InterMetro Industries v. Capsa Solutions

8/13/2019 InterMetro Industries v. Capsa Solutions

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IN THE UNITED STATES DISTRICT COURT

FOR THE MIDDLE DISTRICT OF PENNSYLVANIA

INTERMETRO INDUSTRIES CORPORATION,

a Delaware corporation,

Plaintiff,

v.

CAPSA SOLUTIONS, LLC,

a Delaware limited liability company,

Defendant.

COMPLAINT FOR PATENT INFRINGEMENT

AND DEMAND FOR JURY TRIAL

NOW COMES the Plaintiff, INTERMETRO INDUSTRIES

CORPORATION (InterMetro), by its attorneys HARNESS, DICKEY &

PIERCE, PLC, and for its Complaint against CAPSA SOLUTIONS, LLC

(Capsa), states as follows:

NATURE OF THE ACTION

1. This is an action for patent infringement under 35 U.S.C. 271, 283,284 and 285.


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THE PARTIES

2. InterMetro is a Delaware corporation having a principal place ofbusiness at 651 N. Washington St., Wilkes-Barre, PA 18705.

3. On information and belief, Capsa is a Delaware limited liabilitycompany having a place of business at 4800 Hilton Corporate Drive, Columbus,

Ohio 43232.

4. On information and belief, Capsa acquired the assets of the MobileSolutions Group of Artromick International, Inc. in 2009. SeeExhibit 13.

JURISDICTION AND VENUE

5. This Court has subject matter jurisdiction over this matter pursuant to28 U.S.C. 1331 and 1338(a).

6. This Court has personal jurisdiction over Capsa because Capsa hastransacted business in Pennsylvania by offering for sale and selling computer carts in

Pennsylvania, among other products, that InterMetro alleges infringe its patents. See

Fed. R. Civ. P. 4(h) and 42 PA.CONS.STAT. 5322(a).

7. This Court also has personal jurisdiction over Capsa because Capsa hasin the past and continues to cause harm to InterMetro in Pennsylvania as a result of

acts it has and continues to commit both inside and outside of Pennsylvania. See

Fed. R. Civ. P. 4(h) and 42 PA.CONS.STAT. 5322(a).


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8. Venue over Capsa is proper in this judicial district under 28 U.S.C. 1391(d) and 1400(b).

FACTUAL BACKGROUND

9. On December 10, 2002, the United States Patent and TrademarkOffice (Patent Office) issued United States Patent No. 6,493,220 entitled

Mobile Clinical Workstation (the 220 patent). A copy of the 220 patent is

attached to this Complaint as Exhibit 1.

10. On December 20, 2002, EMS Technologies Inc. (EMS), anInterMetro predecessor-in-interest to point-of-care cart technology embodied in the

220 patent, issued a news release announcing that the Patent Office awarded the

220 patent. The release stated:

This patent describes the essential features of the cart-based form

factor in a workstation, which is equipped with a computer and power

supply, and is connected wirelessly to a local area network by WiFi

access points. [We] developed the technology for cart-based systems,

which allow healthcare providers to realize the full benefits of clinical

point-of-care applications as the way to improve patient safety with a

device that is easy to use.

The patent on the Mobile Clinical Workstation protects the flagship

product of our Healthcare Solutions Group, which has established the

industry-standard form factor and created a leading position in this

growing market for wireless technology.

SeeExhibit 2.


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11. Over the next decade, EMS and subsequent owners of the point-of-care-cart technology, including InterMetro, pursued additional patents on the

technology through Patent Office continuation practice.

12. Their efforts resulted in the Patent Office awarding U.S. Patent Nos.6,721,178 (the 178 patent); 7,009,840 (the 840 patent); 7,612,999 (the 999

patent); 7,791,866 (the 866 patent); 7,990,691 (the 691 patent); and

8,526,176 (the 176 patent). SeeExhibits 3and 5-9, respectively.

13. On February 10, 2003, EMS sued a competitor for infringing the 220patent.

14. The next day, the Atlanta Business Chronicle published an articleabout the lawsuit. The article quoted EMSs Heathcare Solutions Group Director:

We are quite determined to enforce our patent rights, and to require

other providers of point-of-care carts to either develop their own

unique products, or pay reasonable compensation to EMS for the use

of technology that we created.

See Exhibit 10.

15. EMSs enforcement activities further included issuing press releasesand publishing product brochures with notice of its patents.

16. Moreover, EMS marked its point-of-care carts with its patentnumbers; approached competitors at trade shows to inform them of its patents; and

sent letters to competitors offering an opportunity to license its patent rights.


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17. EMSs actions resulted in multiple patent infringement lawsuits thatresolved on terms which included the infringers paying undisclosed amounts to

license the patents, and acknowledging the validity and enforceability of the

patents. See Exhibit 11.

18. In February 2005, Flo Healthcare Solutions, L.L.C. (Flo), asuccessor-in-interest to EMSs point-of-care-cart technology, including the related

patents and patent applications, sent notice letters to competitors in the point-of-

care-cart market, including Rioux Vision, Inc. (Rioux Vision). See Exhibit 12.

19. The letters offered an opportunity to license both the 220 and 178patents, they enclosed copies of the patents, and they pointed out that other

competitors were licensed under the patents.

20. On October 26, 2006, Flo sued Rioux Vision for infringing the 178patent.

21. On March 21, 2008, the Court granted Flo summary judgment thatRioux Visions point-of-care carts infringed numerous claims of the 178 patent.

22. On December 8, 2008, Flo sued Omnicell, Inc. (Omnicell), forinfringing the 178 patent.

23. On September 30, 2009, Flo assigned InterMetro the entire right, titleand interest to the point-of-care cart technology, including the related patents and

patent applications.


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24. The written assignment expressly granted InterMetro the exclusiveright to seek and obtain all remedies available at law (including money damages)

and in equity for any past, present and future infringement of the patent properties.

25. In September 2010, InterMetro settled the lawsuits against RiouxVision and Omnicell, including granting them a license to the patents.

26. Three years before, on September 20, 2007, Rioux Vision filed aPetition forInter PartesReexamination of the 178 patent with the Patent Office.

27. On February 15, 2013, the Patent Office issued a reexaminationcertificate for the 178 patent that confirmed the patentability of claims 2-6, 18-22,

27-33, 39, 43, 44, as well as the patentability of newly added claims 45-130. A

copy of the Inter Partes Reexamination Certificate for the 178 patent is attached to

this Complaint as Exhibit 4.

28. Since the 220 patent issued on December 10, 2002, InterMetro andits predecessors have continuously marked their point-of-care carts with the 220

patent and related patents.

29. Competitors in the point-of-care-cart market have long been on noticeof InterMetros patents for the point-of-care-cart technology and its intent to

enforce these patents.

COUNT IINFRINGEMENT OF U.S.PATENT NO.6,493,220

30. InterMetro restates the allegations contained in paragraphs 1-29.


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31. On December 10, 2002, the Patent Office duly and lawfully issued the220 patent.

32. InterMetro owns the 220 patent, along with the right to bring suit andrecover damages for past, present and future infringement of the 220 patent.

33. Capsa has in the past and/or currently is directly infringing the claimsof the 220 patent under 35 U.S.C. 271(a) by making, using, offering for sale and

selling, without InterMetros authority, computer carts that embody one or more of

the 220 patent claims.

34. By way of example and not limitation, Capsa has in the past and/orcurrently is making, using, offering for sale and selling the VX series and MX

series mobile computer carts that directly infringe at least claim 2 of the 220

patent, among other claims. See, e.g.,Exhibits 14, 15, 17 and 18.

35. Capsa has in the past and/or currently is inducing and contributing tothe direct infringement of the 220 patent claims in violation of 35 U.S.C.

271(b) and (c), by making, using, offering for sale and selling, without

InterMetros authority, computer carts with knowledge of the 220 patent and its

claims; knowing that others, including customers and users of its computer carts,

will use the carts in an infringing manner; knowing that its computer carts are a

material part of the invention claimed in the 220 patent; knowing that its computer

carts are especially made or especially adapted for use in an infringement of the


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220 patent; and knowing that its computer carts are not staple articles or

commodities of commerce that are suitable for substantial non-infringing use.


series mobile computer carts that its customers use to directly infringe at least

claim 2 of the 220 patent, among other claims.

37. Capsas marketing materials extoll the benefits of using its computercarts with computing devices and displays describing them as accommodating an

open platform for a variety of computing hardware options, including laptops, thin-

client PCs, tablet PCs, all-in-one PCs and LCD monitors. See Exhibits 14, 15, 17

and 18.

38. Capsas marketing materials also proclaim that its computer carts are[d]esigned specifically to accommodate [the customers] choice of computer and

that the computer carts are factory-equipped for mounting the selected computing

technology solution for the computer and display. SeeExhibits 17 and 18.

39. The benefits Capsa touts in its marketing materials for its computercarts could not be realized without using a computing device and a display with the

carts.

40. Capsas computer carts have no substantial non-infringing use.


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41. In view of the facts alleged herein, Capsa has known of the 220patent, or has been willfully blind to the 220 patents existence, since at least

2009.

42. Capsas infringing activities have been willful and deliberate.43. Capsas infringing activities are directly and proximately causing

immediate and irreparable injury to InterMetro for which InterMetro has no

adequate remedy at law.

44. Capsa will continue its infringing activities unless enjoined fromdoing so by the Court.

45. Capsas infringing activities have and continue to directly andproximately cause damages to InterMetro.

COUNT IIINFRINGEMENT OF U.S.PATENT NO.6,721,178

46. InterMetro restates the allegations contained in paragraphs 1-45.47. On April 13, 2004, the Patent Office duly and lawfully issued the 178

patent. Exhibit 3.

48. On February 15, 2013, the Patent Office issued a reexaminationcertificate for the 178 patent, confirming the patentability of claims 2-6, 18-22,

27-33, 39, 43 and 44, as well as the patentability of newly added claims 45-130.

Exhibit 4.


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49. InterMetro owns the 178 patent, along with the right to bring suit andrecover damages for past, present and future infringement of the 178 patent.




51. By way of example and not limitation, Capsa has in the past and/orcurrently is making, using, offering for sale and selling the LX series, VX series,

and MX series mobile computer carts that directly infringe at least claim 2 of the

178 patent, among other claims. See, e.g.,Exhibits 14 18.

52. By way of further example and not limitation, Capsa has in the pastmade, used, offered for sale and sold the NX series and TX series computer

workstations that directly infringe at least claim 2 of the 178 patent, among other

claims. See, e.g.,Exhibits 19 24.







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and MX series mobile computer carts that its customers use to directly infringe at

least claim 2 of the 178 patent, among other claims. See, e.g.,Exhibits 14 18.


workstations that its customers use to directly infringe at least claims 2 of the 178

patent, among other claims. See, e.g.,Exhibits 19 24.



client PCs, tablet PCs, all-in-one PCs and LCD monitors. See Exhibits 14 - 24.





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carts.

59. Capsas computer carts have no substantial non-infringing use.60. In view of the facts alleged herein, Capsa has known of the 178

patent, or has been willfully blind to the 178 patents existence, since at least

2009.






COUNT IIIINFRINGEMENT OF U.S.PATENT NO.7,612,999

65. InterMetro restates the allegations contained in paragraphs 1-64.66. On November 3, 2009, the Patent Office duly and lawfully issued the

999 patent. Exhibit 6.


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67. InterMetro owns the 999 patent, along with all rights to bring suit andrecover damages for past, present and future infringement of the 999 patent.


selling, without InterMetros authority, carts that embody one or more of the 999

patent claims.


and MX series mobile computer carts that directly infringe at least claims 8, 9 and

10 of the 999 patent, among other claims. See, e.g.,Exhibits 14 18.











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and MX series mobile computer carts that its customers use to directly infringe at

least claims 8, 9 and 10 of the 999 patent, among other claims. See, e.g.,Exhibits

14 18.








carts.



2009.


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COUNT IVINFRINGEMENT OF U.S.PATENT NO.7,791,866

81. InterMetro restates the allegations contained in paragraphs 1-80.82. On September 7, 2010, the Patent Office duly and lawfully issued the








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series mobile computer carts that directly infringe at least claims 1, 8, 9, 12, 13, 17

and 18 of the 866 patent, among other claims. See, e.g.,Exhibits 14, 15, 17 and

18.


workstations that directly infringe at least claims 8, 9, 17 and 18 of the 866 patent,

among other claims. See, e.g.,Exhibits 19 24.













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claims 1, 8, 9, 12, 13, 17 and 18 of the 866 patent, among other claims. See, e.g.,

Exhibits 14, 15, 17 and 18.


workstations that its customers use to directly infringe at least claims 8, 9, 17 and

18 of the 866 patent, among other claims. See, e.g.,Exhibits 19 24.



client PCs, tablet PCs, all-in-one PCs and LCD monitors. See Exhibits 14, 15 and

17 - 24.





carts.

93. Capsas computer carts have no substantial non-infringing use.


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94. In view of the facts alleged herein, Capsa has known of the 866patent, or has been willfully blind to the 866 patents existence, since at least

2010.






COUNT VINFRINGEMENT OF U.S.PATENT NO.7,990,691

99. InterMetro restates the allegations contained in paragraphs 1-98.100. On August 2, 2011, the Patent Office duly and lawfully issued the





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series mobile computer carts that directly infringe at least claims 1, 12, 16, 19 and

33 of the 691 patent, among other claims. See, e.g.,Exhibits 14, 15, 17 and 18.

104. By way of further example and not limitation, Capsa has in the pastand/or currently is making, using, offering for sale and selling the LX series mobile

computer carts that directly infringe at least claims 25, 28 and 33 of the 691

patent, among other claims. See, e.g.,Exhibits 14 and 16.


workstations, that directly infringe at least claims 1, 2, 12, 16, 17, 19 and 33 of the

691 patent, among other claims. See, e.g.,Exhibits 19 24.







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carts are especially made or especially adapted for use in an infringement the

claims of the 691 patent; and knowing that its computer carts are not staple

articles or commodities of commerce that are suitable for substantial non-

infringing use.



claims 1, 12, 16, 19 and 33 of the 691 patent, among other claims. See, e.g.,

Exhibits 14, 15, 17 and 18.

108. By way of further example and not limitation, Capsa has in the pastand/or currently is making, using, offering for sale and selling the LX series mobile

computer carts that directly infringe at least claims 25, 28 and 33 of the 691

patent, among other claims. See, e.g.,Exhibits 14 and 16.


workstations that its customers use to directly infringe at least claims 1, 2, 12, 16,

17, 19 and 33 of the 691 patent, among other claims. See, e.g.,Exhibits 19 24.



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carts.



2011.






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COUNT VIINFRINGEMENT OF U.S.PATENT NO.8,526,176

119. InterMetro restates the allegations contained in paragraphs 1-118.120. On September 3, 2013, the Patent Office duly and lawfully issued the







series mobile computer carts that directly infringe at least claims 1, 8 and 15 of the

176 patent, among other claims. See, e.g.,Exhibits 14, 15, 17 and 18.


workstations that directly infringe at least claims 1, 8 and 15 of the 176 patent,

among other claims. See, e.g.,Exhibits 19 24.


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claims 1, 8 and 15 of the 176 patent, among other claims. See, e.g.,Exhibits 14,

15, 17 and 18.


workstations that its customers use to directly infringe at least claims 1, 8 and 15 of

the 176 patent, among other claims. See, e.g.,Exhibits 19 24.


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client PCs, tablet PCs, all-in-one PCs and LCD monitors. See Exhibits 14, 15, 17

and 18.





carts.



2013.





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PRAYER FOR RELIEF

WHEREFORE, InterMetro Industries Corporation prays that this Court:

A. Enter judgment for InterMetro against Capsa declaring that it haswillfully infringed U.S. Patent Nos. 6,493,220; 6,721,178; 7,612,999; 7,791,866;

7,990,691; and 8,526,176;

B. Permanently enjoin and restrain Capsa, its agents, servants, employees,partners, attorneys, successors and assigns, and all those acting in concert with it

from infringing, either directly, by inducement or contributorily, U.S. Patent Nos.

6,493,220; 6,721,178; 7,612,999; 7,791,866; 7,990,691; and 8,526,176;

C. Enter an Order requiring Capsa to file with this Court and to serve uponInterMetro or InterMetros counsel, within thirty (30) days after the entry and service

of any injunction issued, a report in writing and under oath setting forth in detail the

manner and form in which it has complied with the injunction;

D. Require Capsa post an appropriate bond and Order any otherappropriate relief to assure compliance with any injunctive provision or other

provision Ordered by the Court;


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E. Enter an Order directing Capsa and its agents, servants, employees,partners, attorneys, successors and assigns, and all those acting in concert with it,

to deliver to this Court or to InterMetro for destruction, or show proof of said

destruction, of all infringing products;

F. Order an equitable accounting to determine the profits of and othersums Capsa derived from the complained-of patent infringement and other

wrongful acts, and that such amount be paid over to InterMetro as an equitable

remedy;

G. Award to InterMetro all damages it has sustained as a result of theCapsas patent infringement and order that said damages be trebled in accordance

with 35 U.S.C. 284;

H. Enter judgment declaring that this case is exceptional and thatInterMetro is entitled to recover its costs and reasonable attorneys fees incurred in

this action, pursuant to 35 U.S.C. 285; and

I. Enter judgment granting such other and further relief and damages to

InterMetro as justice and equity may require.

JURY DEMAND

InterMetro Industries Corporation hereby requests a trial by jury of all

issues so triable.


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Respectfully submitted,

DATED: November 22, 2013 By: s/ Dale M. Heist

Dale M. Heist, PA23314

John Frank Murphy, PA206307

WOODCOCK WASHBURN LLP

Cira Centre, 12thFloor

2929 Arch Street

Philadelphia, PA 19104

(215) 568-3100

(215) 564-3439 (fax)

[email protected]

[email protected]

[email protected]

OFCOUNSEL

Glenn E. Forbis, PA263218, MIP52119

George D. Moustakas, MIP41631

Neal D. Sanborn, MIP75725

HARNESS,DICKEY &PIERCE,PLC5445 Corporate Drive, Suite 400

Troy, Michigan 48098

(248) 641-1400

(248) 641-0270 (fax)

[email protected]

[email protected]

[email protected]

Attorneys for Plaintiff INTERMETRO

INDUSTRIES CORPORATION

Documents

InterMetro Industries v. Capsa Solutions