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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF CALIFORNIA
e.Digital Corporation,
Plaintiff,
v.
PNY Electronics, Inc., dba PNY
Defendant.
Case No. 3:13-cv-2930-H-BGS
FIRST AMENDED COMPLAINT
FOR PATENT INFRINGEMENT
DEMAND FOR JURY TRIAL
Assigned to the Honorable
Judge Marilyn L. Huff
Courtroom 15A (Annex)
Plaintiff e.Digital Corporation (“e.Digital” or “Plaintiff”), by and through its
undersigned counsel, complains and alleges against Defendant PNY Electronics,
Inc., dba PNY (“PNY” or “Defendant”) as follows:
NATURE OF THE ACTION
1. This is a civil action for infringement of a patent arising under the
laws of the United States relating to patents, 35 U.S.C. § 101, et seq., including,
without limitation, 35 U.S.C. §§ 271, 281. Plaintiff e.Digital seeks a preliminary
and permanent injunction and monetary damages for the infringement of its U.S.
Patent No. 5,839,108.
SOUTHERN DISTRICT OF CALIFORNIA
e.Digital Corporation,
Plaintiff,
v.
PNY Electronics, Inc., dba PNY
Defendant.
Case No. 3:13-cv-2930-H-BGS
FIRST AMENDED COMPLAINT
FOR PATENT INFRINGEMENT
DEMAND FOR JURY TRIAL
Assigned to the Honorable
Judge Marilyn L. Huff
Courtroom 15A (Annex)
Plaintiff e.Digital Corporation (“e.Digital” or “Plaintiff”), by and through its
undersigned counsel, complains and alleges against Defendant PNY Electronics,
Inc., dba PNY (“PNY” or “Defendant”) as follows:
NATURE OF THE ACTION
1. This is a civil action for infringement of a patent arising under the
laws of the United States relating to patents, 35 U.S.C. § 101, et seq., including,
without limitation, 35 U.S.C. §§ 271, 281. Plaintiff e.Digital seeks a preliminary
and permanent injunction and monetary damages for the infringement of its U.S.
Patent No. 5,839,108.
JURISDICTION AND VENUE
2. This court has subject matter jurisdiction over this case for patent
infringement under 28 U.S.C. §§ 1331 and 1338(a) and pursuant to the patent laws
of the United States of America, 35 U.S.C. § 101, et seq.
3. Venue properly lies within the Southern District of California
pursuant to the provisions of 28 U.S.C. §§ 1391(b), (c), and (d) and 1400(b). On
information and belief, Defendant conducts substantial business directly and/or
through third parties or agents in this judicial district by selling and/or offering to
sell the infringing products and/or by conducting other business in this judicial
district. Furthermore, Plaintiff e.Digital is headquartered and has its principal
place of business in this district, engages in business in this district, and has been
harmed by Defendant’s conduct, business transactions and sales in this district.
4. This Court has personal jurisdiction over Defendant because, on
information and belief, Defendant transacts continuous and systematic business
within the State of California and the Southern District of California. In addition,
this Court has personal jurisdiction over the Defendant because, on information
and belief, this lawsuit arises out of Defendant’s infringing activities, including,
without limitation, the making, using, selling and/or offering to sell infringing
products in the State of California and the Southern District of California. Finally,
this Court has personal jurisdiction over Defendant because, on information and
belief, Defendant has made, used, sold and/or offered for sale its infringing
products and placed such infringing products in the stream of interstate commerce
with the expectation that such infringing products would be made, used, sold
and/or offered for sale within the State of California and the Southern District of
California.
5. Upon information and belief, certain of the products manufactured by
Defendant have been and/or are currently sold and/or offered for sale at, among
other places, the PNY online store website located at href="http://www.kmart.com/">http://www.kmart.com to consumers
including, but not limited to, consumers located within the State of California.
PARTIES
7. Plaintiff e.Digital is a Delaware corporation with its headquarters and
principal place of business at 16870 West Bernardo Drive, Suite 120, San Diego,
California 92127.
8. Upon information and belief, Defendant PNY Electronics, Inc., dba
PNY is a corporation registered and lawfully existing under the laws of the State of
New Jersey, with an office and principal place of business located at 100 Jefferson
Road, Parsippany, NJ 07054.
THE ASSERTED PATENT
9. On November 17, 1998, the United States Patent and Trademark
Office duly and legally issued United States Patent No. 5,839,108 (“the ’108
patent”) entitled “Flash Memory File System In A Handheld Record And Playback
Device,” to its named inventors Norbert P. Daberko and Richard K. Davis.
Plaintiff e.Digital is the assignee and owner of the entire right, title and interest in
and to the ’108 patent and has the right to bring this suit for damages and other
relief. A true and correct copy of the ’108 patent is attached hereto as Exhibit A.
COUNT ONE
INFRINGEMENT OF THE ’108 PATENT BY DEFENDANT
10. Plaintiff re-alleges and incorporates by reference each of the
allegations set forth in paragraphs 1 through 9 above.
11. The accused products include but are not limited to PNY’s Flash
2. This court has subject matter jurisdiction over this case for patent
infringement under 28 U.S.C. §§ 1331 and 1338(a) and pursuant to the patent laws
of the United States of America, 35 U.S.C. § 101, et seq.
3. Venue properly lies within the Southern District of California
pursuant to the provisions of 28 U.S.C. §§ 1391(b), (c), and (d) and 1400(b). On
information and belief, Defendant conducts substantial business directly and/or
through third parties or agents in this judicial district by selling and/or offering to
sell the infringing products and/or by conducting other business in this judicial
district. Furthermore, Plaintiff e.Digital is headquartered and has its principal
place of business in this district, engages in business in this district, and has been
harmed by Defendant’s conduct, business transactions and sales in this district.
4. This Court has personal jurisdiction over Defendant because, on
information and belief, Defendant transacts continuous and systematic business
within the State of California and the Southern District of California. In addition,
this Court has personal jurisdiction over the Defendant because, on information
and belief, this lawsuit arises out of Defendant’s infringing activities, including,
without limitation, the making, using, selling and/or offering to sell infringing
products in the State of California and the Southern District of California. Finally,
this Court has personal jurisdiction over Defendant because, on information and
belief, Defendant has made, used, sold and/or offered for sale its infringing
products and placed such infringing products in the stream of interstate commerce
with the expectation that such infringing products would be made, used, sold
and/or offered for sale within the State of California and the Southern District of
California.
5. Upon information and belief, certain of the products manufactured by
Defendant have been and/or are currently sold and/or offered for sale at, among
other places, the PNY online store website located at href="http://www.kmart.com/">http://www.kmart.com to consumers
including, but not limited to, consumers located within the State of California.
PARTIES
7. Plaintiff e.Digital is a Delaware corporation with its headquarters and
principal place of business at 16870 West Bernardo Drive, Suite 120, San Diego,
California 92127.
8. Upon information and belief, Defendant PNY Electronics, Inc., dba
PNY is a corporation registered and lawfully existing under the laws of the State of
New Jersey, with an office and principal place of business located at 100 Jefferson
Road, Parsippany, NJ 07054.
THE ASSERTED PATENT
9. On November 17, 1998, the United States Patent and Trademark
Office duly and legally issued United States Patent No. 5,839,108 (“the ’108
patent”) entitled “Flash Memory File System In A Handheld Record And Playback
Device,” to its named inventors Norbert P. Daberko and Richard K. Davis.
Plaintiff e.Digital is the assignee and owner of the entire right, title and interest in
and to the ’108 patent and has the right to bring this suit for damages and other
relief. A true and correct copy of the ’108 patent is attached hereto as Exhibit A.
COUNT ONE
INFRINGEMENT OF THE ’108 PATENT BY DEFENDANT
10. Plaintiff re-alleges and incorporates by reference each of the
allegations set forth in paragraphs 1 through 9 above.
11. The accused products include but are not limited to PNY’s Flash
Memory Storage products including but not limited to its USB, SSD, SD,
microSD, and/or Compact Flash products. The primary and substantial purpose of
the accused products is to write to and store data in electronic format in nonvolatile
flash memory.
12. PNY has directly and indirectly infringed and is directly and indirectly
infringing Claim 1 of the ’108 patent in violation of 35 U.S.C. § 271, et seq., by
making, using, offering for sale, selling in the United States and/or importing into
the United States without authority, the accused products identified above. Claim
1 of the ’108 patent teaches a method of memory management for a non-volatile
storage medium. In general, the method comprises several steps, which generally
involves, without limitation, writing electronic data segments from volatile,
temporary memory to a non-volatile, long-term storage medium by linking data
segments according to a number of specified steps.
13. Plaintiff alleges that at least as of the date of the filing of the
originally filed complaint in this matter, if not sooner, PNY knew or should have
known of the existence of Claim 1 of the ’108 patent and the fact that the accused
products infringe said Claim 1.
14. Plaintiff alleges that PNY sold, sells, offers to sell, ships, or otherwise
delivers the accused products to customers or end-users with all the features
required to infringe Claim 1 of the ’108 patent. Upon information and belief, PNY
knows that the accused products infringe Claim 1 of the ‘108 patent and intends to
induce third parties to include its customers and end-users to also infringe Claim 1
of the ‘108 patent.
15. Upon information and belief, the accused products, alone or in
combination with other products, directly or, alternatively, under the doctrine of
equivalents practice each of the limitations of independent Claim 1 of the ’108
patent when they are used for their normal and intended purpose of writing to and
storing electronic data on non-volatile memory. Thus, PNY directly infringes
microSD, and/or Compact Flash products. The primary and substantial purpose of
the accused products is to write to and store data in electronic format in nonvolatile
flash memory.
12. PNY has directly and indirectly infringed and is directly and indirectly
infringing Claim 1 of the ’108 patent in violation of 35 U.S.C. § 271, et seq., by
making, using, offering for sale, selling in the United States and/or importing into
the United States without authority, the accused products identified above. Claim
1 of the ’108 patent teaches a method of memory management for a non-volatile
storage medium. In general, the method comprises several steps, which generally
involves, without limitation, writing electronic data segments from volatile,
temporary memory to a non-volatile, long-term storage medium by linking data
segments according to a number of specified steps.
13. Plaintiff alleges that at least as of the date of the filing of the
originally filed complaint in this matter, if not sooner, PNY knew or should have
known of the existence of Claim 1 of the ’108 patent and the fact that the accused
products infringe said Claim 1.
14. Plaintiff alleges that PNY sold, sells, offers to sell, ships, or otherwise
delivers the accused products to customers or end-users with all the features
required to infringe Claim 1 of the ’108 patent. Upon information and belief, PNY
knows that the accused products infringe Claim 1 of the ‘108 patent and intends to
induce third parties to include its customers and end-users to also infringe Claim 1
of the ‘108 patent.
15. Upon information and belief, the accused products, alone or in
combination with other products, directly or, alternatively, under the doctrine of
equivalents practice each of the limitations of independent Claim 1 of the ’108
patent when they are used for their normal and intended purpose of writing to and
storing electronic data on non-volatile memory. Thus, PNY directly infringes
Claim 1 of the ’108 patent in violation of 35 U.S.C. § 271(a) when it demonstrates,
tests or otherwise uses the accused products in the United States.
16. By way of example, PNY’s demonstration and How-To videos,
posted by PNY on PNY’s website(s) or other public websites, show PNY and/or its
authorized agents or employees migrating or transferring data from the memory of
one or more devices to one or more of the accused products. An example can be
found on PNY’s website at href="https://www.youtube.com/watch?v=Go9zhRJtPPc&list=TLBpAALu2mERREiLK">https://www.youtube.com/watch?v=Go9zhRJtPPc&list=TLBpAALu2mERREiLK
UrTjiCA0nUUstfRjD. Such conduct evidences PNY’s act of direct infringement of
Claim 1 of the ’108 patent.
17. Plaintiff alleges on information and belief that PNY uses, makes,
sells, offers to sell and/or imports the accused products knowing that they will be
used by its customers and end-users for writing and storing electronic data to nonvolatile
memory utilizing the steps described in Claim 1 of the ’108 patent. PNY’s
product literature, materials and instructional videos advertise and encourage
customers to use the accused product(s) to store electronic data in the accused
products, which utilize the methods of memory management taught by Claim 1 of
the ’108 patent and in a manner it knows infringes Claim 1 of the ’108 patent.
18. PNY also provides operating manuals, user or installation guides,
instructional/informational “how-to” videos, and FAQs information on its website
that instruct customers and end-users on how to connect the accused products and
use them as non-volatile storage devices for electronic data. Among other things,
PNY’s informational materials lay out step-by-step instructions on how to write
data into the memory of the accused products – a process that utilizes the method
disclosed in Claim 1 of the ’108 patent and which PNY knows (at the least as of
the filing of the original complaint if not sooner) infringes the method taught in
tests or otherwise uses the accused products in the United States.
16. By way of example, PNY’s demonstration and How-To videos,
posted by PNY on PNY’s website(s) or other public websites, show PNY and/or its
authorized agents or employees migrating or transferring data from the memory of
one or more devices to one or more of the accused products. An example can be
found on PNY’s website at href="https://www.youtube.com/watch?v=Go9zhRJtPPc&list=TLBpAALu2mERREiLK">https://www.youtube.com/watch?v=Go9zhRJtPPc&list=TLBpAALu2mERREiLK
UrTjiCA0nUUstfRjD. Such conduct evidences PNY’s act of direct infringement of
Claim 1 of the ’108 patent.
17. Plaintiff alleges on information and belief that PNY uses, makes,
sells, offers to sell and/or imports the accused products knowing that they will be
used by its customers and end-users for writing and storing electronic data to nonvolatile
memory utilizing the steps described in Claim 1 of the ’108 patent. PNY’s
product literature, materials and instructional videos advertise and encourage
customers to use the accused product(s) to store electronic data in the accused
products, which utilize the methods of memory management taught by Claim 1 of
the ’108 patent and in a manner it knows infringes Claim 1 of the ’108 patent.
18. PNY also provides operating manuals, user or installation guides,
instructional/informational “how-to” videos, and FAQs information on its website
that instruct customers and end-users on how to connect the accused products and
use them as non-volatile storage devices for electronic data. Among other things,
PNY’s informational materials lay out step-by-step instructions on how to write
data into the memory of the accused products – a process that utilizes the method
disclosed in Claim 1 of the ’108 patent and which PNY knows (at the least as of
the filing of the original complaint if not sooner) infringes the method taught in
Claim 1 of the ’108 patent. Plaintiff believes that PNY directs consumers and end-
users to consult and utilize such instructional videos and other informational
material.
19. Plaintiff believes and thereupon alleges that PNY is aware that its
customers and end-users are using the accused products in an infringing manner
based on, among other things: 1) the discussions, questions, answers, and/or
comments posted on its Community Forums, Community blogs, Community
Forums, and/or Facebook website pages where PNY’s authorized agents,
customers and/or end-users discuss and disclose the use of the accused products for
non-volatile electronic data storage, a process which PNY knows infringes upon
Claim 1 of the ’108 patent; 2) the website links PNY provides on its YouTube
channel wherein PNY customers and/or end-users demonstrate and provide
instructions on the use of the accused products for non-volatile electronic data
storage, a process which PNY knows infringes upon Claim 1 of the ’108 patent
such as
https://www.youtube.com/watch?v=EO9z7M79yq8&index=4&list=LLsF1jM2ON
n6vj0ih8RMctAw; and/or, 3) the fact that PNY encourages its customers and endusers
to use the accused products in an infringing manner as set forth in the
preceding Paragraphs.
20. As alleged above, incorporated herewith, and based upon information
and belief, Plaintiff alleges that since at least from the date of the filing of the
original complaint, PNY, has without authority induced and continues to induce
infringement of the ’108 patent in violation of 35 U.S.C. § 271(b) inasmuch as:
a. The accused products infringe Claim 1 during their normal use by
PNY’s customers and/or end-users;
b. PNY has known and has been continuously aware of the ’108
patent since at least the filing of the original complaint in this
action, if not sooner;
c. PNY has acted in a manner that encourages and continues to
material.
19. Plaintiff believes and thereupon alleges that PNY is aware that its
customers and end-users are using the accused products in an infringing manner
based on, among other things: 1) the discussions, questions, answers, and/or
comments posted on its Community Forums, Community blogs, Community
Forums, and/or Facebook website pages where PNY’s authorized agents,
customers and/or end-users discuss and disclose the use of the accused products for
non-volatile electronic data storage, a process which PNY knows infringes upon
Claim 1 of the ’108 patent; 2) the website links PNY provides on its YouTube
channel wherein PNY customers and/or end-users demonstrate and provide
instructions on the use of the accused products for non-volatile electronic data
storage, a process which PNY knows infringes upon Claim 1 of the ’108 patent
such as
https://www.youtube.com/watch?v=EO9z7M79yq8&index=4&list=LLsF1jM2ON
n6vj0ih8RMctAw; and/or, 3) the fact that PNY encourages its customers and endusers
to use the accused products in an infringing manner as set forth in the
preceding Paragraphs.
20. As alleged above, incorporated herewith, and based upon information
and belief, Plaintiff alleges that since at least from the date of the filing of the
original complaint, PNY, has without authority induced and continues to induce
infringement of the ’108 patent in violation of 35 U.S.C. § 271(b) inasmuch as:
a. The accused products infringe Claim 1 during their normal use by
PNY’s customers and/or end-users;
b. PNY has known and has been continuously aware of the ’108
patent since at least the filing of the original complaint in this
action, if not sooner;
c. PNY has acted in a manner that encourages and continues to
encourage others to infringe Claim 1 of the ’108 patent by, among
other things, intentionally instructing and/or encouraging
customers and end-users to use the accused products in a manner
that PNY knows or should have known would cause them to
infringe the ’108 patent;
d. PNY sells, distributes, and supplies the accused products to
customers and end-users with the intent that the products be used
in an infringing manner;
e. PNY provides operating manuals, installation guides, instructional
videos, or other instructional material designed to instruct
customers and end-users to use the products in an infringing
manner; and,
f. PNY advertises, markets, and promotes the use of the accused
products in an infringing manner.
21. As alleged above, incorporated herewith, and based upon information
and belief, Plaintiff alleges that since at least from the date of the filing of the
original complaint, PNY has contributed and continues to contribute to the
infringement of Claim 1 of the ’108 patent in violation of 35 U.S.C. § 271(c)
inasmuch as:
a. The accused products infringe Claim 1 of the ’108 patent during
the normal use of the accused products by PNY’s customers
and/or end-users;
b. PNY has known and has been continuously aware of the ’108
patent since at least the filing of the original complaint in this
action, if not sooner;
c. PNY imports into the United States, sells and/or offers to sell
within the United States products that (a) practice the method of
memory management of Claim 1 of the ’108 patent; and, (b) PNY
other things, intentionally instructing and/or encouraging
customers and end-users to use the accused products in a manner
that PNY knows or should have known would cause them to
infringe the ’108 patent;
d. PNY sells, distributes, and supplies the accused products to
customers and end-users with the intent that the products be used
in an infringing manner;
e. PNY provides operating manuals, installation guides, instructional
videos, or other instructional material designed to instruct
customers and end-users to use the products in an infringing
manner; and,
f. PNY advertises, markets, and promotes the use of the accused
products in an infringing manner.
21. As alleged above, incorporated herewith, and based upon information
and belief, Plaintiff alleges that since at least from the date of the filing of the
original complaint, PNY has contributed and continues to contribute to the
infringement of Claim 1 of the ’108 patent in violation of 35 U.S.C. § 271(c)
inasmuch as:
a. The accused products infringe Claim 1 of the ’108 patent during
the normal use of the accused products by PNY’s customers
and/or end-users;
b. PNY has known and has been continuously aware of the ’108
patent since at least the filing of the original complaint in this
action, if not sooner;
c. PNY imports into the United States, sells and/or offers to sell
within the United States products that (a) practice the method of
memory management of Claim 1 of the ’108 patent; and, (b) PNY
knows that the same constitute material infringing component(s)
of the accused products, which were made and/or especially
adapted for use in the accused products;
d. The memory management component(s) and methods of the
accused products are not staple articles of commerce suitable for
substantial non-infringing use with respect to the ’108 patent; and,
e. PNY sells, has sold, and/or has supplied the accused products
knowing of Plaintiff’s ’108 patent and knowing that the accused
products incorporate Plaintiff’s patented method and/or were
specially adapted for use in a way which infringes the ’108 patent.
22. As alleged above, Plaintiff alleges that PNY had notice of the ’108
patent and knowledge of infringement of Claim 1 of the ’108 patent since at least
the filing of the original complaint in this matter, if not sooner. PNY has and
continues to sell products that practice the ’108 patent after acquiring knowledge
of infringement.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff prays for relief and judgment as follows:
1. That Defendant be declared to have infringed the Patent-in-Suit;
2. That Defendant, Defendant’s officers, agents, servants, employees,
and attorneys, and those persons in active concert or participation with them, be
preliminarily and permanently enjoined from infringement of the Patent-in-Suit,
including but not limited to any making, using, offering for sale, selling, or
importing of unlicensed infringing products within and without the United States;
3. Compensation for all damages caused by Defendant’s infringement of
the Patent-in-Suit to be determined at trial;
4. A finding that this case is exceptional and an award of reasonable
attorneys fees pursuant to 35 U.S.C. § 285;
5. Granting Plaintiff pre-and post-judgment interest on its damages
of the accused products, which were made and/or especially
adapted for use in the accused products;
d. The memory management component(s) and methods of the
accused products are not staple articles of commerce suitable for
substantial non-infringing use with respect to the ’108 patent; and,
e. PNY sells, has sold, and/or has supplied the accused products
knowing of Plaintiff’s ’108 patent and knowing that the accused
products incorporate Plaintiff’s patented method and/or were
specially adapted for use in a way which infringes the ’108 patent.
22. As alleged above, Plaintiff alleges that PNY had notice of the ’108
patent and knowledge of infringement of Claim 1 of the ’108 patent since at least
the filing of the original complaint in this matter, if not sooner. PNY has and
continues to sell products that practice the ’108 patent after acquiring knowledge
of infringement.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff prays for relief and judgment as follows:
1. That Defendant be declared to have infringed the Patent-in-Suit;
2. That Defendant, Defendant’s officers, agents, servants, employees,
and attorneys, and those persons in active concert or participation with them, be
preliminarily and permanently enjoined from infringement of the Patent-in-Suit,
including but not limited to any making, using, offering for sale, selling, or
importing of unlicensed infringing products within and without the United States;
3. Compensation for all damages caused by Defendant’s infringement of
the Patent-in-Suit to be determined at trial;
4. A finding that this case is exceptional and an award of reasonable
attorneys fees pursuant to 35 U.S.C. § 285;
5. Granting Plaintiff pre-and post-judgment interest on its damages
together with all costs and expenses; and,
6. Awarding such other relief as this Court may deem just and proper.
Dated: March 31, 2014
HANDAL & ASSOCIATES
By: /s/Pamela C. Chalk
Anton N. Handal
Pamela C. Chalk
Gabriel G. Hedrick
Attorneys for Plaintiff
6. Awarding such other relief as this Court may deem just and proper.
Dated: March 31, 2014
HANDAL & ASSOCIATES
By: /s/Pamela C. Chalk
Anton N. Handal
Pamela C. Chalk
Gabriel G. Hedrick
Attorneys for Plaintiff
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