Case 1:22-cv-06437-ER Document 1 Filed 07/28/22 Page 1 of 8
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF NEW YORK
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`HEALTH TRACKER SYSTEMS LLC,
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`Plaintiff,
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`v.
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`MICHAEL KORS (USA), INC.
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`Defendant.
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` Case No. 22-cv-06437
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`DEMAND FOR JURY TRIAL
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`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`1.
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`Health Tracker Systems LLC (“Health Tracker” or “Plaintiff”), by and through its
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`counsel, hereby brings this action for patent infringement against Michael Kors (USA), Inc.
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`(“Michael Kors” or “Defendant”), alleging infringement of the following validly issued patent (the
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`“Patent-in-Suit”): U.S. Patent No. 6,582,380 titled “Systems and methods for embedding
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`commercial information into broadcast media” (the “’380 Patent”), attached hereto as Exhibit A.
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`NATURE OF THE ACTION
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`2.
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`This is an action for patent infringement arising under the United States Patent Act
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`35 U.S.C. §§ 1 et seq., including 35 U.S.C. § 271.
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`PARTIES
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`3.
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`Plaintiff Health Tracker Systems LLC is a limited liability company organized
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`pursuant to the provisions of the Delaware Limited Liability Company Act, Title 6 Del. C. §§ 18-
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`101 et seq., as amended from time to time (the "Act"), with a registered office at 251 Little Falls
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`Drive, Wilmington, DE 19808 and may be served via its registered agent, Corporation Service
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`Company, 251 Little Falls Drive, Wilmington, DE 19808.
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`4.
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`Upon information and belief, Defendant Michael Kors (USA), Inc. is a Delaware
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`corporation with its principal place of business at 11 West 42nd Street, New York, New York,
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`10036. Michael Kors may be served via its registered agent, C T Corporation System, 28 Liberty
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`St., New York, NY 10005.
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`JURISDICTION AND VENUE
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`5.
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`This lawsuit is a civil action for patent infringement arising under the patent laws
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`of the United States, 35 U.S.C. § 101 et seq. The Court has subject-matter jurisdiction pursuant to
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`28 U.S.C. §§ 1331, 1332, 1338(a), and 1367.
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`6.
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`The Court has personal jurisdiction over Defendant for the following reasons: (1)
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`Defendant is present within or has minimum contacts within the State of New York and the
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`Southern District of New York; (2) Defendant has purposefully availed itself of the privileges of
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`conducting business in the State of New York and in this district; (3) Defendant has sought
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`protection and benefit from the laws of the State of New York; (4) Defendant regularly conducts
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`business within the State of New York and within this district, and Plaintiff’s cause of action arises
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`directly from Defendant’s business contacts and other activities in the State of New York and in
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`this district; and (5) Defendant has purposely availed itself of the privileges and benefits of the
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`laws of the State of New York.
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`7.
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`Defendant, directly and/or through intermediaries, ships, distributes, uses, offers
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`for sale, sells, and/or advertises products and services in the United States, the State of New York,
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`and the Southern District of New York including but not limited to the products which contain the
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`infringing elements as detailed below. Upon information and belief, Defendant has committed
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`patent infringement in the State of New York and in this district; Defendant solicits and has
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`solicited customers in the State of New York and in this district; and Defendant has paying
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`customers who are residents of the State of New York and this district and who each use and have
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`used the Defendant’s products and services in the State of New York and in this district.
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`8.
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`Venue is proper in the Southern District of New York pursuant to 28 U.S.C. §§
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`1400(b). Defendant maintains a regular and established place of business in this district, has
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`transacted business in this district, and has directly and/or indirectly committed acts of patent
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`infringement in this district. For example, Defendant maintains a regular and established place of
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`business at 11 West 42nd Street, New York, New York, 10036.
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`PATENT-IN-SUIT
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`9.
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`Plaintiff incorporates the above paragraphs herein by reference.
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`10. On June 24, 2003, United States Patent No. 6,582,380 titled “System and method
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`of monitoring and modifying human activity-based behavior” was duly and legally issued by the
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`United States Patent and Trademark Office. The ’380 Patent is presumed valid and enforceable.
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`11.
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`12.
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`The ’380 Patent expired on January 24, 2020.
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`Plaintiff is the assignee of all right, title and interest in the ’380 Patent, including
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`all rights to enforce and prosecute actions for infringement and to collect damages for all relevant
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`times against infringers of the ’380 Patent.
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`13.
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`The ’380 Patent includes claims directed towards monitoring the activity level of
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`one or more individuals and modifying the behavior of those individuals based on feedback from
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`the activity level monitoring is disclosed. See Ex. A at 1:13-17.
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`14.
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`The inventions disclosed in the Patent-in-Suit were not well-understood, routine, or
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`conventional. At the time the ’380 Patent was filed, Attention Deficit Hyperactivity Disorder was
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`the most commonly diagnosed behavior disorder in children and was commonly treated with
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`psychostimulant medications. See Ex. A at 1:20-26. However, there was a dearth of safety
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`information regarding the long-term effects of psychostimulant usage in children. See Ex. A at
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`1:27-28. Moreover, negative side effects resulting from psychostimulant usage as well as parental
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`concern regarding long-term medication of children led to exploration alternative treatments for
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`ADHD. See Ex. A at 1:29-33.
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`15. As a result, methods were explored involving behavioral modification through
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`feedback and operant conditioning. See Ex. A at 1:34-37. For instance, a device was developed
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`which measured the activity of a hyperactive child and provided feedback through a set of
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`headphones. See Ex. A at 1:40-42. However, headphones are not only bulky but also conspicuous,
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`potentially stigmatizing the wearing of such a device and preventing the wearer from maintaining
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`privacy. See Ex. A at 1:61-67. Moreover, the device only measured when a hyperactivity threshold
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`was crossed but did not measure the intensity of the hyperactivity. See Ex. A at 2:10-13. Finally,
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`since the child only received alarms when the threshold was exceeded, the child did not have access
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`to cumulative totals and therefore the average activity level over the course of the day. See Ex. A
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`at 2:13-17.
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`16.
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`The Patent-in-Suit addressed these technical challenges by, for example, teaching
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`an invention that monitors the intensity of the physical activity of the wearer as well as variations
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`in those activity levels over a given period of time and which can be implemented in a device much
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`less conspicuous than headphones. See Ex. A at 3:28-44; 5:49.
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`17.
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`The claims of the ’380 Patent do not merely recite the performance of a familiar
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`business practice with a requirement to perform it on the Internet. Instead, the claims recite one or
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`more inventive concepts that are rooted in improving the efficiency of activity monitors while
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`reducing their size.
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`18. Moreover, the inventions taught in the ’380 Patent, which are rooted in improving
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`the efficiency of activity monitors while reducing their size, cannot be performed with pen and
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`paper or in the human mind. Additionally, because the ’380 Patent teaches a mechanism to improve
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`the efficiency of activity monitors while reducing their size, the solutions it teaches are not merely
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`drawn to longstanding human activities.
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`ACCUSED PRODUCTS
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`19. Defendant makes, uses, offers for sale and sells in the U.S. products, systems,
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`and/or services that infringe the Patent-in-Suit, including, but not limited to the Michael Kors
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`Access Gen 5E MKGO (the “Accused Products” or “Accused Instrumentality”). The Michael Kors
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`Access Gen 5E MKGO is a smartwatch that can be worn by the user to track activities like steps,
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`exercise, and heart rate. The smartwatch incorporates sensors which can differentiate various
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`activity levels performed by a user, such as running, walking, and sleeping. The user can view the
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`activity progress via the smartwatch’s UI and/or the Michael Kors Access mobile app.
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`COUNT I
`(Infringement of U.S. Patent No. 6,582,380)
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`Plaintiff incorporates the above paragraphs herein by reference.
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`The ’380 Patent is valid, enforceable, and was duly and legally issued by the United
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`20.
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`21.
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`States Patent and Trademark Office (“USPTO”) on June 24, 2003. The ’380 Patent is presumed
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`valid and enforceable. See 35 U.S.C. § 282.
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`22.
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`Plaintiff is the owner by assignment of the ’380 Patent and possesses all rights of
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`recovery under the ’380 Patent, including the exclusive right enforce the ’380 Patent and pursue
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`lawsuits against infringers.
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`23. Upon information and belief, to the extent any marking was required by 35 U.S.C.
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`§ 287 with regard to the ’380 Patent, Plaintiff has complied with such requirements.
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`24. Without a license or permission from Plaintiff, Defendant has infringed one or more
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`claims of the ’380 Patent by importing, making, using, offering for sale, and/or selling products
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`and devices that embody the patented inventions, including, without limitation, one or more of the
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`patented ’380 systems and methods, in violation of 35 U.S.C. § 271.
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`Direct Infringement – 35 U.S.C. § 271(a)
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`25.
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`Plaintiff incorporates the above paragraphs herein by reference, the same as if set
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`forth herein.
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`26. Without a license or permission from Plaintiff, Defendant has infringed one or more
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`claims of the ’380 Patent by importing, making, using, offering for sale, or selling products and
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`devices that embody the patented inventions, including, without limitation, one or more of the
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`patented ’380 systems and methods, in violation of 35 U.S.C. § 271.
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`27. Defendant has directly infringed by, among other things, practicing all of the steps
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`of the ’380 Patent by, for example, internal testing, quality assurance, research and development,
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`and troubleshooting. See, e.g., Waymark Corp. v. Porta Sys. Corp., 245 F.3d 1364, 1366 (Fed. Cir.
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`2001) (noting that “testing is a use of the invention that may infringe under § 271(a)”).
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`28. By way of example, Defendant has infringed at least one or more claims of the ’380
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`Patent, including at least Claim 58. Attached hereto as Exhibit B is an exemplary claim chart
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`detailing representative infringement of Claim 58 of the ’380 Patent.
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`Plaintiff Suffered Damages
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`29. Defendant’s acts of infringement of the Patents-in-Suit have caused damage to
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`Plaintiff, and Plaintiff is entitled to recover from Defendant the damages sustained as a result of
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`Defendant’s wrongful acts in an amount subject to proof at trial pursuant to 35 U.S.C. § 271. The
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`precise amount of damages will be determined through discovery in this litigation and proven at
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`trial.
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`REQUEST FOR RELIEF
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`30.
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`Plaintiff incorporates each of the allegations in the paragraphs above and
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`respectfully asks the Court to:
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`(a)
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`enter a judgment that Defendant has directly infringed, contributorily infringed,
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`and/or induced infringement of one or more claims of each of the ’380 Patent;
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`(b)
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`enter a judgment awarding Plaintiff all damages adequate to compensate it for
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`Defendant’s infringement of, direct or contributory, or inducement to infringe, the
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`including all pre-judgment and post-judgment interest at the maximum rate permitted by
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`law;
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`(c)
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`enter a judgment awarding treble damages pursuant to 35 U.S.C. § 284 for
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`Defendant’s willful infringement of the ’380 Patent;
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`(d)
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`enter a judgment requiring Defendant to pay the costs of this action, including all
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`disbursements, and attorneys’ fees as provided by 35 U.S.C. § 285, together with
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`prejudgment interest; and
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`(e)
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`award Plaintiff all other relief that the Court may deem just and proper.
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`Dated: July 28, 2022
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`Respectfully submitted,
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`By: /s/
`Nicholas Loaknauth
`SDNY Bar No. NL0880
`LOAKNAUTH LAW, P.C.
`1460 Broadway
`New York, New York 10036
`Tel: (212) 641-0745
`Fax: (718) 301-1247
`Email: nick@loaknauthlaw.com
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`
`Kirk J. Anderson (CA SBN 289043)
`(pro hac vice forthcoming)
`kanderson@budolaw.com
`BUDO LAW P.C.
`5610 Ward Rd., Suite #300
`Arvada, CO 80002
`(720) 225-9440 (Phone)
`(720) 225-9331 (Fax)
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`Attorneys for Plaintiff Health Tracker Systems
`LLC
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