Case 1:13-cv-11243-DJC Document 17 Filed 08/14/13 Page 1 of 12 UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS ) EXERGEN CORPORATION ) ) Plaintiff, ) ) v. ) ) Civil Action No. 1:13-cv-11243-DJC THERMOMEDICS, INC. and ) SANOMEDICS INTERNATIONAL ) JURY TRIAL DEMANDED HOLDINGS, INC. ) ) Defendants. ) ) EXERGEN CORPORATION S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT AND DEMAND FOR JURY TRIAL Exergen Corporation ( Exergen ) for its Complaint against Defendants Sanomedics International Holdings, Inc. ( Sanomedics ) and Thermomedics, Inc. ( Thermomedics ) alleges as follows. Exergen states that it has received Defendants written consent to file this amendment pursuant to Fed. R. Civ. P. 15(a)(2). PARTIES 1. Plaintiff Exergen Corporation ( Exergen ) is a corporation organized and existing under the laws of the Commonwealth of Massachusetts and having its principal place of business at 400 Pleasant Street, Watertown, Massachusetts, within this judicial district. 2. Defendant Sanomedics International Holdings, Inc. ( Sanomedics ) is, upon information and belief, a corporation organized under the laws of Delaware having its principal executive offices at 80 SW 8th Street, Suite 2180, Miami, Florida, and doing business in this judicial district, including business related to the claims asserted in this Complaint. 3. Defendant Thermomedics, Inc. ( Thermomedics ) is, upon information and
Case 1:13-cv-11243-DJC Document 17 Filed 08/14/13 Page 2 of 12 belief, a wholly owned subsidiary of Sanomedics International Holding, Inc. Thermomedics is a corporation organized under the laws of Nevada having its principal executive offices at 444 Brickell Avenue, Suite 415, Miami, Florida, and doing business in this judicial district, including business related to the claims asserted in this Complaint. JURISDICTION AND VENUE 4. This action is for patent infringement. The Court has subject matter jurisdiction under 28 U.S.C. 1331 and 1338(a). 5. This Court has personal jurisdiction over Defendants. Defendants have conducted and solicited and continue to conduct and solicit business in the Commonwealth of Massachusetts. Defendants have caused and are continuing to cause tortious injury in the Commonwealth of Massachusetts. Upon information and belief, Defendants, directly or through intermediaries, use, offer for sale, import, or distribute to others for such purposes, infrared thermometers, in the United States and the Commonwealth of Massachusetts. 6. Venue in this district is proper under 28 U.S.C. 1391(b) and (c) and 1400(b), as inter alia, Defendants are subject to personal jurisdiction in this district. FACTUAL BACKGROUND 7. On August 31, 2010, United States Patent No. 7,787,938 ( the 938 Patent ), entitled Temporal Artery Temperature Detector, was lawfully issued. 8. A copy of the 938 Patent is attached as Exhibit A and incorporated herein. 9. Exergen is the sole owner of the 938 Patent and all rights of recovery thereunder. 10. The 938 Patent has not expired and is in full force and effect. 11. Exergen has marked its products in connection with the 938 patent in compliance with 35 U.S.C. 287(a). 12. On September 18, 2001, United States Patent No. 6,292,685 ( the 685 Patent ), 2
Case 1:13-cv-11243-DJC Document 17 Filed 08/14/13 Page 3 of 12 entitled Temporal Artery Temperature Detector, was lawfully issued. 13. A copy of the 685 Patent is attached as Exhibit B and incorporated herein. 14. Exergen is the sole owner of the 685 Patent and all rights of recovery thereunder. 15. The 685 Patent has not expired and is in full force and effect. 16. Exergen has marked its products in connection with the 685 Patent in compliance with 35 U.S.C. 287(a). 17. Sanomedics has made, used, has offered for sale, and/or has sold infrared thermometers the use of which infringes the 938 Patent and the 685 Patent, including but not limited to, by selling thermometers sold under the name Sanomedics Non-Contact Thermometer ( Sanomedics Thermometer ). 18. Thermomedics has made and is making, has used and is using, has offered and is offering to sell, and/or has sold and is selling infrared thermometers the use of which infringes the 938 Patent, including but not limited to, by selling thermometers sold under the name Caregiver ( Caregiver Thermometer ). 19. The instructions provided to consumers with the Sanomedics Thermometer explicitly instruct users to use the product in an infringing manner. A copy of the instruction manual ( Sanomedics Manual ) has been attached as Exhibit C and is incorporated herein. 20. On information and belief, Sanomedics has tested the Sanomedics Thermometer in a manner as described in the Sanomedics Manual. 21. Through sale of the Sanomedics Thermometer along with the Sanomedics Manual, Sanomedics has shown a specific intent for customers to follow the instructions. This occurred subsequent to Sanomedics having actual notice of the asserted patents and with no license or other authorization from Exergen. Sanomedics has evidenced a specific intent for its 3
Case 1:13-cv-11243-DJC Document 17 Filed 08/14/13 Page 4 of 12 customers to use the Sanomedics Thermometer to infringe the asserted patents. 22. The Sanomedics Manual states, on page 2, It is essential to use the Talking Non- Contact Thermometer in the way it was intended. You are therefore advised to read this instruction manual and the safety precautions carefully before use. Sanomedics intended for users to follow this instruction. 23. Sanomedics specifically intended for users to use the Sanomedics Thermometer as directed. 24. The individuals performing the acts constituting direct infringement of the 685 and 938 Patents with respect to the Sanomedics Thermometer, are, in addition to Sanomedics personnel, individuals who use the Sanomedics Thermometer. 25. Because Sanomedics marketed the Sanomedics Thermometer for home use, the users include consumers, such as individuals who use the product to take a child s temperature at home. 26. Because Sanomedics also marketed the Sanomedics Thermometer for use by professionals, the users include individuals working in a clinical setting, such as nurses or medical assistants. 27. The Sanomedics Manual instructs users to perform underlying acts of direct infringement including on page 3, where users are instructed in HOW TO TAKE A TEMPERATURE as follows, Aim at the FOREHEAD, over the right temple*, holding the unit approximately 2 inches (5 cm) from the body. Press the thermometer s measurement button and the temperature is instantly displayed. 28. The Sanomedics Manual also instructs users to perform underlying acts of direct infringement on page 4, where users are instructed Aim towards the temple as described above, 4
Case 1:13-cv-11243-DJC Document 17 Filed 08/14/13 Page 5 of 12 keeping the unit at a distance of 5 cm (2 inches) from forehead, and press the Scan button. Results will be displayed or spoken in one second. 29. The Sanomedics Manual provides further evidence of how the device functions in an infringing manner in use on page 3 by explaining, When the user aims the thermometer at the temple (see below), this activates the radiation (energy) sensor. The temperature measurement is taken instantly by detection of the infrared heat generated by arterial blood flow. Body heat can therefore be measured without any interference from the heat of the surrounding environment. 30. The Sanomedics Manual instructs users to perform acts that directly infringe claims of the 938 Patent including 26, 29, 31, 32, 36-38 and 51-56. 31. The Sanomedics Manual instructs users to perform acts that constitute direct infringement of claims of the 685 Patent including 27, 28 and 30. 32. The Sanomedics Thermometer is not a staple item of commerce and has no substantial noninfringing use. The Sanomedics Thermometer is intended to be used in an infringing manner. This is evidenced in part by the Sanomedics Manual, which instructs the users to take the temperature at the temple. 33. The instructions provided to consumers with the Caregiver Thermometer explicitly instruct users to use the product in an infringing manner. A copy of the instruction manual ( Caregiver Manual ) has been attached as Exhibit D and is incorporated herein. 34. Thermomedics has tested the Caregiver Thermometer for compliance with ASTM and ISO standards. 35. On information and belief, Thermomedics has tested the Caregiver Thermometer in a manner as described in the Caregiver Manual. 5
Case 1:13-cv-11243-DJC Document 17 Filed 08/14/13 Page 6 of 12 36. Through sale of the Caregiver Thermometer along with the Caregiver Manual, Sanomedics shows a specific intent for the users to follow the instructions. This has occurred subsequent to Thermomedics having actual notice of the 938 Patent, and with no license or other authorization from Exergen. Thermomedics evidences a specific intent for its customers to use the Caregiver Thermometer to infringe the 938 Patents. 37. The Caregiver Manual states, on page 4, Read this manual thoroughly prior to using. Use this product only for its intended use. Thermomedics intended for users to follow this instruction. 38. Thermomedics specifically intended for users to use the Caregiver Thermometer as directed. 39. The individuals performing the acts constituting direct infringement of the 938 Patent, with respect to the Caregiver Thermometer, are, in addition to Thermomedics personnel, individuals who use the Caregiver Thermometer product. Because Thermomedics markets the product for clinical use, the users include those who work in a clinical setting, such as nurses or medical assistants. 40. The Caregiver Manual instructs users to perform underlying acts of direct infringement including on page 7, where users are instructed to Aim at center forehead area 1/2 to 2 away from skin surface (1.2 to 5 cm). Be sure thermometer is perpendicular to skin surface (at right angle). Press and release POWER button. Hold thermometer in place until a double audio beep is heard and the temperature is displayed on the LCD. 41. The Caregiver Manual instructs users to perform acts that directly infringe claims of the 938 Patent including 51 and 54. 42. The Thermomedics website displays an electronic training presentation with a 6
Case 1:13-cv-11243-DJC Document 17 Filed 08/14/13 Page 7 of 12 voice-over which demonstrates how the Caregiver Thermometer should be used. The website is http://thermomedics.squarespace.com/training-video/. This presentation instructs users to perform acts that directly infringe claims of the 938 Patent including 51 and 54. 43. The Caregiver Thermometer is not a staple item of commerce and has no substantial noninfringing use. The Caregiver Thermometer is intended to be used in an infringing manner. This is evidenced in part by the Caregiver Manual, which states, under Intended Use, the statement Caregiver is an infrared thermometer for body surface and forehead temperature measurement for infants and adults without contact to the human body. It can be used by consumers in a household environment and by doctors in a clinic as a reference. 44. Defendants have been aware of the existence of the 938 Patent since at least as early as about October 2012, when counsel for Exergen notified them about it through a letter identifying particular patent claims. 45. Defendants have been aware of the existence of the 685 Patent since at least as early as about October 2012, when counsel for Exergen notified them about it through a letter identifying particular patent claims. 46. On information and belief, Defendants were aware of the existence of the 685 Patent earlier than October 2012, when contacted by Exergen, because in 2005, Thermomedics Chief Technology Officer Gary J. O Hara served as an expert for defendants sued by Exergen for infringement of patents including the 685 Patent. out herein. COUNT I INFRINGEMENT OF THE 938 PATENT 47. Exergen incorporates by reference the preceding paragraphs as though fully set 48. On information and belief, Defendant Thermomedics has been and is using the 7
Case 1:13-cv-11243-DJC Document 17 Filed 08/14/13 Page 8 of 12 Caregiver Thermometer in a manner which infringes the 938 Patent. Thermomedics has engaged in this conduct willfully, with knowledge of the 938 Patent. 49. On information and belief, Defendant Sanomedics has used the Sanomedics Thermometer in a manner which infringes the 938 Patent. Sanomedics has engaged in this conduct willfully, with knowledge of the 938 Patent. 50. On information and belief, Defendant Thermomedics has been and is contributorily infringing and/or actively inducing others, including end users, to infringe the 938 Patent, and sells the infringing thermometers with the knowledge and intent that they will be used by end users and that such use infringes the 938 Patent, and the intent that such thermometers are especially designed to be and are used in a manner which infringes the 938 Patent. As evidenced by, inter alia, the instructions for use, such thermometers are, and are known and intended by Defendant Thermomedics to be, especially made and adapted for use in practicing a method of use that infringes the 938 Patent, constituting a material part of the invention of the patent, and not being staple items or commodities of commerce suitable for substantial noninfringing use. 51. On information and belief, Defendant Sanomedics has been and is contributorily infringing and/or actively inducing others, including end users, to infringe the 938 Patent, and sells the infringing thermometers with the knowledge and intent that they will be used by end users and that such use infringes the 938 Patent, and the intent that such thermometers are especially designed to be and are used in a manner which infringes the 938 Patent. As evidenced by, inter alia, the instructions for use, such thermometers are, and are known and intended by Defendant Sanomedics to be, especially made and adapted for use in practicing a method of use that infringes the 938 Patent, constituting a material part of the invention of the 8
Case 1:13-cv-11243-DJC Document 17 Filed 08/14/13 Page 9 of 12 patent, and not being staple items or commodities of commerce suitable for substantial noninfringing use. 52. Sanomedics is a direct competitor of Exergen with respect to the subject matter of the 938 patent. 53. Thermomedics is a direct competitor of Exergen with respect to the subject matter of the 938 patent. 54. On information and belief, Defendants were aware of the existence of the 938 Patent and their infringement of the 938 Patent has been intentional, deliberate, and willful. 55. By reason of the aforesaid infringement, Exergen is damaged and is entitled to damages adequate to compensate for Defendants infringement. 56. Defendants infringement of the 938 Patent has caused and is causing irreparable injury to Exergen, for which Exergen has no adequate remedy at law. Defendants will continue their unauthorized conduct unless enjoined by this Court. out herein. COUNT II INFRINGEMENT OF THE 685 PATENT 57. Exergen incorporates by reference the preceding paragraphs as though fully set 58. On information and belief, Defendant Sanomedics has used the Sanomedics Thermometer in a manner which directly infringes the 685 Patent. Sanomedics has engaged in this conduct willfully, with knowledge of the 685 Patent. 59. On information and belief, Defendant Sanomedics has contributorily infringed and/or actively induced others, including end users, to infringe the 685 Patent, and has sold the infringing thermometers with the knowledge and intent that they will be used by end users and that such use directly infringes the 685 Patent, and the intent that such thermometers are 9
Case 1:13-cv-11243-DJC Document 17 Filed 08/14/13 Page 10 of 12 especially designed to be and are used in a manner which directly infringes the 685 Patent. As evidenced by, inter alia, the instructions for use, such thermometers are, and are known and intended by Defendant Sanomedics to be, especially made and adapted for use in practicing a method of use that directly infringes the 685 Patent, constituting a material part of the invention of the patent, and not being staple items or commodities of commerce suitable for substantial noninfringing use. 60. Sanomedics is a direct competitor of Exergen with respect to the subject matter of the 685 Patent. 61. On information and belief, Sanomedics was aware of the existence of the 685 Patent and its infringement of the 685 Patent has been intentional, deliberate, and willful. 62. By reason of the aforesaid infringement, Exergen is damaged and is entitled to damages adequate to compensate for Sanomedics infringement. 63. Sanomedics infringement of the 685 Patent has caused and is causing irreparable injury to Exergen, for which Exergen has no adequate remedy at law. It will continue its unauthorized conduct unless enjoined by this Court. PRAYER FOR RELIEF WHEREFORE, Exergen respectfully requests this Court to grant the following relief, and any other relief the Court may deem proper: 1. Enter judgment in favor of Exergen determining that both Defendants induce infringement of, and have induced infringement of, the 938 Patent in violation of 35 U.S.C. 271(b); 2. Enter judgment in favor of Exergen determining that Sanomedics induces infringement of, and has induced infringement of, the 685 Patent in violation of 35 U.S.C. 271(b); 10
Case 1:13-cv-11243-DJC Document 17 Filed 08/14/13 Page 11 of 12 3. Enter judgment in favor of Exergen determining that both Defendants contributorily infringe, and have contributorily infringed, the 938 Patent in violation of 35 U.S.C. 271(c); 4. Enter judgment in favor of Exergen determining that Sanomedics contributorily infringes, and has contributorily infringed, the 685 Patent in violation of 35 U.S.C. 271(c); 5. Enter judgment in favor of Exergen determining that Sanomedics has infringed the 685 Patent in violation of 35 U.S.C. 271(a). 6. Enter judgment in favor of Exergen determining that both Defendants have and/or do infringe, the 938 Patent in violation of 35 U.S.C. 271(a). 7. Permanently enjoin both Defendants and their officers, agents, divisions, affiliates, subsidiaries, successors, employees, and representatives, and all those controlled by or acting in concert or privity with them from infringing, inducing the infringement, and/or contributing to the infringement of the 938 Patent; 8. Permanently enjoin Sanomedics and its officers, agents, divisions, affiliates, subsidiaries, successors, employees, and representatives, and all those controlled by or acting in concert or privity with it from infringing, inducing the infringement, and/or contributing to the infringement of the 685 Patent; 9. Award Exergen damages in an amount to be determined at trial; and 10. Award Exergen treble damages for willful infringement pursuant to 35 U.S.C. 284. 11
Case 1:13-cv-11243-DJC Document 17 Filed 08/14/13 Page 12 of 12 Exergen hereby demands a trial by jury. DEMAND FOR JURY TRIAL Date: August 14, 2013 Respectfully submitted, EXERGEN CORPORATION By its attorneys, /s/ Meredith L. Ainbinder Kerry L. Timbers (BBO # 552293) Robert M. Asher (BBO # 22865) Meredith L. Ainbinder (BBO # 661132) SUNSTEIN KANN MURPHY & TIMBERS LLP 125 Summer Street Boston, MA 02110-1618 Tel: (617) 443-9292 Fax: (617) 443-0004 Email: mainbinder@sunsteinlaw.com CERTIFICATE OF SERVICE I hereby certify that this document filed through the ECF system will be sent electronically to the registered participants as identified on the Notice of Electronic Filing (NEF) on the above date. 03577/00511 1942659.1 /s/ Meredith L. Ainbinder Meredith L. Ainbinder 12