intermetro industries v. enovate medical

8/13/2019 InterMetro Industries v. Enovate Medical

1/28

IN THE UNITED STATES DISTRICT COURT

FOR THE MIDDLE DISTRICT OF PENNSYLVANIA

INTERMETRO INDUSTRIES CORPORATION,

a Delaware corporation,

Plaintiff,

v.

ENOVATE MEDICAL, LLC

a Delaware limited liability company,

Defendant.

COMPLAINT FOR PATENT INFRINGEMENT

AND DEMAND FOR JURY TRIAL

NOW COMES the Plaintiff, INTERMETRO INDUSTRIES

CORPORATION (InterMetro), by its attorneys HARNESS, DICKEY &

PIERCE, PLC, and for its Complaint against ENOVATE MEDICAL, LLC

(Enovate Medical), states as follows:

NATURE OF THE ACTION

1. This is an action for patent infringement under 35 U.S.C. 271, 283,284 and 285.

Case 3:02-at-06000 Document 1359 Filed 11/22/13 Page 1 of 28


2/28

2

THE PARTIES

2. InterMetro is a Delaware corporation having a principal place ofbusiness at 651 N. Washington St., Wilkes-Barre, PA 18705.

3. On information and belief, Enovate Medical is a Delaware limitedliability company having places of business at 7820 N. Lilly Road, Canton, MI

48187, and 1152 Park Avenue, Murfreesboro, TN 37129.

4. On information and belief, Enovate Medical was formed by themerger of Stinger Medical, a manufacturer and provider of mobile clinical

workstations based in Murfreesboro, Tennessee, and Enovate, a manufacturer and

provider of mobile and wall-mounted point-of-care work station solutions based in

Canton, Michigan. See http://www.enovatemedical.com/news-

StingerEnovatePR.html andhttp://stingerandenovate.com/.

5. On information and belief, Enovate Medical is the largest provider ofmobile clinical workstations in the country. See

http://www.enovatemedical.com/news-StingerEnovatePR.html and

http://stingerandenovate.com/.

JURISDICTION AND VENUE

6. This Court has subject matter jurisdiction over this matter pursuant to28 U.S.C. 1331 and 1338(a).



3/28

3

7. This Court has personal jurisdiction over Enovate Medical becauseEnovate Medical has transacted business in Pennsylvania by offering for sale and

selling computer carts in Pennsylvania, among other products, that InterMetro alleges

infringe its patents. SeeFed. R. Civ. P. 4(h) and 42 PA.CONS.STAT. 5322(a).

8. This Court also has personal jurisdiction over Enovate Medical becauseEnovate Medical has in the past and continues to cause harm to InterMetro in

Pennsylvania as a result of acts it has and continues to commit both inside and

outside of Pennsylvania. SeeFed. R. Civ. P. 4(h) and 42 PA.CONS.STAT. 5322(a).

9. Venue over Enovate Medical is proper in this judicial district under 28U.S.C. 1391(d) and 1400(b).

FACTUAL BACKGROUND

10. On December 10, 2002, the United States Patent and TrademarkOffice (Patent Office) issued United States Patent No. 6,493,220 entitled

Mobile Clinical Workstation (the 220 patent). A copy of the 220 patent is

attached to this Complaint as Exhibit 1.

11. On December 20, 2002, EMS Technologies Inc. (EMS), apredecessor-in-ownership to InterMetro of the point-of-care cart technology that is

embodied in the 220 patent, issued a news release announcing the Patent Office

had awarded the 220 patent. The release stated:

This patent describes the essential features of the cart-based form

factor in a workstation, which is equipped with a computer and power



4/28

4

supply, and is connected wirelessly to a local area network by WiFi

access points. [We] developed the technology for cart-based systems,

which allow healthcare providers to realize the full benefits of clinical

point-of-care applications as the way to improve patient safety with a

device that is easy to use.

The patent on the Mobile Clinical Workstation protects the flagship

product of our Healthcare Solutions Group, which has established the

industry-standard form factor and created a leading position in this

growing market for wireless technology.

SeeExhibit 2.

12. Over the next decade, EMS and subsequent owners of the point-of-care cart technology, including InterMetro, pursued additional patents on the

subject matter through Patent Office continuation practice.

13. Their efforts resulted in the Patent Office awarding U.S. Patent Nos.6,721,178 (the 178 patent); 7,009,840 (the 840 patent); 7,612,999 (the 999

patent); 7,791,866 (the 866 patent); 7,990,691 (the 691 patent); and

8,526,176 (the 176 patent). SeeExhibits 3and 5-9, respectively.

14. On February 10, 2003, EMS sued a competitor for infringing the 220patent.

15. The next day, the Atlanta Business Chronicle published an articleabout the lawsuit. EMSs Director of its Healthcare Solutions Group was quoted

in the article, putting competitors on notice that the patent rights would be

enforced:



5/28

5

We are quite determined to enforce our patent rights, and to require

other providers of point-of-care carts to either develop their own

unique products, or pay reasonable compensation to EMS for the use

of technology that we created.

See Exhibit 10.

16. EMSs enforcement activities also included issuing press releases andpublishing product brochures with notice of its patents.

17. In addition, EMS marked its point-of-care carts with its patentnumbers; approached competitors at trade shows to inform them of its patents; and

sent letters to competitors offering them an opportunity to license its patent rights.

18. EMSs actions resulted in multiple patent infringement lawsuits thatresolved on terms which included the infringers paying undisclosed amounts to

license the patents, and acknowledging the validity and enforceability of the

patents. See Exhibit 11.

19. In February 2005, Flo Healthcare Solutions, L.L.C. (Flo), asuccessor-in-ownership to EMSs point-of-care-cart technology, including the

related patents and patent applications, sent notice letters to competitors in the

point-of-care-cart market, including Rioux Vision, Inc. (Rioux Vision) and

Stinger, a predecessor to Enovate Medical, among others. See Exhibits 12 and 13.

20. The letters offered an opportunity to license both the 220 and 178patents, they enclosed copies of the patents, and they pointed out that other

competitors were licensed under the patents.



6/28

6

21. On October 26, 2006, Flo sued Rioux Vision for infringing the 178patent.

22. On March 21, 2008, the Court granted Flo summary judgment thatRioux Visions point-of-care carts infringed numerous claims of the 178 patent.

23. On December 8, 2008, Flo sued Omnicell, Inc. (Omnicell), forinfringing the 178 patent.

24. On September 30, 2009, Flo assigned InterMetro the entire right, titleand interest to the point-of-care cart technology, including the related patents and

patent applications.

25. The written assignment expressly granted InterMetro the exclusiveright to seek and obtain all remedies available at law (including money damages)

and in equity for any past, present and future infringement of the patent properties.

26. In September 2010, InterMetro settled the lawsuits against RiouxVision and Omnicell, which included granting them a license to the patents.

27. Three years before, on September 20, 2007, Rioux Vision filed aPetition forInter PartesReexamination of the 178 patent with the Patent Office.

28. On February 15, 2013, the Patent Office issued a reexaminationcertificate for the 178 patent that confirmed the patentability of claims 2-6, 18-22,

27-33, 39, 43, 44, as well as the patentability of newly added claims 45-130. A



7/28

7

copy of the Inter Partes Reexamination Certificate for the 178 patent is attached to

this Complaint as Exhibit 4.

29. Since the 220 patent issued on December 10, 2002, InterMetro andits predecessors-in-ownership have continuously marked their point-of-care carts

with the 220 patent and related patents.

30. Competitors in the point-of-care-cart market have long been on noticeof InterMetros patents for the point-of-care-cart technology and its intent to

enforce these patents.

COUNT IINFRINGEMENT OF U.S.PATENT NO.6,493,220

31. InterMetro restates the allegations contained in paragraphs 1-30.32. On December 10, 2002, the Patent Office duly and lawfully issued the

220 patent. SeeExhibit 2.

33. InterMetro owns the 220 patent, along with the right to bring suit andrecover damages for past, present and future infringement of the 220 patent.

34. Enovate Medical has in the past and/or currently is directly infringingthe claims of the 220 patent under 35 U.S.C. 271(a) by making, using, offering

for sale and selling, without InterMetros authority, computer carts and medication

carts that embody one or more of the 220 patent claims.

35. By way of example and not limitation, Enovate Medical has in thepast and/or currently is making, using, offering for sale and selling the Enovate



8/28

8

Medical Computer Cart and the Enovate Medical Medication Cart, each of which

directly infringes at least claims 2 of the 220 patent, among other claims. See,

e.g.,Exhibits 14 - 17.

36. Enovate Medical has in the past and/or currently is inducing andcontributing to the direct infringement of the 220 patent claims in violation of 35

U.S.C. 271(b) and (c), by making, using, offering for sale and selling, without

InterMetros authority, computer carts and medication carts with knowledge of the

220 patent and its claims; knowing that others, including customers and users of

its computer carts and medication carts, will use the carts in an infringing manner;

knowing that its computer carts and medication carts are a material part of the

invention claimed in the 220 patent; knowing that its computer carts and

medication carts are especially made or especially adapted for use in an

infringement of the 220 patent; and knowing that its computer carts and

medication carts are not staple articles or commodities of commerce that are

suitable for substantial non-infringing use.


Medical Computer Cart and the Enovate Medical Medication Cart that its

customers use to directly infringe at least claims 2 of the 220 patent, among other

claims. See, e.g.,Exhibits 14 17.



9/28

9

38. Enovate Medicals marketing materials extoll the benefits of itscomputer carts and medication carts with a computing device and a display, and,

among other things, instruct on the installation and set-up of the carts with a

monitor and CPU, or a laptop computer. See Exhibits 14 - 17.

39. The benefits Enovate Medical touts in its marketing materials for itscomputer carts and medication carts could not be realized without using a

computing device and a display with the carts.

40. Enovate Medicals computer carts and medication carts have nosubstantial non-infringing use.

41. In view of the facts alleged herein, Enovate has known of the 220patent, or has been willfully blind to the 220 patents existence, since at least

2005.

42. Enovate Medicals infringing activities have been willful anddeliberate.

43. Enovate Medicals infringing activities are directly and proximatelycausing immediate and irreparable injury to InterMetro for which InterMetro has

no adequate remedy at law.

44. Enovate Medical will continue its infringing activities unless enjoinedfrom doing so by the Court.



10/28

10

45. Enovate Medicals infringing activities have and continue to directlyand proximately cause damages to InterMetro.

COUNT IIINFRINGEMENT OF U.S.PATENT NO.6,721,178

46. InterMetro restates the allegations contained in paragraphs 1-45.47. On April 13, 2004, the Patent Office duly and lawfully issued the 178

patent. SeeExhibit 3.

48. On February 15, 2013, the Patent Office issued a reexaminationcertificate for the 178 patent, confirming the patentability of claims 2-6, 18-22,

27-33, 39, 43 and 44, as well as the patentability of newly added claims 45-130.

See Exhibit 4.

49. InterMetro owns the 178 patent, along with the right to bring suit andrecover damages for past, present and future infringement of the 178 patent.








11/28

11

directly infringes at least claim 2 of the 178 patent, among other claims. See, e.g.,

Exhibits 14 17.

52. By way of further example and not limitation, Enovate Medical has inthe past made, used, offered for sale and sold the Sydekick Medication

Workstation that directly infringes at least claim 2 of the 178 patent, among other

claims. See, e.g.,Exhibit 19.

53. By way of further example and not limitation, Enovate Medical has inthe past made, used, offered for sale and sold the Levitator Medication

Workstation that directly infringes at least claim 43 of the 178 patent, among

other claims. See, e.g.,Exhibit 20.












12/28

12





customers use to directly infringe at least claim 2 of the 178 patent, among other

claims. See, e.g.,Exhibits 14 17.


Workstation that its customers use to directly infringe at least claim 2 of the 178

patent, among other claims. See, e.g.,Exhibit 19.

57. By way of further example and not limitation, Enovate Medical has inthe past made, used, offered for sale and sold the Levitator Medication

Workstation that its customers use to directly infringe at least claim 43 of the 178

patent, among other claims. See, e.g.,Exhibit 20.



monitor and CPU, or a laptop computer. See, e.g., Exhibits 14 - 17.



13/28

13

59. Other marketing materials inform customers that the computer cartsand medication carts Accommodate most computer configurations: AIO, thin

clients, tablets, small form factors, and laptops. See, e.g., Exhibits 19and20.




62. In view of the facts alleged herein, Enovate Medical has known of the178 patent, or has been willfully blind to the 178 patents existence, since at least

2005.








14/28


15/28

15










customers use to directly infringe at least claims 1, 6, 8 and 15 of the 999 patent,

among other claims. See, e.g., Exhibits 14 - 17.








16/28

16



2009.






COUNT IVINFRINGEMENT OF U.S.PATENT NO.7,791,866

82. InterMetro restates the allegations contained in paragraphs 1-81.83. On September 7, 2010, the Patent Office duly and lawfully issued the

866 patent. See Exhibit 7.

84. InterMetro owns the 866 patent, along with all rights to bring suit andrecover damages for past, present and future infringement of the 866 patent.



17/28

17






directly infringes at least claims 12, 13, 17, 18 and 21 of the 866 patent, among

other claims. See, e.g., Exhibits 14 - 17.












18/28

18




Medical Computer Cart and the Enovate Medical Medication Cart which its

customers use to directly infringe at least claims 12, 13, 17, 18 and 21 of the 866

patent, among other claims. See, e.g., Exhibits 14 - 17.



monitor and CPU, or a laptop computer. See Exhibits 14 - 17.





2010.



19/28

19






COUNT VINFRINGEMENT OF U.S.PATENT NO.7,990,691

97. InterMetro restates the allegations contained in paragraphs 1-96.98. On August 2, 2011, the Patent Office duly and lawfully issued the

691 patent. SeeExhibit 8.







20/28

20



directly infringes at least claims 1, 2, 16, 25 and 33 of the 691 patent, among other

claims. See, e.g., Exhibits 14 - 17.

102. By way of further example and not limitation, Enovate Medical has inthe past and/or currently is making, using, offering for sale and selling the Enovate

Medical Ultra Lite Cart that directly infringes at least claim 25 of the 691 patent.

See, e.g., Exhibit 18.


Workstation that directly infringes at least claims 1, 2 and 33 of the 691 patent,

among other claims. See, e.g.,Exhibit 19.









21/28

21





suitable for substantial non-infringing uses.


Medical Computer Cart and the Enovate Medical Medication Cart which its

customers use to directly infringe at least claims 1, 2, 16, 25 and 33 of the 691

patent, among other claims.

106. By way of further example and not limitation, Enovate Medical has inthe past and/or currently is making, using, offering for sale and selling the Enovate

Medical Ultra Lite Cart that its customers use to directly infringe at least claim 25

of the 691 patent. See, e.g., Exhibit 18.


Workstation that its customers use to directly infringe at least claims 1, 2 and 33 of

the 691 patent, among other claims. See, e.g., Exhibit 19.




22/28

22



109. Other marketing materials inform customers that the computer cartsand medication carts Accommodate most computer configurations: AIO, thin

clients, tablets, small form factors, and laptops. See, e.g.,Exhibit 19.


computing device and display with the carts.



2011.







23/28

23


COUNT VIINFRINGEMENT OF U.S.PATENT NO.8,526,176

117. InterMetro restates the allegations contained in paragraphs 1-116.118. On September 3, 2013, the Patent Office duly and lawfully issued the

176 patent. See Exhibit 9.







directly infringes at least claims 8, 9, 15 and 17 of the 176 patent, among other

claims. See, e.g., Exhibits 14 - 17.





24/28


25/28

25





2013.






PRAYER FOR RELIEF

WHEREFORE, InterMetro Industries Corporation prays that this Court:



26/28


27/28

27

other wrongful acts, and that such amount be paid over to InterMetro as an

equitable remedy;

G. Award to InterMetro all damages it has sustained as a result of theEnovate Medicals patent infringement and order that said damages be trebled in

accordance with 35 U.S.C. 284;

H. Enter judgment declaring that this case is exceptional and thatInterMetro is entitled to recover its costs and reasonable attorneys fees incurred in

this action, pursuant to 35 U.S.C. 285; and

I. Enter judgment granting such other and further relief and damages to

InterMetro as justice and equity may require.

JURY DEMAND

InterMetro Industries Corporation hereby requests a trial by jury of all

issues so triable.

Respectfully submitted,

DATED: November 22, 2013 By: s/ Dale M. Heist

Dale M. Heist, PA23314

John Frank Murphy, PA206307

WOODCOCK WASHBURN LLP

Cira Centre, 12thFloor

2929 Arch StreetPhiladelphia, PA 19104

(215) 568-3100

(215) 564-3439 (fax)

[email protected]

[email protected]

[email protected]



28/28

OFCOUNSEL

Glenn E. Forbis, PA263218, MIP52119

George D. Moustakas, MIP41631

Neal D. Sanborn, MIP75725

HARNESS,DICKEY &PIERCE,PLC5445 Corporate Drive, Suite 400

Troy, Michigan 48098

(248) 641-1400

(248) 641-0270 (fax)

[email protected]

[email protected]

[email protected]

Attorneys for Plaintiff INTERMETROINDUSTRIES CORPORATION


intermetro industries v. enovate medical

Documents