Damian Smith (2991) (firstname.lastname@example.org) Terrence J. Edwards (9166) (email@example.com) Jon C.
Christiansen (4011) (firstname.lastname@example.org) Ben Stanley (14337) (email@example.com)
TechLaw Ventures, PLLC
Attorneys for Plaintiff J Morita Manufacturing Corp. Technology Law Center 3290 W. Mayflower Way Lehi, Utah 84043 Telephone: (801) 805-3687 Facsimile: (801) 852-8203
J. MORITA MANUFACTURING CORP., A Japan Corporation, Plaintiff,
COMPLAINT FOR PATENT INFRINGEMENT (Jury Trial Demanded)
v. DENTSPLY INTERNATIONAL INC. A Delaware corporation, Defendant.
Case No. 2:13-cv-00858-DB Judge Dee Benson
COMPLAINT Plaintiff, J MORITA MANUFACTURING CORP. (“Plaintiff”), hereby complains against Defendant DENTSPLY INTERNATIONAL INC. (“Defendant”) as follows: PARTIES 1. 2. Delaware. Plaintiff is a corporation organized and existing under the laws of Japan. Defendant is corporation organized and existing under the laws of the State of
NATURE OF THE ACTION 3. This is a civil action alleging infringement of United States Patent No. 5,980,248
(the “’248 Patent”) under the Patent Laws of the United States, 35 U.S.C. Section 1 et seq. and more specifically under 35 U.S.C. §§ 271, 281, 283, 284, and 285. A copy of the ‘248 Patent is attached hereto as Exhibit A. JURISDICTION AND VENUE 4. This Court has jurisdiction over the subject matter of this action pursuant to 28
U.S.C. §§ 1331 and 1338(a) because this action arises under the Patent Laws of the United States, 35 U.S.C. § 271 et seq. 5. In addition to the foregoing, this also is a civil action with complete diversity of
citizenship between Plaintiff and Defendant, with the amount in controversy exceeding $75,000. Thus, jurisdiction of this Court also is founded upon 28 U.S.C. § 1332. 6. This Court has personal jurisdiction over Defendant because upon information
and belief, Defendant is registered as a foreign corporation with the State of Utah, maintains a registered agent in the State of Utah, and directly and/or through authorized intermediaries, ships, distributes, offers for sale, sells, and /or advertises its products and services in the United States and the State of Utah and in this District, including via the website of its division or affiliate DENTSPLY Tulsa Dental Specialties (“Tulsa Dental”), www.tulsadentalspecialties.com, and through representatives assigned to the State of Utah. Upon information and belief, Defendant has committed patent infringement in the State of Utah. Upon information and belief, Defendant solicits customers in the State of Utah. On information and belief, Defendant has many
customers who are residents of the State of Utah who each use Defendant’s products and services in the State of Utah. Therefore Defendant is subject to the jurisdiction of this Court
pursuant to Rule 4(k)(1)(A) of the Federal Rules of Civil Procedure and Utah Code Ann. § 7827-24. 7. Venue is proper in this judicial district as to Defendant pursuant to 28 U.S.C. §§
1391 and 1400(b). THE ‘248 PATENT 8. 9. Paragraphs 1 - 7 are incorporated by reference as if fully set forth herein. On November 9, 1999, the ‘248 Patent entitled “Motor Controller for a Dental
Handpiece” was duly and lawfully issued by the United States Patent and Trademark Office (“PTO”). A true and correct copy of the ‘248 Patent is attached hereto as Exhibit A and is incorporated herein by this reference. 10. Plaintiff is the assignee of the ‘248 Patent, and is the owner of all right, title and
interest in and to the ‘248 Patent and possesses all rights of recovery under the ‘248 Patent, including the right to sue and recover all past, present and future damages for infringement thereof, including past infringement, and to enjoin acts of infringement of the ‘248 Patent. COUNT FOR PATENT INFRINGEMENT AND CLAIM FOR RELIEF 11. Plaintiff hereby incorporates the preceding paragraphs 1 through 10 of this
Complaint into this Count for Patent Infringement and Claim for Relief as though fully set forth herein. 12. In violation of 35 U.S.C. § 271(a), Defendant has infringed and continues to
infringe at least claims 1 and 4 of the ‘248 Patent by making, using, offering to sell, and selling (directly or through affiliates, subsidiaries, divisions or intermediaries), in this District and elsewhere in the United States, a dental hand piece which embodies the inventions claimed therein.
More specifically, and by way of non-limiting example, Defendant offers for sale
in Utah and in the United States: (a) the “ProMark brushless endodontic motor”; (b) the “e3 torque control motor”; and (c) the “X-Smart Endo Torque control motor,” and may also have offered for sale in Utah and the United States (d) the Silver reciprocal endodontic motor, each of which devices embodies the inventions set forth in at least claims 1 and 4 of the ‘248 Patent. 14. Plaintiff has not licensed or otherwise authorized Defendant to make, use, sell,
offer for sale, import, or otherwise practice in the United States of America any invention claimed by the ‘248 Patent. Defendant has, however, has announced plans to sell products in
Japan similar to those products set forth in paragraph 13 pursuant to sublicense of the corresponding Japan patent from an authorized licensee of Plaintiff. 15. Plaintiff is entitled to recover from Defendant the damages sustained by Plaintiff
as a result of the Defendant’s wrongful acts in an amount subject to proof at trial, which, by law, cannot be less than a reasonable royalty, together with interest and costs as fixed by this Court under 35 U.S.C. Section 284. 16. Upon information and belief, such infringement is willful and deliberate and were
made and continue to be made with knowledge of the ‘284 Patent. Upon information and believe, such infringement continued after notice by Plaintiff to Defendant of the existence of the ‘248 Patent and of Defendant’s infringement was provided by Notice of Infringement dated December 12, 2011. The Notice of Infringement attached hereto as Exhibit B. Such acts constitute willful and deliberate infringement and thereby make this case exceptional and entitle Plaintiff to increased damages (up to three times the amount found or assessed) and reasonable attorneys’ fees pursuant to 35 U.S.C. §§ 284 and 285.
Defendant’s infringement of Plaintiff’s rights under the ‘248 Patent will continue
to damage Plaintiff, causing irreparable harm for which there is no adequate remedy at law, unless enjoined by this Court. PRAYER FOR RELIEF WHEREFORE, Plaintiff respectfully requests that this Court enter a final order and judgment against Defendant as follows: A. An adjudication that Defendant has infringed the ‘248 Patent, including at least
claims 1 and 4; B. An award of all damages to compensate Plaintiff for Defendant’s past
infringement and any future infringement up to the date such judgment is entered, including interest, costs and disbursement as justified under 35 U.S.C. Section 284 and, if necessary, to adequately compensate Plaintiff for Defendant’s infringement, and an accounting of all infringing sales, manufacture, uses, importation and offers for sale including, but not limited to, those not presented at trial; C. D. action; E. That Plaintiff be granted permanent injunctive relief pursuant to 35 U.S.C. § A declaration that this case is exceptional under 35 U.S.C. Section 285; An award to Plaintiff of its attorneys’ fees, costs, and expenses incurred in this
283 enjoining Defendant, its officers, agents, servants, employees, and all those persons in active concert or participation with any of them, from any further acts of infringement of the ‘248 Patent; F. An award to Plaintiff of pre-judgment and post-judgment interest on the damages
caused to it by reason of Defendant’s infringement of the ‘248 Patent;
An award to Plaintiff of Defendant’s total profits, or the greatest amount allowable
under law, related to the sale of Defendant’s products found to infringe the ‘248 Patent, pursuant to 35 U.S.C. § 289; and H. An award to Plaintiff of such other and further relief at law or in equity as the
Court deems just and proper. DEMAND FOR JURY TRIAL Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Plaintiff hereby demands trial by jury on all claims and issues so triable. Dated September 19, 2013 TechLaw Ventures, PLLC /Terrence J. Edwards/ Terrence J. Edwards firstname.lastname@example.org Damian C. Smith email@example.com Jon C. Christiansen firstname.lastname@example.org Ben Stanley email@example.com 3290 W. Mayflower Way Lehi, UT 84043 Telephone: 801-443-7120 Counsel for Plaintiff J Morita Manufacturing Corp.