You are on page 1of 12

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF GEORGIA GAINSEVILLE DIVISION COMVERGE, INC.

, Plaintiff, v. ENTEK SYSTEMS LLC, Defendant. ) ) ) ) ) ) ) ) ) CIVIL ACTION NO. 2:13-CV-0026 _________________ JURY TRIAL DEMANDED

COMPLAINT FOR PATENT INFRINGEMENT Plaintiff COMVERGE, INC. (Comverge or Plaintiff) files this Complaint and Jury Demand against Defendant ENTEK SYSTEMS LLC (EnTek or Defendant), and in support alleges as follows: NATURE AND BASIS OF ACTION 1. This is an action for patent infringement brought under the patent laws

of the United States, 35 U.S.C. 1, et seq. Comverge seeks injunctive relief, damages, and recovery of its reasonable costs and attorney fees.

THE PARTIES 2. Comverge is a Delaware corporation, having its principal place of

business at 5390 Triangle Parkway, Suite 300, Norcross, Georgia 30092. 3. On information and belief, EnTek is a Georgia limited liability

company, having its principal place of business at 562 Starlight Drive, Sautee Nacoochee, Georgia 30571. JURISDICTION AND VENUE 4. This Court has original jurisdiction over the subject matter of this

action pursuant to 28 U.S.C. 1331 and 1338(a) because this case arises under the United State Patent Act, 35 U.S.C. 1, et seq. 5. Upon information and belief, this Court has personal jurisdiction over

EnTek because EnTek is a Georgia limited liability company and has its principal place of business in the Northern District of Georgia. In particular, EnTek has, inter alia, (i) transacted business within this judicial district; (ii) committed tortious acts within this judicial district; and/or (iii) committed tortious acts resulting in injury to Comverge in this judicial district. Moreover, EnTek has established minimum contacts with the forum such that the exercise of jurisdiction over it would not offend traditional notions of fair play and substantial justice. . 6. Venue in this Court is proper under 28 U.S.C. 1391 and 1400.

THE PATENTS-IN-SUIT 7. On September 6, 1994, the United States Patent and Trademark Office

(USPTO) duly and legally issued U.S. Patent No. 5,345,225 entitled Tamper Detection System for Load Management Device (the 225 Patent), which named Glenn A. Davis as the inventor. A true and correct copy of the 225 Patent is attached hereto as Exhibit A. 8. The 225 Patent claims apparatuses (claims 1-12 and 24-35) and

methods (claims 13-23) for monitoring current supplied to an electrical load and detecting when an electrical load management device has been disconnected. 9. 10. Comverge is the owner, by assignment, of the 225 Patent. On November 19, 1996, the USPTO duly and legally issued U.S.

Patent No. 5,576,700 entitled Apparatus and Method for Controlling an Electrical Load and Monitoring Control Operations and the Electrical Load (the 700 Patent), which named Glenn A. Davis and James M. Massara as inventors. A true and correct copy of the 700 Patent is attached hereto as Exhibit B. 11. The 700 Patent claims apparatuses (claims 1-54 and 63-65) and

methods (claims 55-62) for controlling an electrical load in an electrical load management system and monitoring the load control operations and energy supplied to the electrical load.

12. 13.

Comverge is the owner, by assignment, of the 700 Patent. On October 20, 2009, the USPTO duly and legally issued U.S. Patent

No. 7,606,639 entitled Local Power Consumption Load (the 639 Patent), which named Wendell M. Miyaji as the inventor. A true and correct copy of the 639 Patent is attached hereto as Exhibit C. 14. The 639 Patent claims methods (claims 1-12) and systems (claims

13-19) for curtailing the energy consumption of an appliance. 15. 16. Comverge is the owner, by assignment, of the 639 Patent. The 225 Patent, 700 Patent, and 639 Patent are referred to

collectively herein as the Patents-in-Suit. ACCUSED INFRINGER 17. EnTek is a company that offers for sale products used for energy load

control. EnTeks products control electrical loads in response to command signals sent by electric utilities, allowing the utilities to better balance electric loads and control customer appliances to accommodate periods of high energy demand. 18. EnTek sells and/or offers to sell various one-way and two-way

switches, such as the MC140RAC, which, on information and belief, are used to control electrical loads in the manner discussed in Paragraph 17.

19.

EnTek has sold and/or offered to sell its one-way and two-way

switches to electrical utilities for use in electrical load management systems. These activities by EnTek customers and others directly infringe the Patents-inSuit, and EnTeks encouragement of these activities through, among other things, its sales and/or offers for sale of its switches, indirectly infringes the Patents-inSuit. Furthermore, EnTek knew and intended that the activities of its customers would infringe the Patents-in-Suit. 20. EnTek has had actual knowledge of at two of the Patents-in-Suit Indeed, Glenn Davis, one of the three

during times relevant to this action.

members of EnTek, is a named inventor on both the 225 and 700 Patents. Given Mr. Daviss intimate knowledge of the 225 and 700 Patents, EnTek was aware of an objectively high likelihood that its use of EnTeks products and methods would infringe at least those patents. 21. EnTeks activities outlined above, and identified further below,

directly and indirectly infringe the Patents-in-Suit. COUNT I (Direct and Indirect Infringement of U.S. Patent No. 5,345,225) 22. Comverge realleges and incorporates by reference the allegations set

forth in 1 through 21 of its Complaint as if set forth fully herein.

23.

Through its sale and/or offer for sale of the MC140RAC switch and

other switches, EnTek has infringed the 225 Patent in violation of 35 U.S.C. 271(a), either literally or under the doctrine of equivalents, by practicing, making, using, selling, or offering for sale products and processes that embody the claims of the 225 Patent. 24. Through the use and/or contemplated use of EnTeks MC140RAC

switch and other switches in electrical load management systems, EnTek has contributed to the infringement of the 225 Patent in violation of 35 U.S.C. 271(c) by selling or offering for sale a component of a patented apparatus and/or patented process, which component is (i) a material part of the invention; (ii) known by EnTek to be especially made or especially adapted for use in an infringement of the 225 Patent; and (iii) not a staple article or commodity of commerce suitable for substantial non-infringing use. 25. EnTeks acts of making, using, offering for sale, and selling products

that use, include, and/or practice one or more of the inventions claimed in the 225 Patent has been without the permission, consent, authorization, or license of Comverge. EnTek has been familiar with the 225 Patent at least because one of its principals, Glenn A. Davis, is the sole inventor named on the 225 Patent.

26.

Comverge has been damaged by EnTeks infringement of the 225

Patent in an amount to be determined at trial. 27. EnTeks infringement of the 225 Patent is willful and deliberate as

shown by EnTeks conduct as alleged in at least Paragraph 25. COUNT II (Direct and Indirect Infringement of U.S. Patent No. 5,576,700) 28. Comverge realleges and incorporates by reference the allegations set

forth in 1 through 28 of its Complaint as if set forth fully herein. 29. Through its sale and/or offer for sale of the MC140RAC switch and

other switches, EnTek has infringed and continues to directly infringe the 700 Patent in violation of 35 U.S.C. 271(a), either literally or under the doctrine of equivalents, by practicing, making, using, selling, or offering for sale products and processes that embody the claims of the 700 Patent. 30. Through the use and/or contemplated use of EnTeks MC140RAC

switch and other switches in electrical load management systems, EnTek has contributed to and continues to contribute to the infringement of the 700 Patent in violation of 35 U.S.C. 271(c) by selling or offering for sale a component of a patented apparatus and/or patented process, which component is (i) a material part of the invention; (ii) known by EnTek to be especially made or especially adapted

for use in an infringement of the 700 Patent; and (iii) not a staple article or commodity of commerce suitable for substantial non-infringing use. 31. EnTeks acts of making, using, offering for sale, and selling products

that use, include, and/or practice one or more of the inventions claimed in the 700 Patent has been without the permission, consent, authorization, or license of Comverge. EnTek is familiar with the 700 Patent at least because one of its principals, Glenn A. Davis, is one of the two inventors named on the 700 Patent. 32. Comverge has been damaged by EnTeks past and continuing

infringement of the 700 Patent in an amount to be determined at trial. 33. Comverge has been and continues to be irreparably injured by

EnTeks past and continuing infringement of the 700 Patent, and EnTeks infringing activities will continue unless enjoined by this Court pursuant to 35 U.S.C. 283. 34. EnTeks infringement of the 700 Patent is willful and deliberate as

shown by EnTeks conduct as alleged in at least Paragraph 32. COUNT III (Direct and Indirect Infringement of U.S. Patent No. 7,606,639) 35. Comverge realleges and incorporates by reference the allegations set

forth in 1 through 35 of its Complaint as if set forth fully herein.

36.

Through its sale and/or offer for sale of the MC140RAC switch and

other switches, EnTek has infringed and continues to directly infringe the 639 Patent in violation of 35 U.S.C. 271(a), either literally or under the doctrine of equivalents, by practicing, making, using, selling, or offering for sale products and processes that embody the claims of the 639 Patent. 37. Through the use and/or contemplated use of EnTeks MC140RAC

switch in electrical load management systems, EnTek has contributed to and continues to contribute to the infringement of the 639 Patent in violation of 35 U.S.C. 271(c) by selling or offering for sale a component of a patented apparatus and/or patented process, which component is (i) a material part of the invention; (ii) known by EnTek to be especially made or especially adapted for use in an infringement of the 639 Patent; and (iii) not a staple article or commodity of commerce suitable for substantial non-infringing use. 38. EnTeks acts of making, using, offering for sale, and selling products

that use, include, and/or practice one or more of the inventions claimed in the 639 Patent has been without the permission, consent, authorization, or license of Comverge. 39. Comverge has been damaged by EnTeks past and continuing

infringement of the 639 Patent in an amount to be determined at trial.

40.

Comverge has been and continues to be irreparably injured by

EnTeks past and continuing infringement of the 639 Patent, and EnTeks infringing activities will continue unless enjoined by this Court pursuant to 35 U.S.C. 283. DEMAND FOR JURY TRIAL Comverge hereby demands a trial by jury on all issues in this action that are so triable as a matter of right and law. PRAYERS FOR RELIEF WHEREFORE, Comverge respectfully requests that this Court: (a) Declare that EnTek has directly infringed each of the Patents-in-Suit. (b) Declare that EnTek has indirectly infringed each of the Patents-in-Suit. (c) Declare that EnTeks infringement of at least the 225 Patent and the 700 Patent has been willful. (d) Permanently enjoin EnTek, and all those in active concert or participation with it, from directly or indirectly infringing the 700 Patent and the 639 Patent, pursuant to 35 U.S.C. 283. (e) Award Comverge damages in an amount to be proved at trial because of the injuries suffered by Comverge by reason of EnTeks infringement of the Patents-in-Suit.

10

(f) Increase the damages sustained by Comverge up to three times the amount of its actual damages, as authorized by 35 U.S.C. 284. (g) Award Comverge its attorney fees and other expenses of litigation pursuant to 35 U.S.C. 285. (h) Award Comverge costs and prejudgment interest pursuant to 35 U.S.C. 284. (i) Award Comverge such other and further relief as this Court deems proper. Respectfully submitted, this 11th day of February, 2013. Alston & Bird LLP s/ Shane Nichols A. Shane Nichols (Ga. Bar No. 542654) Holly Hawkins Saporito (Ga. Bar No. 142496) C. Suzanne Werner (Ga. Bar No. 321398) 1201 West Peachtree Street Atlanta, GA 30309 Telephone: (404) 881-7000 Facsimile: (404) 881-7777 Email: shane.nichols@alston.com Email: holly.saporito@alston.com Email: suzanne.werner@alston.com

11

ATTORNEYS FOR PLAINTIFF COMVERGE, INC.

12