conmed v. tack smart filter technology

8/6/2019 ConMed v. Tack Smart Filter Technology

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1859320.3 7/13/2011

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

conmed v. tack smart filter technology

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