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UNITED STATES DISTRICT COURTNORTHERN DISTRICT OF NEW YORK
CONMED CORPORATION
Plaintiff,
v.
TACK SMART FILTER TECHNOLOGY,
BV.,
Defendant.
Civil Action No.
JURY TRIAL DEMANDED
DECLARATORY JUDGMENT COMPLAINT
Plaintiff ConMed Corporation (ConMed), by and through its attorneys, Bond,
Schoeneck & King, PLLC, hereby alleges as its Complaint against the defendant Tack Smart
Filter Technology, BV (Tack Smart) as follows:
JURISDICTION AND VENUE
1. This is a declaratory judgment action for non-infringement and invalidity of a
patent, brought under the Declaratory Judgment Act, 28 U.S.C. 2201(a) and 2202, and the
Patent Act, 35 U.S.C. 271 et seq.
6:11-CV-0799 (TJM/DEP)
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2. This Court has subject matter jurisdiction in this action pursuant to 28 U.S.C.
1331 and 1338(a), and 2201(a) and 2202.
3. Personal jurisdiction is proper in this District by virtue of Tack Smarts threats of
infringement made by its U.S. agent against ConMed in combination with other activities
relating to the enforcement or defense of its patent rights, such as its exclusive patent license
with a third party that regularly conducts business in this District. Upon information and belief,
Tack Smart expected or should have reasonably expected its acts to have consequences in this
District and Tack Smart derives substantial revenue from interstate or international commerce
via its licensees.
4. Venue is proper in this District pursuant to 28 U.S.C. 1391(b) and (c) and
1400(b).
5. There is an actual justiciable case or controversy between ConMed and Tack
Smart in this district that arises under the patent laws, 35 U.S.C. 101 et seq., by virtue of Tack
Smarts express and/or implied accusation that ConMed is infringing its U.S. patent rights and its
status as a technology licensing company.
FACTS
6. Plaintiff ConMed is a New York corporation headquartered at 525 French Road in
Utica, New York that specializes in orthopedics and general surgery products. Since its founding
in 1973 as small, privately held company, ConMed has grown into a large, publicly held and
diversified medical device organization that manufacturers thousands of products and employs
over 3,000 people in multiple manufacturing facilities and sales offices worldwide.
7. Defendant Tack Smart is a corporation organized and existing under the laws of
the Netherlands and having a principal place of business at Natteweg 9, 1862 CW Bergen NH,
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The Netherlands. Upon information and belief, Tack Smarts sole business is the licensing and
enforcement of a certain portfolio of related patents, including U.S. Patent RE39,361 (the 361
patent), that it acquired via assignment. A true and correct copy of the 361 patent is attached
hereto as Exhibit A.
8. Upon information and belief, Tack Smart has exclusively licensed certain rights in
the 361 patent, including the right to enforce the 361 patent in certain circumstances, to
Millipore Corporation of Billerica, Massachusetts. A true and correct copy of a press release
describing the exclusive licensing arrangement between Tack Smart and Millipore Corporation is
attached hereto asExhibit B
.
9. Millipore Corporation is currently doing business in the State of New York and
within this District by offering to sell and selling various products, including those licensed
under the 361 patent, via employees located within and/or regularly servicing areas within this
District as well as through an interactive website that allows individuals located within this
District to purchase products directly from Millipore.
10. ConMed in currently offering to sell and selling certain smoke evacuators
throughout the United States and the world, including a surgical smoke evacuator referred to as
the AER DEFENSE Smoke Evacuation System (the accused products).
11. On or about May 27, 2011, U.S. counsel for Tack Smart notified ConMed by
written correspondence that, in the opinion of Tack Smart, the accused products infringe the
claims of European Patent No. 0700313 and also may infringe a number of patents throughout
the world that correspond to European Patent No. 0700313, including the 361 patent. A true
and correct copy of the correspondence dated May 27, 2011 is attached hereto as Exhibit C.
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The 361 patent is, in fact, based on the same Patent Cooperation Treaty (PCT) application as
European Patent No. 0700313 and is directed to the same purported invention.
12. Based on Tack Smarts threats of infringement and its status as strictly a
technology licensing company, ConMed has a reasonable apprehension that it will face a patent
infringement lawsuit if it continues to offer to sell and sell the accused products, which ConMed
intends to do.
13. In light of ConMeds continuing sale of accused products and Tack Smarts
express accusation that such products are infringing its patent rights, a real and substantial
controversy exists between parties having adverse legal interests.
14. ConMed does not have an adequate remedy at law.
DECLARATORY JUDGMENT OF NON-INFRINGEMENT
15. Upon information and belief, the accused products do not contain each and every
element of any one claim of the 361 patent.
16. ConMed is therefore entitled to a declaratory judgment that the claims of the 361
patent are not infringed.
DECLARATORY JUDGMENT OF INVALIDITY
17. Upon information and belief, the claims of the361 patent are invalid under 35
U.S.C. 102, 103, 112 and/or the recapture rule of 35 U.S.C. 251.
18. Upon information and belief, the claims of the 361 patent are invalid for failing
to meet the additional requirements of patentability under 35 U.S.C. 102 and 103. In
particular, there are numerous prior patents and publications that predate the earliest effective
filing date of the 361 patent and disclose each and every element of the claims of the 361
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patent. For example, the following references anticipate or, either singularly or in combination,
render the claims of the 361 patent obvious to one of ordinary skill in the relevant art:
List of References:
(a) US 3,794,168 A - Filter With Condition Indicator
(b) US 4,772,386 A - Filter With Liquid Meter
(c) US 4,885,081 A - Drinking Water Delivery System With Purity Indicator
(d) US 5,049,898 A - Printhead Having Memory Element
(e) US 5,142,128 A - Oilfield Equipment Identification Apparatus
(f)
US 5,190,643 A - Water Treatment Device Having Means to Count Times
Used and Limit Usage
(g) US 5,192,424 A - Filter Identification Device
(h) US 5,254,242 A - Filtration Unit Having Means For Preventing Reuse Of
Filter
(i) US 5,468,968 A - Air Quality Monitoring System And Process
(j) DE 3 126 850 A1 - Membrane Filter Blank For Membrane Flat Filter
Apparatuses
(k) JP 3 144 396 U - Filter Paper Holder
(l) JP 4 284 807 B9 - Air Cleaner
(m) WO 90 14626 - Systems With Data-Token
(n) WO 92 08677 - Water Filters
19. Upon information and belief, The claims of the 361 patent are invalid under 35
U.S.C. 112 because the 361 patent does not include a written description sufficient to
demonstrate that the alleged inventor had possession of the claimed invention at the time he
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applied for the 361 patent, nor does the 361 patent enable one of ordinary skill in the art to
practice the claimed invention.
20. The claims of the 361 patent are invalid under the recapture rule of 35 U.S.C.
251 because the reissue claims improperly recapture subject matter that was surrendered by
claim amendment to obtain allowance of the original patent claims. In particular, the claims
were amended during prosecution to require specific features, including but not limited to an
electronic label on a replaceable filter that is adapted to count and store a number of actual
operating hours of the replaceable filter. To the extent any claims of the 361 reissue patent do
not require this specific limitation, such claims improperly recaptured surrendered subject matter
and therefore are invalid under the recapture rule of 35 U.S.C. 251.
21. As a result, ConMed is entitled to a declaratory judgment that the claims of the
361 patent are invalid.
PLAINTIFF DEMANDS A TRIAL BY JURY
WHEREFORE, the plaintiff prays that the Court:
(a) enter judgment that the claims of U.S. Patent RE39,361 are not infringed by the
accused product;
(b) enter judgment that the claims of U.S. Patent RE39,361 are invalid under the
Patent Act, 35 U.S.C. 102, 103, 112 and/or the recapture rule of 35 U.S.C. 251;
(c) enter judgment that this is an exceptional case under 35 U.S.C. 285.
(d) award the plaintiff its costs and attorneys fees; and
(e) grant the plaintiff such other and further relief as the Court may deem just and
proper.
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Respectfully submitted,
s/David L. Nocilly
Dated: July 13, 2011 By: ______________________________
David L. Nocilly, Bar Roll No. 510,759
BOND,SCHOENECK &KING, PLLCOne Lincoln Center
Syracuse, New York 13202-1355
Telephone: (315) 218-8000Facsimile: (315) 218-8100
Of Counsel:
Daniel S. Jonas, Esq, Bar Roll No. 507952
Vice President - Legal Affairs,General CounselConMed Corporation
525 French Road
Utica, New York 13502
Attorneys for the Plaintiff, ConMed
Corporation
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EXHIBIT A
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EXHIBIT B
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NEWS LETTER
Tack Smart Filter Technology B.V.Winterkoning 51722 CA ZUID-SCHARWOUDEThe NetherlandsPhone : +31 72 564 06 34Fax : +31 72 564 44 69E-mail : [email protected] : www.tacksmart.nl
Zuid-Scharwoude, The Netherlands, 13 April 2007
Tack Smart Filter Technology B.V. announces milestone license agreement regardingthe Smart Filter Technology with Millipore Corporation
Tack Smart Filter Technology B.V. (Tack Smart) has recently entered into a licenseagreement with Millipore Corporation. Under the terms of the license agreement, Millipore hasacquired a worldwide exclusive license to use RFID technology in filters and filtrationapparatus for biopharmaceutical applications; and a non-exclusive license for food andbeverage applications.
This license agreement is a milestone for Tack Smart and confirms the importance of thistechnology for the worldwide filtration and separation industry. Tack Smart is proud to supportMillipore to retain its leading position in biopharmaceutical filtration and expects that thisagreement will further boost the interest for this technology in other segments of the filtrationand separation industry.
Please see the enclosed press release for further details.
Tack Smart Filter Technology BV is a Dutch company granting licenses of a filter patent to thefiltration and separation industry. The licenses are related to a revolutionary Smart FilterPatent for which Tack Smart acquired the exclusive rights worldwide. In 1993 Doctro A.V.V., acompany established by filter specialist and inventor Mr. D.J.M. den Dekker, registered thepatent. The invention concerns interactive communication technology for filters. Doctro A.V.V.has transferred the rights of the patent to Tack Smart Filter Technology BV. For moreinformation, please visit the website at: www.tacksmart.nl.
Tack Smart is in the process of granting licenses to companies active in the filtration andseparation industry in specific fields of use. The licenses can be granted on an exclusive ornon-exclusive basis, depending on amongst others the application of the patent, time tomarket, size of the (after) market, market share of the company and product application andthe competitive position of the company or product application.
Tack Smart has retained KPMG Corporate Finance to assist in the licensing process. You areinvited to express your interest in obtaining a license for the Smart Filter Technology bycontacting KPMG Corporate Finance:
KPMG Corporate Finance N.V.Phone Email
Mr. Onno Sloterdijk Partner +31 20 656 7985 [email protected]. Mathijs Biesta Associate +31 20 656 7407 [email protected]
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EXHIBIT C
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AER DEFENSE - Claim Chart EP 0 700 313 B1
Claim # Claim element Present (yes/no)
1 Assembly of filtering apparatus and a replaceable filter Yes
Electronic filter identification system Yes
Including an electronic label on the filter Yes
And read-out means on the filtering apparatus Yes
2 Read-out means connected to a control unit on filtering apparatus Yes
Control unit being influenced by the read-out means Yes
3 Control unit only operable with filter in place having a proper label Yes
4 Wherein the filter identification system is interactive Not known
5 The label comprises a R/W memory Not known
Adapted to store the number of operating hours of the filter Not known
6 Filtering apparatus comprises an indicating means such as a display Yes
For showing information on the filter Yes
8 Filtering apparatus adapted to receive a replaceable filter Yes
Apparatus comprises read-out means Yes
Adapted to cooperate with an electronic label on the filter Yes
To form an electronic filter identification system Yes
9 Filter adapted to be placed in a filtering apparatus Yes
Filter comprises an electronic label Yes
Adapted to cooperate with read-out means on the filtering apparatus Yes
To form an electronic filter identification system Yes