InterMetro Industries v. Howard Industries

8/13/2019 InterMetro Industries v. Howard Industries

1/26

IN THE UNITED STATES DISTRICT COURT

FOR THE MIDDLE DISTRICT OF PENNSYLVANIA

INTERMETRO INDUSTRIES CORPORATION,

a Delaware corporation,

Plaintiff,

v.

HOWARD INDUSTRIES, INC.

d/b/a HOWARD MEDICAL,

a Mississippi corporation,

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 HOWARD INDUSTRIES, INC.

d/b/a HOWARD MEDICAL (Howard), 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.


2/26


3/26

3

FACTUAL BACKGROUND

8. 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.

9. On December 20, 2002, EMS Technologies Inc. (EMS), apredecessor-in-ownership to InterMetro of the point-of-care cart technology that is

embodied in the 220 patent, issued a news release announcing the Patent Office

had 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.

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

subject matter through Patent Office continuation practice.


4/26

4

11. 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.

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

13. The next day, the Atlanta Business Chronicle published an articleabout the lawsuit. EMSs Director of its Healthcare Solutions Group was quoted

in the article, putting competitors on notice that the patent rights would be

enforced:

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.

14. EMSs enforcement activities also included issuing press releases andpublishing product brochures with notice of its patents.

15. In addition, 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.

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


5/26

5

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

patents. See Exhibit 11.

17. In February 2005, Flo Healthcare Solutions, L.L.C. (Flo), asuccessor-in-ownership 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) and

Ergotron, Inc., among others. See Exhibits 12 and 13.

18. 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.

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

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

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

22. 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.


6/26

6

23. 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.

24. In September 2010, InterMetro settled the lawsuits against RiouxVision and Omnicell, which included granting them a license to the patents.

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

26. 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.

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

with the 220 patent and related patents.

28. 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

29. InterMetro restates the allegations contained in paragraphs 1-28.


7/26

7

30. On December 10, 2002, the Patent Office duly and lawfully issued the220 patent. SeeExhibit 2.

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

32. Howard has in the past and and/or currently is directly infringing theclaims of the 220 patent under 35 U.S.C. 271(a) by making, using, offering for

sale and selling, without InterMetros authority, point-of-care medical carts that

embody one or more of the 220 patent claims.

33. By way of example and not limitation, Howard has in the past and/orcurrently is making, using, offering for sale and selling the HI-Care, HI-Prodigy,

HI-Paradigm, and HI-Summit point-of-care medical carts, each of which directly

infringes at least claim 2 of the 220 patent, among other claims. SeeExhibits 14 -

17.

34. Howard has in the past and and/or currently is inducing andcontributing to the 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, point-of-care medical carts with knowledge of the 220

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

point-of-care medical carts, will use the carts in an infringing manner; knowing

that its point-of-care medical carts are a material part of the invention claimed in


8/26

8

the 220 patent; knowing that its point-of-care medical carts are especially made or

especially adapted for use in an infringement of the 220 patent; and knowing that

its point-of-care medical carts are not staple articles or commodities of commerce

that are suitable for substantial non-infringing use.


HI-Paradigm, and HI-Summit point-of-care medical carts that its customers use to

directly infringe at least claim 2 of the 220 patent, among other claims.

36. Howards marketing materials extoll the benefits of using its point-of-care medical carts with a computing device, describing them as including a PC

compartment designed to house notebooks and a variety of small form-factor

computing devices and advertising the ability to [e]asily install and integrate

notebooks and many small form factor computing devices as one of the Key

Features of the carts. See Exhibit 14.

37. Howards marketing materials also inform customers that it willintegrate all medical carts with computing devices, monitors, keyboards, mice,

and accessories either at its manufacturing facilities prior to shipping or on-site at

the customers facility. See Exhibits 14 - 17.


9/26

9

38. The benefits Howard touts in its marketing materials for its point-of-care medical carts could not be realized without using a computing device and a

display with the carts.

39. Howards point-of-care medical carts have no substantial non-infringing use.

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

2005.

41. Howards infringing activities have been willful and deliberate.42. Howards infringing activities are directly and proximately causing

immediate and irreparable injury to InterMetro for which InterMetro has no

adequate remedy at law.

43. Howard will continue its infringing activities unless enjoined fromdoing so by the Court.

44. Howards infringing activities have and continue to directly andproximately cause damages to InterMetro.

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

45. InterMetro restates the allegations contained in paragraphs 1-44.46. On April 13, 2004, the Patent Office duly and lawfully issued the 178

patent. SeeExhibit 3.


10/26

10

47. 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.

See Exhibit 4.

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






infringes at least claims 2, 27 and 43 of the 178 patent, among other claims.







11/26

11

that its point-of-care medical carts are a material part of the inventions claimed in







directly infringe at least claims 2, 27 and 43 of the 178 patent, among other

claims.





Features of the carts. SeeExhibits 14 - 17.



the customers facility. SeeExhibits 14 - 17.


12/26

12





2005.






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

62. InterMetro restates the allegations contained in paragraphs 1-61.63. On November 3, 2009, the Patent Office duly and lawfully issued the

999 patent. SeeExhibit 6.


13/26

13

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






infringes at least claims 1, 6, 8 and 15 of the 999 patent, among other claims.










14/26

14




HI-Paradigm, and HI-Summit medical carts that its customers use to directly

infringe at least claims 1, 6, 8 and 15 of the 999 patent, among other claims.












15/26

15



2009.






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

78. InterMetro restates the allegations contained in paragraphs 1-77.79. On September 7, 2010, the Patent Office duly and lawfully issued the

866 patent. See Exhibit 7.



16/26

16






infringes at least claims 12, 13, 17, 18 and 21 of the 866 patent, among other

claims.












17/26

17



directly infringe at least claims 12, 13, 17, 18 and 21 of the 866 patent, among

other claims.













18/26

18


2010.






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

94. InterMetro restates the allegations contained in paragraphs 1-93.95. On August 2, 2011, the Patent Office duly and lawfully issued the

691 patent. SeeExhibit 8.




19/26

19





infringes at least claims 1, 2, 16, 25 and 33 of the 691 patent, among other claims.














20/26

20

directly infringe at least claims 1, 2, 16, 25 and 33 of the 691 patent, among other

claims.






102. In addition, Howards marketing materials inform customers that itwill integrate all medical carts with computing devices, monitors, keyboards,

mice, and accessories either at its manufacturing facilities prior to shipping or on-

site at the customers facility. SeeExhibits 14 - 17.





2011.


21/26

21






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

110. InterMetro restates the allegations contained in paragraphs 1-109.111. On September 3, 2013, the Patent Office duly and lawfully issued the

176 patent. See Exhibit 9.







22/26

22


infringes at least claims 8, 9 and 15 of the 176 patent, among other claims.












HI-Paradigm, and HI-Summit point-of-care medical carts, that its customers use to

directly infringe at least claims 8, 9 and 15 of the 176 patent, among other claims.




23/26

23




118. In addition, Howards marketing materials inform customers that itwill integrate all medical carts with computing devices, monitors, keyboards,

mice, and accessories either at its manufacturing facilities prior to shipping or on-

site at the customers facility. SeeExhibits 14 - 17.





2013.





24/26

24



PRAYER FOR RELIEF

WHEREFORE, InterMetro Industries Corporation prays that this Court:

A. Enter judgment for InterMetro against Howard 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 Howard, 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 Howard to file with this Court and to serveupon InterMetro 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 Howard post an appropriate bond and Order any otherappropriate relief to assure compliance with any injunctive provision or other

provision Ordered by the Court;


25/26

25

E. Enter an Order directing Howard 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 Howard 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 theHowards 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.


26/26

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. Howard Industries