Case 2:17-cv-00310-JRG Document 1 Filed 04/13/17 Page 1 of 13 PageID #: 1
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`DOCUMENT SECURITY SYSTEMS,
`INC.,
`
`
`
`
`
`
`Plaintiff,
`
`v.
`
`
`EVERLIGHT ELECTRONICS CO., LTD.,
`and EVERLIGHT AMERICAS, INC.
`
`
`
`
`
`Defendants.
`
`Civil Action No. ____
`
`
`JURY TRIAL DEMANDED
`
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`This is an action for patent infringement arising under the Patent Laws of the United
`
`States of America, 35 U.S.C. § 1 et seq. in which Document Security Systems, Inc. (“DSS” or
`
`“Plaintiff”) makes the following allegations against Defendants Everlight Electronics Co., Ltd.
`
`(“Everlight Electronics”) and Everlight Americas, Inc. (“Everlight Americas”) (collectively
`
`“Everlight” or “Defendants”).
`
`PARTIES
`
`1.
`
`Document Security Systems, Inc. is a publicly-traded New York corporation, and
`
`has a place of business in Plano, Texas. Founded in 1984, DSS is a global leader in brand
`
`protection, digital security solutions and anti-counterfeiting technologies.
`
`2.
`
`In November 2016, DSS acquired a portfolio of patents covering technologies
`
`used in Light-Emitting Diode (“LED”) lighting products, including the patents-in-suit. The
`
`patents in this portfolio were originally assigned to Agilent Technologies, Inc. and/or the
`
`successors of its LED business. Since its recent acquisition of these patents, DSS has worked to
`
`
`
`1
`
`

`

`Case 2:17-cv-00310-JRG Document 1 Filed 04/13/17 Page 2 of 13 PageID #: 2
`
`
`
`expand its business efforts regarding LED technology. DSS is pursuing both licensing and
`
`exploitation of this technology acquisition, and is establishing those activities within its Plano
`
`location.
`
`3.
`
`On information and belief, Everlight Electronics Co., Ltd., is a corporation
`
`organized and existing under the laws of Taiwan with its principal place of business at No. 6-8,
`
`Zhonghua Rd., Shulin Dist., New Taipei City, Taiwan 23860. Upon information and belief,
`
`Everlight manufactures light-emitting diode (“LED”) products in Taiwan and, through its
`
`subsidiary, Defendant Everlight Americas, Inc., has sales offices in the State of Texas and
`
`elsewhere in the United States.
`
`4.
`
`On information and belief, Everlight Americas, Inc. is a Delaware corporation
`
`with its principal place of business at 3220 Commander Dr., Suite 100, Carrollton, Texas, 75006.
`
`Upon information and belief, Everlight Americas sells and/or offers for sale nationwide LED
`
`products manufactured by Everlight Electronics, including in the State of Texas and in this
`
`judicial district. Defendant Everlight Americas can be served through its registered agent, Bernd
`
`Kammerer, 3220 Commander Dr., Suite 100, Carrollton, Texas, 75006.
`
`JURISDICTION AND VENUE
`
`5.
`
`This action arises under the patent laws of the United States, Title 35 of the
`
`United States Code. Accordingly, this Court has subject matter jurisdiction under 28 U.S.C.
`
`§§ 1331 and 1338(a).
`
`6.
`
`This Court has personal jurisdiction over Defendants in this action because,
`
`among other reasons, Defendants have committed acts within the Eastern District of Texas
`
`giving rise to this action and have established minimum contacts with the forum state of Texas,
`
`including by establishing Everlight America’s principal place of business within this District.
`
`
`
`2
`
`

`

`Case 2:17-cv-00310-JRG Document 1 Filed 04/13/17 Page 3 of 13 PageID #: 3
`
`
`
`Defendants directly and/or through subsidiaries or intermediaries (including distributors,
`
`retailers, and others), have committed and continue to commit acts of infringement in this
`
`District by, among other things, making, using, importing, offering for sale, and/or selling
`
`products and/or services that infringe the patents-in-suit. Thus, Defendants have purposefully
`
`availed themselves of the benefits of doing business in the State of Texas and the exercise of
`
`jurisdiction over Defendants would not offend traditional notions of fair play and substantial
`
`justice. Everlight Americas is registered to do business in the State of Texas, and has appointed
`
`Bernd Kammerer, 3220 Commander Dr., Suite 100, Carrollton, Texas, 75006 as its agent for
`
`service of process.
`
`7.
`
`Venue is proper in this District under 28 U.S.C. §§ 1391 (b)-(c) and 1400(b)
`
`because Defendants are subject to personal jurisdiction in this District, have transacted business
`
`in this District and have committed acts of patent infringement in this District.
`
`BACKGROUND
`
`8.
`
`DSS is the owner by assignment of United States Patent No. 6,949,771 (“the ’771
`
`Patent”) entitled “Light Source.” The ’771 Patent was duly and legally issued by the United
`
`States Patent and Trademark Office on September 27, 2005. A true and correct copy of the ’771
`
`Patent is included as Exhibit A.
`
`9.
`
`DSS is the owner by assignment of United States Patent No. 7,524,087 (“the ’087
`
`Patent”) entitled “Optical Device.” The ’087 Patent was duly and legally issued by the United
`
`States Patent and Trademark Office on April 28, 2009. A true and correct copy of the ’087
`
`Patent is included as Exhibit B.
`
`10.
`
`DSS is the owner by assignment of United States Patent No. 7,919,787 (“the ’787
`
`Patent”) entitled “Semiconductor Device with a Light Emitting Semiconductor Die.” The ’787
`
`
`
`3
`
`

`

`Case 2:17-cv-00310-JRG Document 1 Filed 04/13/17 Page 4 of 13 PageID #: 4
`
`
`
`Patent was duly and legally issued by the United States Patent and Trademark Office on April 5,
`
`2011. A true and correct copy of the ’787 Patent is included as Exhibit C.
`
`11.
`
`DSS is the owner by assignment of United States Patent No. 7,256,486 (“the ’486
`
`Patent”) entitled “Packing Device for Semiconductor Die, Semiconductor Device Incorporating
`
`Same and Method of Making Same.” The ’486 Patent was duly and legally issued by the United
`
`States Patent and Trademark Office on August 14, 2007. A true and correct copy of the ’486
`
`Patent is included as Exhibit D.
`
`12.
`
`DSS owns all rights, title, and interest in and to the ’771, ’087,’787, and ‘486
`
`Patents (collectively, “asserted patents” or “patents-in-suit”), including all rights to sue and
`
`recover for past and future infringement.
`
`COUNT I
`
`INFRINGEMENT OF THE ’771 PATENT
`
`13.
`
`DSS references and incorporates by reference paragraphs 1 through 12 of this
`
`Complaint.
`
`14.
`
`On information and belief, Defendants make, use, offer for sale, sell, and/or
`
`import in the United States products and/or services that infringe various claims of the ’771
`
`Patent, and continues to do so. By way of illustrative example, Defendants’ infringing products
`
`include without limitation, all versions and variations, including predecessor and successor
`
`models, of its PLCC Top View SMD LED, 2214 package series, 3020 package series, 3232
`
`package series, 3527 package series, 3528 package series, 5050 package series, and 7450
`
`package series. Defendants’ infringing products also include products, e.g., light bulbs, displays
`
`and fixtures that contain at least one infringing LED product. Defendants’ infringing products are
`
`collectively referred to hereinafter as “’771 Accused Instrumentalities.”
`
`
`
`4
`
`

`

`Case 2:17-cv-00310-JRG Document 1 Filed 04/13/17 Page 5 of 13 PageID #: 5
`
`
`
`15.
`
`On information and belief, Defendants have directly infringed and continue to
`
`directly infringe the ’771 Patent by, among other things, making, using, offering for sale, selling,
`
`and/or importing the ’771 Accused Instrumentalities. On information and belief, such products
`
`and/or services are covered by one or more claims of the ’771 Patent’s including at least claims 1
`
`to 8 because they contain each element of those claims.
`
`16.
`
`By making, using, offering for sale, selling, and/or importing the ’771 Accused
`
`Instrumentalities infringing the ’771 Patent, Defendants have injured DSS and are liable to DSS
`
`for infringement of the ’771 Patent pursuant to 35 U.S.C. § 271(a) directly and/or under the
`
`doctrine of equivalents.
`
`17.
`
`In addition, Defendants are actively inducing others, such as their customers and
`
`end users of Accused Instrumentalities, services based thereupon, and related products and/or
`
`processes, to directly infringe each and every claim limitation, including without limitation
`
`claims 1 to 8 of the ’771 Patent, in violation of 35 U.S.C. § 271(b). Upon information and belief,
`
`Defendants’ customers and/or end users have directly infringed and are directly infringing each
`
`and every claim limitation, including without limitation claims 1 to 8 of the ’771 Patent.
`
`Defendants have had actual knowledge of the ’771 Patent at least as of service of this Complaint.
`
`Defendants are knowingly inducing their customers and/or end users to directly infringe the ’771
`
`Patent, with the specific intent to encourage such infringement, and knowing that the induced
`
`acts constitute patent infringement. Defendants’ inducement includes, for example, providing
`
`technical guides, product data sheets, demonstrations, software and hardware specifications,
`
`installation guides, and other forms of support that induce their customers and/or end users to
`
`directly infringe the ’771 Patent. The ’771 Accused Instrumentalities are designed in such a way
`
`that when they are used for their intended purpose, the user infringes the ’771 Patent.
`
`
`
`5
`
`

`

`Case 2:17-cv-00310-JRG Document 1 Filed 04/13/17 Page 6 of 13 PageID #: 6
`
`
`
`Defendants know and intend that customers that purchase the ’771 Accused Instrumentalities
`
`will use those products for their intended purpose.
`
`18.
`
`Defendants have been aware of the ’771 Patent and of its infringement as of a
`
`date no later than the date they were served with this Complaint in this action. To the extent
`
`facts learned in discovery show that Defendants’ infringement of the ’771 Patent is or has been
`
`willful, or to the extent that Defendants’ actions subsequent to the filing of this Complaint—such
`
`as their behavior as litigants or their failure to take remedial actions—render their infringement
`
`egregious, DSS reserves the right to request such a finding at time of trial.
`
`19.
`
`As a result of Defendants’ infringement of the ’771 Patent, DSS has suffered
`
`monetary damages in an amount adequate to compensate for Defendants’ infringement, but in no
`
`event less than a reasonable royalty for the use made of the invention by Defendants, together
`
`with interest and costs as fixed by the Court.
`
`COUNT II
`
`INFRINGEMENT OF THE ’087 PATENT
`
`20.
`
`DSS references and incorporates by reference paragraphs 1 through 19 of this
`
`Complaint. On information and belief, Defendants make, use, offer for sale, sell, and/or import in
`
`the United States products and/or services that infringe various claims of the ’087 Patent, and
`
`continues to do so. By way of illustrative example, Defendants’ infringing products include
`
`without limitation, all versions and variations, including predecessor and successor models of its
`
`PLCC Top View SMD LED, 2214 package series, 3020 package series, 3232 package series,
`
`3527 package series, 3528 package series, 5050 package series, and 7450 package series.
`
`Defendants’ infringing products also include products, e.g., light bulbs, displays and fixtures that
`
`
`
`6
`
`

`

`Case 2:17-cv-00310-JRG Document 1 Filed 04/13/17 Page 7 of 13 PageID #: 7
`
`
`
`contain at least one infringing LED product. Defendants’ infringing products are collectively
`
`referred to hereinafter as “’087 Accused Instrumentalities.”
`
`21.
`
`On information and belief, Defendants have directly infringed and continue to
`
`directly infringe the ’087 Patent by, among other things, making, using, offering for sale, selling,
`
`and/or importing the ’087 Accused Instrumentalities. On information and belief, such products
`
`and/or services are covered by one or more claims of the ’087 Patent’s including at least claim 1
`
`because they contain each element of that claim.
`
`22.
`
`By making, using, offering for sale, selling, and/or importing the ’087 Accused
`
`Instrumentalities infringing the ’087 Patent, Defendants have injured DSS and are liable to DSS
`
`for infringement of the ’087 Patent pursuant to 35 U.S.C. § 271(a) directly and/or under the
`
`doctrine of equivalents.
`
`23.
`
`In addition, Defendants are actively inducing others, such as their customers and
`
`end users of Accused Instrumentalities, services based thereupon, and related products and/or
`
`processes, to directly infringe each and every claim limitation, including without limitation claim
`
`1 of the ’087 Patent, in violation of 35 U.S.C. § 271(b). Upon information and belief,
`
`Defendants’ customers and/or end users have directly infringed and are directly infringing each
`
`and every claim limitation, including without limitation claim 1 of the ’087 Patent. Defendants
`
`have had actual knowledge of the ’087 Patent at least as of service of this Complaint.
`
`Defendants are knowingly inducing their customers and/or end users to directly infringe the ’087
`
`Patent, with the specific intent to encourage such infringement, and knowing that the induced
`
`acts constitute patent infringement. Defendants’ inducement includes, for example, providing
`
`technical guides, product data sheets, demonstrations, software and hardware specifications,
`
`installation guides, and other forms of support that induce their customers and/or end users to
`
`
`
`7
`
`

`

`Case 2:17-cv-00310-JRG Document 1 Filed 04/13/17 Page 8 of 13 PageID #: 8
`
`
`
`directly infringe the ’087 Patent. The ’087 Accused Instrumentalities are designed in such a way
`
`that when they are used for their intended purpose, the user infringes the ’087 Patent.
`
`Defendants know and intend that customers that purchase the ’087 Accused Instrumentalities
`
`will use those products for their intended purpose.
`
`24.
`
`Defendants have been aware of the ’087 Patent and of its infringement as of a
`
`date no later than the date they were served with this Complaint in this action. To the extent
`
`facts learned in discovery show that Defendants’ infringement of the ’087 Patent is or has been
`
`willful, or to the extent that Defendants’ actions subsequent to the filing of this Complaint—such
`
`as their behavior as litigants or their failure to take remedial actions—render their infringement
`
`egregious, DSS reserves the right to request such a finding at time of trial.
`
`25.
`
`As a result of Defendants’ infringement of the ’087 Patent, DSS has suffered
`
`monetary damages in an amount adequate to compensate for Defendants’ infringement, but in no
`
`event less than a reasonable royalty for the use made of the invention by Defendants, together
`
`with interest and costs as fixed by the Court.
`
`COUNT III
`
`INFRINGEMENT OF THE ’787 PATENT
`
`26.
`
`DSS references and incorporates by reference paragraphs 1 through 25 of this
`
`Complaint.
`
`27.
`
`On information and belief, Defendants make, use, offer for sale, sell, and/or
`
`import in the United States products and/or services that infringe various claims of the ’787
`
`Patent, and continues to do so. By way of illustrative example, Defendants’ infringing products
`
`include without limitation, all versions and variations, including predecessor and successor
`
`models, of its 3045 package series. Defendants’ infringing products also include products, e.g.,
`
`
`
`8
`
`

`

`Case 2:17-cv-00310-JRG Document 1 Filed 04/13/17 Page 9 of 13 PageID #: 9
`
`
`
`light bulbs, displays and fixtures that contain at least one infringing LED product. Defendants’
`
`infringing products are collectively referred to hereinafter as “’787 Accused Instrumentalities.”
`
`28.
`
`On information and belief, Defendants have directly infringed and continue to
`
`directly infringe the ’787 Patent by, among other things, making, using, offering for sale, selling,
`
`and/or importing the ’787 Accused Instrumentalities. On information and belief, such products
`
`and/or services are covered by one or more claims of the ’787 Patent’s including at least claim 7
`
`because they contain each element of that claim.
`
`29.
`
`By making, using, offering for sale, selling, and/or importing the ’787 Accused
`
`Instrumentalities infringing the ’787 Patent, Defendants have injured DSS and are liable to DSS
`
`for infringement of the ’787 Patent pursuant to 35 U.S.C. § 271(a) directly and/or under the
`
`doctrine of equivalents.
`
`30.
`
`In addition, Defendants are actively inducing others, such as their customers and
`
`end users of Accused Instrumentalities, services based thereupon, and related products and/or
`
`processes, to directly infringe each and every claim limitation, including without limitation
`
`claims 1 and 7 of the ’787 Patent, in violation of 35 U.S.C. § 271(b). Upon information and
`
`belief, Defendants’ customers and/or end users have directly infringed and are directly infringing
`
`each and every claim limitation, including without limitation claims 1 and 7 of the ’787 Patent.
`
`Defendants have had actual knowledge of the ’787 Patent at least as of service of this Complaint.
`
`Defendants are knowingly inducing their customers and/or end users to directly infringe the ’787
`
`Patent, with the specific intent to encourage such infringement, and knowing that the induced
`
`acts constitute patent infringement. Defendants’ inducement includes, for example, providing
`
`technical guides, product data sheets, demonstrations, software and hardware specifications,
`
`installation guides, and other forms of support that induce their customers and/or end users to
`
`
`
`9
`
`

`

`Case 2:17-cv-00310-JRG Document 1 Filed 04/13/17 Page 10 of 13 PageID #: 10
`
`
`
`directly infringe the ’787 Patent. The ’787 Accused Instrumentalities are designed in such a way
`
`that when they are used for their intended purpose, the user infringes the ’787 Patent.
`
`Defendants know and intend that customers that purchase the ’787 Accused Instrumentalities
`
`will use those products for their intended purpose.
`
`31.
`
`Defendants have been aware of the ’787 Patent and of its infringement as of a
`
`date no later than the date they were served with this Complaint in this action. To the extent
`
`facts learned in discovery show that Defendants’ infringement of the ’787 Patent is or has been
`
`willful, or to the extent that Defendants’ actions subsequent to the filing of this Complaint—such
`
`as their behavior as litigants or their failure to take remedial actions—render their infringement
`
`egregious, DSS reserves the right to request such a finding at time of trial.
`
`32.
`
`As a result of Defendants’ infringement of the ’787 Patent, DSS has suffered
`
`monetary damages in an amount adequate to compensate for Defendants’ infringement, but in no
`
`event less than a reasonable royalty for the use made of the invention by Defendants, together
`
`with interest and costs as fixed by the Court.
`
`COUNT IV
`
`INFRINGEMENT OF THE ’486 PATENT
`
`33.
`
`DSS references and incorporates by reference paragraphs 1 through 32 of this
`
`Complaint.
`34.
`
`On information and belief, Defendants make, use, offer for sale, sell, and/or
`
`import in the United States products and/or services that infringe various claims of the ’486
`
`Patent, and continues to do so. By way of illustrative example, Defendants’ infringing products
`
`include without limitation, all versions and variations, including predecessor and successor
`
`models, of its 3045 package series. Defendants’ infringing products also include products, e.g.,
`
`
`
`10
`
`

`

`Case 2:17-cv-00310-JRG Document 1 Filed 04/13/17 Page 11 of 13 PageID #: 11
`
`
`
`light bulbs, displays and fixtures that contain at least one infringing LED product. Defendants’
`
`infringing products are collectively referred to hereinafter as “’486 Accused Instrumentalities.”
`
`35.
`
`On information and belief, Defendants have directly infringed and continues to
`
`directly infringe the ’486 Patent by, among other things, making, using, offering for sale, selling,
`
`and/or importing the ’486 Accused Instrumentalities. On information and belief, such products
`
`are covered by one or more claims of the ’486 Patent including at least claim 1 because they
`
`contain each element of that claim.
`
`36.
`
`By making, using, offering for sale, selling, and/or importing the ’486 Accused
`
`Instrumentalities infringing the ’486 Patent, Defendants have injured DSS and is liable to DSS
`
`for infringement of the ’486 Patent pursuant to 35 U.S.C. § 271(a) directly and/or under the
`
`doctrine of equivalents.
`
`37.
`
`In addition, Defendants are actively inducing others, such as their customers and
`
`end users of Accused Instrumentalities, services based thereupon, and related products and/or
`
`processes, to directly infringe each and every claim limitation, including without limitation claim
`
`1 of the ‘486 Patent, in violation of 35 U.S.C. § 271(b). Defendants’ customers and/or end users
`
`have directly infringed and are directly infringing each and every claim limitation, including
`
`without limitation claim 1 of the ‘486 Patent. Defendants have had actual knowledge of the ‘486
`
`Patent at least as of service of this Complaint. Defendants are knowingly inducing their
`
`customers and/or end users to directly infringe the ‘486 Patent, with the specific intent to
`
`encourage such infringement, and knowing that the induced acts constitute patent infringement.
`
`Defendants’ inducement includes, for example, providing technical guides, product data sheets,
`
`demonstrations, software and hardware specifications, installation guides, and other forms of
`
`support that induce their customers and/or end users to directly infringe the ‘486 Patent. The
`
`
`
`11
`
`

`

`Case 2:17-cv-00310-JRG Document 1 Filed 04/13/17 Page 12 of 13 PageID #: 12
`
`
`
`’087 Accused Instrumentalities are designed in such a way that when they are used for their
`
`intended purpose, the user infringes the ‘486 Patent. Defendants know and intend that customers
`
`that purchase the ’087 Accused Instrumentalities will use those products for their intended
`
`purpose.
`
`38.
`
`Defendants have been aware of the ‘486 Patent and of its infringement as of a
`
`date no later than the date they were served with this Complaint in this action. To the extent
`
`facts learned in discovery show that Defendants’ infringement of the ‘486 Patent is or has been
`
`willful, or to the extent that Defendants’ actions subsequent to the filing of this Complaint—such
`
`as their behavior as litigants or their failure to take remedial actions—render their infringement
`
`egregious, DSS reserves the right to request such a finding at time of trial.
`
`39.
`
`As a result of Defendants’ infringement of the ‘486 Patent, DSS has suffered
`
`monetary damages in an amount adequate to compensate for Defendants’ infringement, but in no
`
`event less than a reasonable royalty for the use made of the invention by Defendants, together
`
`with interest and costs as fixed by the Court.
`
`
`
`PRAYER FOR RELIEF
`
`Plaintiff respectfully requests the following relief from this Court:
`
`A.
`
`A judgment that Defendants have infringed one or more claims of the ’771, ’087,
`
`’787, and/or ‘486 Patents;
`
`B.
`
`A judgment and order requiring Defendants to pay DSS its damages, costs,
`
`expenses, and prejudgment and post-judgment interest for Defendants’ acts of infringement in
`
`accordance with 35 U.S.C. § 284;
`
`C.
`
`A judgment and order requiring Defendants to provide accountings and to pay
`
`
`
`12
`
`

`

`Case 2:17-cv-00310-JRG Document 1 Filed 04/13/17 Page 13 of 13 PageID #: 13
`
`
`
`supplemental damages to DSS, including, without limitation, prejudgment and post-judgment
`
`interest;
`
`D.
`
`A judgment and order finding that this is an exceptional case within the meaning
`
`of 35 U.S.C. § 285 and awarding to DSS its reasonable attorneys’ fees against Defendants; and
`
`E.
`
`Any and all other relief to which DSS may show itself to be entitled.
`
`JURY TRIAL DEMANDED
`
`Pursuant to Rule 38 of the Federal Rules of Civil Procedure, DSS requests a trial by jury
`
`of any issues so triable by right.
`
`
`Dated: April 13, 2017
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/s/ Brian Ledahl
`
`Brian Ledahl (CA SB No. 186579)
`Neil A. Rubin (CA SB No. 250761)
`Jacob Buczko (CA SB No. 269408)
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard 12th Floor
`Los Angeles, California 90025
`Telephone: 310-826-7474
`Facsimile: 310-826-6991
`E-mail: bledahl@raklaw.com
`E-mail: nrubin@raklaw.com
`E-mail: jbuczko@raklaw.com
`
`Elizabeth L. DeRieux
`State Bar No. 05770585
`Capshaw DeRieux, LLP
`114 E. Commerce Ave.
`Gladewater, TX 75647
`Telephone: 903-845-5770
`Email: ederieux@capshawlaw.com
`
`Attorneys for Plaintiff,
`Document Security Systems, Inc.
`
`13
`
`