Beruflich Dokumente
Kultur Dokumente
com THOMAS J. ROMANO, OSB No. 053661 E-mail: tromano@khpatent.com KOLISCH HARTWELL, P.C. 520 S.W. Yamhill Street, Suite 200 Portland, Oregon 97204 Telephone: (503) 224-6655 Facsimile: (503) 295-6679 Attorneys for Plaintiff
UNITED STATES DISTRICT COURT DISTRICT OF OREGON PORTLAND DIVISION TC GROUP, a Danish corporation Plaintiff, v. HARMAN INTERNATIONAL INDUSTRIES, INC., a Delaware corporation, Defendant. For its complaint, Plaintiff TC Group (TCG) alleges as follows: NATURE OF THE CASE 1. This is a civil action pursuant to 35 U.S.C. 256 for correction of inventorship of COMPLAINT FOR CORRECTION OF INVENTORSHIP UNDER 35 U.S.C. 256 Case No. 3:12-cv-01218
U.S. Patent No. 8,168,877 (the 877 patent), issued May 1, 2012, titled MUSICAL
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COMPLAINT FOR CORRECTION OF INVENTORSHIP UNDER 35 U.S.C. SEC. 256 CASE NO. 3:12-CV-01218
HARMONY GENERATION FROM POLYPHONIC AUDIO SIGNALS. A copy of the 877 patent is attached as Exhibit 1. 2. This action arises out of the failure of defendant Harman International Industries,
Inc. (Harman) to name David Hilderman, an employee of TCG, as an inventor of the inventions claimed in the 877 patent. THE PARTIES 3. Plaintiff TCG is an industry leader in developing, manufacturing and selling high-
performance audio products, having a principal place of business at Sindalsvej 34, Risskov, Denmark DK-8240. 4. Upon information and belief, Defendant Harman is a Delaware corporation
having its corporate headquarters at 400 Atlantic Street, Suite 1500, Stamford, Connecticut 06901. 5. On its face, the 877 patent lists Glen A. Rutledge (Rutledge), William Norman
Campbell (Campbell), and Peter R. Lupini (Lupini) as inventors, and lists Harman International Industries Canada Limited as assignee. 6. Upon information and belief, Defendant Harman wholly owns or otherwise
controls the patent rights of Harman International Industries Canada Limited. 7. David Hilderman (Hilderman) is an individual residing in Victoria, British
Columbia, and is presently the Chief Operating Officer of TC-Helicon, a wholly owned subsidiary of TCG. Hilderman has been employed by TC-Helicon since 2000, and is obligated to assign his rights in the 877 patent to TCG. 8. This action requests naming Hilderman as a co-inventor of the 877 patent.
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COMPLAINT FOR CORRECTION OF INVENTORSHIP UNDER 35 U.S.C. SEC. 256 CASE NO. 3:12-CV-01218
JURISDICTION AND VENUE 9. This action arises under the patent laws of the United States, 35 U.S.C. 101 et
seq., and specifically under 35 U.S.C. 256. This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. 1331 and 1338. 10. Upon information and belief, Harman has transacted and continues to transact
substantial business within the District of Oregon, by marketing and selling products within this District. Harman is therefore subject to personal jurisdiction in this District. 11. Upon information and belief, products marketed and sold by Harman within the
District of Oregon include products using methods and apparatus that are within the scope of the inventions claimed in the 877 patent. 12. Venue is proper in this District under 28 U.S.C. 1391(b) and (c), because
Harman is subject to personal jurisdiction in this District. FACTUAL BACKGROUND 13. Hilderman earned a Bachelor of Applied Science degree in Electronic Information
Systems Engineering from the University of Regina in Saskatchewan, Canada in 1988. Hilderman worked as a hardware engineer for TC-Helicon from August, 2000 until March, 2010 and has been the Chief Operating Officer of TC-Helicon since March, 2010. 14. TC-Helicon was founded in 2000 as a joint venture between plaintiff TCG and
IVL Technologies Ltd. (IVL) of Victoria, Canada. From its inception until August 29, 2005, TCG and IVL each held a 50% ownership interest in TC-Helicon, through the jointly owned corporation TC-IVL Ventures, Inc. Since August 29, 2005, TCG has wholly owned TC-Helicon. 15. As a hardware engineer for TC-Helicon, Hilderman worked to develop various
TC-Helicon products. Page 3 COMPLAINT FOR CORRECTION OF INVENTORSHIP UNDER 35 U.S.C. SEC. 256 CASE NO. 3:12-CV-01218
16.
From September 1, 2003 through June 30, 2005, Rutledge was employed by TC-
IVL Ventures, Inc. as a research engineer. 17. From approximately 1999 through June 30, 2005, Campbell was employed by
IVL as a software engineer. 18. From approximately 1997 through June 30th, 2005, Lupini was employed by IVL
as a research engineer. 19. For a period of years, Hilderman, Rutledge and Lupini worked in the same office.
Campbell worked from home but visited the office frequently. 20. While Rutledge was employed by TC-IVL Ventures, Inc. and Hilderman was
employed by TC-Helicon, Rutledge and Hilderman worked closely together on a daily basis. 21. While Campbell and Lupini were employed by IVL and Hilderman was
employed by TC-Helicon, Campbell and Lupini worked occasionally with Hilderman. 22. In approximately November, 2004, Hilderman conceived of an apparatus that
could receive a melody input signal and an accompaniment input signal and generate harmony notes based on the melody signal and/or the accompaniment signal, substantially in real time. Hilderman shared his ideas with Rutledge, Campbell and Lupini. 23. In early 2005, Hilderman worked with Rutledge, Campbell and Lupini to develop
the framework of his initial concept more fully and to begin reducing it to practice. 24. By the time Rutledge, Campbell and Lupini left employment with TC-IVL
Ventures, Inc. and IVL respectively on June 30, 2005, only the application of ordinary skill was necessary to reduce many aspects of Hildermans original invention to practice. 25. After the departure of Rutledge, Campbell and Lupini from employment with TC-
IVL Ventures, Inc. and IVL respectively, TC-Helicon continued the development of Hildermans
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COMPLAINT FOR CORRECTION OF INVENTORSHIP UNDER 35 U.S.C. SEC. 256 CASE NO. 3:12-CV-01218
invention and began selling products embodying certain aspects of the invention in the United States and elsewhere. 26. Upon information and belief, shortly after their departure from employment with
TC-IVL Ventures, Inc. and IVL respectively, Rutledge, Campbell and Lupini established 3dB Research Ltd. in Victoria, British Columbia. 27. On October 2, 2006, U.S. provisional patent application no. 60/849,384 was filed
in the United States Patent and Trademark Office, naming only Rutledge, Campbell and Lupini as inventors. 28. On October 2, 2007, U.S. nonprovisional patent application no. 11/866,096 (the
096 application) was filed in the United States Patent and Trademark Office, claiming priority to U.S. provisional patent application no. 60/849,384 and also naming only Rutledge, Campbell and Lupini as inventors. 29. Upon information and belief, defendant Harman acquired 3dB Research Ltd. in
February, 2011. 30. Upon information and belief, Rutledge, Campbell and Lupini assigned their rights
in the 096 application to Harman International Industries Canada Limited on January 18, 2012. 31. On May 1, 2012, the 877 patent issued based on the 096 application and listing
only Rutledge, Campbell and Lupini as inventors. That listing is in error because it does not include Hilderman as an inventor. 32. Hilderman significantly contributed to the conception of one or more inventions
claimed in the 877 patent and is thus a joint inventor of the inventions claimed in the 877 patent. More specifically, Hilderman significantly contributed to the conception of the
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COMPLAINT FOR CORRECTION OF INVENTORSHIP UNDER 35 U.S.C. SEC. 256 CASE NO. 3:12-CV-01218
33.
The error in not listing Hilderman as a joint inventor of the inventions claimed in
the 877 patent arose without deceptive intent on Hildermans part. COUNT I (Correction of Inventorship of U.S. Patent No. 8,168,877 Pursuant to 35 U.S.C. 256) 34. 35. All of the allegations of paragraphs 1-33 are incorporated herein by reference. The inventorship of the 877 patent is incorrect because through omission,
inadvertence and/or error, David Hilderman is not listed as an inventor on the 877 patent. 36. Hilderman made independent conceptual contributions to the inventions claimed
in the 877 patent, by conceiving of, solely or in collaboration with one or more of the named inventors of the 877 patent, significant aspects of the claimed inventions. 37. The omission of Hilderman as an inventor on the 877 patent occurred without
any deceptive intent on the part of Hilderman, TC-Helicon, or plaintiff TCG. 38. TCG has standing to request a correction of inventorship of the 877 patent
because of Hildermans contractual obligation to assign to TCG Hildermans patent rights resulting from inventions made during the course of his employment with TC-Helicon. 39. In addition, TCG has standing to bring this action because Harman has asserted
that TCG is infringing the 877 patent. A letter to TCG dated May 24, 2012 which makes this assertion on behalf of Harman is attached as Exhibit 2. 40. Upon information and belief, all parties concerned with the inventorship of the
877 patent for which correction of inventorship is sought have been put on notice or will be put on notice pursuant to filing and service of this Complaint.
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COMPLAINT FOR CORRECTION OF INVENTORSHIP UNDER 35 U.S.C. SEC. 256 CASE NO. 3:12-CV-01218
PRAYER FOR RELIEF In view of the foregoing, plaintiff TCG respectfully requests that this Court grant relief as follows: A. Judgment that David Hilderman is a joint inventor of the inventions claimed in
the 877 patent; B. Issuance of an order pursuant to 35 U.S.C. 256, requiring the Director of the
United States Patent and Trademark Office to correct inventorship of the 877 patent by adding David Hilderman as a co-inventor; and C. Any additional relief that the Court deems just and proper.
DATED this 6th day of July, 2012. Respectfully submitted, KOLISCH HARTWELL, P.C. By s/ Shawn J. Kolitch SHAWN J. KOLITCH, OSB No. 063980 E-mail: shawn@khpatent.com 520 S.W. Yamhill Street, Suite 200 Portland, Oregon 97204 Telephone: (503) 224-6655 Facsimile: (503) 295-6679 Of Attorneys for Plaintiff
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COMPLAINT FOR CORRECTION OF INVENTORSHIP UNDER 35 U.S.C. SEC. 256 CASE NO. 3:12-CV-01218