of the media.
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`35.
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`Collectively, the Asserted Patents overcome a number of shortcomings found in
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`prior art magnetic tape, magnetic tape cartridges, and tape drives for use with these cartridges.
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`For example, the claimed inventions of the Asserted Patents provide for improved performance
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`of recording media, increased stability and reduced operational errors in the cartridges used to
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`hold this tape media, and improved security in the use of tape cartridges by tape drives designed
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`to operate together to avoid inadvertent (or purposeful) overwriting of prior recorded data. As
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`described above, the claimed inventions of the Asserted Patents provide for improved use of tape
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`products for the archival and storage of data.
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`FUJIFILM’S ACCUSED PRODUCTS
`
`36.
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`Like Sony, Fujifilm is licensed by the LTO Consortium to market and sell every
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`generation of LTO Ultrium tape cartridge, including the current generation, LTO-7. Fujifilm
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`markets and sells LTO tape products bearing the Fujifilm brand name in the United States and
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`elsewhere. These tapes are marketed through its website (www.fujifilm.com) and available for
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`purchase at numerous other retailers, including Amazon.com. Fujifilm is a compliance-verified
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`manufacturer of LTO Ultrium branded tape cartridges.
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`Fujifilm-branded LTO Ultrium Tape Products
`(images from Fujifilm website)
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`37.
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`On information and belief, Fujifilm is also an original equipment manufacturer
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`(OEM) of LTO tapes for certain third parties, which are sold to consumers under the third
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`parties’ brand names.
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`38.
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`As discussed in more detail below, Sony is accusing Fujifilm-branded tape
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`products that are compliant with the LTO Ultrium generation 4, 5, and 6 formats, as well as the
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`cartridge components, magnetic tape, and leader pin comprising such products.2 For shorthand,
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`these will be referred to as LTO-4, LTO-5, and LTO-6 tape products (collectively, the “Branded
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`2 On information and belief, Fujifilm LTO Ultrium generation 7 (LTO-7) products also
`infringe certain claims of the Asserted Patents. However, at this time Sony is not alleging that
`LTO-7 products infringe any asserted patent in light of ongoing litigation between the parties in
`New York relating to certain contractual obligations related to the LTO standard. Sony Corp. et
`al. v. Fujifilm Holdings Corp. et al., No. 1:16-cv-05988-PGG (S.D.N.Y.).
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`Accused Products”). Sony is also accusing unlicensed tape media cartridges for which Fujifilm
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`operates as an OEM that are then sold by other companies under their own brand (the “OEM
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`Accused Products”). Collectively, the Branded Accused Products and OEM Accused Products
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`shall be referred to as the “Accused Products.”
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`COUNT I: INFRINGEMENT OF U.S. PATENT NO. 7,016,137
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`39.
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`Sony realleges, adopts, and incorporates by reference the allegations of
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`paragraphs 1 through 38 as if fully set forth herein.
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`40.
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`On information and belief, in violation of 35 U.S.C. §§ 271(a), (b), (c) and/or (g),
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`Fujifilm has infringed and is currently infringing one or more claims of the ’137 Patent,
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`including but not limited to claims 1-5, directly and/or indirectly, by making, using, selling,
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`offering for sale, and/or importing into the United States, without authority, the Accused
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`Products. Fujifilm has infringed and is currently infringing the ’137 Patent literally and/or under
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`the doctrine of equivalents.
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`41.
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`Exhibit E details the manner in which the Accused Products infringe the ’137
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`patent using a representative Accused Product.
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`42.
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`The Accused Products, or components thereof, indirectly infringe at least claims
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`1-5 of the ’137 patent.
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`43.
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`Fujifilm contributorily infringes and induces the infringement of at least these
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`claims by importing tape product components, including magnetic tape, that are material part(s)
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`of the claimed inventions of claims 1-5 of the ’137 patent, knowing these components are
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`especially made for use in infringing these claims. These components have no substantial non-
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`infringing use, as they are manufactured for use specifically in the Accused Products (in relation
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`to claim 5) and, correspondingly, with and in particular tape drive apparatuses (in relation to
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`claims 1-4). On further information and belief, these components are assembled into the
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`Accused Products in the United States and directly infringe at least claim 5 upon such assembly,
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`and must be (and therefore are) used in tape drive apparatuses and, at that time, infringe claims
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`1-4.
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`44.
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`Fujifilm also induces infringement of claims 1-5 of the ’137 patent by others. On
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`information and belief, once the Accused Products are assembled, Fujifilm sells these Accused
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`Products to third-party distributors, who correspondingly resell them to end users for use in
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`conjunction with tape drive apparatuses. On information and belief, once imported into the
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`United States, the Accused Products are used by Defendants in combination with tape drive
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`apparatuses for, among other things, quality assurance and control activities and verification
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`testing that measures compliance with LTO standards and by consumers in combination with
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`tape drive apparatuses for writing and reading archival data. Further, Fujifilm provides
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`instructions with these Accused Products that Fujifilm knows will lead to the infringement of
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`claims 1-5 of the ’137 patent by end users.
`
`45.
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`Fujifilm has knowingly engaged in these acts of indirect infringement, as it has
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`been aware of the ’137 patent since at least March 2014, when Sony identified the ’137 patent in
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`writing to Fujifilm in the context of licensing discussions regarding Fujifilm’s LTO products. In
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`September 2015, Sony provided Fujifilm with a claim chart that included an element-by-element
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`analysis applied to the format specification of LTO-6. In February 2016, Sony again notified
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`Fujifilm in writing about the ’137 patent in the context of licensing discussions. This complaint
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`serves to place Fujifilm on further notice of its infringement.
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`46.
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`By reason of Fujifilm’s infringing activities, Sony has suffered, and will continue
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`to suffer, substantial damages, including lost profits.
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`47.
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`Sony is entitled to recover from Fujifilm the damages sustained as a result of
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`Fujifilm’s infringing acts in an amount subject to proof at trial, but in no event less than a
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`reasonable royalty.
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`48.
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`Fujifilm’s continuing acts of infringement are irreparably harming and causing
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`damage to its direct competitor Sony, for which Sony has no adequate remedy at law, and Sony
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`will continue to suffer such irreparable injury unless Fujifilm’s continuing acts of infringement
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`are enjoined by the Court. The hardships that an injunction would impose are less than those
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`faced by Sony should an injunction not issue. The public interest would be served by issuance of
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`an injunction.
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`49.
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`Fujifilm’s infringement of the ’137 patent constitutes willful infringement
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`justifying enhancement of damages under 35 U.S.C. § 284. Fujifilm either knew or should have
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`known about its risk of infringing the ’137 patent, as it has been aware of the ’137 patent since at
`
`least March 2014, when Sony notified Fujifilm of the ’137 patent, and/or based on its own
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`investigation and analysis of the ’137 patent. Upon information and belief, Fujifilm’s accused
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`actions continued and will continue despite an objectively high likelihood that they constitute
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`infringement of the ’137 patent, and are ongoing. Fujifilm’s egregious misconduct, which is
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`both intentional and knowing, warrants enhanced damages because it is made with reckless
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`disregard for the infringing nature of its activities, and goes beyond typical patent infringement.
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`By way of example only, despite being on actual notice of its infringement of the ’137 patent,
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`Fujifilm has continued to manufacture, use, sell and offer to sell, and import the Accused
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`Products.
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`50.
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`Fujifilm’s continuing infringement of the ’137 patent is exceptional and entitles
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`Sony to attorneys’ fees and costs incurred in prosecuting this action under 35 U.S.C. § 285.
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`15
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`Case 1:16-cv-25210-DPG Document 1 Entered on FLSD Docket 12/15/2016 Page 16 of 25
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`COUNT II: INFRINGEMENT OF U.S. PATENT NO. 6,345,779
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`51.
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`Sony realleges, adopts, and incorporates by reference the allegations of
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`paragraphs 1 through 50 as if fully set forth herein.
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`52.
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`On information and belief, in violation of 35 U.S.C. §§ 271(a), (b), (c) and/or (g),
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`Fujifilm has infringed and is currently infringing one or more claims of the ’779 Patent,
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`including but not limited to claims 1-6, directly and/or indirectly, by making, using, selling,
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`offering for sale, and/or importing into the United States, without authority, the Accused
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`Products. Fujifilm has infringed and is currently infringing the ’779 patent literally and/or under
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`the doctrine of equivalents.
`
`53.
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`Exhibit F details the manner in which the Accused Products infringe the ’779
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`patent using a representative Accused Product.
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`54.
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`The Accused Products, or components thereof, indirectly infringe at least claims
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`1-6 of the ’779 patent.
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`55.
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`Fujifilm contributorily infringes at least these claims by importing into the United
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`States tape product components, which are material part(s) of the claimed inventions, knowing
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`these components are especially made for use in infringing these claims. These components
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`have no substantial non-infringing use, as they are manufactured for use specifically in the
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`Accused Products. On information and belief, these components are assembled into the Accused
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`Products in the United States by Defendants, and these Accused Products directly infringe at
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`least claims 1-6 of the ’779 patent upon such assembly. On further information and belief, these
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`assembled Accused Products are further sold by Defendants in the United States for use by third
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`parties that also directly infringes at least claims 1-6.
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`16
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`Case 1:16-cv-25210-DPG Document 1 Entered on FLSD Docket 12/15/2016 Page 17 of 25
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`56.
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`Fujifilm also induces infringement of claims 1-6 of the ’779 patent by others.
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`Fujifilm has been aware of the ’779 patent at least as of May 2015. On information and belief,
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`once the Accused Products are assembled, Fujifilm sells these Accused Products to third-party
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`distributors, who correspondingly resell them to end users for use in conjunction with tape drive
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`apparatuses. On information and belief, once imported into the United States, the Accused
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`Products are used by Defendants in combination with tape drive apparatuses for, among other
`
`things, quality assurance and control activities and verification testing that measures compliance
`
`with LTO standards and by consumers in combination with tape drive apparatuses for writing
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`and reading archival data. Further, Fujifilm provides instructions with these Accused Products
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`that Fujifilm knows will lead to the infringement of claims 1-6 of the ’779 patent by end users.
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`57.
`
`Fujifilm has knowingly engaged in these acts of indirect infringement, as it has
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`been aware of the ’779 patent since at least May 2015, when Sony identified the ’779 patent in
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`writing to Fujifilm in the context of licensing discussions regarding Fujifilm’s LTO products. In
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`September 2015, Sony provided Fujifilm with a claim chart that included an element-by-element
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`analysis of claims 1-6 as applied to the format specifications of LTO-4 to LTO-6. This
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`complaint serves to place Fujifilm on further notice of its infringement.
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`58.
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`By reason of Fujifilm’s infringing activities, Sony has suffered, and will continue
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`to suffer, substantial damages, including lost profits.
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`59.
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`Sony is entitled to recover from Fujifilm the damages sustained as a result of
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`Fujifilm’s infringing acts in an amount subject to proof at trial, but in no event less than a
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`reasonable royalty.
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`60.
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`Fujifilm’s continuing acts of infringement are irreparably harming and causing
`
`damage to its direct competitor Sony, for which Sony has no adequate remedy at law, and Sony
`
`17
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`Case 1:16-cv-25210-DPG Document 1 Entered on FLSD Docket 12/15/2016 Page 18 of 25
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`will continue to suffer such irreparable injury unless Fujifilm’s continuing acts of infringement
`
`are enjoined by the Court. The hardships that an injunction would impose are less than those
`
`faced by Sony should an injunction not issue. The public interest would be served by issuance of
`
`an injunction.
`
`61.
`
`Fujifilm’s infringement of the ’779 patent constitutes willful infringement
`
`justifying enhancement of damages under 35 U.S.C. § 284. Fujifilm either knew or should have
`
`known about its risk of infringing the ’779 patent, as it has been aware of the ’779 patent since at
`
`least May 2015, when Sony notified Fujifilm of the ’779 patent, and/or based