`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF NEW YORK
`
`
`
`
`DIGIMEDIA TECH, LLC,
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`
`
`
`
`Plaintiff,
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`
`
`v.
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` CIVIL ACTION
`
` NO. 1:20-cv-7573
`
`
` Jury Trial Demanded
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`ELITE BRANDS INC.,
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`
`
`
`Defendant.
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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 laws of
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`the State of Georgia, having its principal office at 44 Milton Ave., Suite 254, Alpharetta, GA
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`30009.
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`2.
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`Defendant Elite Brands Inc. (“Defendant”) 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 40 Wall Street, 61st
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`Floor, New York, New York 10005. Defendant maintains a regular and established place of
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`business in this judicial district at 40 Wall Street, 61st Floor, New York, New York 10005.
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`JURISDICTION AND VENUE
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`3.
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`This Court has exclusive subject matter jurisdiction over this case pursuant to 28
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`U.S.C. §§ 1331 and 1338(a) on the grounds that this action arises under the Patent Laws of the
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`United States, 35 U.S.C. § 1 et seq., including, without limitation, 35 U.S.C. §§ 271, 281, 284,
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`and 285.
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`
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`Case 1:20-cv-07573-VSB Document 1 Filed 09/15/20 Page 2 of 9
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`4.
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`This Court has personal jurisdiction over Defendant because Defendant has
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`minimum contacts with the State of New York, and has purposefully availed itself of the
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`privileges of conducting business in the State of New York. For example, on information and
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`belief, Defendant has sold or offered to sell infringing products in the State of New York and in
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`this Judicial District, or has manufactured accused products and provided them to intermediaries
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`for distribution throughout the country, including in the State of New York and this Judicial
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`District, with knowledge of this distribution.
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`5.
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`Venue is proper in this Court as to Defendant pursuant to 28 U.S.C. § 1391, and
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`28 U.S.C. § 1400(b) on the grounds that Defendant has committed acts of infringement in and
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`maintains a regular and established place of business in this Judicial District.
`
`The ’635 Patent
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`FACTUAL BACKGROUND
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`6.
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`Plaintiff is the owner by assignment of all right, title, and interest in and to United
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`States Patent No. 6,914,635, entitled “Microminiature Zoom System for Digital Camera” (“the
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`’635 patent”), including the right to sue for all past, present, and future infringement, which
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`assignment was duly recorded in the United States Patent and Trademark Office (“USPTO”).
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`7.
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`A true and correct copy of the ’635 patent is attached hereto as Exhibit A. The
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`ʼ635 patent is incorporated herein by reference.
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`8.
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`9.
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`USPTO.
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`10.
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`11.
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`The application that became the ’635 patent was filed on February 8, 2001.
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`The ’635 patent issued on July 5, 2005, after a full and fair examination by the
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`The ’635 patent is valid and enforceable and directed to eligible subject matter.
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`The elements recited in the asserted claims of the ’635 patent were not well-
`
`understood, routine, or conventional when the application that became the ʼ635 patent was filed.
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`2
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`Case 1:20-cv-07573-VSB Document 1 Filed 09/15/20 Page 3 of 9
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`12.
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`The claims of the ’635 patent are directed to technical solutions to the technical
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`problem of providing zoom, autofocus, and other features to increasingly compact digital
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`cameras. Other features the claimed invention enables include such things as anti-shake and
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`image stabilization. The ’635 patent discloses and claims technical solutions to providing such
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`features in increasingly compact digital cameras through, for example, a micro-
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`electromechanical system support mechanism with at least two positions of movement. The
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`claims of the ’635 patent thus allow features like zoom, autofocus, anti-shake, and image
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`stabilization to be provided even in increasingly compact digital cameras. The inventions
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`claimed in the ’635 patent therefore provide technical solutions to this technical problem, are not
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`abstract, and claim patentable subject matter.
`
`
`The ’706 Patent
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`13.
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`Plaintiff is the owner by assignment of all right, title, and interest in and to United
`
`States Patent No. 6,545,706, entitled “System, Method and Article of Manufacture for Tracking a
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`Head of a Camera-Generated Image of a Person” (“the ’706 patent”), including the right to sue
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`for all past, present, and future infringement, which assignment was duly recorded in the
`
`USPTO.
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`14.
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`A true and correct copy of the ’706 patent is attached hereto as Exhibit B. The
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`ʼ706 patent is incorporated herein by reference.
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`The application that became the ’706 patent was filed on July 30, 1999.
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`The ’706 patent issued on April 8, 2008, after a full and fair examination by the
`
`15.
`
`16.
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`USPTO.
`
`17.
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`The ’706 patent is valid and enforceable and directed to eligible subject matter.
`
`3
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`
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`Case 1:20-cv-07573-VSB Document 1 Filed 09/15/20 Page 4 of 9
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`18.
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`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.
`
`19.
`
`The claims of the ’706 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 ’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 subject in an image, no single technique is foolproof. Thus, the ’706
`
`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
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`any particular technique may be fooled by or rendered inapplicable by particular circumstances
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`(e.g., lighting conditions, orientation of the subject to the camera, etc.). The inventions claimed
`
`in the ’706 patent therefore provide technical solutions to this technical problem, are not abstract,
`
`and claim patentable subject matter.
`
`
`The ’476 Patent
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`20.
`
`Plaintiff is the owner by assignment of all right, title, and interest in and to United
`
`States Patent No. 7,715,476, entitled “System, Method and Article of Manufacture for Tracking a
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`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 assignment was duly recorded in the
`
`USPTO.
`
`21.
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`A true and correct copy of the ’476 patent is attached hereto as Exhibit C. The
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`ʼ635 patent is incorporated herein by reference.
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`4
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`Case 1:20-cv-07573-VSB Document 1 Filed 09/15/20 Page 5 of 9
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`22.
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`23.
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`The application that became the ’476 patent was filed on April 21, 2005.
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`The ʼ476 patent claims priority to the application that became the ’706 patent,
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`filed on July 30, 1999.
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`24.
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`The ’476 patent issued on May 11, 2010, after a full and fair examination by the
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`USPTO.
`
`25.
`
`26.
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`The ’476 patent is valid and enforceable and directed to eligible subject matter.
`
`The elements recited in the asserted claims of the ’476 patent were not well-
`
`understood, routine, or conventional when the application that became the ʼ476 patent was filed.
`
`27.
`
`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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`28.
`
`Plaintiff realleges and incorporates by reference the allegations set forth above, as
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`if set forth verbatim herein.
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`5
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`Case 1:20-cv-07573-VSB Document 1 Filed 09/15/20 Page 6 of 9
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`29.
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`Defendant has been and is now making, using, selling, offering for sale, and/or
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`importing products that incorporate one or more of the inventions claimed in the ʼ635 patent.
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`30.
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`For example, Defendant infringes at least claim 1 of the ʼ635 patent, either
`
`literally or under the doctrine of equivalents, in connection with Defendant’s Bell+Howell
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`B35HDz and Minolta MN35Z products as detailed in the preliminary claim charts attached
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`hereto as Exhibits D and E and incorporated herein by reference.
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`31.
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`Defendant’s infringing activities are and have been without authority or license
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`under the ’635 patent.
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`32.
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`Plaintiff has been, and continues to be, damaged by Defendant’s infringement of
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`the ʼ635 patent, and Plaintiff is entitled to recover damages for Defendant’s infringement, which
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`damages cannot be less than a reasonable royalty.
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`33.
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`Prior to filing this action, Plaintiff specifically notified Defendant in writing of
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`their infringement of the ’635 patent.
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`34.
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`Defendant has continued to infringe the ’635 patent despite receiving this notice
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`and having actual knowledge of the ’635 patent at least since receiving such notice, and
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`Defendant’s infringement has therefore been willful.
`
`35.
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`Based at least on Defendant’s 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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`36.
`
`Plaintiff realleges and incorporates by reference the allegations set forth above, as
`
`if set forth verbatim herein.
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`37.
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`Defendant has been and is 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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`6
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`
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`Case 1:20-cv-07573-VSB Document 1 Filed 09/15/20 Page 7 of 9
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`38.
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`For example, Defendant infringes at least claim 19 of the ʼ706 patent, either
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`literally or under the doctrine of equivalents, in connection with Defendant’s Bell+Howell
`
`B35HDz and Konica Minolta MN35Z products, as detailed in the preliminary claim charts
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`attached hereto as Exhibit F and G incorporated herein by reference.
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`39.
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`Defendant’s infringing activities are and have been without authority or license
`
`under the ʼ706 patent.
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`40.
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`Plaintiff has been, and continues to be, damaged by Defendant’s infringement of
`
`the ʼ706 patent, and Plaintiff is entitled to recover damages for Defendant’s infringement, which
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`damages cannot be less than a reasonable royalty.
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`41.
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`Prior to filing this action, Plaintiff specifically notified Defendant in writing of
`
`their infringement of the ʼ706 patent.
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`42.
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`Defendant has continued to infringe the ʼ706 patent despite receiving this notice
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`and having actual knowledge of the ʼ706 patent at least since receiving such notice, and
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`Defendant’s infringement has therefore been willful.
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`43.
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`Based at least on Defendant’s 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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`44.
`
`Plaintiff realleges and incorporates by reference the allegations set forth above, as
`
`if set forth verbatim herein.
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`45.
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`Defendant has been and is now making, using, selling, offering for sale, and/or
`
`importing products that incorporate one or more of the inventions claimed in the ʼ476 patent.
`
`46.
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`For example, Defendant infringes at least claim 21, 22, and 23 of the ʼ476 patent,
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`either literally or under the doctrine of equivalents, in connection with Defendant’s Bell+Howell
`
`7
`
`
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`Case 1:20-cv-07573-VSB Document 1 Filed 09/15/20 Page 8 of 9
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`S30HDZ and Konica Minolta MN35Z products, as detailed in the preliminary claim charts
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`attached hereto as Exhibit H and I and incorporated herein by reference.
`
`47.
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`Defendant’s infringing activities are and have been without authority or license
`
`under the ʼ476 patent.
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`48.
`
`Plaintiff has been, and continues to be, damaged by Defendant’s infringement of
`
`the ʼ476 patent, and Plaintiff is entitled to recover damages for Defendant’s infringement, which
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`damages cannot be less than a reasonable royalty.
`
`49.
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`Prior to filing this action, Plaintiff specifically notified Defendant in writing of
`
`their infringement of the ʼ476 patent.
`
`50.
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`Defendant has 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
`
`Defendant’s infringement has therefore been willful.
`
`51.
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`Based at least on Defendant’s 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 Defendant, 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 Defendant has infringed one or more claims of the ʼ635
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`patent, and that this infringement has been willful,
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`B.
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`Entry of judgment that Defendant has infringed one or more claims of the ʼ706
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`patent, and that this infringement has been willful,
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`8
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`Case 1:20-cv-07573-VSB Document 1 Filed 09/15/20 Page 9 of 9
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`C.
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`Entry of judgment that Defendant has infringed one or more claims of the ʼ476
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`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 Defendant’s infringement,
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`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 awarded all of
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`its costs, expenses, and attorney’s fees incurred in connection with this action,
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`Pre-judgment and post-judgment interest on the damages assessed, and
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`Such other and further relief, both at law and in equity, to which Plaintiff may be
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`F.
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`G.
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`entitled and which the Court deems just and proper.
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`This 15th day of September, 2020.
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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
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`9
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