IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

Transcription

1 IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE AMPEX CORPORATION, ) ) Plaintiff, ) Civil Action No. ) v. ) ) MITSUBISHI ELECTRIC ) JURY TRIAL DEMANDED CORPORATION and ) MITSUBISHI ELECTRIC ) AMERICA, INC. ) ) Defendants. ) ) COMPLAINT FOR PATENT INFRINGEMENT AND BREACH OF LICENSE AGREEMENT Plaintiff Ampex Corporation, for its complaint against defendants Mitsubishi Electric Corporation ("Mitsubishi-Japan") and Mitsubishi Electric America, Inc. ("Mitsubishi-U.S.") (collectively, "Mitsubishi et al."), demands a jury trial on all issues and avers as follows: Jurisdiction And Venue 1. This is an action for patent infringement and breach of license agreement and arises under the Patent Laws of the United States (Title 35, United States Code) and under the doctrine of pendent jurisdiction. This Court's jurisdiction is based on 28 U.S.C. 1338(a) and Venue is proper in this District under 28 U.S.C. 1391(c) and (d) and 1400(b). The Parties 2. Plaintiff Ampex Corporation (hereinafter, including its predecessors in interest, "Ampex") is a Delaware corporation having its principal place of business in Redwood City, California. 3. On information and belief, defendant Mitsubishi-Japan is a Japanese corporation, has its principal place of business in Tokyo,

2 Japan, manufactures video cassette recorders and televisions in Japan and other countries, exports such equipment from Japan and other countries to the United States, and actively induces defendant Mitsubishi-U.S. and others to sell and use such equipment in Delaware and elsewhere. 4. On information and belief, defendant Mitsubishi-U.S. is a Delaware corporation, is a wholly-owned subsidiary of Mitsubishi- Japan and offers for sale, sells and uses in Delaware and elsewhere in the United States video cassette recorders and televisions imported into this country by it in concert with and under the direction of Mitsubishi-Japan. 5. Ampex has an active licensing program which has encompassed United States Patent Nos. 4,075,666, 4,212,027, and 4,224,645, and which continues to encompass United States Patent Nos. 4,212,027 and 4,224,645. This licensing program has generated and is expected to continue to generate substantial revenue for Ampex. Mitsubishi et al.'s Unlawful Conduct 6. Ampex seeks injunctive relief and damages because of Mitsubishi et al.'s patent infringement, active inducement of patent infringement, and breach of license agreement as specified below: FIRST CLAIM FOR RELIEF Infringement Of U.S. Patent No. 4,075, Ampex adopts, alleges and incorporates by reference paragraphs 1 through 6, above. 8. On February 21, 1978, United States Patent No. 4,075,666 ("the '666 patent"), entitled "MAGNETIC TAPE RECORDER," was duly and legally issued to Ampex on an application filed by John A. Lomax and William J. Martin (a copy of the patent is annexed as Exhibit A). Ampex is now and has been the owner of all right and title to the 2

3 '666 patent, including the right to sue and recover for past infringement. 9. On May 1, 1978, Mitsubishi-Japan entered into a license agreement with Ampex covering certain patents that are owned by Ampex, including the '666 patent (a copy of the agreement is annexed as Exhibit B). This license agreement allowed Mitsubishi et al. to make, use and sell Ampex's invention described in the '666 patent. Mitsubishi-Japan paid over $12.5 million to Ampex pursuant to this license for products sold or leased prior to April 1, Under the terms of the license agreement, Mitsubishi- Japan regularly provided Ampex with royalty reports every six months, indicating the amount of sales subject to royalty under the agreement. The last such report acknowledging that royalty payments were owed to Ampex was dated May 28, For the next report, dated December 25, 1992, covering sales during the period from April 1, 1992 to September 30, 1992, Mitsubushi-Japan asserted that it had not sold any products falling under the license agreement. On information and belief, Mitsubishi et al. knew that this report was false, and Mitsubishi- Japan's unilateral refusal to pay royalties under the license agreement was made in bad faith. On December 19, 1994, Ampex informed Mitsubishi- Japan that it was in default of the license agreement for failure to make the required royalty payments. On February 17, 1995, Ampex exercised its option to terminate the license agreement. 11. Payment by Mitsubishi-Japan of royalties under the license agreement for products using, inter alia, the invention of the '666 patent was an essential and material term to the license agreement. Ampex would not and did not consent to Mitsubishi et al.'s sale of products using the invention of the '666 patent for the period during which Mitsubishi-Japan refused to pay royalties. 12. After Mitsubishi-Japan stopped paying royalties, Mitsubishi et al. infringed the '666 patent because Mitsubishi et al., 3

4 with the intention of not paying royalties, and without the authority of Ampex, sold and used in this country, and actively induced others to so sell and use, video cassette recorders including, without limitation, models HS-U48, HS-U58, HS-U67, HS-U69, HS-U82, HS-U100, HS-U200, HS-U250, HS-U500, HS-U550, HS-U650, BV-1300U, HS-5300U, HS-5324U and HS-5424U which fell within the scope of the claims of the '666 patent. 13. After Ampex terminated the license agreement, Mitsubishi et al. continued to sell, use and actively induce others to sell and use in this country video cassette recorders which fell within the scope of the '666 patent. 14. Ampex was damaged as a result of Mitsubishi et al.'s infringement, the amount and extent of such damages to be determined. 15. Ampex gave Mitsubishi et al. actual notice of its infringement after Mitsubishi-Japan stopped its royalty payments. On information and belief, Mitsubishi et al.'s infringement and active inducement of infringement of the '666 patent was willful and deliberate. SECOND (ALTERNATIVE) CLAIM FOR RELIEF Breach of License Agreement 16. Ampex adopts, alleges and incorporates by references paragraphs 1 through 15, above. 17. In the alternative to its claim for infringement of the '666 patent during the period from April 1, 1992 to February 17, 1995, Ampex asserts its right to its remedies under the license agreement prior to termination of the agreement. 18. Through its conduct as alleged above, Mitsubishi et al. breached the license agreement. 19. On information and belief, Mitsubishi et al.'s breach of the license agreement was in bad faith. 4

5 20. Ampex was damaged as a result of Mitsubishi et al.'s breach of the license agreement, the amount and extent of such damages to be determined. THIRD CLAIM FOR RELIEF Infringement Of U.S. Patent No. 4,212, Ampex adopts, alleges and incorporates by reference paragraphs 1 through 6, above. 22. On July 8, 1980, United States Patent No. 4,212,027 ("the '027 patent"), entitled "TIME BASE COMPENSATOR," was duly and legally issued to Ampex on an application filed by Maurice G. Lemoine (a copy of the patent is annexed as Exhibit C). Ampex is now and has been the owner of all right and title to the '027 patent, including the right to sue and recover for past infringement. 23. Ampex notified Mitsubishi et al. of the '027 patent at least by January, Mitsubishi et al. have infringed and continue to infringe the '027 patent by selling and using in this country, and by actively inducing others to so sell and use, televisions including, without limitation, models CS-27303, CK-27304, CS-27405, CS-27503, CK , CS-31303, CS-35303, CK-35304, CS-35403, CS-35503, CS-35803, CK , CS-40503, TS-4553, TS-5053, VS-4551, VS-4552, VS-5051, VS-5052, VS-5055, VS-5073, VS-5074, VS-6051, VS-6083 and VS-7083, using a feature called "picture in picture," which televisions fall within the scope of the claims of the '027 patent. 25. After having been given actual notice of their infringement, Mitsubishi et al. have continued to infringe, and actively induce others to infringe the '027 patent by selling, using and actively inducing others to so sell and use in this country televisions which fall within the scope of the claims of the '027 patent. 5

6 26. Ampex has been and will be damaged as a result of Mitsubishi et al.'s infringement, the amount and extent of such damages to be determined. 27. Mitsubishi et al.'s infringement and active inducement of infringement of the '027 patent have caused and will continue to cause irreparable injury to Ampex and its licensees. 28. On information and belief, Mitsubishi et al.'s infringement and active inducement of infringement of the '027 patent have been willful and deliberate, and will continue unless enjoined by this Court. FOURTH CLAIM FOR RELIEF Infringement of U.S. Patent No. 4,224, Ampex adopts, alleges and incorporates by reference paragraphs 1 through 6, above. 30. On September 23, 1980, United States Patent No. 4,224,645 ("the '645 patent"), entitled "METHOD AND APPARATUS FOR CONTROLLING THE MOVEMENT OF A RECORDING MEDIUM," was duly and legally issued to Ampex on an application filed by Paul A. Mauch (a copy of the patent annexed as Exhibit D). Ampex is now and has been the owner of all right and title to the '645 patent, including the right to sue and recover for past infringement. 31. Ampex notified Mitsubishi et al. of the '645 patent at least by January, Mitsubishi et al. have infringed and continue to infringe the '645 patent by selling and using in this country, and by actively inducing others to so sell and use, videotape cassette recorders including, without limitation, models HS-U67, HS-U500, HS- U550, HS-U650, HS-U760 and HS-U770 which fall within the scope of the claims of the '645 patent. 6

7 33. After having been given actual notice of their infringement, Mitsubishi et al. have continued to infringe, and actively induce others to infringe the '645 patent by selling, using and actively inducing others to sell and use in this country video cassette recorders which fall within the scope of the claims of the '645 patent. 34. Ampex has been and will be damaged as a result of Mitsubishi et al.'s infringement, the amount and extent of such damages to be determined. 35. Mitsubishi et al.'s infringement and active inducement of infringement of the '645 patent have caused and will continue to cause irreparable injury to Ampex and its licensees. 36. On information and belief, Mitsubishi et al.'s infringement and active inducement of infringement of the '645 patent have been willful and deliberate, and will continue unless enjoined by this Court. 7

8 PRAYER FOR RELIEF WHEREFORE, plaintiff Ampex Corporation prays for entry of judgment against defendants Mitsubishi Electric Corporation and Mitsubishi Electric America, Inc., as follows: B. Ampex is the owner of United States Patent Nos. 4,075,666, 4,212,027 and 4,224,645 and all rights of recovery under each of them; C. Each of United States Patent Nos. 4,075,666, 4,212,027 and 4,224,645 is valid and has been willfully and deliberately infringed by Mitsubishi et al.; D. Mitsubishi et al., its officers, agents, servants, employees and attorneys and those in active concert or participation with any of them, who receive actual notice of this Court's order be and are preliminarily enjoined and restrained from further infringement and active inducement of infringement of United States Patent No. 4,224,645. E. Mitsubishi et al., its officers, agents, servants, employees and attorneys and those persons in active concert or participation with any of them, who receive actual notice of this Court's order be and are permanently enjoined and restrained from further infringement and active inducement of infringement of United States Patent Nos. 4,212,027 and 4,224,645; F. Ampex is entitled to damages adequate to compensate for Mitsubishi et al.'s infringement, trebled pursuant to 35 U.S.C 284 because of Mitsubishi et al.'s willful infringement, together with interest; G. In the alternative, with respect only to the '666 patent and only for the period from April 1, 1992 until February 17, 1995, Ampex is entitled to damages for Mitsubishi et al.'s breach of the license agreement; H. Mitsubishi et al.'s breach of the license agreement was willful and in bad faith; and 8

9 I. Ampex is awarded its attorney fees, costs and expenses in this action, together with such other and further relief as this Court may deem just. 9

10 DEMAND FOR JURY TRIAL Pursuant to Rule 30(b) of the Federal Rules of Civil Procedure, Ampex demands a jury trial on all issues properly triable to a jury in this case. Young, Conaway, Stargatt & Taylor Rodney Square North Eleventh Floor Wilmington, Delaware Tel.: (302) Dated: September, 1995 OF COUNSEL: Robert C. Morgan Christopher J. Harnett Fish & Neave 1251 Avenue of the Americas New York, New York Tel.: (212) Norman H. Beamer Kevin P.B. Johnson Fish & Neave 525 University Avenue Palo Alto, California Tel.: (415) By: Bruce L. Stargatt Josy W. Ingersoll 10