Case 1:20-Cv-04957-MLB Document 1 Filed 12/07/20 Page 1 of 29

Case 1:20-cv-04957-MLB Document 1 Filed 12/07/20 Page 1 of 29

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF GEORGIA ATLANTA DIVISION

WINDY PLACE, INC. ) ) Plaintiff, ) Civil Action No. ______) v. ) ) JURY TRIAL DEMANDED CASE-MATE, INC. ) ) Defendant. )

COMPLAINT

Plaintiff Windy Place, Inc. (“Plaintiff” or “Windy Place”), by and through its undersigned counsel, hereby files the following Complaint for patent infringement against Defendant Case-Mate, Inc. (“Defendant” or “Case-Mate”), and alleges as follows:

INTRODUCTION

1. Case-Mate has continuously and deliberately sold lighted phone cases that infringe Windy Place’s patents. Case-Mate’s release of the new LuMee Halo, endorsed by Paris Hilton, demonstrates Case-Mate’s growing, willful infringement of Windy Place’s patents without reasonable compensation.

Windy Place Obtains Innovative Smartphone Case Lighting Patents

2. Cindy Gantz is a designer, cinematographer, and filmmaker and

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entrepreneur. In the 1990s, Ms. Gantz and her husband filmed and produced some of the seminal music videos of that era, including Pearl Jam’s “Even Flow” and

“Alive.” They created videos for the early Hip Hop scene in New York filming

NAS, Tribe Called Quest, Cypress Hill, and Busta Rhymes. After early success with MTV, their production company grew into a global endeavor and expanded from music videos to commercials, movies, and documentaries in over 70 countries.

3. This work required travel throughout the world. To stay in touch, particularly after the birth of their daughter, they frequently connected through video calls. Initially using computers, they quickly embraced front-facing cameras and video conferencing applications upon their introduction to smartphones.

4. Ms. Gantz’s filmmaking background made her acutely aware that relying on ambient lighting or light from computer and smartphone device screens alone resulted in poor quality, unflattering, and less visually compelling images.

To solve this problem, Ms. Gantz came up with the illuminated case for smartphones with front-facing cameras. Ms. Gantz brought this idea to her friends

Jackie Wallace and Jean Tripier. Together, the three inventors worked on designs and filed for patent applications. They filed the first provisional application on

January 28, 2011 (U.S. Provisional Patent Application Ser. No. 61/437,572) and

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their first patent issued on September 13, 2016 (U.S. Patent No. 9,442,346).

5. In January 2012, the group formed Windy Place to further this innovation.

6. Case-Mate is willfully infringing at least two of Windy Place’s patents

–U.S. Patent No. 9,930,235 (the “’235 Patent”) and U.S. Patent No. 10,397,460

(the “’460 Patent”) (collectively, the “Asserted Patents”). See Exs. A and B.

Case-Mate and LuMee Fight Smartphone Case Patent Litigation

7. After Windy Place’s inventions, smartphone front-facing camera photography, filming, and communication became ubiquitous. Oxford

Dictionaries named “selfie” word of the year in 2013. By 2016, the smartphone case market had grown to more than $2.0 billion.

8. In 2016 and 2017, recognizing the same need for better lighting, large companies such as Case-Mate, Snap Light, LLC, Ty-Lite, LLC, Slip to Grip, LLC, and LuMee, LLC (“LuMee”) began selling illuminated smartphone cases.

9. Competition in this market was fierce, with companies competing over celebrity endorsements and intellectual property rights.

10. These companies, including Case-Mate and LuMee filed numerous lawsuits involving patent infringement in this space. See, e.g., LuMee, LLC v. Slip to Grip, LLC, No. 1:16-cv-01028 (D. Del. Nov. 4, 2016); LuMee, LLC v. Ty-Lite,

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LLC, No. 1:16-cv-01030-GMS (D. Del. Nov. 7, 2016); LuMee, LLC v. Snap Light,

LLC, No. 1:16-cv-01029 (D. Del. Nov. 7, 2016); Case-Mate, Inc. v. LuMee, LLC,

No. 1:17-cv-00913 (N.D. Ga. Mar. 13, 2017); LuMee, LLC v. Case-Mate, Inc., No.

1:17-cv-02783-TCB (N.D. Ga. Apr. 6, 2017).

LuMee Obtains Limited Rights to Use Windy Place’s Patents

11. Around this same time, Windy Place’s first patent issued. See U.S.

Patent No. 9,442,346 (“’346 Patent”). It was apparent that Windy Place’s application predated the various patents asserted in the lawsuits filed by the aforementioned case makers. Multiple companies, including LuMee (who cited the patent application for the ’346 patent in their own patents), approached Windy

Place to obtain rights to the Windy Place patents. See U.S. Patent No. 9,464,796 and U.S. Patent No. 9,593,842. In October 2017, LuMee obtained limited rights to use the Windy Place patents.

12. LuMee’s CEO admitted that the Windy Place patents would “solidify our leadership position in the marketplace, allow for new product development opportunities.” See Ex. C (https://markets.businessinsider.com/news/stocks/lumee- bolsters-intellectual-property-position-with-expansion-of-patent-portfolio-

1006593399). LuMee emerged as the predominant seller of lighted smartphone cases, with rights to the foundational Windy Place patents.

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13. LuMee used the Windy Place patents in its LuMee Duo products.

LuMee acknowledged its use of the Windy Place patents on its website. See Ex. D

(https://web.archive.org/web/20190315143144/https://lumee.com/pages/patents)

(“Products covered by one or more U.S. and foreign patents including U.S. patents

9,464,796, 9,593,842, 9,442,346, and 9,930,235.” (emphasis added)).

Case-Mate Buys Some LuMee Assets

14. In August 2019, Case-Mate purchased most of LuMee’s assets.

Notably, Case-Mate did not, obtain any rights to the Windy Place patents.

15. On August 19, 2019, Windy Place conferred with Case-Mate to see if

Case-Mate would be acquiring and continuing to sell LuMee’s Duo product, which uses the Asserted Patents.

16. Case-Mate did not obtain any rights to the Windy Place patents during its discussions with Windy Place.

Case-Mate Sells the Duo without Any Rights to the Windy Place Patents

17. Although Case-Mate had no rights to Windy Place’s patents, Case-

Mate continued to sell cases practicing the Windy Place patents. Indeed, in 2020,

Case-Mate continued to advertise that the LuMee / Case-Mate products are

“covered by one or more U.S. and foreign patents including U.S. patents

9,464,796, 9,593,842, 9,442,346, and 9,930,235.” See Ex. E.

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18. Windy Place again reached out to Case-Mate. On January 30, 2020,

Windy Place reiterated the need for Case-Mate to license Windy Place’s technology, just as Lumee had done. Windy Place expressly stated that “Case-

Mate does not have a license to make, use, or sell products that practice these patents.”

19. Case-Mate ignored Windy Place, failing to even respond to its

January 30, 2020 letter.

20. Case-Mate not only continued selling the older LuMee Duo smartphone cases which infringed the Asserted Patents, it also began to releasing additional infringing products. In spring 2020, Case-Mate released another version of the Duo, branded Duo Kodak x LuMee. Windy Place again reached out to

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Case-Mate after the release of this product but to no avail.

Case-Mate Expands Its Infringement With the LuMee Halo X Paris Hilton

21. On October 5, 2020, Case-Mate (through the LuMee brand name) announced that it created the new “LuMee X Paris Hilton Holographic Collection,” launching a new advertising campaign for these products, featuring the endorsement of Paris Hilton.

See Ex. F.

22. The centerpiece of Case-Mate’s Holographic Collection was a new infringing product – the LuMee Halo.

23. As with the smartphone cases previously licensed by Lumee, the focus of Case-Mate’s campaign for the LuMee Halo are the front lights for better quality selfies:

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See Ex. G.

24. Since its acquisition of LuMee assets, Case-Mate has continuously and deliberately manufactured and sold products practicing the Windy Place patents. Its expansion—through the new Lumee Halo smartphone case— demonstrates Case-Mate’s growing, willful infringement of the Windy Place patents without reasonable compensation.

NATURE OF THE ACTION

25. This is a civil action for infringement of the ’235 Patent and the ’460

Patent under the patent laws of the United States, 35 U.S.C. § 1, et seq.

PARTIES

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26. Plaintiff Windy Place is a Delaware corporation with a principal place of business at 4111 E Madison Street, #268, Seattle, WA 98112.

27. Defendant Case-Mate is a Georgia corporation with a principal place of business at 7000 Central Parkway, Suite 1050, Atlanta, GA 30328. “Case-Mate is the industry leader in stylish and thoughtful phone cases and mobile accessories.” See Ex. H (https://case-mate.com/pages/our-story). Case-Mate distributes its products online through its website as well as through traditional big box retailers.

JURISDICTION AND VENUE

28. Windy Place’s claims arise under the patent laws of the United States,

35 U.S.C. § 1, et seq. Subject matter jurisdiction exists pursuant to 28 U.S.C. §§

1331 and 1338(a).

29. This court has both general and specific personal jurisdiction over

Case-Mate consistent with the requirement of the Due Process Clause of the

United States Constitution and the Georgia Long Arm statute. This Court has general personal jurisdiction over Case-Mate as a Georgia corporation. This Court also has personal jurisdiction because Case-Mate, directly or through intermediaries, ships, distributes, offers for sale, sells, and advertises its products in the United States and Georgia. By shipping into, selling, offering to sell, and/or

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using products that infringe on Windy Place’s Asserted Patents in this District, or by inducing or causing those acts to occur, Case-Mate has transacted and continues to transact business in Georgia and has committed and continues to commit tortious acts or omissions within Georgia.

30. Venue is proper in this District under 28 U.S.C. § 1400(b) because

Case-Mate, a Georgia corporation, resides in this district.

THE ASSERTED PATENTS

31. The ’235 Patent is entitled “Lighting and Power Devices and

Modules,” and issued on March 27, 2018, to inventors Cindy Gantz, Jackie

Wallace, and Jean Tripier. Windy Place owns the entire right, title, and interest in and to the ’235 Patent. A true and correct copy of the ’235 Patent is attached to this Complaint as Ex. A.

32. The ’460 Patent is entitled “Lighting and Power Devices and

Modules,” and issued on August 27, 2019, to inventors Cindy Gantz, Jackie

Wallace, and Jean Tripier. Windy Place owns the entire right, title, and interest in and to the ’460 Patent. A true and correct copy of the ’460 Patent is attached to this Complaint as Ex. B. The ’460 Patent is a continuation of the ’235 Patent.

Both patents claim priority to provisional applications filed on January 28, 2011 and June 24, 2011. See Exs. A and B.

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CLAIMS FOR RELIEF

33. The accused products include the LuMee Duo and LuMee Halo lighted smartphone cases (“Accused Products”). As detailed below, each element of at least one claim of the Asserted Patents is literally present in the Accused

Products, or is performed by Case-Mate’s customers as induced by Case-Mate. To the extent that any element is not literally present or performed, each such element is present or performed under the doctrine of equivalents.

COUNT I

INFRINGEMENT OF THE ’235 PATENT

34. Windy Place repeats and incorporates by reference the preceding allegations above as though set forth fully herein.

35. Case-Mate directly infringes the ’235 Patent under 35 U.S.C. §

271(a), both literally and under the doctrine of equivalents.

36. For example, Case-Mate has directly infringed, both literally and under the doctrine of the equivalents, at least claim 30 of the ’235 Patent. Case-

Mate makes, uses, offers for sale, sells, or imports within the United States products, including LuMee Duo and LuMee Halo, that meet every limitation of at least claim 30.

37. Claim 30 of the ’235 Patent is directed to a case configured to be

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removably attached to a smartphone, comprising: a back panel that substantially covers a back face of the smartphone when the case is attached to the smartphone, the case defining a first opening configured and arranged so that when the case is attached to the smartphone, at least part of a display of the smartphone is visible by way of the first opening, and the case further comprising one or more light sources positioned along a side edge of the first opening, and the one or more light sources operable to illuminate part of an area to be imaged by a front-facing camera of the smartphone, and wherein the back panel comprises a second opening that is aligned with a rear-facing camera of the smartphone when the case is attached to the smartphone.

38. To the extent the preamble of claim 30 is found to be limiting, LuMee

Duo and LuMee Halo are cases configured to be removably attached to a smartphone.

39. The LuMee Duo and LuMee Halo cases contain a back panel that substantially covers a back face of the smartphone when the case is attached to the smartphone.

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LuMee Duo LuMee Halo

See Ex. I. See Ex. F.

40. The LuMee Duo and LuMee Halo cases define a first opening configured and arranged so that when the case is attached to the smartphone, at least part of a display of the smartphone is visible by way of the first opening.

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LuMee Duo LuMee Halo

See Ex. I. See Ex. F.

41. The LuMee Duo and LuMee Halo cases further comprise one or more light sources positioned along a side edge of the first opening.

LuMee Duo LuMee Halo

See Ex. J. See Ex. F.

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42. The one or more light sources on the LuMee Duo and LuMee Halo are operable to illuminate part of an area to be imaged by a front-facing camera of the smartphone.

See Ex. K.

See Ex. F.

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43. The back panels of the LuMee Duo and LuMee Halo comprise a second opening that is aligned with a rear-facing camera of the smartphone when the case is attached to the smartphone.

LuMee Duo LuMee Halo

See Ex. I. See Ex. F.

44. The Accused Products also satisfy one or more of the dependent claims in the ’235 Patent. For example, the LuMee Duo and LuMee Halo satisfy all limitations of claim 32 of the ’235 Patent. One or more of the light sources on the LuMee Duo and LuMee Halo are light emitting diodes (LEDs).

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See Ex. L. See also Ex. F.

45. On information and belief, Case-Mate has indirectly infringed, and is indirectly, infringing at least claims 30 and 32 of the ’235 Patent in violation of 35

U.S.C. § 271(b), by making, using, offering for sale, and selling at least the LuMee

Duo and LuMee Halo in the United States without authority. Case-Mate induces its customers and/or end-users to infringe one or more of the claims of the ’235

Patent at least by encouraging, instructing, and aiding one or more persons in the

United States, including but not limited to Case-Mate employees who test and operate the LuMee Duo and LuMee Halo at the direction of Case-Mate, to make, use (including testing those devices and methods), sell or offer to sell one or more of the Case-Mate Accused Products in a manner that infringes the ’235 Patent.

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46. Since at least August 19, 2019, Case-Mate has had knowledge of the

’235 Patent and its activities have infringed the ’235 Patent. On information and belief, Case-Mate was aware that making, using, offering for sale, and selling the

Accused Products infringed the ’235 Patent.

47. Windy Place has suffered and continues to suffer harm as a result of

Case-Mate’s direct, contributory, and induced infringement.

COUNT II

INFRINGEMENT OF THE ’460 PATENT

48. Windy Place repeats and incorporates by reference the preceding allegations above as though set forth fully herein.

49. Case-Mate directly infringes the ’460 Patent under 35 U.S.C. §

271(a), both literally and under the doctrine of equivalents.

50. For example, Case-Mate has directly infringed, both literally and under the doctrine of the equivalents, at least claim 33 of the ’460 Patent. Case-

Mate makes, uses, offers for sale, sells, or imports within the United States products, including LuMee Duo and LuMee Halo, that meet every limitation of at least claim 33.

51. Claim 33 of the ’460 Patent is directed to a case configured to be removably attached to a smartphone, comprising: a back that substantially covers a

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back face of the smartphone when the case is attached to the smartphone, the case defining an opening configured and arranged so that when the case is attached to the smartphone, at least part of a display of the smartphone is visible by way of the opening, and the case further comprising a first plurality of light sources positioned along at least a side region of the case, and the first plurality of light sources are operable to illuminate part of an area to be imaged by a front-facing camera of the smartphone, wherein the case further comprises a second plurality of light sources positioned at the back of the case, and the second plurality of light sources is operable to illuminate part of an area to be imaged by a rear-facing camera of the smartphone when the case is attached to the smartphone.

52. To the extent the preamble of claim 33 is found to be limiting, LuMee

Duo and LuMee Halo are cases configured to be removably attached to a smartphone.

53. The LuMee Duo and LuMee Halo cases contain a back that substantially covers a back face of the smartphone when the case is attached to the smartphone.

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LuMee Duo LuMee Halo

See Ex. I. See Ex. F.

54. The LuMee Duo and LuMee Halo cases define an opening configured and arranged so that when the case is attached to the smartphone, at least part of a display of the smartphone is visible by way of the opening.

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LuMee Duo LuMee Halo

See Ex. I. See Ex. F.

55. The LuMee Duo and LuMee Halo cases further comprise a first plurality of light sources positioned along at least a side region of the case.

56. LuMee Duo LuMee Halo

See Ex. J. See Ex. F.

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57. The first plurality of light sources on the LuMee Duo and LuMee

Halo are operable to illuminate part of an area to be imaged by a front-facing camera of the smartphone.

See Ex. K.

See Ex. F.

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58. The LuMee Duo and LuMee Halo further comprise a second plurality of light sources positioned at the back of the case.

LuMee Duo LuMee Halo

See Ex. I. See Ex. F.

59. The second plurality of light sources on the LuMee Duo and LuMee

Halo is operable to illuminate part of an area to be imaged by a rear-facing camera of the smartphone when the case is attached to the smartphone.

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LuMee Duo LuMee Halo

See Ex. M. See Ex. F.

60. The Accused Products also satisfy one or more of the dependent claims in the ’460 Patent. For example, the LuMee Duo and LuMee Halo satisfy all limitations of claim 44 of the ’460 Patent. One or more of the light sources on the LuMee Duo and LuMee Halo has a variable illuminance.

LuMee Duo LuMee Halo

See Ex. I. See Ex. F.

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61. On information and belief, Case-Mate has indirectly infringed, and is indirectly, infringing at least claims 33 and 44 of the ’460 Patent in violation of 35

U.S.C. § 271(b), by making, using, offering for sale, and selling at least the LuMee

Duo and LuMee Halo in the United States without authority. Case-Mate induces its customers and/or end-users to infringe one or more of the claims of the ’460

Patent at least by encouraging, instructing, and aiding one or more persons in the

62. Since at least August 19, 2019, Case-Mate has had knowledge of the

’460 Patent and its activities have infringed the ’460 Patent. On information and belief, Case-Mate was aware that making, using, offering for sale, and selling the

Accused Products infringed the ’460 Patent.

63. Windy Place has suffered and continues to suffer harm as a result of

Case-Mate’s direct, contributory, and induced infringement.

PRAYER FOR RELIEF

Windy Place prays for judgment in its favor and against Case-Mate as

follows:

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(a) A judgment that the ’235 Patent and the ’460 Patent are valid

and enforceable;

(b) A judgment that Case-Mate infringed, either literally or under

the doctrine of equivalents, one or more of the claims of the

’235 Patent and the ’460 Patent;

for the infringement that has occurred, and any continuing or

future infringement of the Asserted Patents, up until the date

such judgment is entered, including pre-judgment and/or post-

judgment interest, costs, and disbursements as justified under 35

U.S.C. § 284, and an accounting adequate to compensate Windy

Place for Case-Mate’s infringement.

(d) A judgment that Case-Mate’s infringement of the ’235 Patent

and the ’460 Patent has been deliberate and willful;

(e) A judgment awarding Windy Place enhanced damages up to

three times their amount pursuant to 35 U.S.C. § 284;

(f) An award to Windy Place of all attorneys’ fees and costs

incurred by Windy Place in connection with this action under 35

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U.S.C. § 285;

(g) A declaration that this case is exceptional within the meaning of

35 U.S.C. § 285 and that Windy Place be awarded its reasonable

attorneys’ fees against Case-Mate that Windy Place incurs in

prosecuting this action;

(h) An award to Windy Place of costs and expenses that it incurs in

prosecuting this action; and

(i) A judgment that Windy Place be awarded such further relief at

law or in equity as the Court may deem just and proper.

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JURY TRIAL DEMANDED

Pursuant to Federal Rule of Civil Procedure 38, Plaintiff hereby demands a trial by jury on all issues so triable.

By:_/s/ Lawrence R. Jarvis Lawrence R. Jarvis, GA Bar 102116 [email protected] Joseph R. Dorris, GA Bar 586708 [email protected] FISH & RICHARDSON P.C. 1180 Peachtree St., N.E., 21st Floor Atlanta, GA 30309 Tel: (404) 724-2851 Fax: (404) 892-5002

Leeron G. Kalay, Pro Hac Vice to be filed [email protected] Katherine D. Prescott, Pro Hac Vice to be filed [email protected] FISH & RICHARDSON P.C. 500 Arguello Street, Suite 500 Redwood City, CA 94063 Tel: (650) 839-5070 Fax: (650) 839-5071

COUNSEL FOR PLAINTIFF WINDY PLACE, INC.

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CERTIFICATE OF COMPLIANCE

Pursuant to L.R. 7.1D, the undersigned counsel certifies that the foregoing has been prepared in Times New Roman 14 point, one of the four fonts and points approved by the Court in L.R. 5.1C.

/s/ Lawrence R. Jarvis Lawrence R. Jarvis, GA Bar 102116 [email protected] FISH & RICHARDSON P.C. 1180 Peachtree St., N.E., 21st Floor Atlanta, GA 30309 Tel: (404) 724-2851 Fax: (404) 892-5002