19-20711-Civ-COOKE/GOODMAN MAURIZIO SOLE FESTA, an Individu

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Case 1:19-cv-20711-MGC Document 53 Entered on FLSD Docket 12/23/2020 Page 1 of 16

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA

Case No: 19-20711-Civ-COOKE/GOODMAN

MAURIZIO SOLE FESTA, an individual, and ALEXIS FERNANDEZ, an individual,

Plaintiffs,

vs.

SHENZHEN ARASHI VISION COMPANY LTD., a Chinese company,

Defendant. /

SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT (JURY TRIAL DEMANDED)

Plaintiffs/Counter-Defendants, Maurizio Sole Festa and Alexis Fernandez

(“Plaintiffs”), by and through their undersigned counsel, pursuant to Fed. R. Civ. P., hereby

sue Defendant, Shenzhen Arashi Vision Company Ltd. (“Schenzen Arashi Vision” or

“Defendant”), a Chinese company, and alleges as follows:

Nature of Action

1. This is an action for patent infringement arising under the Patent Laws of the

United States, 35 U.S.C. §§ 1, et seq.

2. Defendant has and is infringing one or more claims of U.S. Patent No.

10,122,918 (hereinafter the ‘918 Patent), a copy of which is attached as Exhibit “A”.

3. The ‘918 Patent relates to the invention for a system for producing 360 degree

media using an adapter that fits over a computer such as a smartphone having a forward

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facing camera and rear facing camera. Plaintiffs have sued the Defendant for their use of the

invention claimed in the ‘918 Patent that relates to a system for producing 360 degree media.

The Parties

4. Plaintiff, Maurizio Sole Festa, is an individual and a resident of the State of

Florida whom resides within this judicial district in Miami, Florida.

5. Plaintiff, Alexis Fernandez, is an individual and a resident of the State of

Florida whom resides within this judicial district in Miami, Florida.

6. Defendant Shenzhen Arashi Vision Company Ltd. is a Chinese Company with

its principle place of business Room 031, Floor 2, Block B, Logan Century Building, Hai Xiu

Road, Bao’an District, Shenzhen, Guangdong, China 5181000.

7. Upon information and belief, Defendant has substantial contacts and/or

transacts substantial business, either directly or through its agents, on an ongoing basis in this

judicial district and elsewhere in the United States.

8. Unless specifically states otherwise, the acts complained of herein were

committed by, on behalf of, and/or for the benefit of the Defendant.

Jurisdiction and Venue

9. This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and

1338(a), because it is a civil action arising under federal law, and specifically under the Patent

Act of 1952, 35 U.S.C. §§ 1 et seq.

10. This Court has personal jurisdiction over the Defendant because it has

substantial contacts and /or conducts business in the State of Florida and in this judicial

district, and has been directly infringing, contributing to the infringement of, and inducing

others to infringe, one or more claims of the ‘918 Patent in Florida and elsewhere. This Court

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also has personal jurisdiction over the Defendant because Defendant has committed a tortious

act causing injury in Florida, namely, one or more of the acts of patent infringement alleged

herein.

11. Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391(b), 1391(c), 1391(d)

and/or 1400(b) because of substantial part of the events giving rise to Plaintiffs’ claims

occurred in the Southern District of Florida and because the Defendant is subject to personal

jurisdiction in the Southern District.

The ‘918 Patent

12. Plaintiffs, Messrs. Sole Festa and Fernandez, are co-inventors of U.S. Patent

No. 10, 122,918, titled “System for Producing 360 Degree Media.”

13. The Plaintiffs applied for the ‘918 Patent on June 16, 2016, and the U.S. Patent

& Trademark Office issued the ‘918 Patent on November 6, 2018.

14. Plaintiffs are the owners of all rights, title, and interest in and to the ‘918 Patent.

15. The ‘918 Patent is valid and enforceable.

16. The ‘918 Patent teaches and claims a system for producing 360 degree media

using an adapter that works with a computer, such as a smartphone, having a forward looking

camera and rear facing camera, such that the system uses the images captured by both

cameras to create a 360 degree image or series of images.

The Infringement by Shenzhen Arashi Vision

17. On or about November 20, 2018, Plaintiffs, through their counsel, sent a letter

to Shenzhen Arashi Vision informing the Defendant that they were infringing the ‘918 Patent.

A copy of the letter is attached as Exhibit B.

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18. Shenzhen Arashi Vision manufactures, imports into the United States,

distributes, offers for sale, and sells, a device that infringes the ‘918 Patent called the

PANOCLIP.

19. Even after receiving the November 20, 2018, cease and desist letter, Defendant

continued to infringe with impunity.

20. Indeed, after the filing of this lawsuit, Defendant continued to seek registration

of its trademark PANOCLIP for the sale of the infringing device in the United States.

21. On August 27, 2020, Defendant submitted a statement, under oath, to the U.S.

Patent & Trademark Office, indicating that it has been using the trademark PANOCLIP to

sell the infringing 360 degree device in the U.S. since at least as early as June 6, 2018, in class

009 for, inter alia, “Computer peripheral devices; downloadable computer software

applications for panoramic imaging technology, 360-degree video.” See U.S. Trademark

Registration No. 6195601, that registered November 10, 2020. In connection with the

required statement of use, the Defendant submitted two photographs, showing its use in

commerce in the United States:

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22. Defendant promoted the PANOCLIP on a website at the domain:

https://en.panoclip.com/ which remains active to the present day. The website appears to

have deactivated the link to purchase the PANOCLIP directly through the website, but the

device is still available for purchase on Amazon.

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23. On November 10, 2020, Shenzhen Arashi Vision also obtained a second U.S.

trademark registration for PANOCLIP, U.S. Trademark Registration No. 6195602, as used

in connection with, inter alia “research and development for panoramic imaging technology,

virtual reality technology, 360-degree panorama photography technology, and 360-degree

video technology…” Defendant submitted the following specimen of use in August 2020 to

show use in the United States, not China:

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The website available at the domain cn.panoclip.com is initially provided in the Chinese

language and then quickly directs the user to the English site and advertises the infringing

PANOCLIP device:

24. Based on Defendant’s own statements to the U.S. Patent & Trademark Office,

under oath, Defendant has imported, has offered for sale, and continues to make, sell, import

and offer for sale, phone accessory products that enable smartphones to capture 360 degree

media by applying a front and a rear camera lens to produce 360 degree media via a software

user interface. Upon information and belief, these infringing products include, but are not

limited to, phone accessory devices such as devices sold under the product/trademark name

PANOCLIP and PANOCLIP LITE amongst others. See Exhibit “C”.

25. Shenzhen Arashi Vision’s PANOCLIP device infringes at least claim l of the

‘918 Patent, because the device meets the claim limitations of claim 1:

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A system for producing 360 PANOCLIP advertises as a system for

degree media comprising: producing 360 degree media.

an adapter comprising a frame The PANOCLIP includes an adapter

comprising a front side and a rear comprising a frame with a front and rear side

side forming a channel in between, and a channel in between:

a front lens comprising a first wide

angle lens and a first afocal lens,

and a rear lens comprising a second

wide angle lens and a second afocal

lens

It also has the requisite lenses.

wherein the front lens is secured to The top view of the PANOCLIP shows this

the front side and faces in a first claim limitation:

direction and the rear lens is

secured to the rear side and faces in

a second direction, wherein the first

direction is opposite the second

direction

and a computer comprising a The PANOCLIP is designed to fit over a

processor, a memory, a user smartphone, such as an iPhone such that the

interface, a front camera front lens of the adapter fits over the front

comprising a front camera lens, and camera lens of the smartphone and the rear

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a rear camera comprising a rear lens of the adapter fits over the rear camera

camera lens, wherein the channel of lens. A smartphone comprises a processor, a

the adapter fits over and releasably memory, a user interface and at least two

secures to a portion of the computer cameras.

so that the front lens covers the

front camera lens, and the rear lens

covers the rear camera lens,

wherein the front lens and the rear The PANOCLIP information touts that the

lens expand a capturable field of application that the user can obtain from

view of the front camera and the Defendant permits the creation of a 360

rear camera, wherein the degree video:

processor receives a first captured

image from the front camera and

a second captured image from the

second camera; and merges the

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first captured image with the

second captured image to produce

a 360 degree media.

26. The PANOCLIP infringing device sold by Defendant instructs the person who

purchases the device to download an application onto the user’s smartphone so that the two

cameras on the smartphone can record images from the cameras to create a 360 degree media.

27. Defendant, either directly or through an agent, is providing a downloadable

software application that allows the user to download the application onto the smartphone in

order to use the PANOCLIP adapter in a manner that infringes the ‘918 Patent.

28. Defendant, either directly or through an agent, offered the downloadable

software application, through one or more third-party providers, such as the Apple® Store.

29. Upon information and belief, Plaintiffs recently learned that Defendant has

imported hundreds of thousands of the PANOCLIP device under that brand, and possibly

other brands, into the United States, in violation of U.S. patent laws.

COUNT I – DIRECT PATENT INFRINGEMENT

30. Plaintiffs repeat and reallege paragraphs 1 through 29, as if fully set forth

herein.

31. Plaintiffs have never authorized or given Defendant permission to use the

inventions claimed in the ‘918 Patent.

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32. Without a license of permission from Plaintiffs, Defendant has infringed and

continues to infringe on one or more claims of the ‘918 Patent by importing, making, using,

offering for sale, or selling products and devices that embody the patented invention,

including, without limitation, at least claim 1 of the ‘918 Patent, in violation of 35 U.S.C. §

271.

33. Defendant’s infringement has been, and continues to be, knowing, intentional,

and willful.

34. Defendant’s acts of infringement of the ‘918 Patent have caused, and will

continue to cause, Plaintiffs to suffer damages for which Plaintiffs are entitled to

compensation pursuant to 35 U.S.C. §284.

35. Defendant’s acts of infringement of the ‘918 Patent have caused and will

continue to cause Plaintiffs immediate and irreparable harm unless such infringing activities

are enjoined by this Court pursuant to 35 U.S.C. §283. Plaintiffs have no adequate remedy at

law.

36. This case is exceptional and, therefore, Plaintiffs are entitled to an award of

attorneys’ fees pursuant to 35 U.S.C. §285.

COUNT II – INDIRECT INFRINGEMENT OF THE ‘918 PATENT

37. Plaintiffs repeat and reallege paragraphs 1 through 29, as if fully set forth

herein.

38. Defendant has been and is inducing infringement of the ‘918 Patent by actively

and knowingly inducing others to make, import into the United States, use, sell, or offer for

sale, a device that allows the user to use the device in a system for producing 360 degree media

that embodies or uses the invention claimed in the ‘918 Patent.

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39. Defendant induces the user who purchases Defendant’s device to infringe at

least independent claim 1 of the ‘918 Patent by instructing the user to download the software

application that allows the adapter it sells to function with the user’s smartphone computer,

in violation of 35 U.S.C. §271(b).

40. Defendant induces the third party that provides users access to the

downloadable software application that the user must download into the user’s smartphone

computer in order for the user to create and use the Defendant’s device in conjunction with

the user’s smartphone in a manner that infringes at least claim 1 of the ‘918 Patent, in violation

of 35 U.S.C. §271(b).

41. Defendant induces the user who purchases Defendant’s device to infringe at

least claim 1 of the ‘918 Patent by instructing the user to secure the Defendant’s device over

the user’s smartphone such that the device is aligned with the smartphone’s two cameras in a

manner that infringes the patent, in violation of 35 U.S.C. §271(b).

42. Defendant’s infringement has been, and continues to be knowing, intentional,

and willful.

43. Defendant’s acts of infringement of the ‘918 Patent have caused and will

continue to cause Plaintiffs to suffer damages for which Plaintiffs are entitled to compensation

pursuant to 35 U.S.C. §284.

44. Defendant’s acts of infringement of the ‘918 Patent have caused and will

continue to cause Plaintiffs immediate and irreparable harm unless such infringing activities

are enjoined by this Court pursuant to 35 U.S.C. §283. Plaintiffs have no adequate remedy at

law.

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45. This case is exceptional and, therefore, Plaintiffs are entitled to an award of

attorneys’ fees pursuant to 35 U.S.C. §285.

COUNT III – INDIRECT INFRINGEMENT OF THE ‘918 PATENT

46. Plaintiffs repeat and reallege paragraphs 1 through 29, as if fully set forth

herein.

47. Defendant has been and is a contributory infringer of the ‘918 Patent by

making, using, selling, or offering for sale a device for use in creating a patented system,

constituting a material part of the invention, knowing the same to be especially made or

especially adapted for use in an infringement of such patent, and not a staple article or

commodity of commerce suitable for substantial noninfringing use, and specifically for

producing 360 degree media in accordance with a system as claimed in at least independent

claim 1 of the ‘918 Patent, in violation of 35 U.S.C. §271(c).

48. Defendant’s infringement has been, and continues to be knowing, intentional,

and willful.

49. Defendant’s acts of infringement of the ‘918 Patent have caused and will

continue to cause Plaintiffs to suffer damages for which Plaintiffs are entitled to compensation

pursuant to 35 U.S.C. §284.

50. Defendant’s acts of infringement of the ‘918 Patent have caused and will

continue to cause Plaintiffs immediate and irreparable harm unless such infringing activities

are enjoined by this Court pursuant to 35 U.S.C. §283. Plaintiffs have no adequate remedy at

law.

51. This case is exceptional and, therefore, Plaintiffs are entitled to an award of

attorneys’ fees pursuant to 35 U.S.C. §285.

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RELIEF REQUESTED

WHEREFORE, Plaintiffs pray that the Court enter judgement in their favor and

award the following relief against Defendant:

(a) Adjudging that Schenzen Arashi Vision has infringed the ‘918 Patent, in

violation of 35 U.S.C. §271(a);

(b) Adjudging that Schenzen Arashi Vision has actively induced infringement of

the ‘918 Patent, in violation of 35 U.S.C. §271(b);

‘918 Patent, in violation of 35 U.S.C. §271(c);

(d) Granting an injunction, preliminarily and permanently, enjoining Defendant,

its employees, agents, officers, directors, attorneys, successors, affiliates, subsidiaries, and

assigns, and all those in active concert and participation with any of the foregoing persons or

entities from infringing, contributing to the infringement of, or inducing the infringement of

the ‘918 Patent;

(e) Ordering Defendant to account and pay damages adequate to compensate

Plaintiffs for Defendant’s infringement of the ‘918 Patent, with pre-judgment and post-

judgment interest and costs, pursuant to 35 U.S.C. §284;

(f) Ordering that the damages awarded be increased up to three times the actual

amount assessed, pursuant to 35 U.S.C. § 284;

(g) Declaring this case exceptional and awarding Plaintiffs their reasonable

attorneys’ fees, pursuant to 35 U.S.C. §285;

(h) Ordering the destruction of all infringing product; and

(i) Awarding such other and further relief as this Court deems just and proper.

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PLAINTIFFS HEREBY DEMAND a jury trial under FRCP Rule 38(a).

Dated: December 23, 2020 Respectfully submitted,

By: s/ Darlene Barron ______Darlene Barron, Esq. Florida Bar No. 108873 [email protected] William R. Trueba, Jr., Esq. Florida Bar No. 117544 [email protected] Roberto M. Suarez, Esq. Florida Bar No. 95762 [email protected] TRUEBA & SUAREZ, PLLC 9100 S. Dadeland Blvd., Suite 1500 Miami, Florida 33156 Telephone: (305) 482-1001 Facsimile: (786) 516-2826

Counsel for Plaintiffs

CERTIFICATE OF SERVICE

I hereby certify that on December 23, 2020 I electronically filed the foregoing

document with the Clerk of the Court using CM/ECF. I also certify that the foregoing

document is being served this day on all counsel of record or pro se parties identified on the

attached Service List in the manner specified, either via transmission of Notices of Electronic

Filing generated by CM/ECF or in some other authorized manner for those counsel or parties

who are not authorized to receive electronically Notices of Electronic Filing.

By: s/ Darlene Barron Darlene Barron Florida Bar No. 108773

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SERVICE LIST Maurizio Sole Festa and Alexis Fernandez v. Shenzhen Arashi Vision Company LTD. Case No: 19-20711-Civ-COOKE/GOODMAN United States District Court, Southern District of Florida Ryan T. Santurri William R. Trueba, Jr., Esq. Florida Bar No. 015698 Florida Bar No. 117544 [email protected] [email protected] ALLEN, DYER, DOPPELT Roberto M. Suarez, Esq. & GILCHRIST, P.A. Florida Bar No. 95762 255 South Orange Avenue, Suite 1401 [email protected] Orlando, FL 32801 Darlene Barron, Esq. Telephone: (407) 841-2330 Florida Bar No. 108873 Facsimile: (407) 841-2343 [email protected] TRUEBA & SUAREZ, PLLC Robert H. Thornburg 9100 S. Dadeland Blvd., Suite 1500 Florida Bar No. 630829 Miami, FL 33156 [email protected] Telephone: (305) 482-1001 ALLEN, DYER, DOPPELT Facsimile: (786) 516-2826 & GILCHRIST, P.A. 1221 Brickell Ave., Suite 2400 Attorneys for Plaintiffs Maurizio Sole Festa and Miami, FL 33131 Alexis Fernandez Telephone: (305) 374-8303 Via CM/ECF Facsimile: (305) 374-8306

Eric G. Maurer (Pro hac vice) Georgia Bar No. 478199 [email protected] Scott P. Amy (Pro hac vice) Georgia Bar No. 141416 [email protected] Lei Fang (Pro hac vice) [email protected] Georgia Bar No. 142057 Andrea Bonner (Pro hac vice) [email protected] Georgia Bar No. 306931 THOMAS | HORSTEMEYER LLP 3200 Windy Hill Road SE Atlanta, GA 30339 Phone: (770) 933-9500 Fax: (770) 951-0933

Attorneys for Defendant Shenzhen Arashi Vision Company, Ltd. Via CM/ECF