<<

Case 1:15-cv-01033 Document 1 Filed 05/15/15 USDC Colorado Page 1 of 7

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO

Civil Action No. ______

BABOLAT VS NORTH AMERICA, INC.,

Plaintiff, v.

TOPTEAM TECHNOLOGY TAIWAN CO., LTD.,

Defendant.

COMPLAINT FOR DECLARATORY JUDGMENT

Plaintiff Babolat VS North America Inc. (“Babolat” or “Plaintiff”), for its Complaint

against Defendant Topteam Technology Taiwan Co., LTD. (“Topteam” or “Defendant”), hereby

alleges as follows:

NATURE OF THE ACTION

1. This is an action seeking declaratory judgment that United States Patent Number

U.S. Patent No. 6,409,616 (the ‘616 Patent), which is owned by Defendant Topteam has not been

infringed by Babolat. This action arises under the Declaratory Judgment Act, 28 U.S.C. §§

2201-02, and the Patent Laws of the United States, 35 U.S.C. §100 et seq.

THE PARTIES

2. Plaintiff Babolat VS North America Inc. is a Colorado corporation in good

standing with its principal place of business at 1775 Cherry Street, Suite 100, Louisville,

Colorado 80027. Plaintiff’s business consists primarily of the design, manufacture, and sale of a

full range of products for and players, including the Babolat PLAY PURE

DRIVE.

DEN 98816432v2 Case 1:15-cv-01033 Document 1 Filed 05/15/15 USDC Colorado Page 2 of 7

3. information and belief, Defendant Topteam is corporation organized under the laws of Taiwan, Republic of China.

4. On information and belief, Topteam can be served with process through its attorneys Anthony King at WPAT, PC 1100 Quail St, Suite 202, Newport Beach, CA 92660.

JURISDICTION AND VENUE

5. This is a declaratory judgment action brought under 28 U.S.C. § 2201 and 2202.

6. This Court has exclusive subject matter jurisdiction for this action pursuant to 28

U.S.C. §§ 1331, 1338(a), in that it arises under the Patent Laws of the United States, 35 U.S.C.

§100 et seq.

7. Venue is proper in this judicial district pursuant to 28 U.S.C. §1391 because

Defendant is transacting business, doing business via interactive internet websites and otherwise,

and/or soliciting business and committing the acts complained of herein in this judicial district

and elsewhere in the United States

8. This Court has personal jurisdiction over Topteam because Topteam has

purposefully availed itself of the privilege of conducting activities within the State of Colorado

and thus invoked the benefits and protections of its laws. Specifically, Topteam has conducted

business transactions in the State of Colorado via interactive internet websites and otherwise, has

committed the acts complained of in this judicial district, and has caused injury to Plaintiff

within this judicial district by virtue of the accusations of patent infringement that are described

herein. In addition, Topteam’s accusations of infringement directed to Babolat, who has a

principal place of business in Colorado, submit Topteam to the personal jurisdiction of this Court.

Indeed, in its letters, Topteam threatens an infringement action if a monetary payment via license

is rejected. True and correct copies of the letters are attached as Exhibits A and B. Topteam has

DEN 98816432v2 2 Case 1:15-cv-01033 Document 1 Filed 05/15/15 USDC Colorado Page 3 of 7

also sent at least ten (10) cease and desist letters to distributors of Babolat products in 9 (nine)

states, and separately sent copies of each of those letters to Babolat at its Colorado business

address. True and correct copes of these letters are attached as Exhibit C through Exhibit L.

Topteam’s continuous and concerted scheme to assert a U.S. Patent in the United States against

both Babolat and its distributors throughout the United States and in Colorado has had the

intended and actual effect of injuring Babolat’s reputation and causing economic harm via

disruption of business relationships.

9. In the alternative, personal jurisdiction is also appropriate under the Federal long

arm statute because in addition to the facts alleged in Paragraph 8, the aggregate contacts

Topteam has with the United States further includes at least filing for, prosecuting, and receiving a property right in the ‘616 Patent, and hiring United States counsel to enforce those property

rights.

BACKGROUND FACTS

10. Babolat designs, manufactures, and sells a full range of products for tennis and

badminton players, including the Babolat PLAY PURE DRIVE.

11. Topteam alleges to be a “worldwide leader in designing and manufacturing of

digital compass, barometer, altimeter, measurement tools, and other electronics,” including a

“Calorie Counting Racket.”

12. The ‘616 Patent issued on June 25, 2002, a true and correct copy of which is

attached as Exhibit M, hereto. Representatives and/or agents of Topteam have communicated to

Babolat that it intends to enforce the ‘616 Patent against Babolat.

13. Babolat does not believe that it infringes, directly or indirectly, any disputed claim of the ‘616 Patent.

DEN 98816432v2 3 Case 1:15-cv-01033 Document 1 Filed 05/15/15 USDC Colorado Page 4 of 7

14. Babolat is entitled to declaratory judgment of non-infringement to avoid any chilling effect on its business.

FIRST CLAIM FOR RELIEF

(Declaratory Judgment of Non-Infringement of Patent No. 6,409,616)

15. Babolat re-alleges and incorporate by reference the allegations set forth in preceding paragraphs as though fully set forth herein.

16. An actual and justiciable controversy exists between Babolat and Topteam as to the infringement of the ‘616 Patent.

17. Babolat has a reasonable apprehension of suit because of Topteam’s patent infringement allegations in a series of letters directed to Babolat and its distributors throughout the United States and in Colorado, in which Topteam demands that Babolat cease the sale of its

PLAY PURE DRIVE, remove all PLAY PURE DRIVE products from its online advertisements, remove any physical signs, displays or mentions of the PLAY PURE DRIVE product from all business locations and dealers, transport all existing inventory of the PLAY PURE DRIVE to

Topteam’s representatives, disclose the contact information for all vendors and authorized dealers of the PLAY PURE DRIVE, provide an accounting of all profit garnered from the sale of the PLAY PURE DRIVE, and verify in writing that Babolat will no longer infringe the ‘616

Patent.

18. Babolat denies any and all claims of liability for such alleged violations. The use, or sale of, offers for sale of the PLAY PURE DRIVE in the United States, and importation of the

PLAY PURE DRIVE in the United States does not infringe, either directly or indirectly, any disputed claim of the ‘616 Patent, either literally or under the doctrine of equivalents.

DEN 98816432v2 4 Case 1:15-cv-01033 Document 1 Filed 05/15/15 USDC Colorado Page 5 of 7

19. Without limiting the generality of the foregoing and by way of example, use, or sale of, offers for sale of the PLAY PURE DRIVE in the United States, and importation of the

PLAY PURE DRIVE in the United States, does not meet, either literally or under the doctrine of equivalents, at least the following claim elements of the ‘616 Patent claims: (a) “a counter unit

(20) securable inside the grip (11) of the skeleton (10);” “a frequency counter (22) electrically communicating with the microprocessor (21) and inputting quantities of swings of the racket to the microprocessor (21);” “press buttons (24) electrically communicating with the microprocessor (21) and to refresh data of the microprocessor (21);” or “a display (25) electrically communicating with the microprocessor (21) to display information from the microprocessor (21).”

20. Without limiting the generality of the foregoing and by way of example only,

Babolat has not induced or is not inducing anyone to infringe any disputed claim of the ‘616

Patent, at least because: (a) there is no predicate act of direct infringement of any disputed claim of the ‘616 Patent; (b) Babolat did not have notice of the ‘616 Patent at least until after receiving the letter from Topteam’s counsel; (c) Babolat did not and does not have the specific intent to cause another to infringe because it had and continues to have a good faith and an objectively reasonable belief that any disputed claim of the ‘616 Patent is not infringed by any users of the

PLAY PURE DRIVE.

21. Without limiting the generality of the foregoing and by way of example only,

Babolat has not contributorily infringed and is not contributorily infringing any disputed claim of the ‘616 patent, at least because: (a) there is no predicate act of direct infringement of any disputed claim of the ‘616 Patent; (b) Babolat did not have notice of the ‘616 Patent at least until after receiving the letter from Topteam’s counsel; (c) Babolat did not and does not have the

DEN 98816432v2 5 Case 1:15-cv-01033 Document 1 Filed 05/15/15 USDC Colorado Page 6 of 7

knowledge of infringement required to be a contributory infringer because it had and continues to have a good faith and an objectively reasonable belief that any disputed claim of the ‘616

Patent is not infringed by any users of the PLAY PURE DRIVE.

22. Pursuant to 28 U.S.C. §§ 2201 and 2202, a declaratory judgment is necessary to confirm that Babolat’s PLAY PURE DRIVE does not infringe, either literally or under the doctrine of equivalents, any disputed claim of the ‘616 Patent.

23. Topteam’s actions are ongoing and are continuing to inflict irreparable harm upon

Babolat as to which there exists no adequate remedy at law.

24. Babolat requests that this Court enter an order declaring that it has never infringed

and is not infringing any disputed claim of the ‘616 Patent.

JURY DEMAND

Pursuant to Fed. R. Civ. P. 38(b), Babolat hereby demands a trial by jury on all issues and

claims so triable.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff Babolat respectfully requests that judgment be entered in its

favor and prays that the Court grant the following relief:

A. A declaration that Babolat has not infringed, either directly or indirectly, any valid and enforceable claim of the Patent-in-Suit, either literally or under the doctrine of equivalents;

B. A declaration that Topteam and its officers, agents, employees, representatives, counsel and all persons in active concert or participation with any of them, directly or indirectly, be enjoined from threatening or charging infringement of, or instituting or continuing any action for infringement of the ‘616 Patent against Babolat;

C. Declaring this an exceptional case under 35 U.S.C. § 285;

DEN 98816432v2 6 Case 1:15-cv-01033 Document 1 Filed 05/15/15 USDC Colorado Page 7 of 7

D. Awarding Babolat its costs, expenses and reasonable attorneys’ fees, and pre- and post- judgment interest on any money judgment; and

E. Granting such other and further relief as this Court deems just and proper.

Respectfully submitted this 15th day of May, 2015,

By: /s/ Amber J. Munck______Amber J. Munck GREENBERG TRAURIG, LLP 1200 Seventeenth Street, Suite 2400 Denver, Colorado 80202 Telephone: (303) 572-6500 Facsimile: (303) 572-6540

Of Counsel:

Alfred W. Zaher Shawn Li Novak Druce Connolly Bove + Quigg Two Logan Square Third Floor Philadelphia, PA 19103

Ryan Murphy Novak Druce Connolly Bove + Quigg 1875 I St NW Eleventh Floor Washington, D.C. 20006

Attorneys for Plaintiff Babolat VS North America Inc.

DEN 98816432v2 7