Official Complaint for Patent Infringement in Civil Action No. 3:12-cv-00083-TMR: Image-X LLC v. Tybera Development Group, Inc. Filed in U.S. District Court for the Southern District of Ohio, the Hon. Thomas M Rose presiding. See http://news.priorsmart.com/-l5G8 for more info.
Official Complaint for Patent Infringement in Civil Action No. 3:12-cv-00083-TMR: Image-X LLC v. Tybera Development Group, Inc. Filed in U.S. District Court for the Southern District of Ohio, the Hon. Thomas M Rose presiding. See http://news.priorsmart.com/-l5G8 for more info.
Official Complaint for Patent Infringement in Civil Action No. 3:12-cv-00083-TMR: Image-X LLC v. Tybera Development Group, Inc. Filed in U.S. District Court for the Southern District of Ohio, the Hon. Thomas M Rose presiding. See http://news.priorsmart.com/-l5G8 for more info.
FOR THE SOUTHERN DISTRICT OF OHIO (Western Division)(Dayton Seat)
IMAGE-X LLC : 138 Spring Street : Case No. 3:12-cv-00083 Macon, GEORGIA 31201 : : Judge: PlaintiII, : : v. : : TYBERA DEVELOPMENT GROUP, INC. : 360 W 920 N : OREM, UTAH 84057-3042 : : Serve: : Dallas Powell, Resident Agent : 360 W 920 N : Orem, Utah 84057 : : DeIendant. : :
COMPLAINT FOR PATENT INFRINGEMENT 1urisdiction and Venue 1. This is a civil action Ior patent inIringement arising under the patent laws oI the United States, 35 U.S.C. 271 et seq. 2. This court has subject matter jurisdiction over this controversy under 28 U.S.C. 1331 and 28 U.S.C. 1338(a) in that the matter in controversy arises under an act oI Congress relating to patents (35 U.S.C. 271 and 281). 3. Venue lies in this judicial district by virtue oI 28 U.S.C. 1391 and 1400(b).
2
4. DeIendant has suIIicient contacts with the Southern District oI Ohio to subject it to the personal jurisdiction oI this Court Ior purposes oI this Complaint, including, without limitation, acts oI inIringement committed by the DeIendant within this District. 5. Venue is proper in this District pursuant to 28 U.S.C. 1391(b)-(c) and 28 U.S.C. 1400(b). THE PARTIES 6. PlaintiII IMAGE-X LLC (hereaIter 'Image-X) is a Georgia LLC that owns the patent-in-suit by way oI assignment Irom Image-X Enterprises, Inc. (hereaIter 'Image-X Enterprises). Image-X Enterprises was established in Nevada in 1989 with oIIices in Goleta, CaliIornia and Macon, Georgia to provide soItware development and services Ior electronic Iiling and document management. Beginning in June 2000 Image-X Enterprises along with related company E-Filing.com, Inc. (hereaIter 'E-Filing.com) helped pioneer the development oI e-Iiling systems during a Georgia State University Electronic Court Filing Project in which the Douglas County Superior Court and the Chatham County State Court participated. Image-X Enterprises has since commercialized and now provides turn-key hardware and soItware systems Ior document management, content capture and management, workIlow and electronic Iiling systems Ior courts and administrative agencies. Image-X Enterprises` clients include government, healthcare, education and Iinancial institutions throughout the United States. 7. Upon inIormation and belieI, DeIendant Tybera Development Group, Inc. (hereaIter 'Tybera) is a corporation organized on April 9, 2001 under the laws oI the State oI Utah to develop, provide, and/or license soItware that allows courts and governmental agencies to implement e-Iiling Ior their documents. DeIendant markets its e-Iiling solutions under the name eFlex, which allow attorneys to e-Iile pleadings and other documents with courts. 3
8. Upon inIormation and belieI, through its oIIicers, employees, and/or agents, deIendant Tybera Iirst learned oI plaintiII`s technology in December 2001 when it joined the on-going Georgia State University court e-Iiling pilot project. The pilot project sought to demonstrate interoperability among multiple vendors providing e-Iiling systems Ior courts oI Douglas County and Chatham County, Georgia. At that time, an application Ior the patent-in-suit had been pending beIore the U.S. Patent and Trademark OIIice since May 1, 2000. 9. Since completion oI the Georgia State University project in late 2001, electronic Iiling has evolved through multiple other pilot projects in an eIIort to deIine interoperable Iormats and standards Ior the court e-Iiling industry. Certain e-Iiling protocols have adopted a Ieature originally developed by Image-X Enterprises, known as EStamp, which was implemented during the Georgia State University pilot project in 2000-2001. Upon inIormation and belieI, deIendant Tybera has incorporated plaintiII`s EStamp and/or other patented technology into its eFlex e-Iiling system, and has installed eFlex in e-Iiling systems used by courts and/or administrative agencies oI Arkansas, Delaware, Florida, Iowa, Nevada, North Carolina, Ohio, and/or elsewhere in the United States. 10. Upon inIormation and belieI, deIendant Tybera either (i) sells eFlex to courts Ior several hundreds oI thousands oI dollars wherein the court permits attorneys to e-Iile pleadings through its system, or (ii) host eFlex on its servers to provide eFlex a subscription service Ior several hundreds oI dollars per attorney per year to enable them to Iile pleadings with courts that deIendant serves. DeIendant Tybera has earned several millions oI dollars selling its eFlex soItware and systems.
4
The Patent-in-Suit 11. PlaintiII is the owner oI U.S. Patent 7,035,830 (Exhibit A) entitled METHOD AND APPARATUS FOR REMOTED FILING AND RECORDATIONS OF DOCUMENTS, which was Iiled May 1, 2000 and issued on April 25, 2006 (herein, 'the 830 patent or the 'patent-in-suit). The invention oI the 830 patent was previously owned by Image-X Enterprises but was recently assigned to plaintiII Image-X. The 830 patent includes claims directed to both an electronic document Iiling method and an electronic document Iiling system. 12. The 830 patent speciIication describes an e-Iiling method and system to enable e-Iiling oI court pleadings and other documents. In the description oI the 830 patent, an example oI the invention utilizes the Internet to interconnect an attorney`s web browser with a server oI the court`s e-Iiling system wherein a document, e.g., a complaint or pleading, is uploaded by the attorney. AIter the document is uploaded, the document is automatically or electronically stamped with inIormation that may include a date/time, reIerence or document number, or any other type oI inIormation. A copy oI the document may then be communicated to the attorney who initially uploaded (e.g., Iiled) the document. Some or all oI these Ieatures, as well as other Ieatures, are protected by claims oI the 830 patent. 13. In 2010, deIendant Tybera and Image-X Enterprises competed to obtain a contract award to install an e-Iiling system Ior courts oI Franklin County, Ohio. Image-X Enterprises sought the award based, in part, on being a sole source provider oI certain critical Ieatures oI e-Iiling protected by the 830 patent. Image-X Enterprises was unsuccessIul in obtaining the award but DeIendant Tybera, on the other hand, won the award and installed its eFlex e-Iiling system Ior courts oI Franklin County, Ohio. The eFlex e-Iiling system installed by deIendant 5
Tybera provided an electronic case Iiling system (ECF) that allows attorneys to Iile complaints, petitions and other documents electronically, using Ieatures protected by the 830 patent. 14. Prior to or during the installation oI its eFlex e-Iiling system, deIendant Tybera contacted and/or took other action to urge Franklin County Court to obtain Irom Image-X Enterprises a license under the 830 patent to allow third-party soItware developers, including deIendant Tybera, to install and maintain an e-Iiling system in Franklin County that included certain critical Ieatures oI the 830 patent. 15. In response to deIendant`s actions, the Board oI Commissioners oI Franklin County, Ohio, executed a license agreement on March 30, 2010 (Exhibit B) to acquire Irom Image-X Enterprises rights to practice the invention oI the 830 patent. The license agreement permitted an authorized and licensed installation oI an e-Iiling system Ior Franklin County, Ohio in accordance with the 830 patent. COUNT I Infringement of the 830 Patent
16. DeIendant Tybera has inIringed and continues to inIringe at least claims 1, 11, and 19 oI the 830 patent. 17. At least by 2011, deIendant Tybera installed or caused to be installed its eFlex system Ior the Courts oI Montgomery County, Ohio, including the Montgomery County Common Pleas Court, civil and criminal divisions, to allow attorneys to e-Iile new cases and subsequent pleadings in accordance with the steps and/or by a system claimed by the 830 patent. Montgomery County`s eFlex e-Iiling system enables transmission to and stamping oI initial complaints and pleadings submitted to the Clerk`s OIIice in an electronic Iormat using a web browser according to a process described in an excerpt (Exhibit C) oI deIendant`s Electronic Filing 6
- Filing InterIace. DeIendant`s eFlex e-Iiling system installed and maintained by deIendant in Montgomery County, however, is not licensed under the 830 patent. 18. In June 2011, aIter explaining that Franklin County had executed a license agreement in March 2010, Image-X Enterprises oIIered Montgomery County a similar license under the 830 patent so that it too could legally use the eFlex e-Iiling system that had been installed by deIendant Tybera. On July 22, 2011, acting on behalI oI the Clerk oI the Courts Ior Montgomery County, Ohio, the ChieI Deputy oI the Legal Division oI the Clerk oI the Courts, declined to accept a license oIIer. 19. Prior to installing eFlex in Montgomery County, Ohio in 2011, deIendant Tybera had direct knowledge oI the application Ior the 830 patent since 2001 as well as subsequent knowledge oI the 830 patent that issued in 2006, but yet continued to install and maintain its eFlex system in Montgomery County, Ohio and elsewhere in the United States in direct violation oI the 830 patent. 20. In late 2001, during the months-long pilot project to initially develop an e-Iiling system Ior courts oI Douglas County and Chatham County, Georgia, deIendant and Image-X Enterprises collaborated along with others in a project to deIine parameters oI what would now be e-Iiling systems adopted by courts Ior electronic court Iilings. During the 2001 collaboration, oIIicers, agents, and employees oI deIendant Tybera and Image-X Enterprises (through related company E-Filing.com, Inc.) discussed the status oI the then pending application Ior the830 patent. 21. In 2004, during a subsequent presentation at a San Francisco conIerence concerning continued development oI e-Iiling systems Ior courts, oIIicers, agents, and employees oI deIendant Tybera, as conIerence attendees, gained additional knowledge oI the 830 patent 7
application when Image-X Enterprises and/or E-Filing.com notiIied conIerence attendees oI the 830 patent application and presented concepts oI the 830 invention as applied to e-Iiling systems Ior courts and administrative agencies. 22. DeIendant had direct knowledge oI the 830 patent in 2010 when it installed its eFlex e-Iiling system Ior Franklin County, Ohio, and took action to urge Franklin County to obtain a license under the 830 patent. In response to deIendant`s action, Franklin County, Ohio executed a license agreement (Exhibit B). 23. In September 2011, during another conIerence in Long Beach, CaliIornia concerning development and adoption oI e-Iiling standards Ior courts and administrative agencies, oIIicers and employees oI deIendant Tybera contacted employees oI Image-X Enterprises to inquire about its intended action regarding the 830 patent. Since that time, deIendant Tybera has continued to install and maintain its eFlex e-Iiling system in Montgomery County and elsewhere in the United States with Iull knowledge oI the 830 patent. 24. By virtue oI providing and/or maintaining an unlicensed e-Iiling system Ior Montgomery County, Ohio and/or other users throughout the United States, including but not limited to the eFlex and/or related or equivalent e-Iiling systems, deIendant Tybera has inIringed and continues to inIringe the 830 Patent in this District and elsewhere in the United States by their manuIacture, installation, sale, oIIering Ior sale, and/or use oI e-Iiling soItware and services that utilizes some or all oI the Ieatures claimed by the 830 patent. 25. By virtue oI having had prior multiple contacts with Image-X Enterprises regarding the 830 patent application, taking action that led to Franklin County to obtain a license under the 830 patent in March 2010, and making recent inquiries about Image-X Enterprises` intentions regarding the 830 patent during the September 2011 Long Beach conIerence, DeIendant Tybera is 8
shown to have had direct knowledge oI 830 patent prior to installing and/or maintaining its eFlex e-Iiling system Ior Montgomery County, Ohio in 2011 and/or installing and maintaining e-Iiling systems including but not limited to the eFlex e-Iiling system elsewhere in the United States. 26. By virtue oI installing and/or maintaining an unlicensed e-Iiling system Ior Montgomery County, Ohio and/or selling or oIIering Ior sale e-Iiling systems to other users throughout the United States with direct knowledge oI the 830 patent, including the installation and maintenance oI the eFlex and/or related or similar e-Iiling systems throughout the United States, DeIendant has knowingingly and willIully inIringed the 830 Patent, has contributorily inIringed the 830 patent, and has actively induced inIringement oI the 830 patent. 27. With direct knowledge oI the 830 patent, DeIendant has contributorily inIringed and/or knowingly induced others to inIringe and continues to contributorily inIringe and/or to knowingly induce others to inIringe the 830 Patent in this District and elsewhere in the United States by its development, maintenance, sale, and/or oIIering Ior sale e-Iiling systems including DeIendant`s eFlex and/or related or similar e-Iiling systems in direct violation oI PlaintiII`s rights protected claims oI the 830 patent without authority or license Irom plaintiII. 28. DeIendant`s acts have caused, and unless restrained and enjoined by this Court, will continue to cause irreparable injury and damage to PlaintiII Ior which there is no adequate remedy at law. Unless enjoined by this Court, deIendant will continue to knowingly and willIully inIringe, contributorily inIringe, and actively induce others to inIringe the 830 Patent.
9
PRAYER FOR RELIEF WHEREFORE, PlaintiII requests the Iollowing relieI: A. That deIendant and each oI its parents, aIIiliates, subsidiaries, oIIicer, agents, servants, employees, attorneys, successors, and assigns, and all those persons in active concert or participation with deIendant, or any oI them, be enjoined Irom making, using, oIIering Ior sale, selling, or causing to be sold any product or service Ialling within the scope oI any claim oI the 830 patent, or otherwise inIringing or contributing to or inducing inIringement oI any claim oI the 830 patent; B. That PlaintiII be awarded its actual damages; C. That PlaintiII be awarded pre-judgment interest and post-judgment interest at the maximum rate allowed by law; C. That the Court order an accounting Ior damages; D. That the Court declare deIendant`s acts to be exceptional pursuant to 35 U.S.C. 285 and award attorneys` Iees; E. That the Court award enhanced damages pursuant to 35 U.S.C. 284; F. That the Court award compulsory Iuture royalties; G. That PlaintiII be awarded costs oI court; and H. That PlaintiII be awarded such other and Iurther relieI as the Court deems just and proper.
DEMAND FOR A 1URY TRIAL Pursuant to Rule 38 oI the Federal Rules oI Civil Procedure, PlaintiII demands a trial by jury on all issues triable oI right by a jury. 10
DATED: March 16, 2012 RespectIully submitted,
s/ Glenn D. Bellamv Glenn D. Bellamy (0070321) Trial Attornev WOOD, HERRON & EVANS, L.L.P. 2700 Carew Tower 441 Vine Street Cincinnati, OH 45202-2917 (513) 241-2324 gbellamywhe-law.com
Attornevs for Plaintiff
Of Counsel. HARBIN & HEIN PLLC Lawrence Harbin (pro hac vice motion to be submitted) Andrew Hein (pro hac vice motion to be submitted) 500 9 th Street SE Washington, DC 20003-2838 (202) 546-1100