Case: 1:21-cv-04024 Document #: 1 Filed: 07/28/21 Page 1 of 5 PageID #:1
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`IN THE UNITED STATES DISTRICT COURT FOR THE
`NORTHERN DISTRICT OF ILLINOIS
`EASTERN DISTRICT
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`HINGE HEALTH, INC., a Delaware
`Corporation,
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`Plaintiff,
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`v.
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`TERRY I. YOUNGER, an individual,
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`Defendant.
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`No.
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`COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT
`OF U.S. PATENT NO. 9,418,571
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`Plaintiff Hinge Health, Inc., (“Plaintiff” or “Hinge Health”) hereby alleges for its
`Complaint against Defendant Terry I. Younger (“Defendant” or “Younger”) as follows:
`NATURE AND HISTORY OF THE ACTION
`1.
`This is an action for a declaratory judgment of non-infringement of U.S. Patent
`No. 9,418,571 (the “’571 Patent” or the “Patent-in-Suit”), attached hereto as Exhibit A.
`2.
`On January 7, 2021, Defendant Younger, through his counsel of record, sent a
`letter alleging that Hinge Health infringes the Patent-in-Suit through its alleged manufacturing,
`marketing, importing, and sale of an apparatus and method for musculoskeletal care (“Accused
`Products”), attached hereto as Exhibit B. Younger claims to own all right, title and interest in
`and to the ’571 Patent and that the Accused Products infringe that Patent.
`3.
`Since that first letter on January 7, 2021, Younger has sent additional e-mail
`correspondence, through his counsel of record, that continues to contend that Hinge Health
`infringes the ’571 Patent, including most recently on July 16, 2021.
`4.
`Hinge Health does not infringe, nor has it infringed, any valid and enforceable
`claim of the Patent-in-Suit. An actual case or controversy exists between Hinge Health and
`Younger regarding whether Hinge Health infringes the Patent-in-Suit.
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`Case: 1:21-cv-04024 Document #: 1 Filed: 07/28/21 Page 2 of 5 PageID #:2
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`5.
`Younger’s actions have created a real and immediate controversy between Hinge
`Health and Younger regarding whether the Accused Products infringe any claims of the Patent-
`in-Suit. Younger’s accusation of infringement demonstrates that it is highly likely that he will
`assert infringement of the Patent-in-Suit against Hinge Health.
`6.
`The facts and allegations recited herein show that there is a real, immediate, and
`justiciable controversy. A judicial declaration is necessary to determine the respective rights of
`the parties regarding the Patent-in-Suit, and Hinge Health seeks a judicial declaration that it does
`not infringe the Patent-in-Suit.
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`THE PARTIES
`7.
`Plaintiff Hinge Health, Inc., is a corporation organized and existing under the
`laws of Delaware, with its principal place of business at 465 California Street, 14th Floor, San
`Francisco, California 94104.
`8.
`On information and belief, Defendant Dr. Terry I. Younger is an individual
`residing in Illinois, with a medical practice at Swedish Hospital, 5140 North California Avenue,
`Chicago, Illinois 60625.
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`JURISDICTION AND VENUE
`9.
`This action arises under the Declaratory Judgment Act, 28 U.S.C. §§ 2201-2202,
`and under the Patent Laws of the United States, 35 U.S.C. §§ 1 et seq.
`10.
`This Court has subject matter jurisdiction over the claims alleged in this action at
`least under 28 U.S.C. §§ 1331, 1332, 1338, 2201, and 2202, because this Court has exclusive
`jurisdiction over declaratory judgment claims arising under the Patent Laws pursuant to
`28 U.S.C. §§ 1331, 1338, 2201, and 2202.
`11.
`This Court can provide the relief sought because an actual case and controversy
`exists between the parties within the scope of this Court’s jurisdiction pursuant to
`28 U.S.C. § 2201, at least because Younger has accused Hinge Health of infringement of the
`Patent-in-Suit, despite the fact that Hinge Health does not infringe, and has not infringed, any
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`COMPLAINT FOR DECLARATORY
`JUDGMENT OF NON-INFRINGEMENT
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`Case: 1:21-cv-04024 Document #: 1 Filed: 07/28/21 Page 3 of 5 PageID #:3
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`claims of the Patent-in-Suit. Younger’s actions have created a real, live, immediate, and
`justiciable case or controversy between Younger and Hinge Health.
`12.
`Younger is subject to personal jurisdiction in the Northern District of Illinois at
`least because, on information and belief, he resides and maintains a place of business in this
`District.
`13.
`Venue in this District is proper under 28 USC §§ 1391(b), (c), and (d) with
`respect to Hinge Health’s declaratory judgment claims because this Court has personal
`jurisdiction over Younger.
`14.
`An actual and justiciable controversy exists under 28 U.S.C. §§ 2201-2202
`between Hinge Health and Younger as to whether the Patent-in-Suit is infringed by Hinge
`Health’s products and/or services.
`FIRST CLAIM FOR RELIEF
`(Declaratory Judgment That Hinge Health Does Not Infringe The ’571 Patent)
`15.
`Hinge Health repeats and realleges each and every allegation contained in
`paragraphs 1-14 as if fully set forth herein.
`16.
`In view of the facts and allegations set forth above, there is an actual, justiciable,
`substantial, and immediate controversy between Hinge Health, on the one hand, and Younger, on
`the other, regarding whether Hinge Health infringes any claim of the ’571 Patent.
`17.
`Hinge Health does not directly or indirectly infringe, either literally or under the
`doctrine of equivalents, any claim of the ’571 Patent. Hinge Health has not directly or indirectly
`infringed, either literally or under the doctrine of equivalents, any claim of the ’571 Patent.
`18.
`For example, Hinge Health cannot infringe the ’571 Patent because the ’571
`Patent teaches a method which includes, in every independent claim, steps that Hinge Health
`does not perform for its customers, such as the physical act of fixing or placing a brace.
`19.
`Similarly, Hinge Health does not induce infringement of the ’571 Patent because,
`for at least the reasons stated above, there is no direct infringement of any claim of the ’571
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`COMPLAINT FOR DECLARATORY
`JUDGMENT OF NON-INFRINGEMENT
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`Patent. Additionally, Hinge Health has not acted with the knowledge and/or specific intent
`necessary for induced infringement and has not encouraged others’ infringement.
`20.
`Likewise, Hinge Health does not contributorily infringe the ’571 Patent because,
`for at least the reasons stated above, there is no direct infringement of any claim of the ’571
`Patent. Additionally, the Accused Products were not designed for an infringing use, have
`substantial noninfringing uses, and are not a material part of any infringing combination.
`Furthermore, Hinge Health has not acted with the knowledge or intent necessary for contributory
`infringement.
`21.
`Declaratory relief is necessary and appropriate so that Hinge Health may ascertain
`its rights regarding the ’571 Patent.
`22.
`For the reasons set forth above, Hinge Health respectfully requests that this Court
`declare that Hinge Health does not directly or indirectly infringe, nor has it directly or indirectly
`infringed, any claim of the ’571 Patent, either literally or under the doctrine of equivalents.
`PRAYER FOR RELIEF
`Hinge Health respectfully requests the following relief:
`A.
`That the Court enter a judgment declaring that Hinge Health has not infringed and
`does not infringe any enforceable claim of the ’571 Patent;
`B.
`That the Court declare that this case is exceptional under 35 U.S.C. § 285 and
`award Hinge Health its attorneys’ fees, costs, and expenses incurred in this action;
`C.
`That the Court award Hinge Health any and all other relief to which Hinge Health
`may show itself to be entitled; and
`D.
`That the Court award Hinge Health any other relief as the Court may deem just,
`equitable, and proper.
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`JURY DEMAND
`Hinge Health hereby demand a jury trial on all issues and claims so triable.
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`COMPLAINT FOR DECLARATORY
`JUDGMENT OF NON-INFRINGEMENT
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`Case: 1:21-cv-04024 Document #: 1 Filed: 07/28/21 Page 5 of 5 PageID #:5
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`/s/ Tara Kurtis
`By:
`One of Their Attorneys
`
`Tara Kurtis (ARDC #6323880)
`TKurtis@perkinscoie.com
`PERKINS COIE LLP
`131 S. Dearborn Street, Suite 1700
`Chicago, IL 60603
`Tel: (312) 324-8400
`Fax: (312) 324-9400
`
`David A. Perez (Pro Hac Vice Pending)
`DPerez@perkinscoie.com
`PERKINS COIE LLP
`1201 Third Avenue, Suite 4900
`Seattle, Washington 98101-3099
`Tel: (206) 359-8000
`Fax: (206) 359-7767
`
`John D. Esterhay (Pro Hac Vice Pending)
`JEsterhay@perkinscoie.com
`PERKINS COIE LLP
`11452 El Camino Real, Ste 300
`San Diego, California 92130-2080
`Tel: (858) 720-5700
`Fax: (858) 720-5858
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`Dated: July 28, 2021
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`COMPLAINT FOR DECLARATORY
`JUDGMENT OF NON-INFRINGEMENT
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