Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 1 of 25 Page ID #:293
`ase 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 1 of 25 Page ID #:293
`
`)—k
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`\OOO\]O\U1-L\-UJN
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`OO\IO\U‘IJ>UJ[\Jt—‘O\OOO\IO\KJIJ>WNHO
`
`
`
`Tyson K. Hottinger (California State Bar No. 253221)
`E—mail:
`thottinger@wnlaw.com
`David R. Wright (Utah State Bar No. 5164; Admitted Pro Hac Vice)
`E-mail: dwright@wnlaw.com
`Gregory E. Jolley (Utah State Bar No. 11686; Admitted Pro Hac Vice)
`E-mail: gjolley@wnlaw.com
`WORKMAN [ NYDEGGER A PROFESSIONAL CORPORATION
`20 Pacifica, Suite 1130
`& 60 E. South Temple, Suite 1000
`Irvine, California 92618
`Salt Lake City, Utah 84111
`Telephone: (949) 242-1900
`Telephone: (801) 533—9800
`Facsimile:
`(949) 453—1104
`Facsimile:
`(801) 328-1707
`
`Attorneys for Plaintiff, Shared Medical Resources, LLC
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`Case No.: SACV12-612 DOC (RNBX)
`
`SHARED MEDICAL RESOURCES
`
`LLC’S NOTICE OF CDX
`
`LABORATORIES LLC’S
`
`BANKRUPTCY PROCEEDING
`
`SPLARED MEDICAL RESOURCES, LLC,
`a Delaware limited liability company,
`
`V.
`
`Plaintiff,
`
`HISTOLOGICS, LLC, a Nevada limited
`liability company; BR SURGICAL, LLC, a
`Florida limited liability company; NEAL
`M. LONKY, MD, an individual; MARTIN
`
`LONKY, an individual; KENNETH
`
`FRANK, MD, an individual; ANDREW
`
`BURG, MD, an individual; MARC
`
`WINTER, MD, an individual; RAMON M.
`CESTERO, MD, an individual;
`CATHERINE HAN, MD, an individual;
`ANN MARIE RAFFO, MD, an individual;
`and STEVEN VASILEV, MD, an
`individual ,
`
`Defendants.
`
`
`
`Exhibit 1031
`
`PLAINTIFF’S NOTICE OEBANKRUPTCY PROCEEDING
`
` Histologics, LLC
`
`
`
`1
`
`

`

`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 2 of 25 Page ID #:294
`ase 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 2 of 25 Page ID #:294
`
`NOTICE IS HEREBY GIVEN that CDX Laboratories, Inc. (“CDX”), the co-owner
`
`of US. Patent No. 6,258,044 (“the ’044 patent”), which is the subject of the above
`
`captioned patent infringement action (“Action”),
`
`is currently party to an involuntary
`
`bankruptcy proceeding pending in the United States Bankruptcy Court for the Southern
`
`District of New York, Case No. 7:11-bk-24314. Plaintiff Shared Medical Resources LLC
`
`(“SMR”) commenced this Action on April 19, 2012. Defendant Histologics, LLC has
`
`filed a Motion to Dismiss, which has been fully briefed, claiming that the Complaint
`
`should be dismissed for,
`
`inter alia,
`
`lack of standing.
`
`(See Docket No. 13.)
`
`SMR
`
`maintains that it has constitutional standing and will cure its prudential standing by
`
`adding its co-owner to the lawsuit.
`
`(See Docket No. 22.) A ruling by the Court on the
`
`pending motion(s) may be seen by the Bankruptcy Court in New York as an act to
`
`exercise dominion or control over an asset of the CDX estate, and thus a violation of the
`
`automatic stay.
`
`SMR intended to file with this Court a Motion pursuant to Federal Rule of Civil
`
`Procedure 19(a) seeking to join CDX as a necessary party to this action. However, upon
`
`receiving notice that CDx and its interest in the ’044 patent are subject to the automatic
`
`stay of the aforementioned bankruptcy proceeding, SMR respectfully notifies this Court
`
`of the bankruptcy proceeding and the automatic stay.
`
`Additionally, SMR intended to file a First Amended Complaint pursuant to its
`
`statutory right under Rule 15 of the Federal Rules of Civil Procedure. The deadline to
`
`file an amended complaint as a matter of right under Rule 15 is today, August 31, 2012.
`
`Out of an abundance of caution to not violate the bankruptcy stay, SMR will not file its
`
`First Amended Complaint, but has attached it to this notice as Exhibit A (excluding
`
`1
`
`exhibits).
`
`Finally, SMR had prepared the Reply in Support of SMR’s Motion to Extend Time
`
`Pursuant to Fed. R. Civ. P. 4(m), which it intended to file on Tuesday, September 4,
`
`2012. Again, to avoid violating the automatic stay, SMR will refrain from filing this
`
`PLAINTIFF’S NOTICE OE BANKRUPTCY PROCEEDING
`
`
`
`xoooqcnmhwmpd
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`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 3 of 25 Page ID #:295
`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 3 of 25 Page ID #:295
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`document but out of an abundance of caution attaches it hereto as Exhibit B (excluding
`
`exhibits).
`
`DATED: August 31, 2012
`
`©00\]O\Ul-I>UJN
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`Tyson K. Hottinger
`David R. Wright
`Gregory E. Jolley
`WORKMAN | NYDEGGER, APC
`
`By:
`
`/s/ Tyson K. Hottinger
`Tyson K. Hottinger
`Attorneys for Plaintiff
`SHARED MEDICAL RESOURCES, LLC
`
`2
`
`
`
`PLAINTIFF’S NOTICE OE BANKRUPTCY PROCEEDING
`
`3
`
`

`

`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 4 of 25 Page ID #:296
`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 4 of 25 Page ID #:296
`
`Case 8:12-cv-00612—DOC—RNB Document 33 Filed 08/31/12 Page 4 of 25 Page ID #:296Case 8:12-cv-00612—DOC—RNB Document 33 Filed 08/31/12 Page 4 of 25 Page ID #:296
`
`
`
`
`
`EXHIBIT AEXHIBIT AEXHIBIT A
`
`
`
`
`
`444
`
`
`
`EXHIBIT AEXHIBIT AEXHIBIT A
`
`
`PAGE 3PAGE 3PAGE 3
`
`4
`
`

`

`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 5 of 25 Page ID #:297
`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 5 of 25 Page ID #:297
`
`Tyson K. Hottinger (California State Bar No. 253221)
`E-mail:
`thottinger@wnlaw.com
`David R. Wright (Utah State Bar No. 5164; Admitted Pro Hac Vice)
`E—mail: dwright@wnlaw.com
`Gregory E. Jolley (Utah State Bar No. 11686; Admitted Pro Hac Vice)
`E-mail: gjolley@wnlaw.com
`WORKMAN [ NYDEGGER A PROFESSIONAL CORPORATION
`20 Pacifica, Suite 1130
`& 60 E. South Temple, Suite 1000
`Irvine, California 92618
`Salt Lake City, Utah 84111
`Telephone: (949) 242-1900
`Telephone: (801) 533-9800
`Facsimile:
`(949) 453-1104
`Facsimile:
`(801) 328—1707
`
`Attorneys for Plaintiff, Shared Medical Resources, LLC
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`
`
`
`Case No.: SACV12-612 DOC (RNBx)
`
`FIRST AMENDED COMPLAINT
`
`FOR PATENT INFRINGEMENT
`
`[Demand For Jury Trial]
`
`Hon. David O. Carter
`
`
`
`SHARED MEDICAL RESOURCES, LLC,
`a Delaware limited liability company,
`
`V.
`
`Plaintiff,
`
`HISTOLOGICS, LLC, a Nevada limited
`liability company; BR SURGICAL, LLC, a
`Florida limited liability company; NEAL
`M. LONKY, MD, an individual; MARTIN
`
`LONKY, an individual; KENNETH
`
`FRANK, MD, an individual; ANDREW
`
`BURG, MD, an individual; MARC
`
`WINTER, MD, an individual; RAMON M.
`
`CESTERO, MD, an individual;
`
`CATHERINE HAN, MD, an individual;
`
`ANN MARIE RAFFO, MD, an individual;
`and STEVEN VASILEV, MD, an
`individual; HISTOLOGICS, LLC, a
`Delaware limited liability company;
`MATTISON PATHOLOGY, LLP, a Texas
`limited liability partnership,
`
`Defendants.
`
`EXHIBIT A
`
`PAGE L1
`FIRST AMENDED COMPLAITIT FOR PATENT INFRINGEMENT
`
`
`
`\OWQONMAWNH
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`5
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`

`

`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 6 of 25 Page ID #:298
`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 6 of 25 Page ID #:298
`l
`
`Plaintiff Shared Medical Resources, LLC (“SMR”) hereby complains against
`
`defendants Histologics, LLC a Nevada limited liability company (“Histologics NV”),
`
`Histologics, LLC a Delaware limited liability company (“Histologics DE”), BR Surgical,
`
`LLC a Florida limited liability company (“BR Surgical”), Mattison Pathology, LLP d/b/a
`
`Avero Diagnostics d/b/a/ Avero Dx, a Texas limited liability partnership (“Avero”), Neal
`
`M. Lonky, M.D., Martin Lonky, Kenneth Frank, M.D. (“Frank”), Andrew Burg, M.D.
`
`(“Burg”), Ramon M. Cestero, M.D. (“Cestero”), and Steven Vasilev, M.D. (“Vasilev”)
`
`(collectively “Defendants”) and alleges as follows:
`
`THE PARTIES
`
`l.
`
`SMR is a limited liability company duly organized and existing under the
`
`
`
`laws of the State of Delaware, with its principal place of business at 190 Newport Center
`. Drive, Suite 100, Newport Beach, CA 92660. SMR is also registered with the California
`
`
`
`
`
`\DOOQONUI-lfiUJNr—A
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`NNNNNNNNNHr—Ar—r—ar—y—tl—KHHH
`
`OONONM-wat—‘OKOOONQU‘I-RWNt—‘O
`
`
`
`
`Secretary of State to do business in the State of California.
`
`2.
`
`SMR alleges upon information and belief that Histologics NV is a limited
`
`I liability company duly organized and existing under the laws ofthe State of Nevada, with
`a principal place of business in Henderson, Nevada.
`
`3.
`
`SMR alleges upon information and belief that Histologics DE is a limited
`
`liability company duly organized and existing under the laws of the State of Delaware,
`
`with a principal place of business at 20505 Yorba Linda Blvd., Suite 119, Yorba Linda,
`
`CA 92886.
`
`4.
`
`SMR alleges upon information and beliefthat BR Surgical is a limited
`
`liability company duly organized and existing under the laws of the State of Florida, with
`
`its principal place of business at 3500 Beachwood Court, Suite 107, Jacksonville, FL
`
`32224.
`
`i
`
`5.
`
`SMR alleges on information and belief that Avero is a limited liability
`
`partnership duly organized and existing under the laws of the State of Texas, with a
`
`principle place of business at 410 N. Utica Avenue, Lubbock, TX 79416.
`
`
`1
`PAGE
`FIRST AMENDED COMPLAgNT FOR PATENT INFRI—NGEMENT
`
`—#l
`
`EXHIBIT
`
`6
`
`

`

`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 7 of 25 Page ID #:299
`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 7 of 25 Page ID #:299
`
`6.
`
`SMR alleges upon information and belief that Neal Lonky is a resident of
`
`the State of California, is the Founder and a managing member of Histologics, and
`
`practices as a physician at 1188 North Euclid Street, Anaheim, CA 92801.
`
`7.
`
`SMR alleges upon information and belief that Martin Lonky is a resident of
`
`the State of California and is a managing member of Histologics, which has its principal
`
`place of business at 20505 Yorba Linda Blvd., Suite 119, Yorba Linda, CA 92886.
`
`8.
`
`SMR alleges upon information and belief that Frank is a resident of the State
`
`of California and is the President and CEO of Histologics, which has its principal place of
`
`business at 20505 Yorba Linda Blvd., Suite 119, Yorba Linda, CA 92886.
`
`9.
`
`SMR alleges upon information and belief that Burg is a resident of the State
`
`of California and practices medicine at 1050 Linden Avenue, Long Beach, CA 90813.
`
`10.
`
`SMR alleges upon information and belief that Cestero is a resident of the
`
`State of California and practices medicine at 400 North Pepper Avenue, Colton, CA
`
`92324.
`
`11.
`
`SMR alleges upon information and belief that Vasilev is a resident of the
`
`State of California and practices medicine at 4733 West Sunset Boulevard, Los Angeles,
`
`CA 90027.
`
`JURISDICTION AND VENUE
`
`
`
`2
`
`12.
`
`This is a civil action by SMR for patent infringement arising under the
`
`patent laws of the United States, including 35 U.S.C. § 271, which gives rise to the
`
`remedies specified under 35 U.S.C. §§ 281, 283, 284, and 285.
`
`13.
`
`This court has original jurisdiction over the subject matter of this action
`
`pursuant to 28 U.S.C. § 1331 and 28 U.S.C. § 1338(a).
`
`14.
`
`SMR further alleges on information and belief that Defendants have used,
`
`made, sold, offered to sell, and/or imported infringing goods within the State of
`
`California, including Los Angeles and Orange Counties. These actions by Defendants
`
`relate to and, in part, give rise to the claims asserted herein by SMR, and have resulted in
`
`injury to SMR.
`
`FIRST AMENDED COMPLAI7NT FOR PATENT INFRINGEMENT
`
`EXHIBIT [any
`PAGE
`£9
`
`\OOO\]O\U14>UJ[\)1—-n
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`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 8 of 25 Page ID #:300
`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 8 of 25 Page ID #:300
`
`p...‘
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`
`
`
`15.
`
`SMR alleges on information and belief that Histologics DE has a principal
`
`place of business in Orange County.
`
`16.
`
`SMR alleges on information and belief that Histologics NV has principals
`
`that reside in Orange County.
`
`17.
`
`SMR alleges on information and belief that BR Surgical has a sales
`
`representative assigned to and stationed in Orange County.
`
`18.
`
`SMR alleges on information and belief that Avero has a sales representative
`
`assigned to and covering Orange County.
`
`19.
`
`SMR alleges on information and belief that Neal Lonky is a resident of
`
`and/or works in Orange County.
`
`20.
`
`SMR alleges upon information and belief that Martin Lonky is a resident of
`
`and/or works in Orange County.
`
`21.
`
`SMR alleges upon information and belief that Frank is a resident of and/or
`
`works in Orange County.
`
`22.
`
`SMR alleges upon information and belief that Burg is a resident of and/or
`
`works in Orange County.
`
`23.
`
`SMR alleges upon information and belief that Cestero is a resident of and/or
`
`works in San Bernardino County.
`
`24.
`
`SMR alleges upon information and belief that Vasilev is a resident of and/or
`
`works in Los Angeles County.
`
`25.
`
`SMR alleges on information and belief that Defendants use, advertise,
`
`market, and/or sell infringing products within the State of California.
`
`26.
`
`This Court’s exercise of personal jurisdiction over Defendants is consistent
`
`with the Constitutions of the United States and the State of California.
`
`27.
`
`Pursuant to 28 U.S.C. § 1391(c), Defendants are deemed to reside in this
`
`judicial district for purposes of venue.
`
`28. Venue is proper in this judicial district pursuant to, at least, 28 U.S.C. §
`
`1391(b) and 28 U.S.C. § 1400(b).
`
`
`3
`
`
`
`FIRST AMENDED COMPLAéNT FOR PATENT INFRINGEMENT
`
`EXHIBIT A
`PAGE ”7
`
`8
`
`

`

`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 9 of 25 Page ID #:301
`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 9 of 25 Page ID #:301
`
`FACTUAL BACKGROUND
`
`29.
`
`SMR manufactures and sells the SpiraBrush CX (“SpiraBrush”), which is a
`
`disposable cervical biopsy device.
`
`30.
`
`The SpiraBrush has been approved by the Federal Drug Administration
`
`(“FDA”) and is covered by United States Patent No. 6,258,044 (“the ’044 Patent”).
`
`31.
`
`The ’044 patent is entitled “Apparatus and Method for Obtaining
`
`Transepithelial Specimen of a Body Surface Using a Non-Lacerating Technique.”
`
`32.
`
`The purported inventors of the ’044 patent are Neal M. Lonky and Jeremy
`
`James Michael Papadopoulos.
`
`33.
`
`The ’044 patent was filed as a provisional application on July 23, 1998 and
`
`issued on July 10, 2001.
`
`34.
`
`35.
`
`A copy of the ’044 patent is attached hereto as Exhibit A.
`
`SMR is owner by assignment of an undivided interest in the ’044 Patent.
`
`36.
`
`CDx Laboratories, Inc. (“CDx”) or Goldstein Family Partnership, L.P.
`
`(“Goldstein”) also owns an undivided interest in the ’044 patent.
`
`37. Upon information and belief, Neal Lonky, one of the defendants in this
`
`action, is a co—inventor of the ’044 patent, and an owner of Histologics DE and
`
`Histologics NV.
`
`QOOQONM-PWNH
`
`NNNNNNNNNl—‘Hb—‘k—Ih—‘D—‘l—‘D—KHI—e
`
`mflmm-PWNHOOOOQQUl-bWNt—‘O
`
`
`
`
`38. Upon information and belief, Neal Lonky knew of the ’044 patent
`
`application’s existence on the date of its filing.
`
`39. Upon information and belief, Neal Lonky assigned his interest in the ’044
`
`patent to Oralscan Laboratories, Inc. (“Oralscan”) on July 23, 1999. (See Assignment of
`
`7/23/99, attached hereto as Exhibit B.)
`
`40. Upon information and belief, Neal Lonky knew of the ’044 patent
`
`application when he assigned it to Oralscan. (See id.)
`
`41. As an inventor of the ’044 patent, Neal Lonky had a duty to disclose to the
`
`United States Patent and Trademark Office (“USPTO”) all material prior art of which he
`
`was aware prior to issuance of the ’044 patent.
`
`4
`
`FIRST AMENDED COMPLABVT FOR PATENT INFRINGEMENT
`
`EXHIBIT A
`PAGE 3"
`
`
`
`9
`
`

`

`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 10 of 25 Page ID #:302
`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 10 of 25 Page ID #:302
`
`\DOO\IO\Ul-I>~UJI\)
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`42. Upon information and belief, Neal Lonky and his brother Martin Lonky co-
`
`founded Trylon Corporation (“Trylon”).
`
`43. Upon information and belief, Trylon acquired all right, title, and interest to
`
`the ’044 patent by assignment on January 19, 2001 from Oralscan. (See Assignment of
`
`1/19/01 attached hereto as Exhibit C.)
`
`44.
`
`As assignee of all right, title, and interest in and to the ’044 patent, Trylon
`
`had a duty to disclose to the USPTO all material prior art of which it was aware prior to
`
`issuance of the ’044 patent.
`
`45. Upon information and belief, Martin Lonky was the CEO of Trylon.
`
`46.
`
`In 2003 Tryon acquired a loan from Pacific Republic Capital, LLC (“PRC”)
`
`and secured the loan with collateral, including the ’044 patent (“Loan and Security
`
`Agreements”). (See Assignment documents of 3/18/06, attached hereto as Exhibit D.)
`
`47.
`
`As part of the 2003 Loan and Security Agreements, Marin Lonky as CEO
`
`for Trylon, represented that he and Trylon were unaware of any act, event, or condition
`
`that could have a materially adverse effect on the value of the ’044 patent.
`
`48.
`
`Specifically, the Loan and Security Agreements define a “material adverse
`
`change” to mean: “an event act condition or change which had, has or could have a
`
`material adverse effect on .
`
`.
`
`. the value of the Collateral.”
`
`49.
`
`Furthermore, the Loan and Security Agreements state that: “[Trylon] has no
`
`knowledge of any fact that .
`
`.
`
`. could result in a Material Adverse Change.”
`
`50.
`
`In addition, the Loan and Security Agreements state that: “To the extent the
`
`Collateral consists of accounts, chattel paper, or general intangibles the Collateral is
`
`enforceable in accordance with its terms is genuine and complies with applicable laws
`
`concerning form content and manner of preparation and execution, and all persons
`
`appearing to be obligated on the Collateral have authority and capacity to contract and are
`
`in fact obligated as they appear to be on the Collateral.”
`
`51.
`
`In 2005, SMR acquired all rights, title, and interest in and to, among other
`
`things, PRC’s Loan and Security Agreements with Trylon. (See Id.)
`
`5
`FIRST AMENDED COMPLA116\IT FOR PATENT INFRINGEMENT
`
`
`
`_ EXHIBIT A
`PAGE Oi
`
`10
`
`

`

`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 11 of 25 Page ID #:303
`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 11 of 25 Page ID #:303
`
`52.
`
`SMR acquired all right, title, and interest in and to the Loan and Security
`
`Agreements based, in part, on the representations and warranties made by Martin Lonky
`
`and Trylon to PRC.
`
`\OOO\]O\U1-l>b~)l\)>—t
`
`NNNNNNNNNl—‘t—‘b—dt—lP—‘r—‘Hh—‘t—‘H
`
`OONQM-PWNt—‘OKOOONQUI-bWNP—‘O
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`6
`FIRST AMENDED COMPLAIIIFIT FOR PATENT INFRINGEMENT
`
`EXHIBIT A
`PAGE
`*0
`
`
`
`53.
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`SMR acquired all right, title, and interest in and to the ’044 patent on March
`
`18, 2006 as the result of Trylon Corporation’s default of its loan with PRC. (See id.)
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`54.
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`SMR subsequently granted CDx an equal and undivided joint interest in all
`
`right, title, and interest in or related to the ’044 patent with each party retaining an
`
`exclusive field of use. (See Assignment of 4/1 8/06, attached hereto as Exhibit E.)
`
`55.
`
`SMR has not licensed Defendants to practice the ’044 Patent, and
`
`Defendants have no right or authority to license others to practice the ”044 Patent.
`
`56. Upon information and belief, subsequent to SMR’s acquisition of the ’044
`
`patent, Neal Lonky and Martin Lonky formed Histologics DE.
`
`57.
`
`SMR alleges that Histologics DE and Histologics NV make, use, offer for
`
`sale, and/or sell products that give rise to infringement of the ’044 patent, including by
`
`way of example and not limitation, the Histologics Soft-ECC and SoftBiopsy devices
`
`(“Infringing Products”).
`
`58. Upon information and belief, Neal Lonky is the Managing Member and
`
`Director of Histologics DE.
`
`59. Upon information and belief, Martin Lonky is a Director of Histologics DE
`
`60. Upon information and belief, Frank is the President and CEO of Histologics
`
`DE.
`
`61. Upon information and belief, Neal Lonky, Martin Lonky, (as previous
`
`owners of Trylon corporation, and Neal Lonky as inventor) and Frank (as President and
`
`CEO of Histologics DE) had knowledge of the ’044 patent prior this lawsuit.
`
`62. Upon information and belief, Neal Lonky, Martin Lonky, Histologics DE,
`
`and Frank, teach others how to use the products that infringe the ’044 patent. (See Soft—
`
`ECC brochure, attached hereto as Exhibit F, also found at www.kylon.com/products/soft—
`
`ecc/soft-ecc-brochure.html.)
`
`
`
`11
`
`

`

`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 12 of 25 Page ID #:304
`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 12 of 25 Page ID #:304
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`1
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`2
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`3
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`4
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`63. Upon information and belief, the Infringing Products have no other uses,
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`than uses that infringe the ’044 patent.
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`64.
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`SMR alleges that Neal Lonky, Martin Lonky and Frank make, use, offer for
`
`sale, and/or sell products that give rise to infringement of the ’044 patent, including by
`
`5 way of example and not limitation, Infringing Products.
`
`
`
`
`
`65.
`
`SMR alleges that BR Surgical makes, uses, offers for sale, and/or sells
`
`products that give rise to infringement of the ’044 patent, including by way of example
`
`and not limitation, Infringing Products.
`
`66.
`
`In 2012 Neal Lonky published a clinical trial paper reviewing the Soft-ECC.
`
`(See Clinical Trial Paper, attached hereto as Exhibit G).
`
`67. Doctors that participated in the Soft—ECC clinical trial include, Burg,
`
`12 Cestero, Han, and Vasilev.
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`6
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`7
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`8
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`9
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`10
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`11
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`13
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`14
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`15
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`21
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`22
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`23
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`24
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`25
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`26
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`27
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`28
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`68.
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`SMR alleges that Burg, Cestero, Han, and Vasilev at least used products that
`
`give rise to infringement of the ’044 patent, including by way of example and not
`
`limitation, the Soft-ECC device.
`
`69.
`
`SMR alleges that Avero at least sells and offers for sale products that give
`
`rise to infringement of the ’044 patent, including by way of example and not limitation,
`
`Infringing Products.
`
`70.
`
`On June 7, 2012, Histologics NV asserted via correspondence to SMR’s
`
`counsel that, inter alia, the ’044 patent was invalid due to prior Trylon sales, prior Trylon
`
`public uses, and failure by the inventors, applicants, and those associated with the ’044
`
`patent to disclose prior art during prosecution of the ’044 patent. (Letter of 6/7/l2,
`
`attached hereto as Exhibit H.)
`
`71.
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`Thus, the inventor and previous owner of the patent (Trylon) are now
`
`claiming, after having put the ’044 patent up as collateral for a loan, that the ”044 patent
`
`is invalid based on the inventor’s and Trylon’s own misconduct. (See id.)
`
`//
`
`//
`
`
`7
`
`FIRST AMENDED COMPLAIINT FOR PATENT INFRINGEMENT
`
`EXHIBIT A
`\l
`PAGE
`
`12
`
`

`

`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 13 of 25 Page ID #:305
`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 13 of 25 Page ID #:305
`
`y—a
`
`\OOO\]O\U1-I>UJ[\)
`
`NNNNNNNNNHi—ir—‘h‘b—‘r—dl—‘l—‘r—‘H
`
`OO\IO\U14>WI\J’—‘O©OO\IO\UIJ>UJN>—‘O
`
`FIRST CLAIM FOR RELIEF
`
`(Patent Infringement of the ’044 Patent Against Defendants)
`
`72.
`
`By this reference SMR realleges and incorporates the foregoing paragraphs,
`
`as though fully set forth herein.
`
`8
`
`73.
`
`SMR alleges on information and belief that Defendants have infringed and
`
`continue to infringe the ’044 Patent by making, using, selling, and/or offering for sale
`
`within the United States products that embody one or more of the claims of the ’044
`
`Patent, and/or by contributing to infringement, inducing others to infringe the ’044
`
`Patent.
`
`74.
`
`SMR further alleges on information and belief that Histologics DE,
`
`Histologics NV, Neal Lonky, Martin Lonky, and Frank had prior knowledge of the ’044
`
`Patent and continue to have, the specific intent to induce their customers to infringe the
`
`’044 Patent, and their customers do in fact infringe the ’044 Patent, of which
`
`infringement they know or should have known.
`
`75.
`
`SMR further alleges on information and belief that Histologics DE,
`
`Histologics NV, Neal Lonky, Martin Lonky, BR Surgical, and Frank provide products,
`
`devices, systems, and/or services that are especially made to be used, are intended to be
`
`used, and are in fact used by their customers, in a way that infringes the ’044 Patent, and
`
`that have no substantial non-infringing uses.
`
`76.
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`SMR alleges on information and belief that, unless and until enjoined by this
`
`Court, Defendants will continue to infringe the ’044 Patent.
`
`77.
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`The conduct of Defendants as set forth hereinabove gives rise to a claim for
`
`infringement of the ’044 Patent, pursuant to at least 35 U.S.C. §§ 271 and 281.
`
`78.
`
`SMR alleges on information and belief that despite Defendants’ knowledge
`
`of the ’044 patent, Defendants have and continue infringement of the same.
`
`79.
`
`SMR alleges on information and belief that Histologics DEs’, Histologics
`
`NVs’, Neal Lonky’s, Martin Lonky’s, BR Surgical’s, Frank’s, Burg’s, and Cestero’s
`
`infringement of the ’044 Patent has been and continues to be willful and deliberate.
`
`
`
`FIRST AMENDED COMPLAlllng FOR PATENT INFRINGEMENT
`
`EXHIBIT A
`PAGE l3"
`
`13
`
`

`

`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 14 of 25 Page ID #:306
`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 14 of 25 Page ID #:306
`
`80.
`
`SMR alleges on information and belief that, at least as early as receiving
`
`notice of this action, Vasilev’s continued infringement is both willful and deliberate.
`
`81.
`
`By reason of the foregoing, SMR is entitled to injunctive and monetary relief
`
`against Defendants, pursuant to 35 U.S.C. §§ 283, 284, and 285.
`
`SECOND CLAIM FOR RELEIF
`
`(Fraud by Neal Lonky)
`
`82.
`
`By this reference SMR realleges and incorporates the foregoing paragraphs,
`
`as though fully set forth herein.
`
`83.
`
`In the alternative, SlVIR alleges on information and belief that Neal Lonky,
`
`as a co—founder of Trylon corporation, willfully deceived PRC and SMR by expressly
`
`representing that the ’044 patent was valid and enforceable in the Loan and Security
`
`9
`
`\OOO\IO\U‘I-l>b.)[\)
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`10
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`11
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`12
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`13
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`14
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`15
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`16
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`17
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`18
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`19
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`2O
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`21
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`22
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`23
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`24
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`25
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`26
`
`27
`
`28
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`Agreements.
`
`84.
`
`SMR alleges on information and belief that Neal Lonky, as a co—founder of
`
`Trylon corporation, willfully deceived PRC and SMR by impliedly representing that the
`
`’044 patent was valid and enforceable by including the ’044 patent as collateral in the
`
`Loan and Security Agreements.
`
`85.
`
`SMR alleges on information and belief that Neal Lonky, as a co-founder of
`
`Trylon corporation, represented that the ’044 patent was valid and enforceable in order to
`
`induce PRC to enter into the Loan and Security Agreements.
`
`86.
`
`PRC entered into the Loan and Security Agreements and acquired an
`
`ownership interest in the ’044 patent based in part on Neal Lonky’s representations that
`
`the ’044 patent was valid and enforceable.
`
`87.
`
`SMR alleges on information and belief that based on the assertions made in
`
`the letter dated June 7, 2012 (attachment H), Neal Lonky did not believe and had no
`
`reasonable ground for believing that the ’044 patent was or are valid and/or enforceable.
`
`88.
`
`To the extent that the allegations of the letter dated June 7, 2012 are truthful
`
`(attachment H), Neal Lonky committed fraud pursuant to California Civil Code 1709 et.
`
`seq.
`
`FIRST AMENDED COMPLAIHZIT FOR PATENT INFRINGEMENT
`
`EXHIBIT A
`PAGE
`‘3
`
`
`
`14
`
`

`

`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 15 of 25 Page ID #:307
`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 15 of 25 Page ID #:307
`
`THIRD CLAIM FOR RELEIF
`
`\OOO\IO\Ul-I>U)[\)
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`10
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`11
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`12
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`13
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`14
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`15
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`17
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`18
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`19
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`2O
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`21
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`22
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`23
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`24
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`25
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`26
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`27
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`28
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`(Fraud by Martin Lonky)
`
`89.
`
`By this reference SMR realleges and incorporates the foregoing paragraphs,
`
`as though fully set forth herein.
`
`90.
`
`In the alternative, SMR alleges on information and belief that Martin Lonky,
`
`as a co—founder of Trylon corporation, willfully deceived PRC and SMR by expressly
`
`representing that the ’044 patent was valid and enforceable in the Loan and Security
`
`Agreements.
`
`91.
`
`SMR alleges on information and belief that Martin Lonky, as a co-founder
`
`and CEO of Trylon corporation, willfully deceived PRC and SMR by impliedly
`
`representing that the ’044 patent was valid and enforceable by including the ’044 patent
`
`as collateral in the Loan and Security Agreements.
`
`92.
`
`SMR alleges on information and belief that Martin Lonky, as a co—founder
`
`and CEO of Trylon corporation, represented that the ’044 patent was valid and
`
`enforceable in order to induce PRC to enter into the Loan and Security Agreements.
`
`93.
`
`PRC entered into the Loan and Security Agreements and acquired an
`
`ownership interest in the ’044 patent based in part on Martin Lonky’s representations that
`
`the ’044 patent was valid and enforceable.
`
`94.
`
`SMR alleges on information and belief that based on the assertions made in
`
`the letter dated June 7, 2012 (attachment H), Martin Lonky did not believe and had no
`
`reasonable ground for believing that the ’044 patent was or are valid and/or enforceable.
`
`95.
`
`To the extent that the allegations of the letter dated June 7, 2012 (attachment
`
`H) are truthful, Martin Lonky committed fraud pursuant to California Civil Code 1709 et.
`
`10
`
`seq.
`
`FOURTH CLAIM FOR RELEIF
`
`(Negligence by Neal Lonky)
`
`96.
`
`By this reference SMR realleges and incorporates the foregoing paragraphs,
`
`as though fully set forth herein.
`
`
`
`FIRST AMENDED COMPLAlIng FOR PATENT INFRINGEMENT
`
`EXHIBIT A
`PAGE
`1‘1
`
`15
`
`

`

`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 16 of 25 Page ID #:308
`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 16 of 25 Page ID #:308
`
`97.
`
`SMR alleges on information and belief that Neal Lonky, as an inventor of
`
`the ’044 patent, had a legal duty to disclose all material prior art to the USPTO in order to
`
`prevent an invalid and/or an unenforceable patent from issuing and to protect individuals
`
`and corporations from acquiring patents that have issued, but are invalid and/or
`
`unenforceable.
`
`98. Neal Lonky failed to fulfill his legal duty by failing to disclose to the
`
`USPTO material prior art of which he was aware prior to the issuance of the ’044 patent.
`
`99.
`
`To the extent that the ’044 patent is found invalid and/or unenforceable for
`
`Neal Lonky’s failure to fulfill his legal duty will have caused injury to SMR.
`
`100. To the extent that the ’044 patent is found invalid and/or unenforceable for
`
`Neal Lonky’s failure to disclose material prior art to the USPTO, Neal Lonky committed
`
`negligence pursuant to California Civil Code 1714.
`
`
`ll
`
`\OOONO‘in-D-UJN—a
`
`NNNNNNNNNI—tr—AHHr—ar—AI—tr—ar—Ar—t
`
`OOVONM-bUJNr—‘OGOONQUI-bWNF—‘O
`
`
`
`FIFTH CLAIM FOR RELEIF
`
`(Negligence by Martin Lonky)
`
`101. By this reference SMR realleges and incorporates the foregoing paragraphs,
`
`as though fiIlly set forth herein.
`
`102. SMR alleges on information and belief that Martin Lonky, as co-founder and
`
`CEO of Trylon, had a legal duty to disclose all material prior art to the USPTO in order
`
`to prevent an invalid and/or an unenforceable patent from issuing and to protect
`
`individuals and corporations from acquiring patents that have issued, but are invalid
`
`and/or unenforceable.
`
`103. Martin Lonky failed to fulfill his legal duty by failing to disclose to the
`
`USPTO material prior art of which he was aware prior to the issuance of the ’044 patent.
`
`104. To the extent that the ’044 patent is found invalid and/or unenforceable for
`
`Martin Lonky’s failure to fulfill his legal duty will have caused injury to SMR.
`
`105. To the extent that the ’044 patent is found invalid and/or unenforceable for
`
`Martin Lonky’s failure to disclose material prior art to the USPTO, Martin Lonky
`
`committed negligence pursuant to California Civil Code 1714.
`
`FIRST AMENDED COMPLAiIéNT FOR PATENT INFRINGEMENT
`
`EXHIBIT ?“
`
`PAGE ‘
`
`16
`
`

`

`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 17 of 25 Page ID #:309
`Case 8:12-cv-00612-DOC-RNB Document 33 Filed 08/31/12 Page 17 of 25 Page ID #:309
`
`PRAYER FOR RELIEF
`
`\OOONQMLUJNH
`
`NNNNNNNNNP—‘V—‘P—‘D—il—‘Hfi—‘P—‘HH
`
`WVQMAWNHOCOONONUIJ>WNHO
`
`
`
`WHEREF ORE, SMR prays for judgment against Defendants as follows:
`
`A.
`
`B.
`
`A judgment finding Defendants liable for infringement of the ’044 patent;
`
`An imposition of constructive trust on, and an order requiring a full
`
`accounting of, the sales made by Defendants as a result of its wrongful or infringing acts
`
`alleged herein;
`
`C.
`
`An Order of this Court pursuant to at least 35 U.S.C. § 283 permanently
`
`enjoining Defendants, its agents and servants, and any and all parties