CASE 0:16-cv-00358-PJS-FLN Document 18 Filed 03/07/16 Page 1 of 20 UNITED STATES DISTRICT COURT DISTRICT OF MINNESOTA ERGOTRON, INC., Plaintiff, v. HUMANSCALE CORPORATION, Defendant. C.A. No.: 0:16-cv-00358-PJS-FLN AMENDED COMPLAINT (JURY TRIAL DEMANDED) Plaintiff, Ergotron, Inc. ( Ergotron ), for its Amended Complaint for Patent Infringement and Demand for Jury Trial against Defendant Humanscale Corporation ( Humanscale or Defendant ), states and alleges as follows: NATURE OF THE ACTION 1. This is an action for patent infringement of United States Patent No. 8,839,723 entitled Display Positioning Apparatus and Method ( the 723 patent ), United States Patent No. 9,080,721 entitled Display Positioning Apparatus and Method ( the 721 patent ), and United States Patent No. 9,267,639 entitled Lift Mechanism Systems and Methods ( the 639 patent ) (collectively the 723, 721, and 639 patents or patents-in-suit ) regarding Defendant Humanscale s QuickStand sit stand workstation. Upon information and belief, Defendant s QuickStand sit stand workstation copies and infringes Plaintiff Ergotron s patentsin-suit. THE PARTIES 2. Ergotron is a company incorporated under the laws of the State of Minnesota and has its principal place of business at 1181 Trapp Road, St. Paul, Minnesota 55121. 1
CASE 0:16-cv-00358-PJS-FLN Document 18 Filed 03/07/16 Page 2 of 20 3. Defendant Humanscale, upon information and belief, is a company incorporated under the laws of the State of New York and has its principal place of business at 11 East 26th Street, New York, New York 10011. JURISDICTION AND VENUE 4. This is an action in law and equity for patent infringement, arising under the patent laws of the United States, Title 35 of the United States Code. 5. This Court has jurisdiction over the subject matter of this action pursuant to 28 U.S.C. 1331 and 1338(a). 6. Venue is proper in this court under 28 U.S.C. 1391 and 1400(b). 7. This Court has personal jurisdiction over Humanscale because, upon information and belief, Humanscale transacts business in the State of Minnesota, has purposefully availed itself of the privileges of doing business in Minnesota, and has committed acts of patent infringement in Minnesota as alleged in this Amended Complaint. In addition, based at least on the foregoing, under the Minnesota Long Arm Statute, Minn. Stat. 543.19, Humanscale transacts business within Minnesota and has committed acts in Minnesota causing injury or property damage. 8. Humanscale, upon information and belief, has offered for sale and sold products that infringe Ergotron s 723, 721, and 639 patents in this judicial district, including at least the products set forth in this Amended Complaint. 2
CASE 0:16-cv-00358-PJS-FLN Document 18 Filed 03/07/16 Page 3 of 20 FACTS COMMON TO ALL CLAIMS FOR RELIEF Ergotron s WorkFit -S Sit-Stand Workstation 9. Ergotron was founded in 1982 by Harry Sweere, a VESA FDMI standard author. Since its inception, Ergotron has been a pioneer in creating computer workstations that improve health and productivity. 10. Ergotron s innovative products, which are the result of a significant investment in product development, market and wellness research, and marketing, often establish a new market category. 11. One such product is the WorkFit -S sit-stand workstation. The WorkFit -S is a patented sit-stand workstation that easily clamps to any flat surface, converting an individual s existing work surface into an adjustable-height standing desk. 12. The WorkFit -S sit-stand workstation has won numerous industry awards. For example, in 2011 the WorkFit -S sit-stand workstation received the 2011 Golden Bridge Award for Healthcare Products and Services Innovations, which recognizes excellence in engineering and design. Also in 2011, the WorkFit -S sit-stand workstation received the Platinum award for design and engineering excellence in Design Journal s ADEX Awards program. More recently, the WorkFit -S sit-stand workstation was chosen as one of four overall winners at the 2015 ErgoExpo Attendees Choice Awards, where attendees were instructed to vote for the one product they believe will increase productivity and profitability while improving workplace health and safety. 3
CASE 0:16-cv-00358-PJS-FLN Document 18 Filed 03/07/16 Page 4 of 20 Ergotron s U.S. Patent No. 8,839,723 ( the 723 patent ) 13. On September 23, 2014, the United States Patent and Trademark Office duly and legally issued the 723 patent, a copy of which is attached as Exhibit A to this Amended Complaint. 14. The 723 patent discloses a novel apparatus for positioning an electronic display and a keyboard relative to an existing work surface. 15. The 723 patent discloses that given the differences in people s size and posture, a single workstation embodying the invention could be adjusted to better serve multiple users with various monitor and keyboard height preferences. Similarly, the same workstation could be adjusted by a single user who wishes to perform various tasks at different postures, for example, some while sitting and others while standing. 16. A perspective view of an exemplary embodiment of the invention is shown in Fig. 1 of the 723 patent, reproduced below. 4
CASE 0:16-cv-00358-PJS-FLN Document 18 Filed 03/07/16 Page 5 of 20 17. Ergotron is the sole owner and assignee of the 723 patent. The 723 patent has not lapsed and is currently in full force and effect. 18. Ergotron s WorkFit -S sit-stand workstation embodies and is protected by one or more claims of the 723 patent. Ergotron s U.S. Patent No. 9,080,721 ( the 721 patent ) 19. On July 14, 2015, the United States Patent and Trademark Office duly and legally issued the 721 patent, a copy of which is attached as Exhibit B to this Amended Complaint. 20. The 721 patent is a continuation of the 723 patent and also discloses a novel apparatus for positioning an electronic display and a keyboard relative to an existing work surface. 21. Ergotron is the sole owner and assignee of the 721 patent. The 721 patent has not lapsed and is currently in full force and effect. 22. Ergotron s WorkFit -S sit-stand workstation embodies and is protected by one or more claims of the 721 patent. Ergotron s U.S. Patent No. 9,267,639 ( the 639 patent ) 23. On February 23, 2016, the United States Patent and Trademark Office duly and legally issued the 639 patent, a copy of which is attached as Exhibit C to this Amended Complaint. 24. The 639 patent discloses a novel apparatus for a lift mechanism. 25. Ergotron is the sole owner and assignee of the 639 patent. The 639 patent has not lapsed and is currently in full force and effect. 5
CASE 0:16-cv-00358-PJS-FLN Document 18 Filed 03/07/16 Page 6 of 20 26. Ergotron s WorkFit -S sit-stand workstation embodies and is protected by one or more claims of the 639 patent. products. Defendant Humanscale s Unlawful Infringement of Ergotron s Patents 27. Defendant Humanscale is a manufacturer and retailer of workplace ergonomic 28. Upon information and belief, Defendant has engaged in systematic and intentional acts to copy Ergotron s WorkFit -S sit-stand workstation which embodies and is protected by the 723, 721, and 639 patents. 29. Upon information and belief, Defendant Humanscale has continued to make, use, offer for sale, sell, and/or import the QuickStand sit stand workstation with knowledge that the WorkFit -S sit-stand workstation embodies and is protected by the patents-in-suit. 30. Upon information and belief, Humanscale s QuickStand competes directly with Ergotron s WorkFit -S sit-stand workstation. 31. Defendant s QuickStand sit stand workstation is an apparatus for positioning an electronic display and a keyboard relative to a work surface, as described in and claimed by the 723, 721, and 639 patents. A depiction of Defendant s QuickStand sit stand workstation is shown below. 6
CASE 0:16-cv-00358-PJS-FLN Document 18 Filed 03/07/16 Page 7 of 20 http://www.humanscale.com/userfiles/images/sit_stand/quickstand/quickstand_white_i2_3000.j pg. 32. Defendant s QuickStand sit stand workstation contains each limitation of at least independent claim 1 of the 723 patent and independent claim 1 of the 721 patent and also infringes dependent claims of those patents. By way of example only: 33. The QuickStand sit stand workstation includes a base including a bottom surface for supporting the base upon the [first] work surface... ( 723 at col. 26, lns. 5-6; 721 at col. 26, lns. 5-6) as shown below: 7
CASE 0:16-cv-00358-PJS-FLN Document 18 Filed 03/07/16 Page 8 of 20 http://www.humanscale.com/userfiles/images/sit_stand/quickstand/quickstand_gallery2.jpg. 34. The QuickStand sit stand workstation includes a support column extending upward from the base at an obtuse angle with respect to the [first] work surface... ( 723 at col. 26, lns. 7-8; 721 at col. 26, lns. 7-8) as shown below: http://www.humanscale.com/userfiles/images/sit_stand/quickstand/quickstand_white_i3_3000.j pg. 35. The QuickStand sit stand workstation includes a mounting portion movably coupled to the support column through a[n] angled range of travel relative to the [first] work surface... that is configured to simultaneously move the electronic display and the keyboard within the vertical range of travel ( 723 at col. 26, lns. 9-13; 721 at col. 26, lns. 9-13) as shown below: 8
CASE 0:16-cv-00358-PJS-FLN Document 18 Filed 03/07/16 Page 9 of 20 http://www.humanscale.com/userfiles/images/sit_stand/quickstand/quickstand_white_q1_3000.j pg; http://www.humanscale.com/products/productvideo.cfm?group=quickstand (showing the electronic display and the keyboard moving simultaneously within the range of travel). http://www.humanscale.com/userfiles/images/sit_stand/quickstand/quickstand_white_i5_3000.j pg. 9
CASE 0:16-cv-00358-PJS-FLN Document 18 Filed 03/07/16 Page 10 of 20 http://www.humanscale.com/userfiles/images/sit_stand/quickstand/quickstand_white_i4_3000.j pg. 36. The QuickStand sit stand workstation further includes a second work surface coupled to the mounting portion and configured to simultaneously move with the electronic display and the keyboard within the range of travel ( 721 at col. 26, lns. 14-16) as shown in the above figures as well as on Defendant s website. See http://www.humanscale.com/products/productvideo.cfm?group=quickstand (showing the electronic display and the keyboard moving simultaneously within the range of travel); http://www.humanscale.com/userfiles/file/quickstand_brochure_0814.pdf (the product s [a]djustable keyboard platform enables the work surface to move effortlessly to the user s desired height ). 37. Defendant s QuickStand sit stand workstation contains each limitation of at least independent claim 1 of the 639 patent and also infringes dependent claims of that patent. By way of example only: 10
CASE 0:16-cv-00358-PJS-FLN Document 18 Filed 03/07/16 Page 11 of 20 38. The QuickStand sit stand workstation includes [a] lift mechanism, comprising: a fixed component having proximal and distal ends... ( 639 at col. 17, lns. 58-59) as shown below: 39. The QuickStand sit stand workstation includes a movable component disposed in sliding or rolling engagement with the fixed component, the engagement including a contracted configuration in which the movable component is disposed a minimum distance from the fixed component distal end as shown below: 11
CASE 0:16-cv-00358-PJS-FLN Document 18 Filed 03/07/16 Page 12 of 20 40. The QuickStand sit stand workstation s engagement includes an expanded configuration in which the movable component is disposed a maximum distance from the fixed component distal end... ( 639 at col. 17, lns. 60-67) as shown below: 41. The QuickStand sit stand workstation includes a wheel pivotally supported by one of the components about a pivot axis, the wheel comprising a first pulley member and a cam member with an eccentric shape... ( 639 at col. 18, lns. 1-3) and, upon information and belief, having a rotational range of travel from a first angular orientation corresponding to the expanded configuration of the fixed and movable components to a second angular orientation corresponding to the contracted configuration of the fixed and movable components... ( 639 at col. 18, lns. 4-9) as shown below: 12
CASE 0:16-cv-00358-PJS-FLN Document 18 Filed 03/07/16 Page 13 of 20 42. The QuickStand sit stand workstation includes an energy storage member ( 639 at col. 18, lns. 10) in the form of a spring and a second pulley member connected to the energy storage member ( 639 at col. 18, lns. 10-11) both as shown below: 43. Upon information and belief, the QuickStand sit stand workstation includes a first cable comprising a first end and a second end; wherein the first end is attached to the cam member, and the second end is connected to the fixed component as shown below: 13
CASE 0:16-cv-00358-PJS-FLN Document 18 Filed 03/07/16 Page 14 of 20 44. Upon information and belief, the first cable in the QuickStand sit stand workstation is routed to engage the second pulley member and configured to bias the wheel to rotate in a first direction ( 639 at col. 18, lns. 12-17) as shown below: 14
CASE 0:16-cv-00358-PJS-FLN Document 18 Filed 03/07/16 Page 15 of 20 45. Upon information and belief, the QuickStand sit stand workstation includes a second cable connecting the first pulley member to one of the components so that the wheel rotates when the movable component is moved relative to the fixed component ( 639 at col. 18, lns. 18-21) as shown below: COUNT I INFRINGEMENT OF U.S. PATENT NO. 8,839,723 46. Ergotron reaffirms and incorporates by reference each and every allegation contained in paragraphs 1 through 45 as if fully set forth herein. patent. 47. This is a claim for patent infringement under 35 U.S.C. 271 of Ergotron s 723 48. Upon information and belief, Defendant Humanscale has infringed and continues to infringe at least claim 1 of the 723 patent literally, or under the doctrine of equivalents, by making, using, offering to sell, selling, and/or importing at least its QuickStand sit stand workstation without permission from Ergotron. 49. Upon information and belief, Defendant Humanscale will continue to infringe the 723 patent unless and until it is enjoined by this Court to stop the infringement. 50. Humanscale has caused and will continue to cause Ergotron irreparable injury and damage by infringing the 723 patent, including lost sales of Ergotron s WorkFit -S sit-stand 15
CASE 0:16-cv-00358-PJS-FLN Document 18 Filed 03/07/16 Page 16 of 20 workstation. Ergotron will suffer further irreparable injury, for which Ergotron has no adequate remedy at law, unless and until Defendant Humanscale is enjoined from infringing the 723 patent. 51. Upon information and belief, Defendant Humanscale s infringement of the 723 patent has been and continues to be taking place with objective recklessness and despite an objectively high likelihood that Humanscale s actions constitute infringement of a valid patent. COUNT II INFRINGEMENT OF U.S. PATENT NO. 9,080,721 52. Ergotron reaffirms and incorporates by reference each and every allegation contained in paragraphs 1 through 51 as if fully set forth herein. patent. 53. This is a claim for patent infringement under 35 U.S.C. 271 of Ergotron s 721 54. Upon information and belief, Defendant Humanscale has infringed and continues to infringe at least claim 1 of the 721 patent literally, or under the doctrine of equivalents, by making, using, offering to sell, selling, and/or importing at least its QuickStand sit stand workstation without permission from Ergotron. 55. Upon information and belief, Defendant Humanscale will continue to infringe the 721 patent unless and until it is enjoined by this Court to stop the infringement. 56. Humanscale has caused and will continue to cause Ergotron irreparable injury and damage by infringing the 721 patent, including lost sales of Ergotron s WorkFit -S sit-stand workstation. Ergotron will suffer further irreparable injury, for which Ergotron has no adequate remedy at law, unless and until Defendant Humanscale is enjoined from infringing the 721 patent. 16
CASE 0:16-cv-00358-PJS-FLN Document 18 Filed 03/07/16 Page 17 of 20 57. Upon information and belief, Defendant Humanscale s infringement of the 721 patent has been and continues to be taking place with objective recklessness and despite an objectively high likelihood that Humanscale s actions constitute infringement of a valid patent. COUNT III INFRINGEMENT OF U.S. PATENT NO. 9,267,639 58. Ergotron reaffirms and incorporates by reference each and every allegation contained in paragraphs 1 through 57 as if fully set forth herein. patent. 59. This is a claim for patent infringement under 35 U.S.C. 271 of Ergotron s 639 60. Upon information and belief, Defendant Humanscale has infringed and continues to infringe at least claim 1 of the 639 patent literally, or under the doctrine of equivalents, by making, using, offering to sell, selling, and/or importing at least its QuickStand sit stand workstation without permission from Ergotron. 61. Upon information and belief, Defendant Humanscale will continue to infringe the 639 patent unless and until it is enjoined by this Court to stop the infringement. 62. Humanscale has caused and will continue to cause Ergotron irreparable injury and damage by infringing the 639 patent, including lost sales of Ergotron s WorkFit -S sit-stand workstation. Ergotron will suffer further irreparable injury, for which Ergotron has no adequate remedy at law, unless and until Defendant Humanscale is enjoined from infringing the 639 patent. 63. Upon information and belief, Defendant Humanscale s infringement of the 639 patent has been and continues to be taking place with objective recklessness and despite an objectively high likelihood that Humanscale s actions constitute infringement of a valid patent. 17
CASE 0:16-cv-00358-PJS-FLN Document 18 Filed 03/07/16 Page 18 of 20 PRAYER FOR RELIEF WHEREFORE, Ergotron prays that this Court: A. Enter judgment that Humanscale has infringed United States Patent Nos. 8,839,723, 9,080,721, and 9,267,639; B. Enter an order preliminarily and permanently enjoining Humanscale, its officers, agents, servants, employees, attorneys, and all persons acting in concert or participation with it, from infringing United States Patent Nos. 8,839,723, 9,080,721, and 9,267,639; C. Award Ergotron its damages resulting from Humanscale s patent infringement pursuant to 35 U.S.C. 284, including its lost profits; D. Find that Humanscale s patent infringement has been willful and increase the damages awarded to Ergotron up to three times the amount assessed, pursuant to 35 U.S.C. 284; E. Find this to be an exceptional case and award Ergotron its attorneys fees and costs, pursuant to 35 U.S.C. 285; F. Award Ergotron its prejudgment interest and post judgment interest on its damages, attorneys fees and cost; and G. Award Ergotron such other and further relief as this Court deems just and proper, including but not limited to an accounting for pre-judgment infringements made but not otherwise awarded to Ergotron. JURY DEMAND Ergotron hereby demands a trial by jury on all issues triable to a jury in this case. 18
CASE 0:16-cv-00358-PJS-FLN Document 18 Filed 03/07/16 Page 19 of 20 Dated: March 7, 2016 Respectfully submitted, s/ Tara C. Clancy David R. Crosby (237693) david.crosby@stinson.com Kevin D. Conneely (019723) kevin.conneely@stinson.com STINSON LEONARD STREET LLP 150 South Fifth Street, Suite 2300 Minneapolis, MN 55402 Telephone: (612) 335-1500 Facsimile: (617) 335-1657 Tara C. Clancy (pro hac vice) tara.clancy@klgates.com Samantha A. Miko (pro hac vice) samantha.miko@klgates.com K&L GATES LLP State Street Financial Center One Lincoln Street Boston, MA 02111-2950 Telephone: (617) 261-3100 Facsimile: (617) 261-3175 Counsel for Plaintiff Ergotron, Inc. 19
CASE 0:16-cv-00358-PJS-FLN Document 18 Filed 03/07/16 Page 20 of 20 CERTIFICATE OF SERVICE I hereby certify that on March 7, 2016, a copy of the foregoing AMENDED COMPLAINT was caused to be filed electronically. Notice of this filing will be sent to the following parties by operation of the Court s electronic filing system. Parties may access this filing through the Court s system. Parties receiving service electronically are as follows: Kristen G Marttila kgmarttila@locklaw.com Lockridge Grindal Nauen P.L.L.P. 100 Washington Avenue South Suite 2200 Minneapolis, MN 55401 Luke Joseph McCammon luke.mccammon@finnegan.com Robert F. Shaffer robert.shaffer@finnegan.com Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 901 New York Ave. NW Washington, DC 22207 s/ Tara C. Clancy Tara C. Clancy Counsel for Plaintiff Ergotron, Inc. 20