1 Erik R. Puknys (Bar No.

190926)
Wesley B. Derrick (Bar No. 244944)
2 FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
3 3300 Hillview Avenue
Palo Alto, California 94304
4 Telephone: (650) 849-6600
Facsimile: (650) 849-6666
5
Linda Thayer (Bar No. 195115)
6 FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
7 55 Cambridge Parkway, Suite 700
Cambridge, MA 02142
8 Telephone: (617) 452-1680
Facsimile: (617) 456-1666
9
Attorneys for Plaintiff
10 BROOKS AUTOMATION, INC.
11
CONFIRMATION COpy
E-filing
12
13
14
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
15
16 BROOKS AUTOMATION, INC.,
17
18 v.
19 TELEMARK. INC .
20
21
22
Plaintiff,
Defendant.
cv 11
5778
COMPLAINT FOR PATENT
INFRINGEMENT, FALSE
ADVERTISING AND UNFAIR
COMPETITION
JURY TRIAL DEMANDED
23 Plaintiff Brooks Automation. Inc. ("Brooks" or "Plaintiff') for its Complaint against
24 defendant Telemark. Inc. (''Telemark'' or "Defendant") alleges:
25
26 1.
THE PARTIES
Plaintiff Brooks is a United States corporation organized and existing under the laws
27 of Delaware, and having its headquarters and principal place of business at 15 Elizabeth Drive,
28 Chelmsford. Massachusetts 01824.
COMPLAINT FOR PATENT INFRINGEMENT,
1 FALSE ADVERTISING AND UNFAIR COMPE1TI10N
Case No.
1 2. On information and belief, Defendant Telemark is a corporation organized and
2 existing under the laws of California. with its headquarters and principal place of business at 1801
3 SE Commerce Ave., Battle Ground, WA 98664-8963.
4 3. On information and belief, Telemark has operated a place of business and
5 manufacturing facility under the name Telemark Cryogenics at 52 Leveroni Court, Suite D, Novato.
6 California 94949.
7
8
9 4.
NATURE OF THE ACTION
This is an action for patent infringement arising under the laws of the United States
10 relating to patents, including, but not limited to 35 U.S.C. 271, false advertising under the federal
11 Lanham Act, including 15 U.S.C. 1125(a), and unfair competition under California Business &
12 Professions Code 17200. 17500. et seq.
13 5. On information and belief, Telemark has infringed and continues to infringe, induce
14 others to infringe, and/or contribute to the infringement of U.S. Reissued Patent No. 40,627 (''the
15 '627 Patent") assi$lled to Brooks, also referred to herein as the "Brooks Patent."
16 6. Brooks also brings this action seeking equitable relief and damages from Defendant's
17 false and misleading claims made in commercial advertisements about Defendant's products.
18 Defendant's false and misleading advertisements are likely to deceive consumers and lessen the
19 goodwill associated with Brooks and its products to Brooks's irreparable detriment.
20
21
22 7.
.JURISDICTION AND VENUE
This action arises under the patent laws of the United States, 35 U.S.C. 1 et seq.,
23 including 35 U.S.C. 271, and the trademark laws of the United States including Section 43(a) of
24 the Lanham Act, 15 U.S.C. 1125(a). This Court has subject matter jurisdiction pursuant to 28
25 U.S.C. 1331 and 1338(a).
26 8. Personal jurisdiction and venue are proper in this District pursuant to 28 U.S.C.
27 1391 and 1400(b) because, on information and belief. Defendant has maintained a place of
28 business in this judicial District, and a substantial part of the events that give rise to this action
2
COMPLAINT FOR PATENT INFRINGEMENT.
FALSE ADVERTISING AND UNFAIR COMPETITION
Case No.
1 occurred in California and within this District Upon information and belief, Defendant has
2 transacted business in this District by making, using, offering for sale, and selling infringing
3 products in this District
4 9. This Court has supplemental jurisdiction over Plaintifrs state law claims pursuant to
5 28 U.S.C. 1367 because those claims are so related to its federal claims that they form part of the
6 same case or controversy and derive from a common nucleus of operative facts.
7 FACTUAL BACKGROUND
8 10. Brooks is a leading provider of automation, vacuum and instrumentation solutions to
9 the global semiconductor and related industries. Brooks manufactures and sells Polycold cryogenic
10 refrigeration systems featuring patented cryogenic refrigeration technology to provide the highest
11 quality closed-loop Cool Solutions systems available in the market today. These state-of-the-art
12 systems are used in applications spanning a broad range of markets-from semiconductors, optical
13 networking, and flat panel displays through detector cooling for aerospace, telescopic and laboratory
14 requirements to web. decorative and ophthalmic coatings. Brooks offers "green" products that are
15 globally compliant with environmental regulations. In particular. Brooks' products do not contain
16 hydrochlorofluorocarbons (HCFCs). according to the terms of the Montreal Protocol and its
17 amendments.
18 11. In addition. Brooks sells replacement refrigerant gas charges for its Polycold
19 cryogenic refrigeration systems. The gas charges Brooks sells contain a refrigerant blend covered by
20 the Brooks Patent
21 12. Telemark manufactures and sells cryogenic systems that are in competition with
22 Brooks's P o l y c o l l ~ systems. Specifically, Telemark makes, uses, sells, offers for sale water vapor
23 cryotrap refrigeration units under the model numbers TVP-1000 and TVP-2000. On information and
24 belief, Defendant Telemark also makes, uses, sells, and offers for sale cryogenic refrigerants for use
25 in cryogenic refrigeration units such as the TVP-l000 and TVP-2000. On information and belief,
26 Defendant Telemark also makes, uses. sells. and offers for sale cryogenic refrigerants that are
27 designed for use in and being used in Brooks's Polycold refrigeration units.
28
3
COMPLAINT FOR PATENT INFRINGEMENT.
FALSE ADVERTISING AND UNFAIR COMPETITION
Case No.
1 13. On information and belief, Defendant Telemark has made, used, sold, offered for
2 sale, anellor imported products in and into the United States, and continues to make, use, sell, offer
3 for sale, and import products in and into the United States that infringe the Brooks Patent, including,
4 but not limited to, Telemark's EC203712000 Cryogenic Refrigerants identified with part number
5 310-0001-0-1,311-0001-0-1, and Telemark's Top-Off charge identified with part number 75-1020-
6 05 (collectively, the "Telemark Products").
7 14. On information and belief, Defendant Telemark manufactures, sells, and offers for
8 sale the Telemark Products to third parties with the knowledge and specific intent that they be
9 incorporated into and used with, for example, Polycold cryogenic refrigeration systems.
10 15. On information and belief, Defendant Telemark is fully aware of the Brooks Patent.
11 Thus far, Telemark has not taken a license for the infringing Telemark Products and, on information
12 and belief, has continued to offer for sale and sell the Telemark Products through its corporate
13 website and various distributors in reckless disregard of Brooks' patent rights.
14 16. On information and belief, by performing the foregoing acts, Defendant has infringed
15 and continues to infringe one or more claims of the Brooks Patent, has induced others to infringe the
16 Brooks Patent, anellor has contributed to the infringement of the Brooks Patent.
17 17. In addition, Defendant has distributed, and continues to distribute, various print
18 advertisements in interstate commerce, including to potential consumers, that contain false,
19 deceptive, anellor misleading statements about the nature, characteristics, and qualities of the
20 Defendant's competing products.
21 18. For example, Defendant advertises that the standard gas charges for its TVP units are
22 "CFC-Free, Compliant with US EPA requirements." Defendant'S advertising is false or misleading
23 because, on at least one occasion, Telemark sold a Telemark Product containing HCFC-22 in
24 violation of the EPA 2010 phase-out rules prohibiting the sale and export of new units containing
25 ozone-depleting gases. Defendant's advertising is also misleading because the claim "Contains no
26 CFCs" in Defendant's ad may cause reasonable consumers to believe that the product does not hann
27 the environment. Since at least one product sold by Defendant contained HCFC-22, an ozone-
28 depleting substance, the advertising claim is deceptive.
4
COMPLAINT FOR PATENT INFRINGEMENT.
FALSE ADVERTISING AND UNFAIR COMPETmON
Case No.
1 19. Defendant's false, misleading, and deceptive statements, individually and
2 collectively, irreparably injure the public and Brooks by deceiving consumers into mistakenly
3 believing that Defendant'S products have certain qualities and characteristics that they do not.
4 20. Defendant knew or should have known that its advertising claims are false,
5 misleading, and/or deceptive, and thus has acted knowingly, willfully, in reckless disregard of the
6 truth, and in bad faith.
7 COUNT I
8 Infringement of U.s. Reissued Patent No. 40,627 under 35 U.S.C. 271 et seq.
9 21. Brooks repeats and incorporates by reference each of the allegations contained in
10 Paragraphs 1 through 20 of this Complaint as though fully set forth herein.
11 22. U.S. Reissued Patent No. 40,627, entitled "Nonflammable Mixed Refrigerants (MR)
12 for Use with Very Low Temperature Throttle-Cycle Refrigeration Systems," reissued on January 27,
13 2009. A true and correct copy of the '627 Patent is attached as Exhibit A and incorporated by
14 reference.
15 23. Brooks owns and has the exclusive right to license the '627 Patent.
16 24. Defendant Telemark had knowledge of the Brooks Patent before the filing of this
17 Complaint.
18 25. On infonnation and belief, Defendant has directly infringed, induced others to
19 infringe, and/or contributed to the infringement of one or more claims of the Brooks Patent, both
20 literally and under the doctrine of equivalents, by making, using. selling, offering for sale. and/or
21 importing products into the United States. including but not limited to Telemark's EC2037/2000
22 Cryogenic Refrigerants identified with part number 310-0001-0-1.311-0001-0-1, and Telemark's
23 Top-Off charge identified with part number 75-1020-0.
24 26. On information and belief. Defendant's infringement of the Brooks Patent has been
25 deliberate and willful.
26 27. As a consequence of Defendant's infringement of the Brooks Patent, Brooks has been
27 damaged in an amount not yet determined.
28
5
COMPLAINT FOR PATENT INFRINGEMENT,
FALSE ADVERTISING AND UNFAIR COMPETmON
Case No.
1 28. On information and belief, Defendant's infringement of the Brooks Patent is on-going
2 and will continue to damage Brooks unless enjoined by this Court.
3 COUNTD
4 False Advertising under Section 43(a)(1)(B) ofthe Lanham Act, 15 U.S.C. 1125(a)(1)(B)
5 29. Brooks repeats and incorporates by reference each of the allegations contained in
6 Paragraphs 1 through 28 of this Complaint as though fully set forth herein.
7 30. Defendant's actions, as described above, constitute false and misleading descriptions
8 and misrepresentations of fact in commerce which, in commercial advertising and promotion
9 misrepresent the nature, characteristics, and qualities of Defendant'S products in violation of Section
10 43(aXIXB) of the Lanham Act, 15 U.S.C. 1125(aXl)(B).
11 31. Defendant's false, misleading. and deceptive statements, individually and
12 collectively, are material to a consumer's purchasing decision and are likely to divert consumers
13 away from considering or purchasing products from Brooks.
14 32. Defendant's false, misleading. and/or deceptive statements, individually and
15 collectively, have caused, and if not enjoined, will continue to cause actual and irreparable injury to
16 Brooks.
COUNTID
Unfair Competition With Plaintiff
17
18
19
Under California Business & Professions Code II 17200 and 17500
20 33. Brooks repeats and incorporates by reference each of the allegations contained in
21 Paragraphs 1 through 32 of this Complaint as though fully set forth herein.
22 34. Defendant has engaged in false, misleading or deceptive advertisement. Such acts
23 constitute unfair trade practices and unfair competition under California Business & Professions
24 Code 17200,17500 et seq.
25 35. Defendant's activities described above have at all times been willful and/or knowing.
26 36. As a direct and proximate result of the actions of Defendant described above.
27 Plaintiff is entitled to restitution and injunctive relief, and any other remedies allowed by law.
28
6
COMPLAINT FOR PATENT INFRINGEMENT.
FALSE ADVERTISING AND UNFAIR COMPETITION
Case No.
1 PRAYER FOR RELIEF
2 WHEREFORE, Brooks respectfully requests that judgment be entered:
3 A. Declaring that Defendant has infringed and continues to infringe the Brooks Patent;
4 B. Declaring that the Defendant's infringement has been deliberate and willful;
5 C. Compensating Brooks for all damages sustained as a result of Defendant's infringement,
6 together with prejudgment and post-judgment interest;
7 D. Enhancing Brook's damages up to three times their amount pursuant to 35 U.S.C. 284;
8 E. Awarding Brooks its costs of suit and reasonable attorneys' fees pursuant to 35 U.S.C.
9 285;
10 F. Permanently enjoining Defendant, pursuant to 35 U.S.C. 283, and each of their agents,
11 servants, employees. principals, officers, attorneys, successors, assignees, and all those in active
12 concert or participation with them, from further acts of (1) direct infringement, (2) contributory
13 infringement, and (3) inducement to infringe the Brooks Patent;
14 G. Declaring that the statements made by Defendant in the advertisements as detailed above,
15 are false, misleading. and/or deceptive and misrepresent the nature, characteristics, and qualities of
16 Defendant's products in violation of 15 U.S.C. 1125(a)(I)(B) and other applicable laws;
17 H. Directing Defendant to retract and destroy all advertisements, commercials, and other
18 materials, containing: (1) any of the false, misleading, or deceptive statements complained of
19 herein; and (2) any false, misleading, deceptive, or disparaging statements regarding Defendant's
20
21
22
23
24
25
26
27
28
products and/or Brooks's products;
I. Requiring Defendant to account for and pay to Brooks any and all profits arising from the
foregoing acts, and increasing such profits in accordance with 15 U.S.C. 1117 and other applicable
laws;
J. Ordering Defendant to pay Brooks damages in an amount as yet undetermined caused by
the foregoing acts, and trebling such damages in accordance with 15 U.S.C. 1117 and other
applicable laws; and
K. Awarding such other relief as this Court deems just and proper.
7
COMPLAINT FOR PATENT INFRINGEMENT,
FALSE ADVERTISING AND UNFAIR COMPE.TI110N
Case No.
JURY DEMAND
2 Brooks requests a jury trial on all issues triable to a jury in this matter.
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Dated: December 1, 20 II
7

Erik R. Puknys
FINNEGAN, HENDERSON, F ARABOW,
GARREIT & DUNNER, LLP
3300 Hillview Avenue
Palo Alto, California 94304
Telephone:(650) 849-6600
Facsimile: (650) 849-6666
Attorneys for Plaintiff
BROOKS AUTOMATION, INC.
8
COMPLAINT FOR PATENT INFRINGEMENT,
FALSE ADVERTISING AND UNFAIR COMPETfTlON
Case No.


Exhibit
A