`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF NEW YORK
`
`
`
`
`DIGIMEDIA TECH, LLC,
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`
`
`
`
`Plaintiff,
`
`
`
`v.
`
` CIVIL ACTION
`
` NO. 2:20-cv-2640
`
`
` Jury Trial Demanded
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`NIKON INC., and NIKON AMERICAS INC.,
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`
`
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`Defendants.
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`
`
`
`
`
`COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff DigiMedia Tech, LLC (“Plaintiff”) files this Complaint for Patent Infringement
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`against Defendant, and states as follows:
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`THE PARTIES
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`1.
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`Plaintiff is a limited liability company organized and existing under the
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`laws of the State of Georgia, having its principal office at 44 Milton Ave., Suite 254,
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`Alpharetta, GA 30009.
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`2.
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`Defendant Nikon Inc. (“Nikon”) is a corporation organized and existing
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`under the laws of the State of New York, with a principal office located at 1300 Walt
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`Whitman Rd., Melville, NY 11747, which is in this judicial district.
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`3.
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`Defendant Nikon Americas Inc. (“Nikon Americas”) is a corporation
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`organized and existing under the laws of the State of Delaware, with a principal office
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`located at 1300 Walt Whitman Rd., Melville, NY 11747, which is in this judicial
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`district.
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`
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`Case 2:20-cv-02640-NGG-SIL Document 1 Filed 06/14/20 Page 2 of 11 PageID #: 2
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`JURISDICTION AND VENUE
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`4.
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`This Court has exclusive subject matter jurisdiction over this case pursuant
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`to 28 U.S.C. §§ 1331 and 1338(a) on the grounds that this action arises under the Patent
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`Laws of the United States, 35 U.S.C. § 1 et seq., including, without limitation, 35
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`U.S.C. §§ 271, 281, 284, and 285.
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`5.
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`This Court has personal jurisdiction over Defendants because Defendants
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`have minimum contacts with the State of New York and have purposefully availed
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`themselves of the privileges of conducting business in the State of New York. For
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`example, on information and belief, Defendants have sold or offered to sell infringing
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`products in the State of New York and in this Judicial District, or have manufactured
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`accused products and provided them to intermediaries for distribution throughout the
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`country, including in the State of New York and this Judicial District, with knowledge
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`of this distribution.
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`6.
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`Venue is proper in this Court as to Defendants pursuant to 28 U.S.C.
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`§ 1391, and 28 U.S.C. § 1400(b) on the grounds that Defendants have committed acts of
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`infringement in and maintain a regular and established place of business in this Judicial
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`District.
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`The ’635 Patent
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`FACTUAL BACKGROUND
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`7.
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`Plaintiff is the owner by assignment of all right, title, and interest in and to
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`United States Patent No. 6,914,635, entitled “Microminiature Zoom System for Digital
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`Camera” (“the ’635 patent”), including the right to sue for all past, present, and future
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`infringement, which assignment was duly recorded in the United States Patent and
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`Trademark Office (“USPTO”).
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`2
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`Case 2:20-cv-02640-NGG-SIL Document 1 Filed 06/14/20 Page 3 of 11 PageID #: 3
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`8.
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`A true and correct copy of the ’635 patent is attached hereto as Exhibit A.
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`The ʼ635 patent is incorporated herein by reference.
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`9.
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`The application that became the ’635 patent was filed on February 8,
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`2001.
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`10. The ’635 patent issued on July 5, 2005, after a full and fair examination by
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`the USPTO.
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`11. The ’635 patent is valid and enforceable and directed to eligible subject
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`matter.
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`12. The elements recited in the asserted claims of the ’635 patent were not
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`well-understood, routine, or conventional when the application that became the ʼ635
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`patent was filed.
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`13. The claims of the ’635 patent are directed to technical solutions to the
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`technical problem of providing zoom, autofocus, and other features to increasingly
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`compact digital cameras. Other features the claimed invention enables include such
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`things as anti-shake and image stabilization. The ’635 patent discloses and claims
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`technical solutions to providing such features in increasingly compact digital cameras
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`through, for example, a micro-electromechanical system support mechanism with at
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`least two positions of movement. The claims of the ’635 patent thus allow features like
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`zoom, autofocus, anti-shake, and image stabilization to be provided even in increasingly
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`compact digital cameras. The inventions claimed in the ’635 patent therefore provide
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`technical solutions to this technical problem, are not abstract, and claim patentable
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`subject matter.
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`
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`3
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`
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`Case 2:20-cv-02640-NGG-SIL Document 1 Filed 06/14/20 Page 4 of 11 PageID #: 4
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`The ’706 Patent
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`14.
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`Plaintiff is the owner by assignment of all right, title, and interest in and to
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`United States Patent No. 6,545,706, entitled “System, Method and Article of
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`Manufacture for Tracking a Head of a Camera-Generated Image of a Person” (“the ’706
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`patent”), including the right to sue for all past, present, and future infringement, which
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`assignment was duly recorded in the USPTO.
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`15. A true and correct copy of the ’706 patent is attached hereto as Exhibit B.
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`The ʼ706 patent is incorporated herein by reference.
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`16. The application that became the ’706 patent was filed on July 30, 1999.
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`17. The ’706 patent issued on April 8, 2008, after a full and fair examination
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`by the USPTO.
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`18. The ’706 patent is valid and enforceable and directed to eligible subject
`
`matter.
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`19. The elements recited in the asserted claims of the ’706 patent were not
`
`well-understood, routine, or conventional when the application that became the ʼ706
`
`patent was filed.
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`20. The claims of the ’706 patent are directed to technical solutions to the
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`technical problem of how to identify a head in an image. One of various reasons this is
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`important is to assist in focusing a digital camera. Since many camera users are not
`
`trained in how to properly focus a camera, and because many photographs are candid
`
`shots of moving subjects, the problem calls for technical solutions. The ’706 patent
`
`discloses and claims such technical solutions. For example, the ’706 patent recognized
`
`that while a number of different techniques could be used to identify a head portion of a
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`4
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`
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`Case 2:20-cv-02640-NGG-SIL Document 1 Filed 06/14/20 Page 5 of 11 PageID #: 5
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`subject in an image, no single technique is foolproof. Thus, the ’706 patent discloses
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`applying at least two techniques to identify a head portion and basing the detection of
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`heads on the results of the two techniques. This approach overcomes a problem that any
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`particular technique may be fooled by or rendered inapplicable by particular
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`circumstances (e.g., lighting conditions, orientation of the subject to the camera, etc.).
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`The inventions claimed in the ’706 patent therefore provide technical solutions to this
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`technical problem, are not abstract, and claim patentable subject matter.
`
`
`The ’476 Patent
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`21.
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`Plaintiff is the owner by assignment of all right, title, and interest in and to
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`United States Patent No. 7,715,476, entitled “System, Method and Article of
`
`Manufacture for Tracking a Head of a Camera-Generated Image of a Person” (“the ’476
`
`patent”), including the right to sue for all past, present, and future infringement, which
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`assignment was duly recorded in the USPTO.
`
`22. A true and correct copy of the ’476 patent is attached hereto as Exhibit C.
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`The ʼ635 patent is incorporated herein by reference.
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`23. The application that became the ’476 patent was filed on April 21, 2005.
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`24. The ʼ476 patent claims priority to the application that became the ’706
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`patent, filed on July 30, 1999.
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`25. The ’476 patent issued on May 11, 2010, after a full and fair examination
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`by the USPTO.
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`26. The ’476 patent is valid and enforceable and directed to eligible subject
`
`matter.
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`5
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`Case 2:20-cv-02640-NGG-SIL Document 1 Filed 06/14/20 Page 6 of 11 PageID #: 6
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`27. The elements recited in the asserted claims of the ’476 patent were not
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`well-understood, routine, or conventional when the application that became the ʼ476
`
`patent was filed.
`
`28. The claims of the ’476 patent are directed to technical solutions to the
`
`technical problem of how to identify a head in an image. One of various reasons this is
`
`important is to assist in focusing a digital camera. Since many camera users are not
`
`trained in how to properly focus a camera, and because many photographs are candid
`
`shots of moving subjects, the problem calls for technical solutions. The ’476 patent
`
`discloses and claims such technical solutions. For example, the ’476 patent recognized
`
`that while a number of different techniques could be used to identify a head portion of a
`
`subject in an image, no single technique is foolproof. Thus, the ’476 patent discloses
`
`applying at least two techniques to identify a head portion and basing the detection of
`
`heads on the results of the two techniques. This approach overcomes a problem that any
`
`particular technique may be fooled by or rendered inapplicable by particular
`
`circumstances (e.g., lighting conditions, orientation of the subject to the camera, etc.).
`
`The inventions claimed in the ’476 patent therefore provide technical solutions to this
`
`technical problem, are not abstract, and claim patentable subject matter.
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`COUNT I – INFRINGEMENT OF THE ʼ635 PATENT
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`29.
`
`Plaintiff realleges and incorporates by reference the allegations set forth
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`above, as if set forth verbatim herein.
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`30. Defendants have been and are now making, using, selling, offering for
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`sale, and/or importing products that incorporate one or more of the inventions claimed
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`in the ʼ635 patent.
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`6
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`Case 2:20-cv-02640-NGG-SIL Document 1 Filed 06/14/20 Page 7 of 11 PageID #: 7
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`31.
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`For example, Defendants infringe at least claim 1 of the ʼ635 patent, either
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`literally or under the doctrine of equivalents, in connection with at least Defendants’
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`Nikon CoolPix A1000 and similar products as detailed in the preliminary claim chart
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`attached hereto as Exhibit D and incorporated herein by reference.
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`32. Defendants’ infringing activities are and have been without authority or
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`license under the ’635 patent.
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`33.
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`Plaintiff has been, and continues to be, damaged by Defendants’
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`infringement of the ʼ635 patent, and Plaintiff is entitled to recover damages for
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`Defendants’ infringement, which damages cannot be less than a reasonable royalty.
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`34.
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`Prior to filing this action, Plaintiff specifically notified Defendants in writing of
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`their infringement of the ’635 patent.
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`35.
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`Defendants have continued to infringe the ’635 patent despite receiving this
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`notice and having actual knowledge of the ’635 patent at least since receiving such notice, and
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`Defendants’ infringement has therefore been willful.
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`36.
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`Based at least on Defendants’ willful infringement, this case should be declared
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`exceptional, and Plaintiff should be awarded its costs, attorney’s fees, and both pre- and post-
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`judgment interest.
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`COUNT II – INFRINGEMENT OF THE ʼ706 PATENT
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`37.
`
`Plaintiff realleges and incorporates by reference the allegations set forth
`
`above, as if set forth verbatim herein.
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`38. Defendants have been and are now making, using, selling, offering for
`
`sale, and/or importing products that incorporate one or more of the inventions claimed
`
`in the ʼ706 patent.
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`7
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`Case 2:20-cv-02640-NGG-SIL Document 1 Filed 06/14/20 Page 8 of 11 PageID #: 8
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`39.
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`For example, Defendants infringe at least claim 19 of the ʼ706 patent,
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`either literally or under the doctrine of equivalents, in connection with Defendants’
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`Nikon P900RM and similar products, as detailed in the preliminary claim chart attached
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`hereto as Exhibit E and incorporated herein by reference.
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`40. Defendants’ infringing activities are and have been without authority or
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`license under the ʼ706 patent.
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`41.
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`Plaintiff has been, and continues to be, damaged by Defendants’
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`infringement of the ʼ706 patent, and Plaintiff is entitled to recover damages for
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`Defendants’ infringement, which damages cannot be less than a reasonable royalty.
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`42.
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`Prior to filing this action, Plaintiff specifically notified Defendants in writing of
`
`their infringement of the ʼ706 patent.
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`43.
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`Defendants have continued to infringe the ʼ706 patent despite receiving this
`
`notice and having actual knowledge of the ʼ706 patent at least since receiving such notice, and
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`Defendants’ infringement has therefore been willful.
`
`44.
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`Based at least on Defendants’ willful infringement, this case should be declared
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`exceptional, and Plaintiff should be awarded its costs, attorney’s fees, and both pre- and post-
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`judgment interest.
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`COUNT III – INFRINGEMENT OF THE ʼ476 PATENT
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`45.
`
`Plaintiff realleges and incorporates by reference the allegations set forth
`
`above, as if set forth verbatim herein.
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`46. Defendants have been and are now making, using, selling, offering for
`
`sale, and/or importing products that incorporate one or more of the inventions claimed
`
`in the ʼ476 patent.
`
`8
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`Case 2:20-cv-02640-NGG-SIL Document 1 Filed 06/14/20 Page 9 of 11 PageID #: 9
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`47.
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`For example, Defendants infringe at least claims 21, 22, and 23 of the ʼ476
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`patent, either literally or under the doctrine of equivalents, in connection with
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`Defendants’ Nikon P900RM and similar products, as detailed in the preliminary claim
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`chart attached hereto as Exhibit F and incorporated herein by reference.
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`48. Defendants’ infringing activities are and have been without authority or
`
`license under the ʼ476 patent.
`
`49.
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`Plaintiff has been, and continues to be, damaged by Defendants’
`
`infringement of the ʼ476 patent, and Plaintiff is entitled to recover damages for
`
`Defendants’ infringement, which damages cannot be less than a reasonable royalty.
`
`50.
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`Prior to filing this action, Plaintiff specifically notified Defendants in writing of
`
`their infringement of the ʼ476 patent.
`
`51.
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`Defendants have continued to infringe the ʼ476 patent despite receiving this
`
`notice and having actual knowledge of the ʼ476 patent at least since receiving such notice, and
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`Defendants’ infringement has therefore been willful.
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`52.
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`Based at least on Defendants’ willful infringement, this case should be declared
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`exceptional, and Plaintiff should be awarded its costs, attorney’s fees, and both pre- and post-
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`judgment interest.
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`JURY DEMAND
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`Plaintiff demands a trial by jury of all issues so triable.
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`PRAYER FOR RELIEF
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`
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`Plaintiff respectfully requests that the Court find in its favor and against Defendants, and
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`that the Court grant Plaintiff the following relief:
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`A.
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`Entry of judgment that Defendants have infringed one or more claims of
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`the ʼ635 patent, and that this infringement has been willful,
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`9
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`Case 2:20-cv-02640-NGG-SIL Document 1 Filed 06/14/20 Page 10 of 11 PageID #: 10
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`B.
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`Entry of judgment that Defendants have infringed one or more claims of
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`the ʼ706 patent, and that this infringement has been willful,
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`C.
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`Entry of judgment that Defendants have infringed one or more claims of
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`the ʼ476 patent, and that this infringement has been willful,
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`D.
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`Damages in an amount to be determined at trial for Defendants’
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`infringement, which amount cannot be less than a reasonable royalty,
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`E.
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`Entry of judgment that this case is exceptional, and that Plaintiff be
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`awarded all of its costs, expenses, and attorney’s fees incurred in
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`connection with this action,
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`F.
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`G.
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`Pre-judgment and post-judgment interest on the damages assessed,
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`Entry of a permanent injunction against future infringement of the asserted
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`patents for their remaining life, and
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`H.
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`Such other and further relief, both at law and in equity, to which Plaintiff
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`may be entitled and which the Court deems just and proper.
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`
`
`This 14th day of June, 2020.
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`10
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`Case 2:20-cv-02640-NGG-SIL Document 1 Filed 06/14/20 Page 11 of 11 PageID #: 11
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`
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`
`
`/s/Daniel A. Kent
`Daniel A. Kent
` dankent@kentrisley.com
`Tel: (404) 585-4214
`Fax: (404) 829-2412
`Stephen R. Risley
`steverisley@kentrisley.com
`Tel: (404) 585-2101
`Fax: (404) 389-9402
`Cortney S. Alexander
`cortneyalexander@kentrisley.com
`Tel: (404) 855-3867
`Fax: (770) 462-3299
`KENT & RISLEY LLC
`5755 N Point Pkwy Ste 57
`Alpharetta, GA 30022
`
`Attorneys for Plaintiff
`
`
`
`11
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`