`
`In the United States District Court
`For the Western District of Tennessee
`
`
`
`
`
`
`Plaintiffs;
`
`Darrell K. Thompson;
`William T. Holt (deceased);
`Leatha J. Holt (next of kin); and
`NewAir Manufacturing, LLC,
`
`
`
`v.
`
`Stryker Corporation;
`Physio-Control International,
`Inc.;
`Physio-Control, Inc.;
`Psysio-Control Manufacturing,
`Inc.;
`Jolife AB;
`and Bain Capital, Inc.,
`
`
`
`
`
`Defendants.
`
`
`
`
`Case No. 2:19-cv-2038
`
`
`
`
`Jury Trial Demanded
`
`
`
`
`
`
`
`
`Amended Complaint for Patent Infringement,
`Trade Secret Misappropriation, Fraud, and
`Demand for Jury Trial
`
`
`Plaintiffs, Darrell K. Thompson, William T. Holt (Deceased), Leatha J.
`
`Holt (next of kin), and NewAir Manufacturing, LLC, (collectively, the “Plaintiffs”)
`
`by and through counsel, for their Complaint for Patent Infringement, and Trade
`
`
`
`Case 1:20-cv-01111-RJJ-SJB ECF No. 48, PageID.429 Filed 07/22/19 Page 2 of 26
`
`Secret Misappropriation against Medtronic Public Limited Company, Medtronic,
`
`Inc., Stryker Corporation, Physio-Control International, Inc., Physio-Control
`
`Manufacturing, Inc., Physio-Control, Inc., Jolife AB, and Bain Capital, Inc.
`
`(collectively, the “Defendants”) state as follows:
`
`The Parties
`
`1. Plaintiff Darrell K. Thompson (“Thompson”) is a resident of the State of
`
`Tennessee.
`
`2. Plaintiff William T. Holt (“W. Holt”) is deceased, and his next of kin, Leatha J.
`
`Holt (“Holt”), is a resident of the state of Tennessee.
`
`3. Plaintiff NewAir Manufacturing LLC (“NewAir”) is a domestic limited liability
`
`company duly organized and incorporated under the laws of the State of
`
`Tennessee, with its principal place of business in Bartlett, TN.
`
`4. Defendant Stryker Corporation (“Stryker”) is a domestic corporation duly
`
`organized and incorporated under the laws of the State of Michigan, with its
`
`principal place of business in Kalamazoo, MI. (Stryker and all wholly owned
`
`subsidiaries of Stryker hereafter collectively referred to as “Stryker
`
`Defendants.”)
`
`5. Defendant Physio-Control International, Inc. (“Physio-Control Int’l”) is a
`
`corporation duly organized and incorporated under the laws of the State of
`
`Washington with its principal place of business in Redmond, WA. Upon
`
`information and belief, Physio-Control Int’l is a wholly owned subsidiary of
`
`Stryker.
`
`
`Page 2 of 26
`Amended Complaint
`
`
`
`Case 1:20-cv-01111-RJJ-SJB ECF No. 48, PageID.430 Filed 07/22/19 Page 3 of 26
`
`6. Defendant Physio-Control Manufacturing, Inc. (“Physio-Control Mfg.”) is a
`
`corporation duly organized and incorporated under the laws of the State of
`
`Washington with its principal place of business in Redmond, WA. Upon
`
`information and belief, Physio-Control Mfg. is a wholly owned subsidiary of
`
`Stryker.
`
`7. Defendant Physio-Control, Inc. (“Physio-Control”) is a corporation duly
`
`organized and incorporated under the laws of the State of Washington with its
`
`principal place of business in Redmond, WA. Upon information and belief,
`
`Physio-Control is a wholly owned subsidiary of Stryker. Physio-Control has a
`
`duly filed foreign certificate of existence with the Tennessee Secretary of State.
`
`8. Defendant Jolife AB is a foreign corporation duly organized and incorporated in
`
`Sweden with its principal place of business in Lund, Sweden. Upon information
`
`and belief, Jolife AB is a wholly owned subsidiary of Physio-Control.
`
`9. Defendant Bain Capital, Inc. (“Bain Capital”) is a corporation duly organized
`
`and incorporated under the laws of the state of Delaware with a principal place
`
`of business in Boston, MA.
`
`10. Medtronic announced its acquisition of Physio-Control on June 30, 1998. Bain
`
`Capital announced its acquisition of Physio-Control from Medtronic on
`
`November 17, 2011. Stryker announced its acquisition of Physio-Control from
`
`Bain Capital on February 16, 2016.
`
`11. Physio-Control announced its acquisition of Jolife AB on April 25, 2011.
`
`
`Page 3 of 26
`Amended Complaint
`
`
`
`Case 1:20-cv-01111-RJJ-SJB ECF No. 48, PageID.431 Filed 07/22/19 Page 4 of 26
`
`Jurisdiction and Venue
`
`12. This action arises under the Patent Act, 35 U.S.C. § 101 et seq. This Court has
`
`original jurisdiction over this controversy pursuant to 28 U.S.C. §§ 1331 and
`
`1338(a).
`
`13. This Court has supplemental jurisdiction over Plaintiff’s state law claim
`
`pursuant to 28 U.S.C. § 1367 because Plaintiff’s state law claim is so related to
`
`the federal claims for which this Court has original jurisdiction that the state
`
`claim forms a part of the same case or controversy.
`
`[I]n any civil action of which the district court have original jurisdiction, the
`district courts shall have supplemental jurisdiction over all other claims that are so
`related to claims in the action within such original jurisdiction that they form part
`of the same case or controversy under Article III of the United States
`Constitution.”) Because the federal district court has original jurisdiction over the
`patent claims and because the other claims are so related to the patent claims that
`they form part of the same case and controversy, this Court has supplemental
`jurisdiction for the remainder of the claims.
`
`
`Tenn. Code. Ann. § 20-4-101 and 104.
`
`14. This Court has personal jurisdiction over Defendants. Defendants regularly and
`
`continuously do business in this District and have infringed or induced
`
`infringement, and continue to do so, in this District. Upon information and
`
`belief, Defendants maintain offices within this District. Furthermore, Stryker
`
`Defendants’ website advertises active job listings in the District. In addition, the
`
`Court has personal jurisdiction over Defendants because minimum contacts
`
`have been established with the forum and the exercise of jurisdiction would not
`
`offend traditional notions of fair play and substantial justice.
`
`15. Venue is proper in this Court pursuant to 28 U.S.C. §§ 1400(b) because
`
`Defendants have committed acts of infringement in this State and in this
`
`
`Page 4 of 26
`Amended Complaint
`
`
`
`Case 1:20-cv-01111-RJJ-SJB ECF No. 48, PageID.432 Filed 07/22/19 Page 5 of 26
`
`District, are subject to personal jurisdiction in this District, a substantial part of
`
`the events or omissions giving rise to this claim has occurred in this district, and
`
`the Defendants have a regular and established place of business in this district.
`
`Asserted Patents
`
`16. On January 24, 2006, the United States Patent and Trademark Office
`
`(“USPTO”) duly and legally issued U.S. Patent No. 6,988,499 (“the ‘499
`
`patent”), entitled “Mechanical Resuscitator,” to William T. Holt. The patent
`
`application for the ‘499 patent was filed on March 22, 2002, and receives the
`
`benefit of such priority date. The inventors have been since amended to be
`
`William T. Holt; by Leatha J. Holt; and Darrel K. Thompson. A true and correct
`
`of the ‘499 patent is attached as Exhibit A. NewAir Manufacturing, LLC is the
`
`owner by assignment of the ‘499 patent and holds all rights and interest in that
`
`patent.
`
`17. The ‘499 patent is valid and enforceable.
`
`Accused Products
`
`18. On November 30, 2010, the USPTO issued U.S. Patent No. 7,841,996 (“the
`
`‘996 patent”), entitled “Positioning Device for Use in Apparatus for Treating
`
`Sudden Cardiac Arrest” to Peter Sebelius and Martina Rosell. The PCT for the
`
`‘996 patent was filed on November 4, 2004, but receives the priority date of
`
`November 17, 2003, for its foreign application. A true and correct copy of the
`
`‘996 patent is attached as Exhibit B. Jolife AB is the owner by assignment of the
`
`‘996 patent and holds all rights and interest in that patent.
`
`
`Page 5 of 26
`Amended Complaint
`
`
`
`Case 1:20-cv-01111-RJJ-SJB ECF No. 48, PageID.433 Filed 07/22/19 Page 6 of 26
`
`19. On June 5, 2007, the USPTO issued U.S. Patent No. 7,226,427 (“the ‘427
`
`patent”), entitled “Systems and Procedures for Treating Cardiac Arrest” to
`
`Stig Steen. The PCT for the ‘427 patent was filed on June 6, 2003, but receives
`
`the priority date of May 12, 2003, for its provisional application. A true and
`
`correct copy of the ‘427 patent is attached as Exhibit C. Jolife AB is the owner
`
`by assignment of the ‘427 patent and holds all rights and interest in that patent.
`
`20. Upon information and belief, Defendants manufacture, sell, offer for sale, and
`
`distribute products according to the claims in the ‘996 and ‘427 patents
`
`including but not limited to the LUCAS Stabilization Strap.
`
`Factual Background
`
`21. Cardiac arrest is commonly treated through either mechanical or electrical
`
`defibrillation or resuscitation. Mechanical resuscitators work by forcing
`
`compressions of the patient’s sternum using manual, hydraulic, pneumatic, or
`
`other physical means. Mechanical resuscitators seek to provide a more
`
`powerful, consistent, and convenient alternative to manual cardiopulmonary
`
`resuscitation (CPR) by repeatedly compressing and decompressing the sternum
`
`on a patient.
`
`22. Several mechanical resuscitators are available on the market, each with
`
`particular advantages. One such mechanical resuscitator is the subject of the
`
`‘499 patent.
`
`23. The ‘499 patent included a method for securing the Mechanical Resuscitator to
`
`the patient by means of an attachment affixed beneath the neck of the patient to
`
`
`Page 6 of 26
`Amended Complaint
`
`
`
`Case 1:20-cv-01111-RJJ-SJB ECF No. 48, PageID.434 Filed 07/22/19 Page 7 of 26
`
`both secure the Mechanical Resuscitator and position the neck such that the
`
`patient maintains an open airway during resuscitation.
`
`24. This method of securing the resuscitator to the chest while positioning the neck
`
`was of particular interest to Medtronic because the products offered for sale by
`
`Medtronic at that point did not include such a device for securing the
`
`Mechanical Resuscitator to the patient.
`
`25. While the ‘499 patent included and enabled a securing and positioning device,
`
`the inventors kept as a trade secret the securing and positioning device at least
`
`until such a time as the patent application was published.
`
`26. The securing and positioning unit derived independent economic value from
`
`not being generally known nor readily ascertainable because one of the issues
`
`surrounding other mechanical resuscitators was that most mechanical
`
`resuscitators required additional means to position a patient’s neck to maintain
`
`an open airway during resuscitation and to ensure that the mechanical
`
`resuscitator did not shift or move while administering mechanical resuscitation.
`
`27. On March 23, 2002, Mr. Thompson attended a public presentation at Christian
`
`Brothers University, one day after the application for the ‘499 patent had been
`
`filed.
`
`28. At such time, Mathew M. Morrison (“Morrison”), Director of Production
`
`Development Thoracolumbar for Medtronic, acting as an agent and
`
`representative of Medtronic, approached Mr. Thompson about his Mechanical
`
`
`Page 7 of 26
`Amended Complaint
`
`
`
`Case 1:20-cv-01111-RJJ-SJB ECF No. 48, PageID.435 Filed 07/22/19 Page 8 of 26
`
`Resuscitator and expressed interest in the Mechanical Resuscitator on behalf of
`
`Medtronic.
`
`29. Morrison
`
`invited Mr. Thompson
`
`to speak to Darrel F. Untereker
`
`(“Untereker”), the Vice President of Research and Technology for Medtronic.
`
`30. Anticipating the necessity to disclose potentially secret information to
`
`Medtronic, Mr. Thompson mailed a non-disclosure and confidentiality
`
`agreement to Medtronic representatives Morrison and Untereker on October
`
`22, 2002. Mr. Thompson marked as “confidential” written communications
`
`with Medtronic representatives which may have contained references to his
`
`trade secrets.
`
`31. After sending the non-disclosure and confidentiality agreements to Morrison
`
`and Untereker, Mr. Thompson spoke with Untereker about the specifications of
`
`the Mechanical Resuscitator by phone.
`
`32. While Medtronic representatives did not return an executed non-disclosure and
`
`confidentiality agreement, Medtronic representatives continued to solicit
`
`information from him that reasonably should have been known to be confidential
`
`in nature. Medtronic representatives knew or reasonably should have known
`
`that the information shared by Mr. Thompson was confidential.
`
`33. In 2003, Mr. Thompson sent another non-disclosure and confidentiality
`
`agreement to Untereker having not received an executed copy of the agreement.
`
`34. Mr. Thompson disclosed to Medtronic representatives the trade secrets held by
`
`the inventors of the ‘499 patent regarding the securing and positioning unit.
`
`
`Page 8 of 26
`Amended Complaint
`
`
`
`Case 1:20-cv-01111-RJJ-SJB ECF No. 48, PageID.436 Filed 07/22/19 Page 9 of 26
`
`35. Although Medtronic did not acquire Jolife AB until February 25, 2011,
`
`Medtronic maintained contractual relationships with Jolife AB relating to the
`
`development, manufacture, and distribution of medical devices since, at latest,
`
`2002. Since, at latest, 2004, Medtronic has acted as distributor for Jolife AB
`
`products within the United States. Upon information and belief, Medtronic is
`
`the exclusive distributor of Jolife AB products within the United States.
`
`36. Medtronic has sold, offered for sale, and distributed Jolife AB products in all
`
`fifty states and continues to maintain this sale and distribution.
`
`37. Medtronic disclosed and used the trade secrets provided to it by Mr. Thompson
`
`by disclosing information provided by Mr. Thompson to Physio-Control and
`
`Jolife AB. Either Physio-Control, Jolife AB, or both Physio-Control and Jolife
`
`AB together used these trade secrets to develop their own chest compression
`
`device and Positioning Device for Use in Apparatus for Treating Sudden
`
`Cardiac Arrest.
`
`38. Physio-Control, Jolife AB, or both Physio-Control and Jolife AB representatives
`
`knew or reasonably should have known that the information disclosed to them
`
`by Medtronic representatives was confidential.
`
`39. Inventors Peter Sebelius and Martina Rosell assigned their rights to the
`
`invention which would later be published as the ‘996 patent to Jolife AB, and
`
`filed a foreign patent application on November 17, 2003, which is one year, seven
`
`months, and twenty-five days after Mr. Thompson was first approached by
`
`
`Page 9 of 26
`Amended Complaint
`
`
`
`Case 1:20-cv-01111-RJJ-SJB ECF No. 48, PageID.437 Filed 07/22/19 Page 10 of 26
`
`Medtronic, and one year, seven months, and twenty-six days after the
`
`application for the ‘499 patent had been filed.
`
`40. Because the ‘499 patent application was published as US 2003/017805 A1 on
`
`September 23, 2003, Jolife AB filed its foreign patent application only one
`
`month and twenty-five days after the publication of the application for the ‘499
`
`patent.
`
`41. Upon information and belief, the claims in the ‘996 patent are based wholly or
`
`in part on the trade secrets disclosed to Medtronic by Thompson.
`
`42. Despite the claims of the ‘996 patent being clearly anticipated by the ‘499
`
`patent, inventors Sebelius and Rosell and assignee Jolife AB did not disclose this
`
`prior art to the patent examiner.
`
`43. On November 30, 2010, the ‘996 patent was issued by the USPTO and assigned
`
`to Jolife AB.
`
`44. The ‘427 patent concerns the methods and mechanism for providing
`
`cardiopulmonary resuscitation through mechanical compression of the sternum
`
`coupled with a linked positive pressure airflow into the patient’s airway and
`
`further describes an attachment affixed beneath the neck of the patient to both
`
`secure the Mechanical Resuscitator and position the neck such that the patient
`
`maintains an open airway during resuscitation.
`
`45. Inventors Stig Steen assigned all rights to the invention which would later be
`
`published as the ‘427 patent to Jolife AB, and filed a provisional patent
`
`application on May 12, 2003.
`
`
`Page 10 of 26
`Amended Complaint
`
`
`
`Case 1:20-cv-01111-RJJ-SJB ECF No. 48, PageID.438 Filed 07/22/19 Page 11 of 26
`
`46. Upon information and belief, the claims in the ‘427 patent are based wholly or
`
`in part on the trade secrets disclosed to Medtronic by Thompson.
`
`47. Despite the claims of the ‘427 patent being clearly anticipated by the ‘499
`
`patent, inventor Stig Steen and assignee Jolife AB did not disclose this prior art
`
`to the patent examiner.
`
`48. On June 5, 2007, the ‘427 patent was issued by the USPTO and assigned to
`
`Jolife AB.
`
`49. Upon information and belief, Defendants manufacture, sell, offer for sale, and
`
`distribute, the LUCAS Stabilization Strap and other infringing products
`
`manufactured according to the claims of the ‘996 and ‘427 patents.
`
`50. Upon information and belief, Defendants Physio-Control Int’l, Physio-Control
`
`Mfg., Physio-Control, and Jolife AB manufacture, sell, offer for sale, and
`
`distribute the LUCAS Stabilization Strap and other infringing products
`
`manufactured according to the claims of the ‘996 and ‘427 patents.
`
`51. Upon information and belief, Defendants Medtronic, MDT, Medtronic USA,
`
`Stryker, Medtronic, Inc., Stryker, and Bain Capital sell, offer for sale, and
`
`distribute the LUCAS Stabilization Strap and other infringing products
`
`manufactured according to the claims of the ‘996 and ‘427 patents.
`
`52. The inventors of the ‘499 patent were both the first to invent the securing and
`
`positioning unit and the first to file their patent application for said unit.
`
`53. In late 2011, Mr. Thompson learned that Medtronic had purchased Jolife AB
`
`and had contacted Ryan Landon (“Landon”), a representative of Physio-
`
`
`Page 11 of 26
`Amended Complaint
`
`
`
`Case 1:20-cv-01111-RJJ-SJB ECF No. 48, PageID.439 Filed 07/22/19 Page 12 of 26
`
`Control, Physio-Control Intl, and Physio-Control Mfg. regarding the chest
`
`compression device and associated patents.
`
`54. On November 28, 2012, Mr. Thompson spoke with Morrison on the phone. In
`
`the phone conversation, Morrison confirmed with Mr. Thompson that Mr.
`
`Thompson was “the one with the chest device” and inquired as to whether his
`
`patent had issued, to which Mr. Thompson replied affirmatively.
`
`55. During that phone conversation, Mr. Thompson breached the subject of patent
`
`infringement of his patent by a Swedish company. Upon information and belief,
`
`the Swedish company to which Mr. Thompson was referring was Jolife AB.
`
`Upon information and belief, Morrison, acting as representative of Medtronic,
`
`knew that the company to which Mr. Thompson referred was Jolife AB.
`
`56. On November 28, 2012, after speaking with Morrison, Mr. Thompson called
`
`Untereker and left a message with substantially the same information as was
`
`relayed to Morrison.
`
`57. On November 28, 2012, after speaking with Untereker, Mr. Thompson called
`
`Landon. Mr. Thompson relayed to Landon substantially the same information
`
`as was relayed to Morrison and Untereker.
`
`58. On November 28, 2012, after speaking with Landon, Mr. Thompson called
`
`Untereker again and spoke with Untereker. At that time, Untereker confirmed
`
`to Mr. Thompson that the confidential information divulged to Medtronic by
`
`Mr. Thompson regarding the securing and positioning unit had been shared
`
`with multiple departments of Medtronic.
`
`
`Page 12 of 26
`Amended Complaint
`
`
`
`Case 1:20-cv-01111-RJJ-SJB ECF No. 48, PageID.440 Filed 07/22/19 Page 13 of 26
`
`59. Upon information and belief, Untereker was including Physio-Control, Physio-
`
`Control Intl, Physio-Control Mfg, and Jolife AB as “departments” to which Mr.
`
`Thompson’s trade secrets were shared.
`
`60. A reasonable opportunity for discovery will likely provide further evidentiary
`
`support for abovementioned facts.
`
`Knowledge of the ‘499 Patent
`
`61. Application No. 10/105,041 for the ‘499 patent was filed on March 22, 2002 and
`
`was published as US 2003/017805 A1 on September 23, 2003. The ‘499 patent
`
`was issued on January 24, 2006.
`
`62. On information and belief, Medtronic and MDT have had knowledge of the
`
`pending application for the ‘499 patent since at least March 23, 2002, when Mr.
`
`Thompson was approached by Morrison about the invention. Alternatively,
`
`Medtronic and MDT have had knowledge of the pending application for the
`
`‘499 patent since at least October 22, 2002, when Mr. Thompson sent a
`
`confidential letter to Medtronic representatives regarding the securing and
`
`positioning device. Alternatively, Medtronic and MDT have had knowledge of
`
`the pending/published application for the ‘499 patent since at least September
`
`23, 2003, when it was published. Alternatively, Medtronic and MDT have had
`
`knowledge of the ‘499 patent since at least January 24, 2006, when the patent
`
`was issued. Alternatively, Medtronic and MDT have had knowledge of the ‘499
`
`patent since November 28, 2012, when Mr. Thompson confirmed the issuance
`
`of his patent to Medtronic representatives. Alternatively, Medtronic and MDT
`
`
`Page 13 of 26
`Amended Complaint
`
`
`
`Case 1:20-cv-01111-RJJ-SJB ECF No. 48, PageID.441 Filed 07/22/19 Page 14 of 26
`
`have had knowledge of the ‘499 patent since at least November 30, 2016, when
`
`a Complaint for Breach of Contract, Misappropriation of Trade Secrets, and
`
`Unjust Enrichment was filed in the Shelby County Circuit Court. Alternatively,
`
`Medtronic and MDT have had knowledge of the ‘499 patent since at least the
`
`filing of this complaint.
`
`63. On information and belief, Physio-Control, Physio-Control Intl, Physio-Control
`
`Mfg, and Jolife AB have had knowledge of the pending application since at least
`
`October 22, 2012, when Mr. Thompson was approached by Morrison about the
`
`invention. Alternatively, Physio-Control, Physio-Control Intl, Physio-Control
`
`Mfg, and Jolife AB have had knowledge of the pending application for the ‘499
`
`patent since at least October 22, 2012, when Mr. Thompson sent a confidential
`
`letter to Medtronic representatives regarding the securing and positioning
`
`device. Alternatively, Physio-Control, Physio-Control Intl, Physio-Control Mfg,
`
`and Jolife AB have had knowledge of the pending/published application for the
`
`‘499 patent since at least the currently unknown date that Untereker divulged to
`
`Physio-Control, Physio-Control Intl, Physio-Control Mfg, and Jolife AB the
`
`trade secrets contained in his confidential letter. Alternatively, Physio-Control,
`
`Physio-Control Intl, Physio-Control Mfg, and Jolife AB have had knowledge of
`
`the pending/published application for the ‘499 patent since at least September
`
`23, 2003, when it was published. Alternatively, Physio-Control, Physio-Control
`
`Intl, Physio-Control Mfg, and Jolife AB have had knowledge of the ‘499 patent
`
`since at least January 24, 2006, when the patent was issued. Alternatively,
`
`
`Page 14 of 26
`Amended Complaint
`
`
`
`Case 1:20-cv-01111-RJJ-SJB ECF No. 48, PageID.442 Filed 07/22/19 Page 15 of 26
`
`Physio-Control, Physio-Control Intl, Physio-Control Mfg, and Jolife AB have
`
`had knowledge of the ‘499 patent since November 28, 2012, when Mr.
`
`Thompson confirmed the issuance of his patent to Physio-Control, Physio-
`
`Control Intl, Physio-Control Mfg, and Jolife AB representatives. Alternatively,
`
`Physio-Control, Physio-Control Intl, Physio-Control Mfg, and Jolife AB have
`
`had knowledge of the ‘499 patent since at least November 30, 2016, when a
`
`Complaint for Breach of Contract, Misappropriation of Trade Secrets, and
`
`Unjust Enrichment was filed in the Shelby County Circuit Court. Alternatively,
`
`Physio-Control, Physio-Control Intl, Physio-Control Mfg, and Jolife AB have
`
`had knowledge of the ‘499 patent since at least the filing of this complaint.
`
`64. On information and belief, Bain Capital has had knowledge of the ‘499 patent
`
`since at least November 17, 2011 when it acquired Physio-Control from
`
`Medtronic. Alternatively, Bain Capital has had knowledge of
`
`the
`
`pending/published application for the ‘499 patent since at least September 23,
`
`2003, when it was published. Alternatively, Bain Capital has had knowledge of
`
`the ‘499 patent since at least January 24, 2006, when the patent was issued.
`
`Alternatively, Bain Capital has had knowledge of the ‘499 patent since
`
`November 28, 2012, when Mr. Thompson confirmed the issuance of his patent
`
`to Physio-Control, Physio-Control Intl, Physio-Control Mfg, and Jolife AB
`
`representatives. Bain Alternatively, Bain Capital has had knowledge of the ‘499
`
`patent since at least November 30, 2016, when a Complaint for Breach of
`
`Contract, Misappropriation of Trade Secrets, and Unjust Enrichment was filed
`
`
`Page 15 of 26
`Amended Complaint
`
`
`
`Case 1:20-cv-01111-RJJ-SJB ECF No. 48, PageID.443 Filed 07/22/19 Page 16 of 26
`
`in the Shelby County Circuit Court. Alternatively, Bain Capital has had
`
`knowledge of the ‘499 patent since at least the filing of this complaint.
`
`65. On information and belief, Stryker has had knowledge of the ‘499 patent since
`
`at least February 16, 2016 when it acquired Physio-Control from Bain Capital.
`
`Alternatively, Stryker has had knowledge of the pending/published application
`
`for the ‘499 patent since at least September 23, 2003, when it was published.
`
`Alternatively, Stryker has had knowledge of the ‘499 patent since at least
`
`January 24, 2006, when the patent was issued. Alternatively, Stryker has had
`
`knowledge of the ‘499 patent since at least November 30, 2016, when a
`
`Complaint for Breach of Contract, Misappropriation of Trade Secrets, and
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`Unjust Enrichment was filed in the Shelby County Circuit Court. Alternatively,
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`Stryker has had knowledge of the ‘499 patent since at least the filing of this
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`complaint.
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`Infringement of the Asserted Patent
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`66. No defendant currently has a license to the asserted patent.
`
`67. Defendants have been/are now infringing/will continue to infringe the ‘499
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`patent in this Judicial District and elsewhere in the United States by, among
`
`other things, making, using, importing, selling, and/or offering for sale products
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`including but not limited to the LUCAS Stabilization Strap.
`
`68. In addition to directly infringing the asserted patent pursuant to 35 U.S.C. §
`
`271(a), either literally or under the doctrine of equivalents, or both, Defendants
`
`indirectly infringe the asserted patent by instructing, directing, and/or requiring
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`Page 16 of 26
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`Case 1:20-cv-01111-RJJ-SJB ECF No. 48, PageID.444 Filed 07/22/19 Page 17 of 26
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`others, including its manufacturers, subsidiaries, customers, purchasers, users,
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`and developers, to perform all or some of the steps of the claims, either literally
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`or under the doctrine of equivalents, or both, of the asserted patent. Specifically
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`but not exclusively, Medtronic and other parent corporations to Physio-Control
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`and Jolife AB have instructed the development and manufacture of the LUCAS
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`Stabilization Strap by inventors for Jolife AB in violation of the ‘499 patent. In
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`addition, parent companies Medtronic, MDT, Stryker, and Bain Capital have
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`all, during their ownership of or contractual relationships with Physio-Control
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`and Jolife AB, instructed the development, distribution, sale, and offer for sale
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`of the LUCAS Stabilization Strap in violation of the ‘499 patent.
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`69. Furthermore, Defendants contributorily infringe upon the asserted patent by
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`offering for sale, selling, or importing components of the LUCAS Stabilization
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`Strap and other infringing products for use in the manufacture of the LUCAS
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`Stabilization Strap and other infringing products, knowing the same to be
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`especially made or adapted for use in the infringement. Such components are
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`not staple articles or commodity of commerce suitable for substantial
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`noninfringing use. Specifically but not exhaustively, an indeterminate number
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`of manufacturing and distribution facilities are owned and have been owned by
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`different subsidiaries of the Stryker Defendants. As such, different parts of the
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`LUCAS Stabilization Strap may be produced, assembled, or distributed among
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`several Defendants.
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`Page 17 of 26
`Amended Complaint
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`Case 1:20-cv-01111-RJJ-SJB ECF No. 48, PageID.445 Filed 07/22/19 Page 18 of 26
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`70. The allegations with respect to each asserted patent claim, each accused
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`product, and each specific accused feature are exemplary. As discovery has not
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`yet begun, Plaintiffs reserve the right to assert additional claims, accuse
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`additional products, and accuse additional features.
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`Claims for Relief
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`Count 1. Direct Infringement of the ‘499 Patent under 35 U.S.C. § 271(a)
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`71. All allegations set forth above are incorporated herein by reference as if fully set
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`forth.
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`72. The ‘499 patent is entitled “Mechanical Resucitator.”
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`73. Defendants have directly infringed and continue to directly infringe, literally or
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`under the doctrine of equivalents, one or more claims of the ‘499 patent in
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`violation of 35 U.S.C. §271(a) by making, using, offering to sell, selling (directly
`
`or through intermediaries), and/or importing, in this District and elsewhere in
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`the United States, the LUCAS Stabilization Strap and other infringing products.
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`74. Defendants specifically infringes claim 2 of the ‘499 patent which is a dependent
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`claim to claim 1 of the ‘499 patent. The claims provide as follows:
`
`What is Claimed is:
`1. An improved resuscitator including
`a pump including movable means movable between a first
`position and a second position for forcing gas from the pump
`when moved from the first position to the second position and
`for drawing gas into the pump when moved from the second
`position to the first position, the pump having an opening for
`allowing gas to be drawn into and forced out therethrough;
`a base member for positioning over the sternum area of the
`patient’s chest, the base member having a passageway for
`allowing gas to pass therethrough, the passageway having a first
`end and a second end;
`coupling means for allowing gas to pass from the passageway of
`the base member to the patient’s lungs, the coupling means
`including a hollow tube for being connected to the second end
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`Page 18 of 26
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`Case 1:20-cv-01111-RJJ-SJB ECF No. 48, PageID.446 Filed 07/22/19 Page 19 of 26
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`of the passageway of the base member to allow gas to pass from
`the passageway of the base member therethrough;
`and seal means for forming a gas-tight seal between the opening
`of the pump and the first end of the passageway of the base
`member when the movable means of the pump is moved from
`the first position to the second position to allow gas to be forced
`from the pump through the passageway of the base member and
`out the coupling means;
`wherein the improvement comprises:
`sternum means attached to the base member for placement on
`the patient’s chest over the patient’s sternum and for applying
`pressure to the patient’s sternum during resuscitation; said
`sternum means consisting of a ball-like member for simulating
`the heel of a person’s hand when applying pressure to the
`patient’s
`sternum while performing
`cardiopuliminary
`resuscitation
`2. The
`improved resuscitator of claim 1 wherein the
`improvement further includes; neck positioning means for
`maintaining the patient’s airway open during resuscitation.
`
`
`U.S. Patent No. 6,988,499 B2, col. 8, line 30 (Issued January 24,
`2006).
`
`75. The “neck positioning means” of claim 2 is further enabled in the drawings and
`
`in the detailed description. The description of the “neck positioning means”
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`provides as follows:
`
`The improvement of the present invention preferably includes
`neck positioning means 61 for maintaining the patient's airway
`open during resuscitation. The neck positioning means 61 may
`consist of a firm pillow-like member 63 secured to the base
`member 27 by string means 65 for placement under
`the
`patient's neck during resuscitation to support the patient's neck
`and properly
`limit head and neck movement during
`resuscitation and keep the patient's head properly tilted and
`airway open during forced air compressions and force chest
`compression. The string means 65 may consist of an elastic
`band 67 having a first end 69 attached to the pillow-like
`member 63 and a second end 71 attached
`to
`the base
`member 27.
`
`
`Id. at col. 6, line 6.
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`76. In the drawings, the “neck positioning means” is illustrated in figures 1 and 3.
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`77. The LUCAS Stabilization Strap and other infringing products perform each and
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`every step of claims 1 and 2.
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`Page 19 of 26
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`Case 1:20-cv-01111-RJJ-SJB ECF No