Johnson Outdoors Inc, et al v. Navico, Inc. et al

Filing 1

COMPLAINT against Navico, Inc., Sportsman's Outfitters, L.L.C. ( Filing fee $ 350.00 receipt number 4602012699.), filed by Johnson Outdoors Inc,, Johnson Outdoors Marine Electronics, Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Civil Filing Receipt)(cb, )

RECEiVED

IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF ALAM 2b
NORTHERN DIVISION

JOHNSON OUTDOORS INC. and
JOHNSON OUTDOORS MARINE
ELECTRONICS, INC.
Plaintiffs,
V.

Civil Action No

NAVICO, INC. and
SPORTSMAN'S OUTFITTERS, L.L.C.

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JURY TRIAL DEMANDED

Defendants.
COMPLAINT FOR PATENT INFRINGEMENT

Plaintiffs, Johnson Outdoors Inc. ("Johnson Outdoors") and Johnson Outdoors Marine
Electronics, Inc., d/b/a Humminbird ("Humminbird" and together with Johnson Outdoors,
"Plaintiffs"), for their Complaint against Navico, Inc. ("Navico") and Sportsman's Outfitters,
L.L.C. (collectively "Defendants"), hereby allege as follows:
Nature of the Action
1.

This is an action against Navico, Inc. and Sportsman's Outfitters, L.L.C. for

patent infringement.
2.

In the early 2000s, Humminbird employees invented a new system, to be mounted

to a boat, employing side scan sonar beams to locate fish and underwater structures, and to
display them in detailed and recognizable images. On August 2, 2004, Johnson Outdoors filed
U.S. Provisional Patent Application No. 60/598,326, and on August 2, 2005 it filed U.S. Patent

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Application No. 11 / 195,107 (the "107 application") claiming priority therefrom, directed to its
side scan sonar technology. The '107 application issued on January 26, 2010, as United States
Patent No. 7,652,952 ("the '952 Patent"), entitled "Sonar Imaging System For Mounting To
Watercraft."
3.

In Humminbird's fiscal year 2005, Humminbird introduced the first of its

products to employ its side scan sonar technology. In the years that followed, Humminbird
introduced an array of products that used this now patented technology. These products are sold
by Humminbird under its "Side Imaging" registered trademark.
4.

The marketplace has enthusiastically accepted these Humminbird "Side Imaging"

products. They have become the industry leading high end, premium sonar fish finders used for
inland (freshwater) and near shore (saltwater) sports fishing and recreational boating.
5.

With knowledge that Johnson Outdoors had filed the aforementioned patent

applications to protect its side scan sonar technology, and with knowledge that the United States
Patent and Trademark Office had determined that claims in the '107 application were patentable,
Navico expended substantial resources to inform the trade, and the relevant purchasers of fish
finding products, that it too would use side scan sonar technology, and would launch the sale in
the United States of its own side scan sonar products to compete directly with the Humminbird
"Side Imaging" products. Navico calls these products its "Lowrance LSS-1 StructureScan
Imaging System" ("StructureScan" products), which comprises an LSS-1 StructureScan Imaging
Module and an LSS-1 Imaging Transducer assembly.
6.

By about December, 2009, Navico commenced sales of its "StructureScan"

products in the United States. These products, when used with a Lowrance High Definition
System ("HDS") display (collectively, the "Infringing Products") in the manner instructed by
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Navico, directly infringe one or more claims of the '952 Patent. The Infringing Products are now
being offered for sale by Sportsman's Outfitters, L.L.C. in this District.
7.

Therefore, Plaintiffs file this action to seek redress for Defendants' ongoing

infringement of Plaintiffs' patent rights.
The Parties

8.

Plaintiff, Humminbird, is a corporation duly organized and existing under

Alabama law, with its principal place of business in this District at 678 Humminbird Lane,
Eufaula, Alabama 36027. Plaintiff, Johnson Outdoors, is a corporation duly organized and
existing under Wisconsin law, with its principal place of business located at 555 Main Street,
Racine, Wisconsin 53403. Humminbird is a wholly owned subsidiary of Johnson Outdoors.
9.

Upon information and belief, defendant Navico is a corporation duly organized

and existing under the laws of Delaware, having a place of business located at 12000 East Skelly
Drive, Tulsa, Oklahoma 74128. Upon information and belief, Navico does business under the
"Lowrance" brand for certain of its products, including the Infringing Products at issue here.
10.

Upon information and belief, Sportsman's Outfitters, L.L.C. is a corporation

organized and existing under the laws of Alabama and has a place of business at 1975 Ross
Clark Circle, Dothan, Alabama 3630 1-5883.
Jurisdiction and Venue

11.

This is an action for patent infringement arising under the patent laws of the

United States (35 U.S.C. § 100 et seq.).
12.

This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C.

§ 1331 and 1338(a).

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13.

Upon information and belief, this Court has personal jurisdiction over Navico

because it regularly conducts business with and ships products to retailers authorized to sell those
products in the Middle District of Alabama, including but not limited to Sportman's Outfitters,
L.L.C. and therefore has substantial contacts with this District; because it has availed itself of an
Alabama court; because it has interactive websites, www.navico.com and www.lowrance.com ,
that advertise and promote the Infringing Products, as well as other products, in this District;
because it directs and permits owners of Lowrance HDS displays in this District to download
software from www.lowrance.com to enable those displays to function with the "StructureScan"
products; and because upon information and belief it has sold and offered to sell Infringing
Products in this District through the aforementioned authorized retailers and has thereby injured
Johnson Outdoors and Humminbird, a citizen of Alabama, in this District.
14.

Upon information and belief, this Court has personal jurisdiction over

Sportsman's Outfitters, L.L.C. because it regularly conducts business in this District and
therefore has substantial contacts with this District; because it has a regular and established place
of business in this District; and because it has offered to sell Infringing Products in this District
and has thereby injured Plaintiffs in this District.
15.

Venue is proper in this District pursuant to 28 U.S.C. § 1391(b) and (c).
Patent-in-Suit

16.

The '952 Patent has duly and legally issued to Johnson Outdoors as assignee of

the inventors, David A. Betts, Robert W. Derrow, and David J. Howells. A true copy of the '952
Patent is attached hereto as Exhibit 1.
17.

Humminbird is the exclusive licensee under the '952 Patent and under its license

manufactures the Humminbird "Side Imaging" products in this District.
El

Humminbird's "Side Imaging" Products
Are Market Leaders in Performance and Sales
18.

Since Humminbird's introduction of its "Side Imaging" products in fiscal year

2004, they have become a remarkable success. Net sales have grown from zero to over $19
million in fiscal year 2008. Total net sales over that four year period have exceeded $37 million,
despite the difficult market for the recreational boating and fishing industries in 2007 and 2008.
The Hummingbird "Side Imaging" products are Humminbird's most important, and profitable,
products.
19.

Humminbird "Side Imaging" products have received very positive testimonials

from objective, actual users and opinion letters in the industry. For example, a visit to
www.yahoogroups.com , typing in "Side Imaging Sonar" reveals an online community of over
5,000 members who have voluntarily joined to share their experiences with Humminbird "Side
Imaging" products.
Defendants' Infringing Activities
20.

Upon information and belief, Navico has long been engaged in the business of

marketing underwater sonar products, including fish finder systems and their components. Upon
information and belief, Navico's underwater sonar products have been losing market share to
Humminbird's "Side Imaging" products in the high end, premium category.
21.

Determined to compete more effectively against Humminbird's "Side Imaging"

products, Navico developed its own products, the "StructureScan" products, that copy
Hummingbird's side scan sonar technology and products. Since about January, 2009, Navico
has been demonstrating and displaying its "StructureScan" products.

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22.

Since about July 15, 2009, Navico has been indicating on its website,

www.lowrance.com , that its "StructureScan" products are "Coming Very, Very Soon!"
23.

In the October, 2009 issue of FLW Outdoors and in the January, 2010 issue of

Bass Master magazine, both of which upon information and belief are distributed throughout the
United States and in this District, Navico has advertised that the "StructureScan" product is
"Now Available!"
24.

More recently, Navico announced at www.lowrance.com that "[l]ong-awaited

shipments" of its "StructureScan" products have begun in the United States.
25.

Upon information and belief, retailers of marine products -- such as Star Marine

Depot at www.starmarinedepot.com, Go There GPS at www.gotheregps.com and Marine
Electronics Unlimited at www.marine-electronics-unlimited.com -- have been and are offering
for sale throughout the United States, for delivery commencing in the fourth calendar quarter of
2009, the "StructureScan" product and the Lowrance HDS display.
26.

Upon information and belief, Navico directly infringes one or more claims of the

'952 Patent at least by using the "StructureScan" product mounted to a boat and operably
connected to a Lowrance HDS display.
27.

Upon information and belief, Navico has also actively induced and contributed to

the infringement of one or more claims of the '952 Patent by others, by for example instructing
purchasers of the "StructureScan" product to mount its Imaging Transducer assembly to a boat
and to operably connect its Imaging Module to a Lowrance HDS display to create a sonar system
with side scan sonar capability.
28.

On January 26, 2010, after issuance of the '952 Patent, Sportsman's Outfitters,

L.L.C. offered to sell a "StructureSc an" product and a Lowrance HDS display within this

District, with delivery promised for mid-February, 2010. A true copy of the corresponding Sales
Receipt is attached hereto as Exhibit 2.
29.

Plaintiffs have not licensed or otherwise authorized Defendants or their customers

to make, use, import, sell, or offer to sell sonar systems covered by the claims of the '952 Patent.
30.

As a result of Defendants' infringing activities, Johnson Outdoors and

Humminbird have suffered substantial and irreparable harm and lack an adequate remedy at law.
Unless restrained and enjoined by this Court, Defendants will continue their infringing activities,
thereby causing Joimson Outdoors and Humminbird further irreparable harm.
Claim for Patent Infringement Under 35 U.S.C. 271
31.

Plaintiffs incorporate by reference each and every allegation of paragraphs 1

through 30 of this Complaint, as though set forth here in their entirety.
32.

Since its issuance, Joimson Outdoors and Humminbird have been and still are,

respectively, the sole owner and exclusive licensee of the '952 Patent including the right to sue
and recover for any and all infringements thereof.
33.

Defendants have directly infringed, contributorily infringed, and/or induced others

to infringe the '952 Patent by making, using, importing, offering to sell and/or selling the
invention defined by one or more claims of the '952 Patent, without authority or license of
Joimson Outdoors or 1-Jumminbird.
34.

By reason of Defendants' infringing activities, Joimson Outdoors and

Humminbird have suffered, and will continue to suffer, substantial damages in an amount to be
proven at trial.

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35.

Defendants' acts complained of herein have damaged and will continue to

damage Johnson Outdoors and Humminbird irreparably. Johnson Outdoors and Humminbird
have no adequate remedy at law for these wrongs and injuries. Johnson Outdoors and
Humminbird are therefore entitled to preliminary and permanent injunctions restraining and
enjoining Defendants from infringing the claims of the '952 Patent.
36.

Upon information and belief, Navico's infringement has been deliberate and

willful.
Prayer for Relief
WHEREFORE, Plaintiffs respectfully request the Court to enter judgment that:
A.

Pursuant to 35 U.S.C. § 271, Defendants have directly infringed, have

contributorily infringed and have induced others to infringe the '952 Patent;
B.

Pursuant to 35 U.S.C. § 283, Defendants and their subsidiaries, affiliates, officers,

agents, servants, employees, attorneys, successors, and assigns, and all other persons and
organizations in active concert or participation with them, be preliminarily and permanently
enjoined from infringing the '952 Patent;
C.

Pursuant to 35 U.S.C. § 284, Defendants be ordered to pay Plaintiffs their damages

adequate to compensate Plaintiffs for Defendants' infringement of the '952 Patent, together with
pre-judgment and post-judgment interest and costs;
D.

Awarding Plaintiffs an accounting for acts of infringement not presented at trial

and an award by the Court of additional damages for such acts of infringement;
E.

Pursuant to 35 U.S.C. § 284, an award of treble damages due to the willful and

deliberate nature of Navico's infringement of the '952 Patent;

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F.

Pursuant to 35 U.S.C. § 285, this case be declared exceptional and that Plaintiffs

be awarded their reasonable attorneys' fees, interest and costs; and
G.

Plaintiffs be granted such other relief as the Court deems just and proper.
Jury Demand

Plaintiffs hereby demand a jury trial as to all issues so triable.

Dated: January 26, 2010

Respectfully submitted,

By:
David R. Boyd
G. Lane Knight
Balch & Bingham LLP
105 Tallapoosa St., Suite 200
P.O. Box 78 (36101-0078)
Montgomery, AL 36104
334/834-6500

334/269-3115 (fax)
[e-mail]
lknight(balch. corn
Edward E. Vassallo
Douglas Sharrott
FITZPATRICK, CELLA, HARPER & SCINTO
1290 Avenue of the Americas
New York, NY 10104-3800
212/18-2208
212/18-2200 (fax)
evassallo@fchs. corn
[e-mail]
ATTORNEYS FOR PLAThJTIFFS
JOHNSON OUTDOORS INC. and
JOHNSON OUTDOORS MARINE
ELECTRONICS, iNC.