TRANS VIDEO ELECTRONICS, LTD. v. NINTENDO OF AMERICA INC. et al
Filing
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COMPLAINT against NINTENDO CO., LTD., NINTENDO OF AMERICA INC. ( Filing fee $ 350, receipt number 4616046781) filed by TRANS VIDEO ELECTRONICS, LTD. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Civil Cover Sheet)(rdj)
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Matthew T. Eggerding (Bar No. 983703)
LOCKE LORD LLP
701 8th Street NW, Suite 700
Washington, DC 20001
Telephone No.: (202) 220-6977
Facsimile No.: (202) 315-3873
meggerding@lockelord.com
ATTORNEYS FOR PLAINTIFF TRANS VIDEO ELECTRONICS, LTD.
[Additional Counsel for Plaintiff appears on Signature Page]
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IN THE UNITED STATES DISTRICT COURT
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FOR THE DISTRICT OF COLUMBIA
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TRANS VIDEO ELECTRONICS, LTD.,
4115 Wisconsin Ave., NW, Suite 208
Washington, DC 20016
an Indiana Corporation,
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Plaintiff,
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v.
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NINTENDO OF AMERICA, INC.,
a Washington Corporation,
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and
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NINTENDO CO., LTD.,
a Japan Corporation,
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) Case No. ________________
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) COMPLAINT FOR PATENT INFRINGEMENT
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) DEMAND FOR JURY TRIAL
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Defendant.
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PLAINTIFF TRANS VIDEO ELECTRONICS, LTD.’s
COMPLAINT FOR PATENT INFRINGEMENT
Plaintiff Trans Video Electronics, Ltd. (“Trans Video”), by and for their Complaint against
defendant Nintendo of America, Inc. and Nintendo Co., Ltd. (together “Nintendo”) allege as follows:
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NY:1004269/00002:662050v1
COMPLAINT FOR PATENT INFRINGEMENT
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NATURE OF THE CASE
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This is an action for patent infringement arising under the patent laws of the United
States. Trans Video holds the rights in U.S. Patent No. 5,991,801 (“the ’801 patent”) and U.S.
Patent No. 5,594,936 (“the ’936 patent”). The United States patent laws grant the holder of a patent
the right to exclude infringers from making, using, selling or importing the invention claimed in a
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patent, and to recover damages for the infringer’s violations of these rights, and to recover treble
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damages where the infringer willingly infringed the patent. Trans Video is suing Nintendo for
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infringing its patents, and doing so willfully. Trans Video seeks to recover damages from Nintendo,
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including treble damages for willful infringement, as well as injunctive relief to end Nintendo’s
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further infringement.
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THE PARTIES
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2.
Plaintiff Trans Video is a corporation incorporated under the laws of the State of
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Indiana and has its principal place of business at 4115 Wisconsin Ave., NW, Suite 208, Washington,
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DC 20016.
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3.
Upon information and belief, Defendant Nintendo of America, Inc. is a corporation
organized under the laws of the State of Washington with its principal place of business at 4820
150th Avenue NE, Redmond, Washington 98052-5111. It may be served via its registered agent, CT
Corporation System, at 350 N. Saint Paul St., Suite 2900, Dallas, Texas 75201-4234. Nintendo does
business in the District of Columbia.
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Upon information and belief, Defendant Nintendo Co., Ltd., is a corporation
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organized under the laws of Japan with its principal place of business in Kyoto, Japan. It may be
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served via its officers and/or Directors at its corporate headquarters at 11-1 Kamitoba Hokotate-Cho,
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-2NY:1004269/00002:662050v1
COMPLAINT FOR PATENT INFRINGEMENT
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Minami-Ku, Kyoto, Japan, 601-8501. Nintendo of America, Inc., is a wholly owned subsidiary of
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Nintendo Co., Ltd.
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The entities referred to above in paragraphs 3 and 4 are hereinafter collectively
referred to as “Nintendo” and/or “Defendants.”
JURISDICTION AND VENUE
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6.
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This is an action for patent infringement arising under the patent laws of the United
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States of America, more specifically under 35 U.S.C. § 100, et seq. Subject matter jurisdiction is
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proper in this Court pursuant to 28 U.S.C. §§ 1331 and 1338.
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7.
Personal jurisdiction and venue are proper in this judicial district pursuant to
28 U.S.C. §§ 1391 and 1400 because, upon information and belief, Defendant, directly or through
intermediaries, transacts business in this judicial district, including making, using, operating,
distributing, importing, offering for sale or license, selling or licensing, and marketing, supporting
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and advertising of its products and services in the United States and the District of Columbia.
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Defendant has sufficient contacts with this judicial district to subject itself to the jurisdiction of this
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Court.
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COUNT 1: INFRINGEMENT OF U.S. PATENT NO. 5,991,801
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Trans Video incorporates by reference the allegations set forth in the preceding
paragraphs.
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On November 23, 1999, the ’801 patent was duly and legally issued.
A Re-
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examination certificate issued on April 5, 2011. A true and correct copy of the ’801 patent is
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attached hereto as Exhibit A. A true and correct copy of the re-examination certificate is attached as
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Exhibit B. Trans Video is the assignee and the owner of all right, title and interest in and to the
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’801 patent. The ’801 patent is entitled to a presumption of validity.
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-3NY:1004269/00002:662050v1
COMPLAINT FOR PATENT INFRINGEMENT
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10.
On information and belief, Nintendo has been, and currently is directly, literally
and/or upon information and belief, jointly, equivalently, and/or indirectly infringing (by way of
inducing infringement by others, and/or contributing to the infringement by others) the ’801 patent
in the District of Columbia, in this judicial district, and elsewhere in the United States by, among
other things, making, using, operating, distributing, importing, offering for sale or license, selling or
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licensing, and/or marketing, supporting and advertising certain of its products and services,
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including the Nintendo Channel, the Nintendo Wii, the Nintendo DS and 3DS for video distribution,
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including downloading, streaming and/or storing, that embody and/or practice the inventions
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claimed in the ’801 patent. Nintendo is thus liable to Trans Video for infringement of the ’801
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patent pursuant to 35 U.S.C. § 271.
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Nintendo actively and knowingly has infringed and is infringing the ‘801 patent with
knowledge of Trans Video’s patent rights and without reasonable basis for believing that Nintendo’s
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conduct is lawful. Nintendo has also induced and contributed to the infringement of the ’801 patent
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by purchasers, licensees, and users of the Nintendo Channel, the Nintendo Wii, the Nintendo DS and
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3DS products and services.
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On information and belief, Nintendo’s infringement of the ’801 patent has been and is
willful and will continue unless enjoined by this Court. Nintendo has been, or should have been, on
notice of the ’801 patent and its infringement, and has not ceased its infringing activities.
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Trans Video has suffered irreparable harm by Nintendo’s acts of infringement of the
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’801 patent, and will continue to suffer harm unless and until Nintendo’s acts of infringement are
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enjoined and restrained by order of this Court.
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14.
As a result of Nintendo’s acts of infringement, Trans Video has suffered and will
continue to suffer damages in an amount to be proven at trial.
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-4NY:1004269/00002:662050v1
COMPLAINT FOR PATENT INFRINGEMENT
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COUNT 2: INFRINGEMENT OF U.S. PATENT NO. 5,594,936
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Trans Video incorporates by reference the allegations set forth in the preceding
paragraphs.
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On January 14, 1997, the ’936 patent was duly and legally issued. A true and correct
copy of the ’936 patent is attached hereto as Exhibit C. Trans Video is the assignee and the owner of
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all right, title and interest in and to the ’936 patent. The ’936 patent is entitled to a presumption of
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validity.
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On information and belief, Nintendo has been, and currently is directly, literally
and/or upon information and belief, jointly, equivalently, and/or indirectly infringing (by way of
inducing infringement by others, and/or contributing to the infringement by others) the ’936 patent
in the District of Columbia, in this judicial district, and elsewhere in the United States by, among
other things, making, using, operating, distributing, importing, offering for sale or license, selling or
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licensing, and/or marketing, supporting and advertising certain of its products and services,
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including the Nintendo Channel, the Nintendo Wii, the Nintendo DS and 3DS for video distribution,
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including downloading, streaming and/or storing, that embody and/or practice the inventions
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claimed in the ’936 patent. Nintendo is thus liable to Trans Video for infringement of the ’936
patent pursuant to 35 U.S.C. § 271.
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Nintendo actively and knowingly has infringed and is infringing the ’936 patent with
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knowledge of Trans Video’s patent rights and without reasonable basis for believing that Nintendo’s
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conduct is lawful. Nintendo has also induced and contributed to the infringement of the ’936 patent
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by purchasers, licensees, and users of the Nintendo Channel, the Nintendo Wii, the Nintendo DS and
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3DS products and services.
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-5NY:1004269/00002:662050v1
COMPLAINT FOR PATENT INFRINGEMENT
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On information and belief, Nintendo’s infringement of the ’936 patent has been and is
willful and will continue unless enjoined by this Court. Nintendo has been, or should have been, on
notice of the ’936 patent and its infringement, and has not ceased its infringing activities.
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Trans Video has suffered irreparable harm by Nintendo’s acts of infringement of the
’936 patent, and will continue to suffer harm unless and until Nintendo’s acts of infringement are
enjoined and restrained by order of this Court.
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As a result of Nintendo’s acts of infringement, Trans Video has suffered and will
continue to suffer damages in an amount to be proven at trial.
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PRAYER FOR RELIEF
WHEREFORE, Trans Video requests this Court enter judgment as follows:
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A.
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That Nintendo has infringed, directly and/or through acts of contributory
infringement, and/or to have induced infringement under 35 U.S.C. § 271 of the ’801 patent and the
’936 patent;
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B.
That such infringement has been willful;
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C.
That Nintendo accounts for and pays to Trans Video all damages pursuant to
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35 U.S.C. § 284 to adequately compensate Trans Video for Nintendo’s direct, contributory and/or
inducement of infringement of the ’801 patent and the ’936 patent;
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That Trans Video receives enhanced damages, in the form of treble damages,
pursuant to 35 U.S.C. § 284;
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E.
That this is an exceptional case under 35 U.S.C. § 285;
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F.
That Nintendo pays Trans Video all of Trans Video’s reasonable attorneys’
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fees and expenses, including for all appeals, pursuant to 35 U.S.C. § 285;
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COMPLAINT FOR PATENT INFRINGEMENT
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G.
That Trans Video be granted pre-judgment and post-judgment interest in
accordance with 35 U.S.C. § 284 on the damages caused to it by reason of Nintendo’s infringement
of the ’801 patent and the ’936 patent, including pre-judgment and post-judgment interest on any
enhanced damages or attorneys’ fees award;
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That costs be awarded in accordance with 35 U.S.C. § 284 to Trans Video;
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That Nintendo, its officers, agents, employees, representatives, successors and
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assigns, and those acting in privity or in concert with any of them, be preliminarily and permanently
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enjoined under 35 U.S.C. § 283 from infringing in any manner the ’801 patent and the ’936 patent;
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and
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That Trans Video be granted such other and further relief as the Court may
deem just and proper under the circumstances.
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COMPLAINT FOR PATENT INFRINGEMENT
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