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II. 3.
FACTUAL BACKGROUND
Yamauchi is the assignee and owner of all right, title, and interest in
3 and to United States Patent No. 7,374,641 (the 641 patent), issued on May 20, 4 2008. A true and accurate copy of the 641 patent is attached as Exhibit A. 5
4.
Yamauchi is the assignee and owner of all right, title and interest in and
6 to United States Patent No. 7,501,044 (the 044 patent), issued on Mar 10, 2009. 7 A true and accurate copy of the 044 patent is attached as Exhibit B. 8
5.
Albany purports to be the assignee and owner of all right, title and
9 interest in and to United States Patent No. 7,387,711 (the 711 patent), issued on 10 June 17, 2008. A true and accurate copy of the 711 patent is attached hereto as 11 Exhibit C. Albany purports to be the assignee and owner of all right, title and 12 interest in and to United States Patent No. 8,080,137 (the 137 patent), issued on 13 Dec 20, 2011. A true and accurate copy of the 137 patent is attached hereto as 14 Exhibit D. 15 16
III. 6.
This Court has federal question subject matter jurisdiction over all
17 counts under 28 U.S.C. 1331, 1338, 2201 and 2202. These claims arise under the 18 Patent Laws of the United States, 35 U.S.C. 1 et seq., and the Declaratory 19 Judgment Act, 28 U.S.C. 2201 and 2202. 20
7.
21 California, and its business transactions in the state of California have included sales 22 and offers for sale of shoe press belts. Albanys acts of patent infringement, set 23 forth below, arise out Albanys business transactions in California. In addition, 24 Albany has asserted that its sales of shoe press belts are covered by the 711 and 25 137 patents. Accordingly, Albany is subject to personal jurisdiction in this Court 26 pursuant to Californias long-arm statute, C.C.P. 410. 27 28 -2COMPLAINT FOR PATENT INFRINGEMENT
8.
2 because a substantial part of the events or omissions giving rise to Yamauchis 3 claims occurred in this district, and Albany is a corporation that transacts business in 4 this district. 5
9.
6 and 044 patents by manufacturing, marketing, selling, and using shoe press belts. 7 8 9
IV. FIRST CAUSE OF ACTION (Albanys Infringement of U.S. Patent No. 7,374,641) 10. 11. 12. Yamauchi incorporates the allegations contained in paragraphs 1 The 641 patent is not invalid and not unenforceable. Yamauchi has, and has had, the exclusive rights to make, use, sell,
13 and/or offer to sell any invention embodying one or more claims of the 641 patent 14 throughout the United States, and to import any invention embodying one or more 15 claims of the 641 patent into the United States. 16
13.
Upon information and belief, Albany has been and is infringing at least
17 claim 1 of the 641 patent by making, using, selling, importing, and/or offering to 18 sell shoe press belts, including at least the VentaBelt and VENTABELT EV shoe 19 press belts. Albany has committed infringing acts in this district and it will continue 20 to infringe the 641 patent unless enjoined. 21
Yamauchi has suffered and continues to suffer irreparable damage Yamauchi has not authorized Albany to practice any claim of the 641 On information and belief, Albany is and has been infringing with full
24 patent. 25
26 knowledge of the 641 patent, and its infringement has been willful and deliberate. 27 Albanys willful and deliberate infringement without any reasonable justication 28 -3COMPLAINT FOR PATENT INFRINGEMENT
1 makes this an exceptional case, entitling Yamauchi to treble damages and attorney 2 fees pursuant to 35 U.S.C. 284 and 285. 3 4 5
V. SECOND CAUSE OF ACTION (Albanys Infringement of U.S. Patent No. 7,501,044) 17. 18. 19. Yamauchi incorporates the allegations contained in paragraphs 1 The 044 patent is not invalid and not unenforceable. Yamauchi has the exclusive rights to make, use, sell, and/or offer to sell
9 any invention embodying one or more claims of the 044 patent throughout the 10 United States, and to import any invention embodying one or more claims of the 11 044 patent into the United States. 12
20.
Upon information and belief, Albany has been and is infringing at least
13 claims 1 and 2 of the 044 patent by making, using, selling, importing, and/or 14 offering to sell shoe press belts, including at least the VentaBelt and VENTABELT 15 EV shoe press belts. Albany has committed infringing acts in this district and it will 16 continue to infringe the 044 patent unless enjoined. 17
21. 22.
Yamauchi has suffered and continues to suffer irreparable damage Yamauchi has not authorized Albany to practice any claim of the 641 VI. THIRD CAUSE OF ACTION (Non-infringement of U.S. Patent No. 7,387,711)
20 patent. 21 22 23
23. 24.
Yamauchi incorporates the allegations contained in paragraphs 1 Because Albany has demonstrated an intent to enforce the 711 patent
26 and the 137 patent against Yamauchi, there is a case or controversy between 27 Albany and Yamauchi with respect to the subject matter of those patents. 28 -4COMPLAINT FOR PATENT INFRINGEMENT
25.
2 Mr. Ichiro Yamauchi, Chief Executive Officer and President of Yamauchi. A true 3 and accurate copy of the letter is attached Exhibit E. 4
26. 27.
The December 18, 2012, letter asserts that Yamauchis Yamabelt The December 18, 2012 letter demanded that Yamauchi confirm in
5 Super95 shoe press belt infringes the 711 and 137 patents. 6
7 writing that it and its representatives to cease making, using, selling or offering for 8 sale the Yamabelt product in the United States and elsewhere, and so confirm in 9 writing on or before fifteen days of the date of the letter or January 2, 2013. 10
28.
The December 18, 2012, letter further stated that if it did not receive
11 the requested confirmation from Yamauchi, Albany would consider enforcement of 12 all of its rights and seek all available remedies in such jurisdictions as it deems fit. 13
29.
14 U.S. representative, AstenJohnson, Inc., and its distributor in Europe and other 15 regions, Heimbach GmbH Co. KG. 16
30. 31.
Through its attorney, Yamauchi responded to Albany by letter dated By the December 26, 2012, letter, Yamauchi asserted that it did not
17 December 26, 2012. A true and accurate copy of the letter is attached as Exhibit F. 18
19 infringe either the 711 or 137 patents, stated that it did not understand the basis of 20 Albanys accusation, and requested that Albany provide substantiation for its 21 accusations or withdraw them. 22
32. 33.
As of the date of this Complaint, Albany neither has provided Yamauchis Yamabelt shoe press belt products do not infringe any
1 2 3
VII. FOURTH CAUSE OF ACTION (Invalidity of U.S. Patent No. 7,387,711) 34. Yamauchi incorporates the allegations contained in paragraphs 1
4 through 9 and 23 through 32 of this complaint as though fully set forth in this 5 paragraph. 6
35.
Each claim of the 711 patent is invalid for failure to meet one or more
VIII. FIFTH CAUSE OF ACTION (Non-infringement of U.S. Patent No. 8,080,137) 36. Yamauchi incorporates the allegations contained in paragraphs 1
11 through 9 and 23 through 32 of this complaint as though fully set forth in this 12 paragraph. 13
37.
IX. SIXTH COUNT OF ACTION (Invalidity of U.S. Patent No. 8,080,137) 38. Yamauchi incorporates the allegations contained in paragraphs 1
18 through 9 and 23 through 32 of this complaint as though fully set forth in this 19 paragraph. 20
39.
Each claim of the 137 patent is invalid for failure to meet one or more PRAYER FOR RELIEF
WHEREFORE, Yamauchi prays that: A. B. The Court adjudge and decree that United States Patent Nos. 7,374,641, The Court adjudge and decree that Defendant has infringed United
25 and 7,501,044 are not invalid and not unenforceable against Defendant; 26
27 States Patent Nos. 7,374,641, and 7,501,044 under 35 USC 271 et seq.; 28 -6COMPLAINT FOR PATENT INFRINGEMENT
C. D. E. F.
The Court adjudge and decree that Yamauchis Yamabelts do not The Court adjudge and decree that each claim of U.S. Patent Nos. The Court permanently enjoin Defendant enjoin from infringing United The Court order award damages sufcient to compensate Plaintiff for
8 Defendants past infringement of United States Patent Nos. 7,374,641 and 9 7,501,044, together with costs and prejudgment interest for the amount of damages 10 determined; 11
G.
12 three (3) times the amount found or assessed in view of the willful and deliberate 13 character of Defendants infringement; 14
H. I.
The Court nd that this case is exceptional pursuant to 35 U.S.C. The Court grant Plaintiff such other relief as may be just and proper. DEMAND FOR JURY TRIAL
19 Procedure, requests a trial by jury of any issues so triable by right. 20 21 Dated: March 6, 2013 22 23 24 25 26 27 28 -7COMPLAINT FOR PATENT INFRINGEMENT
By:
/s/ James E. Hopenfeld James E. Hopenfeld Benjamin L. Singer Attorneys for Plaintiff YAMAUCHI CORPORATION
Exhibit A
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Exhibit F
James E. Hopenfeld
www.hsrslaw.com 2200 Pennsylvania Avenue, N.W. 4th Floor Washington, DC 20037 202-656-5097 tel 202-540-0537 fax jeh@hsrslaw.com
Via Electronic Mail Ronald R. Santucci Frommer Lawrence & Haug LLP 745 Fifth Avenue New York, New York 10151 Re: Yamabelt Super95 Shoe Press Belts and Albanys U.S. Patents Nos. 7,387,711 and 8,080,137
Dear Mr. Santucci: My firm represents Yamauchi Corporation. I respond to your December 18, 2012 letter to Yamauchi on behalf of Albany International. Your letter accuses Yamauchis Yamabelt Super95 shoe press belt of infringing "one or more" claims of U.S. Patents Nos. 7,387,711 (the '711 patent) and 8,080,137 (the 137 patent). As an initial matter, Yamauchi does not understand the basis for your claim of infringement. The 711 and 137 patents together contain 93 claims, and Albany indisputably bears the burden to prove that the Yamabelt infringes any one of them. Yet your letter fails to provide any evidence to support your accusation, provides no claim charts or infringement analysis, and offers no infringement theory or argument. Your letter does not even specify which of the 93 claims the Yamabelt allegedly infringes. Until Albany provides some meaningful specifics, Yamauchi has no reason to assume that Albany has any good faith basis for its accusation. Yamauchis policy is to respect all valid intellectual property rights, and it takes allegations of infringement seriously. In view of that policy, we have reviewed each of the 93 claims in the '711 and '137 patents and compared them to the Yamabelt. We conclude that neither Yamauchi nor the Yamabelt infringe any of the claims. The groove patterns used on the Yamabelt differ substantially from the various groove patterns claimed in the 711 and 137 patents. Moreover, if any of these claims somehow were construed to cover the Yamabelt, they would be invalid because they also would encompass the prior art that Albany cited to the United States Patent Office. Albany has, therefore, no basis to challenge Yamauchi's right to sell the Yamabelt in the United States and elsewhere.
Exhibit F - 92
Letter to Ronald R. Santucci December 26, 2012 Page 2 In view of the lack of any evidence of infringement, Yamauchi requests that Albany withdraw its allegation. If, however, Albany continues believe that the Yamabelt infringes any claim of the 711 and 137 patents, we ask that you specify precisely which claims you believe to be infringed and your basis for that belief, including a detailed claim chart. To the extent Albany would assert infringement of any related patent, whether in Japan or any other country, Yamauchi makes the same request. Any information you provide will be thoroughly reviewed and considered by Yamauchi. Finally, we understand that Albany has contacted Yamauchi distributors, representatives and/or agents regarding Albany's unsubstantiated infringement accusations. Yamauchi will hold Albany accountable for any harm it causes to Yamauchi's business through defamatory statements it makes to Yamauchi distributors, representatives, agents or customers, or other improper communications with them. Best Regards,
James E. Hopenfeld
Exhibit F - 93
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