Case 1:20-cv-02989 Document 1 Filed 07/06/20 Page 1 of 23 PageID #: 1
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF NEW YORK
`
`----------------------------------------------------------------- X
`SOTER TECHNOLOGIES, LLC,
`
`PLAINTIFF,
`
`V.
`
`IP VIDEO CORPORATION, A+ TECHNOLOGY
`& SECURITY SOLUTIONS, INC., HALO SMART
`SOLUTIONS, INC. & ADVANCE
`CONVERGENCE GROUP, INC.
`
`: : : : : :
`
`Civ No.:
`
`DEFENDANTS.
`----------------------------------------------------------------- X
`
`COMPLAINT
`
`Plaintiff Soter Technologies LLC (“Soter”), by and through its undersigned counsel,
`
`hereby files this Complaint against IP Video Corporation, A+ Technology & Security Solutions,
`
`Inc., Halo Smart Solutions, Inc., and Advance Convergence Group (collectively “Defendants”):
`
`NATURE OF THE ACTION
`
`1.
`
`Soter is the owner of U.S. Patent No. 10,699,549 (“the ‘549 Patent”) protecting
`
`FlySense®—the world’s first vape detecting sensor device. FlySense® protects our nation’s
`
`children by helping authorities control the vaping and bullying crisis facing today’s youth.
`
`2.
`
`Defendants are infringing the ‘549 Patent by making, using, selling, and offering
`
`for sale a vape detecting sensor device (“HALO Device”), inducing customers including school
`
`districts across the country to infringe, and contributing to infringement by third parties.
`
`3.
`
`Defendants have been so bold as to state that if their activities with regard to HALO
`
`indeed lead to infringement of Soter’s patent—that a school using their HALO Device should be
`
`sued—rather than Defendants. As a result, multiple schools are at risk of Defendants shifting the
`
`
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF NEW YORK
`
`----------------------------------------------------------------- X
`SOTER TECHNOLOGIES, LLC,
`
`PLAINTIFF,
`
`V.
`
`IP VIDEO CORPORATION, A+ TECHNOLOGY
`& SECURITY SOLUTIONS, INC., HALO SMART
`SOLUTIONS, INC. & ADVANCE
`CONVERGENCE GROUP, INC.
`
`: : : : : :
`
`Civ No.:
`
`DEFENDANTS.
`----------------------------------------------------------------- X
`
`COMPLAINT
`
`Plaintiff Soter Technologies LLC (“Soter”), by and through its undersigned counsel,
`
`hereby files this Complaint against IP Video Corporation, A+ Technology & Security Solutions,
`
`Inc., Halo Smart Solutions, Inc., and Advance Convergence Group (collectively “Defendants”):
`
`NATURE OF THE ACTION
`
`1.
`
`Soter is the owner of U.S. Patent No. 10,699,549 (“the ‘549 Patent”) protecting
`
`FlySense®—the world’s first vape detecting sensor device. FlySense® protects our nation’s
`
`children by helping authorities control the vaping and bullying crisis facing today’s youth.
`
`2.
`
`Defendants are infringing the ‘549 Patent by making, using, selling, and offering
`
`for sale a vape detecting sensor device (“HALO Device”), inducing customers including school
`
`districts across the country to infringe, and contributing to infringement by third parties.
`
`3.
`
`Defendants have been so bold as to state that if their activities with regard to HALO
`
`indeed lead to infringement of Soter’s patent—that a school using their HALO Device should be
`
`sued—rather than Defendants. As a result, multiple schools are at risk of Defendants shifting the
`
`
`
`Case 1:20-cv-02989 Document 1 Filed 07/06/20 Page 2 of 23 PageID #: 2
`
`blame (and the cost) for their infringing acts onto them, including the Uniondale School District
`
`right here in the Eastern District of New York.
`
`4.
`
`Upon information and belief, Defendants continue to offer the HALO Device for
`
`sale, since the issuance of the ‘549 Patent.
`
`5.
`
`Defendants will continue to irreparably harm Soter until they are stopped by this
`
`Court.
`
`THE PARTIES
`
`6.
`
`Soter is a limited liability company organized under the laws of New York with a
`
`principal place of business at 113 Comac Street, Ronkonkoma, New York 11779.
`
`7.
`
`Soter uses advanced sensor and software technology to solve public health and
`
`safety problems such as vaping and bullying, and to deliver innovative solutions for environmental
`
`and social intelligence to make the world a safer place.
`
`8.
`
`The name “Soter” was inspired by Greek mythology, wherein Soter personifies
`
`safety, deliverance and preservation from harm.
`
`9.
`
`Since the company’s inception, Soter has remained focused on pioneering new
`
`technology to keep people safe.
`
`10.
`
`For example, Soter was the first to help schools with vape detection and prevention.
`
`It was also the first to create a full body health scanner called SymptomSense™ in response to the
`
`current COVID 19 public health crisis.
`
`11.
`
`Soter sells vape detecting sensor products to schools and institutions in corporate
`
`America such as insurance companies and Lyft, the ridesharing company.
`
`12.
`
`Soter assists its school customers not only with vape and bullying detection and
`
`prevention, but also in aggregating data to help them safely open amidst the COVID 19 pandemic.
`
`2
`
`
`
`Case 1:20-cv-02989 Document 1 Filed 07/06/20 Page 3 of 23 PageID #: 3
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`13.
`
`Soter’s approach to vape detection and prevention involves using both technology
`
`and education. In addition to its own educational initiatives, Soter supports other organizations
`
`that educate others about the dangers of vaping including: (a) PAVE (Parents Against Vaping E-
`
`cigarettes); (b) ConsumerNotice.org; (c) Flavor Shook Kids; (d) Yale University’s Center for
`
`Health & Learning Games; (e) Stanford Medicine’s Modules for Tobacco and Nicotine Education;
`
`(f) DoSomething.org; (g) ShapeAmerica.org; (h) Prevention for Me; (i) ijustdidn’tknow.org; (j)
`
`Sunshine Behavioral Health; and (k) addictioncenter.com.
`
`14.
`
`Upon information and belief, Defendant IP Video Corporation is a New York
`
`corporation organized under the laws of the State of New York with a principal place of business
`
`at 1490 N. Clinton Avenue, Bay Shore, New York 11706.
`
`15.
`
`Upon information and belief, Defendant A+ Technology & Security Solutions, Inc.
`
`is a New York corporation organized under the laws of the State of New York with a principal
`
`place of business at 1490 N. Clinton Avenue, Bay Shore, New York 11706.
`
`16.
`
`Upon information and belief, Defendant Halo Smart Solutions, Inc. is a New York
`
`corporation organized under the laws of the State of New York with a principal place of business
`
`at 1490 N. Clinton Avenue, Bay Shore, New York 11706.
`
`17.
`
`Defendant Halo Smart Solutions Inc. (“HSS”) resides at the same address as the
`
`other three Defendants. HSS is pursuing patent rights on a device that detects at least vaping.
`
`18.
`
`Upon information and belief, Defendant Advance Convergence Group, Inc. is a
`
`Delaware corporation with a principal place of business at 1490 N. Clinton Avenue, Bay Shore,
`
`New York 11706.
`
`19.
`
`Defendants conspire with one another to make, sell, offer for sale and distribute the
`
`infringing HALO Device. As reported by Newsday:
`
`3
`
`
`
`Case 1:20-cv-02989 Document 1 Filed 07/06/20 Page 4 of 23 PageID #: 4
`
`[T]he Halo Smart Sensor produced by Advance Convergence Group and affiliates
`IP Video Corp. and A+ Technology & Security Solutions Inc.- can be installed in
`high school bathrooms. 1
`
`20.
`
`Defendant IP Video Corporation advertises the infringing HALO Device on its
`
`website and exhibits HALO at trade shows across the United States, including in New York.
`
`21.
`
`Defendant A+ Technology & Security Solutions Inc. advertises the infringing
`
`HALO Device on its website.2
`
`22.
`
`Defendant Advance Convergence Group (“ACG”) advertises the infringing HALO
`
`Device on its website.3
`
`23.
`
`All three companies share office locations, resources and executives. For example,
`
`according to Defendants’ marketing materials and social media posts, David Antar is a top
`
`executive at all three entities—serving as President of IP Video Corporation and A+ Technology
`
`& Security Solutions Inc. and as Chief Executive Officer of ACG.
`
`24.
`
`25.
`
`Further, all Defendants reside at the same Bay Shore location.
`
`Upon information and belief, Defendants’ operations are international and they are
`
`engaged in interstate and foreign commerce.
`
`JURISDICTION AND VENUE
`
`26.
`
`The court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and 1338 because
`
`this case arises under the United States Patent Laws, 35 U.S.C. § 271 et seq. and the Declaratory
`
`Judgment Act, 28 U.S.C. §§ 2201 and 2202.
`
`See “LI Firms make devices to help detect vaping use in schools,” https://www.newsday.com/business/
`1
`technology/vaping-schools-students-sensors-1.35657330 (last visited June 29, 2020).
`
`See VAPE & THC detection, Air Quality & Environmental Monitoring, Chemical Detection, Privacy Area
`2
`Security, available at https://aplustechnology.com/halo/ (last visited June 4, 2020).
`
`3
`
`See http://advanceconvergence.com/ (last visited June 29, 2020).
`
`4
`
`
`
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`27.
`
`Venue is proper in this district under 28 U.S.C. §§ 1400(b) and 1391(b)(1) and (2)
`
`because this is a judicial district in which all Defendants reside and because a substantial part of
`
`the events or omissions giving rise to Plaintiff’s claim occurred in this district.
`
`28.
`
`This court has personal jurisdiction over Defendants because each of them has a
`
`principal place of business in New York, in this District.
`
`29.
`
`30.
`
`Defendants have had actual notice of the ‘549 Patent since at least July 1, 2020.
`
`Nevertheless they continue to (i) offer for sale their HALO Device to schools across
`
`the country including this district since the ’549 Patent issued and during the term of the patent;
`
`(ii) continue to use Plaintiff’s invention to perform vape detection in a way that violates the ‘549
`
`Patent since the ‘549 Patent issued and during the term of the patent; (iii) continue to make
`
`infringing HALO Devices during the term of the patent; and (iv) continue to induce others to
`
`infringe during the term of the patent.
`
`31.
`
`On information and belief, Defendants are using and intend to continue using
`
`Plaintiff’s invention during the term of the ‘549 Patent.
`
`32.
`
`Despite notice of the ‘549 Patent, Defendants intend to continue to induce others to
`
`infringe the ‘549 Patent, including the Uniondale School District.
`
`33.
`
`Despite notice of the ‘549 Patent, Defendants intend to continue to contribute to the
`
`infringement by others, during the term of the ‘549 Patent.
`
`34.
`
`Defendants have stated publicly that any infringing use of HALO Devices by
`
`school districts constitute infringement by them, but not Defendants. For example, in the case of
`
`the White Plains School District, Defendants have represented that it is White Plains, but not
`
`Defendants, that is infringing the ‘549 Patent by using the HALO Device made and sold by
`
`Defendants.
`
`5
`
`
`
`Case 1:20-cv-02989 Document 1 Filed 07/06/20 Page 6 of 23 PageID #: 6
`
`SOTER’S INTELLECTUAL PROPERTY PROTECTING
`ITS FLYSENSE® VAPE DETECTION PRODUCT
`
`Soter’s Patent Rights
`
`35.
`
`On August 15, 2017, Soter filed U.S. Application No. 62/545,795, a provisional
`
`patent application entitled Sensor Systems and Methods (“‘795 Application”).
`
`36.
`
`The ‘795 Application discloses, among other things, a device using sensor
`
`technology to detect vaping and/or bullying.
`
`37.
`
`On August 15, 2018, Soter filed PCT/US 2018/000223 (“Soter’s PCT
`
`Application”) claiming priority to the ‘795 Application.
`
`38.
`
`Soter’s PCT Application discloses, among other things, a sensor system for
`
`detecting vaping and bullying including an air quality sensor configured to detect air quality, a
`
`sound detector configured to detect sounds and a network interface configured to transmit a signal
`
`indicating abnormality matching signature of vaping.
`
`39.
`
`40.
`
`Soter’s PCT Application published as WO 2019/035950 on February 21, 2019.
`
`On October 18, 2019, Soter filed U.S. Application No. 16/657,430 (“‘430
`
`Application”) entitled “System and Method for Identifying Vaping and Bullying,” which claims
`
`priority to the ‘795 Application.
`
`41.
`
`The ‘430 Application issued on June 30, 2020 as U.S. Patent No. 10,699,549
`
`containing thirty claims. See Exhibit A.
`
`42.
`
`43.
`
`The ‘549 Patent has been duly and properly assigned in its entirety to Soter.
`
`The ‘549 Patent is directed to identifying vaping based on detected air quality and
`
`identifying bullying based on detected sound.
`
`6
`
`
`
`Case 1:20-cv-02989 Document 1 Filed 07/06/20 Page 7 of 23 PageID #: 7
`
`44. When bullying and/or vaping are identified using Soter’s patented invention,
`
`warnings or alerts are transmitted without indication to the persons who are vaping or bullying at
`
`a site, so that such persons can be properly reported and supervised.
`
`45.
`
`Plaintiff’s FlySense device is shown below.
`
`46.
`
`Defendants’ infringing HALO Device is shown below:
`
`FIRST CAUSE OF ACTION
`PATENT INFRINGEMENT
`(35 U.S.C. § 271)
`
`47.
`
`Plaintiff re-alleges each and every allegation set forth in Paragraphs 1 through 46
`
`inclusive, and incorporate them by reference herein.
`
`7
`
`
`
`Case 1:20-cv-02989 Document 1 Filed 07/06/20 Page 8 of 23 PageID #: 8
`
`48.
`
`The manufacture, use, sale, offer for sale and/or importation of the HALO Device,
`
`infringes one or more claims of the ‘549 Patent, including but not limited to Claims 1, 6, 25 and
`
`27-30. Infringement of representative claim 1 is shown in the claim chart below, which includes
`
`citations to Exhibits B-G to this complaint.
`
`49.
`
`Defendants’ actions as alleged herein constitute
`
`infringement, directly,
`
`contributorily, and/or through inducement of one or more claims of the ‘549 Patent under 35
`
`U.S.C. §§ 271(a)-(c).
`
`50.
`
`The sensor system in the HALO Device comprises an air quality sensor configured
`
`to detect air quality, the air quality sensor including a combination of sensors configured to sense
`
`air quality; and a network interface configured to transmit a signal indicating abnormality matching
`
`signature of vaping, and a controller configured to identify vaping based on the detected air quality,
`
`wherein the vaping is identified when the detected air quality includes the abnormality matching
`
`signature.
`
`Claim Element
`
`1P A sensor system
`comprising:
`
`U.S. Patent No. 10,699,549
`Halo Product
`CLAIM 1
`The Halo Device is a “smart sensor.” It is “...a device on the
`network...” with “Network Specifications.”
`
`(HALO_A_5.2020 at *1 and *2)
`The Halo Device “can detect… air quality changes.”
`(HALO_General_11.27.19)
`
`1a
`
`an air quality
`sensor configured
`to detect air
`quality,
`
`8
`
`
`
`Case 1:20-cv-02989 Document 1 Filed 07/06/20 Page 9 of 23 PageID #: 9
`
`Claim Element
`
`U.S. Patent No. 10,699,549
`Halo Product
`CLAIM 1
`
`(HALO FAQ I IPVideo Corporation FAQ recent at *2)
`
`(HALO_A_5.2020 at *1)
`The Halo Device “can detect… air quality changes.”
`(HALO_General_11.27.19)
`
`The Halo Device “has a host of sensors to perform multiple
`detections, 12 sensors to be exact.”
`
`1b
`
`the air quality
`sensor including a
`combination of
`sensors
`configured to
`sense air quality;
`and
`
`9
`
`
`
`Case 1:20-cv-02989 Document 1 Filed 07/06/20 Page 10 of 23 PageID #: 10
`
`Claim Element
`
`U.S. Patent No. 10,699,549
`Halo Product
`CLAIM 1
`
`(HALO FAQ I IPVideo Corporation FAQ recent at *2)
`
`(HALO_A_5.2020 at *1)
`
`The Halo’s sensor board with the Plantower particle sensor is
`shown in the left photo below, and the photo on the right depicts
`environment and gas sensors also on the Halo’s sensor board.
`
`10
`
`
`
`Case 1:20-cv-02989 Document 1 Filed 07/06/20 Page 11 of 23 PageID #: 11
`
`Claim Element
`
`U.S. Patent No. 10,699,549
`Halo Product
`CLAIM 1
`
`Particle sensor
`
`Environment and gas
`sensors
`
`1c
`
`a network
`interface
`configured to
`transmit a signal
`indicating
`abnormality
`matching
`signature of
`vaping, and
`
`The Halo Device is “...a device on the network...” with “Network
`Specifications.”
`including RJ-45 (10/100 Base-T) network
`interface.
` (HALO_A_5.2020 at *1 and *2)
`
`The Halo Device “provides indications of VAPE… based on the
`presence of chemical signatures and particulates in the air.”
`“HALO detects environmental changes that occur… and as a
`device on the network, it sends email, text and security platform
`alerts to designated security personnel.”
`
`(HALO FAQ I IPVideo Corporation FAQ recent at *3)
`
`(HALO_A_5.2020 at *1)
`
`11
`
`
`
`Case 1:20-cv-02989 Document 1 Filed 07/06/20 Page 12 of 23 PageID #: 12
`
`Claim Element
`
`U.S. Patent No. 10,699,549
`Halo Product
`CLAIM 1
`In addition, the left photo below shows an RJ45 socket, on the
`processor board, providing a wired (using cables CAT5/5e/6)
`network interface. The processor board (Raspberry Pi) also
`provides a wireless network interface (Wi-Fi) shown in the photo
`on the right.
`
`802.11/b/g/n (Wi-Fi)
`network interface
`
`10/100 LAN port
`(RJ45) network
`interface
`
`1d
`
`a controller
`configured to
`identify vaping
`based on the
`detected air
`quality,
`
`The Halo Device “can detect… air quality changes such as
`vaping.”
`
`(HALO_A_5.2020 at *1)
`
`In addition, the left photo below shows the Halo’s processor board
`(Raspberry Pi 3B+) and the photo on the right shows the internal
`controller (Broadcom BCM2837) on the board.
`
`12
`
`
`
`Case 1:20-cv-02989 Document 1 Filed 07/06/20 Page 13 of 23 PageID #: 13
`
`Claim Element
`
`U.S. Patent No. 10,699,549
`Halo Product
`CLAIM 1
`
`Processor board
`
`Internal
`controller
`
`In The Halo Device, the event determination (e.g., vaping) is sent
`to an external controller or server (e.g., PC) residing on the network
`(e.g., Intranet or Internet) for end user access.
`Because indoor air quality is affected by pollutants (e.g., vaping)
`it is important to detect the concentration of such pollutants and
`identify when their concentration is above a certain threshold
`(i.e., “abnormality matching signature”).
`
`The Halo Device “can detect… air quality changes such as
`vaping.” The Halo Device “provides indications of VAPE… based
`on the presence of chemical signatures and particulates in the air.”
`
`1e wherein the
`vaping is
`identified when
`the detected air
`quality includes
`the abnormality
`matching
`signature.
`
`(HALO_A_5.2020 at *1)
`
`(HALO FAQ I IPVideo Corporation FAQ recent at *3)
`
`13
`
`
`
`Case 1:20-cv-02989 Document 1 Filed 07/06/20 Page 14 of 23 PageID #: 14
`
`51.
`
`The HALO Device contains air quality sensors for identifying vaping at a site,
`
`including an environment sensor configured to detect temperature and humidity. The HALO
`
`Device further contains a network interface configured to transmit a signal indicating abnormality
`
`matching a signature of vaping, wherein the vaping is identified when the detected air quality
`
`includes a signature, as it can send event notifications to a central security system.
`
`U.S. Patent No. 10,699,549
`Halo Product
`CLAIM 25
`The Halo Device is a “smart sensor.” It is “...a device on the
`network...” with “Network Specifications.”
`
`Claim Element
`
`25P A sensor system
`for identifying
`vaping at a site,
`the sensor system
`comprising:
`
`(HALO_A_5.2020 at *1 and *2)
`
`(HALO_A_General_11.5.19 at *1)
`The Halo Device “can detect… air quality changes.”
`
`25a
`
`an air quality
`sensor configured
`to detect air
`quality; and
`
`(HALO_A_5.2020 at *1)
`
`(HALO_A_General_11.5.19 at *1)
`
`14
`
`
`
`Case 1:20-cv-02989 Document 1 Filed 07/06/20 Page 15 of 23 PageID #: 15
`
`Claim Element
`
`U.S. Patent No. 10,699,549
`Halo Product
`CLAIM 25
`The photo below on the left shows the Halo’s sensor board with
`the Plantower particle sensor, and the photo on the right shows the
`environment and gas sensors also on the sensor board. The particle
`sensor and the gas sensor (e.g., measuring TVOC and CO2) are air
`quality sensors.
`
`Particle sensor
`
`Environment and gas
`sensors
`
`25b
`
`a network
`interface
`configured to
`transmit a signal
`indicating
`abnormality
`matching
`signature of
`vaping,
`
`The Halo Device is “...a device on the network...” with “Network
`Specifications.”
`including RJ-45 (10/100 Base-T) network
`interface.
`
` (HALO_A_5.2020 at *1 and *2)
`
`Because indoor air quality is affected by pollutants (e.g., vaping) it
`is important to detect the concentration of such pollutants and
`identify when their concentration is above a certain threshold (i.e.,
`“abnormality matching signature”).
`
`The Halo Device “provides indications of VAPE… based on the
`presence of chemical signatures and particulates in the air.”
`“HALO detects environmental changes that occur… and as a
`device on the network, it sends email, text and security platform
`alerts to designated security personnel.”
`
`15
`
`
`
`Case 1:20-cv-02989 Document 1 Filed 07/06/20 Page 16 of 23 PageID #: 16
`
`Claim Element
`
`U.S. Patent No. 10,699,549
`Halo Product
`CLAIM 25
`
`(HALO FAQ I IPVideo Corporation FAQ recent at *3)
`
`(HALO_A_5.2020 at *1)
`
`(HALO_General_11.27.19 at *1)
`
`The photo on the left below shows an RJ45 socket, on the processor
`board, providing a wired (using cables CAT5/5e/6) network
`interface. The processor board (Raspberry Pi) also provides a
`wireless network interface (Wi-Fi) shown in the photo on the right.
`
`802.11/b/g/n (Wi-Fi)
`network interface
`
`10/100 LAN port
`(RJ45) network
`interface
`
`25c wherein the
`vaping is
`identified when
`the detected air
`
`The Halo Device “can detect… air quality changes such as
`vaping.” The Halo Device “provides indications of VAPE… based
`on the presence of chemical signatures and particulates in the air.”
`
`16
`
`
`
`Case 1:20-cv-02989 Document 1 Filed 07/06/20 Page 17 of 23 PageID #: 17
`
`Claim Element
`
`quality includes a
`signature.
`
`U.S. Patent No. 10,699,549
`Halo Product
`CLAIM 25
`
`(HALO_A_5.2020 at *1)
`
`(HALO FAQ I IPVideo Corporation FAQ recent at *3)
`
`(HALO_General_11.27.19 at *1)
`
`52.
`
`Defendants are directly infringing at least Claims 1, 6, 25 and 27-30 of the ‘549
`
`Patent by making, using, selling, offering for sale and/or importing the HALO Device in the United
`
`States including within this judicial district, in violation of 35 U.S.C. § 271(a).
`
`53.
`
`Since the issuance of the ‘549 Patent, upon information and belief, Defendants
`
`continue to offer the HALO Device for sale, including to the Uniondale School District in this
`
`district and the Bound Brook High School in the District of New Jersey.
`
`54.
`
`Upon information and belief, Defendants know of the ‘549 Patent and that their
`
`manufacture, use, sale, offers for sale and or importation of the HALO Device infringes at least
`
`one claim of the ‘549 Patent, including but not limited to Claims 1, 6, 25 and 27-30.
`
`55.
`
`Upon information and belief, Defendants have entered into service contracts with
`
`their customers, and through these service contracts Defendants are enabling and facilitating their
`
`17
`
`
`
`Case 1:20-cv-02989 Document 1 Filed 07/06/20 Page 18 of 23 PageID #: 18
`
`customers’ use of the HALO Device. As a result, Defendants intend to induce the infringement
`
`of at least one claim of the ‘549 Patent, including but not limited to Claims 1, 6, 25 and 27-30.
`
`56.
`
`Defendants have been and are actively inducing infringement of at least one claim
`
`of the ‘549 Patent, including but not limited to Claims 1, 6, 25 and 27-30, by actively and
`
`knowingly inducing others to use the HALO Device, including school districts in the State of New
`
`York, in violation of 35 U.S.C. § 271(b).
`
`57.
`
`Upon information and belief, Defendants intend to continue to actively induce the
`
`infringement of at least on claim of the ‘549 Patent, including but not limited to Claims 1, 6, 25
`
`and 27-30, by actively and knowingly inducing others to make, use, sell, offer for sale and/or
`
`import the HALO Device.
`
`58.
`
`Defendants have been and are contributing to the infringement of at least one claim
`
`of the ‘549 Patent, including but not limited to Claims 1, 6, 25 and 27-30, by selling or offering to
`
`sell the HALO Device knowing it to be especially made for or adapted for practicing the invention
`
`of the ‘549 Patent and not a staple article or commodity of commerce suitable for substantial non-
`
`infringing use, in violation of 35 U.S.C. § 271(c).
`
`59.
`
`Defendants’ infringement has been, and continues to be knowing, intentional and
`
`willful.
`
`60.
`
`At all relevant times, Defendants knew their actions constituted infringement of the
`
`‘549 Patent and acted in reckless disregard thereof.
`
`61.
`
`Since Defendants’ infringement has continued despite receipt of actual notice of
`
`the ‘549 Patent on July 1, 2020, their infringement is willful under 35 U.S.C. § 284.
`
`62.
`
`This case is exceptional and, therefore, Plaintiff is entitled to an award of attorneys’
`
`fees pursuant to 35 U.S.C. § 285.
`
`18
`
`
`
`Case 1:20-cv-02989 Document 1 Filed 07/06/20 Page 19 of 23 PageID #: 19
`
`63.
`
`64.
`
`Plaintiff has sustained injury and damage caused by Defendants’ conduct.
`
`Plaintiff has suffered, and will continue to suffer, irreparable harm from
`
`Defendants’ acts and conduct complained of herein, unless restrained by law.
`
`65.
`
`Plaintiff is entitled to attorney fees, prejudgment interest, damages, including lost
`
`profits and, where applicable, a reasonable royalty, and a preliminary and permanent injunction
`
`against further infringement of the ‘549 Patent.
`
`SECOND CAUSE OF ACTION
`DECLARATORY JUDGMENT OF PATENT INFRINGEMENT
`28 U.S.C. §§ 2201 and 2202
`
`66.
`
`Plaintiff re-alleges each and every allegation set forth in Paragraphs 1 through 65
`
`inclusive, and incorporate them by reference herein.
`
`67.
`
`There is an actual case or controversy such that the Court may entertain Plaintiff’s
`
`request for declaratory relief consistent with Article III of the United States Constitution, and this
`
`actual case or controversy requires a declaration of rights by this Court.
`
`68.
`
`Prior to and continuously up to the issuance of the ‘549 Patent, Defendants
`
`manufactured, sold, offered for sale, used, enabled the use of, supplied and/or imported the HALO
`
`Device.
`
`69.
`
`These acts by Defendants would have infringed at least one claim of the ‘549
`
`Patent, including but not limited to Claims 1, 6, 25 and 27-30, induced the infringement of at least
`
`one claim of the ‘549 Patent, including but not limited to Claims 1, 6, 25 and 27-30 and contributed
`
`to the infringement of at least one claim of the ‘549 Patent, including but not limited to Claims 1,
`
`6, 25 and 27-30, had they occurred on or after June 30, 2020.
`
`19
`
`
`
`Case 1:20-cv-02989 Document 1 Filed 07/06/20 Page 20 of 23 PageID #: 20
`
`70.
`
`Upon information and belief, since the issuance of the ‘549 Patent, Defendants
`
`intend to continue these acts of infringement of at least one claim of the ‘549 Patent, including but
`
`not limited to Claims 1, 6, 25 and 27-30, and thus continued infringement is imminent.
`
`71.
`
`Defendants have made, and will continue to make, substantial preparation in the
`
`United States to manufacture, use, offer to sell, sell and/or import Defendants’ HALO Device
`
`before the expiration date of the ’549 Patent.
`
`72.
`
`Upon information and belief, any commercial manufacture, use, offer for sale, sale,
`
`and/or importation of Defendants’ HALO Device will directly infringe, contributorily infringe
`
`and/or induce infringement of at least one claim of the ’549 Patent, including but not limited to
`
`Claims 1,6, 25 and 27-30.
`
`73.
`
`Plaintiffs are entitled to a declaratory judgment that future commercial
`
`manufacture, use, offer for sale, sale, and/or importation of Defendants’ HALO Device will
`
`constitute infringement of at least one claim of the ’549 Patent, including but not limited to Claims
`
`1, 6, 25 and 27-30.
`
`74.
`
`Since at least July 1, 2020, (i) Defendants have had actual knowledge of the ‘549
`
`Patent and that the manufacture, sale, offers to sell and use of the HALO Device infringes at least
`
`one claim of the ‘549 Patent, including but not limited to Claims 1, 6, 25 and 27-30, that (ii)
`
`Defendants intend to cause infringement of at least one claim of the ‘549 Patent, including but not
`
`limited to Claims 1, 6, 25 and 27-30 and (iii) Defendants are inducing customers to infringe at
`
`least one claim of the ‘549 Patent, including but not limited to Claims 1, 6, 25 and 27-30 or are
`
`supplying a material component of the patented invention to cause infringement of at least one
`
`claim of the ‘549 Patent, including but not limited to Claims 1, 6, 25 and 27-30.
`
`20
`
`
`
`Case 1:20-cv-02989 Document 1 Filed 07/06/20 Page 21 of 23 PageID #: 21
`
`75.
`
`Upon information and belief, Defendants intend to continue actively inducing the
`
`infringement of at least one claim of the ‘549 Patent, including but not limited to Claims 1, 6, 25
`
`and 27-30, by actively and knowingly inducing others to make, use, sell, offer for sale and/or
`
`import the HALO Device, in violation of 35 U.S.C. § 271(b).
`
`76.
`
`Defendants have been and are contributing to the infringement of at least one claim
`
`of the ‘549 Patent, including but not limited to Claims 1, 6, 25 and 27-30, by selling or offering to
`
`sell the HALO Device knowing it to be especially made for or adapted for practicing the invention
`
`of the ‘549 Patent and not a staple article or commodity of commerce suitable for substantial non-
`
`infringing use, in violation of 35 U.S.C. § 271(c).
`
`77.
`
`78.
`
`Plaintiff has sustained injury and damage caused by Defendants’ conduct.
`
`Plaintiff has suffered, and will continue to suffer, irreparable harm from
`
`Defendants’ acts and conduct complained of herein, unless restrained by law.
`
`79.
`
`Plaintiff is entitled to judgment that the continued manufacture, use, sale, offer for
`
`sale and/or importation of the HALO Device will infringe the ‘549 Patent and a preliminary and
`
`permanent injunction against any infringement of the ‘549 Patent.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiff Soter Technologies LLC prays for the following relief:
`
`A.
`
`A judgment that Defendants have directly infringed, actively induced and
`
`contributed to infringement of U.S. Patent No. 10,699,549, including but not limited to Claims 1,
`
`6, 25 and 27-30 thereof;
`
`B.
`
`A judgment that Defendants’ continued manufacture, use, sale, offer for
`
`sale or importation of the HALO Device will directly infringe, actively induce and contribute to
`
`21
`
`
`
`Case 1:20-cv-02989 Document 1 Filed 07/06/20 Page 22 of 23 PageID #: 22
`
`infringement of U.S. Patent No. 10,699,549, including but not limited to Claims 1, 6, 25 and 27-
`
`30 thereof;
`
`C.
`
`D.
`
`A judgment that such infringement was willful;
`
`A judgment that this case is exceptional under 35 U.S.C. § 285 and that
`
`Soter Technologies be awarded all its litigation expenses, including without limitation, its
`
`reasonable attorneys’ fees;
`
`E.
`
`A preliminary and permanent injunction enjoining Defendants and all of
`
`their agents, representatives, affiliates and related companies from:
`
`(1) Offering for sale and selling the HALO Device and any other product that
`
`infringes Plaintiff’s U.S. Patent No. 10,699,549;
`
`(2) Making, importing, marketing, using, soliciting, or distributing the HALO
`
`Device and any other product that infringes Plaintiff’s ‘549 Patent;
`
`(3) Updating, servicing or replacing any HALO Devices already installed at
`
`customer locations including but not limited to schools;
`
`(4) Exhibiting the HALO Device at any trade shows;
`
`(5) Inducing, encouraging, contributing to, and/or assisting, aiding or abetting
`
`another to exhibit the HALO Device at any trade shows;
`
`(6) Inducing, encouraging, contributing to, and/or assisting, aiding or abetting
`
`another in offering for sale, sale, making, importing, marketing, use,
`
`solicitation, or distribution of the HALO Device;
`
`(7) Inducing, encouraging, contributing to, and/or assisting, aiding or abetting
`
`another in the updating, servicing or replacement of HALO Devices already
`
`installed at customer location including but not limited to schools; or
`
`22
`
`
`
`Case 1:20-cv-02989 Document 1 Filed 07/06/20 Page 23 of 23 PageID #: 23
`
`(8) Effecting any assignments or transfers, forming new entities or using any
`
`other device for the purpose of circumventing the prohibitions contained in
`
`subparagraphs (1) through (7).
`
`F.
`
`Actual damages to be proven at trial, including but not limited to
`
`compensatory damages for patent infringement;
`
`G.
`
`H.
`
`I.
`
`J.
`
`K.
`
`An award of treble damages and attorneys’ fees under 35 U.S.C. § 285;
`
`Consequential, special, treble, exemplary and punitive damages;
`
`Attorneys’ fees, expenses, and costs;
`
`Prejudgment and Post-judgment interest; and
`
`Such other and further relief as the Court deems just and reasonable.
`
`JURY DEMAND
`
`In accordance with Federal Rule of Civil Procedure 38(b), Plaintiff Soter Technologies
`
`LLC hereby demands a trial by jury on all issues so triable.
`
`Dated: July 6, 2020
`
`/s/ Wendy R. Stein
`
`
`
`Wendy R. Stein
`GIBBONS P.C.
`1 Pennsylvania Plaza, 37th Floor
`New York, NY 10119
`
`Christopher H. Strate
`Thomas J. Bean
`Christine A. Gaddis
`GIBBONS P.C.
`One Gateway Center
`Newark, NJ 07102
`
`Attorneys for Plaintiff
`Soter Technologies LLC
`
`23
`
`
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