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8/20/2019 Pathway Innovations and Technologies ITC Complaint
1/40
SAN DIEGO IP LAW GROUP LLP
12526 High Bluff Drive, Suite
300
San
Diego, CA 92130
T:
(858) 792-3446
F:
(858) 792-3501
www sand i e ao ip l aw com
August 18, 2015
BY FEDEX
DELIVERY
The Honorab le Lisa R. Barton
Secretary to the Commission
U.S. In ternat ional Trade
Commission
500 E Street, S.W., Room 112
Washington, D.C. 20436
RE:
In the
Matter ofCertain
Document Cameras andSoftware for Use
Therewith ITC
Investigation No.: 337-TA-
Dear Secretary Barton:
Enclosed for filingon behalf of PathwayInnovationsandTechnologies,
Inc.
( Complainant )
are the
following documents
in support of Complainant's
request that
the
Commission commence an investigation pursuant to the provisions
of
Section 337 of the Tariff
Act of 1930, as amended, 19 U.S.C. §1337. Please note that Confidential Exhibit No. 23 to the
ComplaintcontainsConfidential Business Information andpursuant to the Commission'sRules
ofPractice and Procedure, a request for confidential treatment of the information in that exhibit
accompanies this filing. Accordingly,Complainant submits the following:
1. One original and eleven (11) paper copies
of
Complainant's non-confidential
Verified Complaint (including an original and eleven (11) copies.ofthis cover letter, and
Complainant'spublicinterest statement, of which eight (8)copiesare for the
Commission
and
three
(3) copies arefor service on each ofthe three (3) Proposed Respondents).
2. Four (4)copies ofthe accompanying non-confidential exhibit on separate CDs, of
whichone (1)
copy
is for the Commission and three (3) copiesare for
service
on
each
ofthe
three (3) ProposedRespondents.
3. Certified copies of the asserted patents,
file
histories and
assignment
records from
the United States Patent Trademark Office in the
manner
received from the PTO are included
in the Appendices.
P a g e 1
o f
2
CBI
l.5 -25*o
DOCKET
NUMBER
o
L
Int
Office ofthe
Secretary
Trade
Commission
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{Hi SAN DIEGO
IP LAW
GROUP LLP
We are available at your convenience to answer any questions. Thank you for your
a tten tion to this mat te r.
Sincerely,
Trevor Coddington
of
SanDiego IPLaw GroupLLP
enc
Page 2
o f
2
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SAN DIEGO IP LAW
GROUP
LLP
12526 High Bluff Drive, Suite 300
San Diego, CA 92130
T: (858) 792-3446 F: (858) 792-3501
www sandieaoiDlaw com
August
18,2015
BY FEDEX DELIVERY
The Honorable Lisa R. Barton
-. Secretary to the Commission
U.S. International
Trade
Commission
500 E Street, S.W., Room 112
Washington, D.C. 20436
RE: In the Matter ofCertain Document Cameras and Softwarefor Use
Therewith
ITC
Investigation No.: 337-TA-
Dear Secretary Barton:
Pursuant toU.S.
International Trade Commission
Rules210.5 and210.6, 19
C.F.R.-
§§210.5-210.6, Pathway Innovations and Technologies, Inc. ( Complainant ) respectfully
requests that the Commission grant confidential treatment to the confidential business and
financial information contained in Confidential Exhibit 23 and its exhibits.
The information
for
which
confidential
treatment
is
requested
is
proprietary commercial
information nototherwise publically available. Specifically, theconfidential
information
concerns confidential business,
sales
and financial information of significant
commercial
value
to
Complainant
that has been
submitted to support
Complainant's
domestic
industry
allegations
and comply withotherCommission requirements.
The
information described above
qualifies as
confidential
business information pursuant
to Rule 201.6(a) because:
1. It is not availableto the general public.
2. Unauthorized disclosure of such information
could
cause substantial harm to the
competitive position of Complainant; and
3. The
disclosure
of
such
information couldimpairthe Commission's
ability
to
obtain
informationnecessary to perform its statutory function.
Pag e
1
o f
2
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(j§Q SAN DIEGO
IP
LAW
GROUP LLP
Icertify that substantially identical
information is
not reasonably available
to
the public.
Sincerely,
Trevor Coddington
of SanDiegoIPLawGroupLLP
Page 2
of
2
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UNITED STATES INTERNATIONAL TRADE COMMISSION
WASHINGTON, D.C.
In
t he Ma tt er o f
CERTAIN DOCUMENT
CAMERAS
AND
SOFTWARE FOR
USE
THEREWITH
Investigation No.
S TA TEMENT
O N TH E
PUBLIC INTEREST
Pursuant to International Trade Commission
( Commission )
Rule §210.8(b),
Complainant Pathway Innovations and Technologies,
Inc.
( Pathway ) respectfully submits this
separate Statement OnThe
Public
Interest withrespect to the remedial orders it seeks against
Respondents
Adesso, Inc.,
Recordex
USA,
Inc.
and QOMO HiteVision ( Respondents ).
The
relief sought by
Pathway would
serve
the
strong public
interest in
protecting
significant
intellectual property rights
ofPathway, an
innovative
corporation
headquartered
in
San Diego,
California, and
will have
no adverse effect on
public
health and
welfare, competitive conditions
in the
United States economy,
theproduction of like or directly competitive articles in the
United
States, or United
States
consumers. Pathwaystands readyto supplythe
needs
of
United States
customers with
high-resolution
document cameras
with
real-time
video
and zooming capabilities
that
practice
each of the asserted
Pathway
patents. Moreover, there are several
other
companies
supplying competitive products in the United States. Accordingly, this is not a casewhere the
Commission should delegate
public interest fact-finding to theALJthereby
requiring
the
Commission, theparties, andthe publicto undergo the timeand expense fora
Recommended
Determination by the ALJ.
Pathwayseeks a limited exclusionorder under 19U.S.C. §1337(d) specifically directed
to Respondents excluding fromentryinto theUnitedStates certain full-size andportable
document
cameras
andvisualpresentation equipmentandsoftware for use therewith ( Accused
1
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Products ) that infringe four
Pathway patents:
U.S. PatentNos. 8,508,751, D647,906,
D674,389,
and D715,300 (the
AssertedPatents ). Pathway also seeks
a
cease and desist order under 19
U.S.C.
§
1337(f)
prohibiting Respondents
from
marketing,
distributing, selling,
offering
for sale,
warehousing inventory for distribution, or otherwise
transferring or
bringing infringing products
into t he Un it ed States.
The
Commission's granting
of
these
orders would serve thepublic's strong
interest
in
protecting intellectual property rights. Respondents are unlawfully making
and
selling
document
cameras and visual presentation equipment with real-time video and zooming
capabilities
innovated
and
patented
by
Pathway. Pathway has
invested
hundreds
of
thousands
of
dollars
and
years
ofresearch, development,
personnel
and
engineering effort beginning in
or about
2008 to
design,
develop, test,
and
manufacture
its
innovations. Pathway's flagship product
that
practices
theAsserted Patents isthe
HoverCam®
- a revolutionary product thatcombines the features of a
digital camera
and ascanner into anew form factor
that
is
already used
in over 100,000 North
American classrooms. Pathway has also made substantial investments in labor
and
capital inthe
United States to design and develop
products
that practice
the Asserted Patents in that
all
of
Pathway's research and
development
activities since
its
inception
in
2008 have
been conducted
by Pathway employees and contractors residing in the United States.
Granting
the orders sought
by
Complainant
is necessary to
protect these substantial investments,
innovation,
and
the
domestic industry they support. Respondents' infringement stifles innovation
and
should
be
stopped.
Moreover, granting these orders would have no adverse effect
on
public health
and
welfare, competitive conditions in the United States
economy,
the production oflike or
directly
competitive articles in
the
United States,
or
United States consumers.
Pathway,
together
with at
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least several other
competitors
in the
market
for
the
Accused
Products,
supply large quantities of
like
or
directly competitive products
in the
United States and could readily replace
the Accused
Products
ina
commercially reasonable amount
of time if the ITC
excludes
these products.
Pathway
brings
this action against the Respondents
for the
infringement
of
technology
proprietary to Pathway, which ensures that neither consumers of the Accused Products nor the
' market will be unduly affected by the relief sought.
The Requested
Relief
Serves
The
Public Interest
Pathway,
an
innovative document
camera
company,
isa
leader
in
developing and selling
innovative high-resolution
cameras
with
unique
real-time
video
and
zooming capabilities,
employs dozens
of
employees and has invested hundreds of thousands of dollars and tens
of
thousands of
hours
in
research
and
development
to
design, develop
and create newcamera
technologies. At least Respondent RecordexUSA has been on actual notice of the Asserted
Patents for overa yearbut all Respondents are on constructive (if not actual) noticeof the
Asserted Patents because Pathway's products are marked with the Asserted Patent numbers. If
Respondents unauthorized use ofPathway
technologies
allows them to avoid having
to
develop
new
technologies
on their own, others willbe
encouraged
to infringe
proprietary technologies
rather
thando
what Pathway
has done andhire
engineers, invest
in
innovation
anddevelop new
technologies in theUnited States. TheCommission has recognized a strong public interest in
enforcing intellectual property rights. See Certain
Baseband Processor Chips
and
Chipsets
Inv.
No. 337-TA-543, Comm'nOp., 2007 ITC
LEXIS
621 at *240
(Jun.
19,
2007).
1)
The
Accused
Products Infringe the Asserted Patents
The
Accused
Products are document cameras and/or software fo r use therewith that
infringe theAsserted
Patents
by
(among
otherthings) enabling real-time
video
zooming.
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2) No Public
Health,
Safety, OrWelfare Concerns Are
Implicated
By
The
Requested Remedial Orders
The
requested
remedial orders would not have an adverse effect
on the
public health,
safety, or
welfare
in the
United
States. In
fact, there
is
no indication that
the
Asserted Products
(which essentially cover high-resolution document
camera
designs and software for
use
:therewith) implicate public health,
safety orwelfare at
all.
As
such, excluding
the
Accused
Products would not,
for
example, leave medical
needs unfilled,
impede
scientific
research, or
interfere with important national
interests.
Moreover, there are other
document
camera solutions
available
in the
United States
including those
supplied by
Pathway
and
other
competitors,
which
would
not
be subject
to
the
limited
exclusion order.
In
other words, Pathway and other
competitors could readily
meet
the
needs
of
any
consumers ofthe Accused Products.
3) Likeor Directly Competitive Articles From Pathway and
Other
Vendors Are
ReadilyAvailable to Replace the Accused Products
Pathway's HoverCam® and
related
products that
practice the
Asserted Patents compete
directly
with
the Accused Products and are
readily
available
replacements
for the
Accused
Products
if they
are excluded. Moreover, the document camera market
is a
highly-competitive
market
with
intense
competition.
Several
major companies such as LG, Samsung, Apple, Nokia
and
HTC make
devices including high-resolution cameras withzoom-in-video
capability;
byany
measure, Respondents
are
minor competitors with only a small
percentage
ofthis market.
4)
Pathway
is
Capable
of Fulfilling the
Demand
for
the
Accused
Products
In A
Commercially Reasonable
Time
Pathway is
an
innovator and
leader
in the
document
camera
market. Pathway
made the
first
3-MegaPixel
document
camera priced under 200
for
schools and created
the
world's first
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super-speed camera
with
8-MegaPixel
resolution anda
30-frame
per
second refresh rate.
www.thehovercam.com/about.
With existing resources, Pathway has
the
capital and
manufacturing resources to quickly
scale
production to meet any increased demand for directly
competitive products in a commerciallyreasonable time period if the Accused Products are
excluded from
th e United
States.
5) The Requested Remedial OrdersWould Only Minimally Affect
Consumers
Although the requested remedial
orders
may have some limited
effect
onconsumers, the
document camera
industry is
highly-competitive and has a
demonstrated capacity to handle
rapid
growth.
Pathway
supplies
directly competitive products
thatcan
readily
replace
the Accused
Products, minimizing any negative
consumer effect.
The Commission does not require that there
be no public
impact
ofremedial relief, only that
such
impact cannot outweigh
the
strong
public
interest in enforcing intellectual property rights.
See Certain
Baseband Processor Chips
2007
ITC
LEXIS 621 at
*240.
While the requested remedial orders may reduce consumer choice, that
is not a basis for denyingrelief.
See
Certain
PersonalData and
Mobile Communications
Devices and
Related
Software Inv.
No.337-TA-710, Comm'nOp.,2011 ITC
LEXIS 2874
at
*
111
(Dec. 29,2011). Here, the
only public
impact ofthe
remedial
reliefis beneficial; without
the
relief
requested
by Pathway, significant
domestic industry
and.
innovation
will
be
harmed
by
infringing, inferiorproducts.
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Dated: August 18, 2015
JAMESV.
FAZIO,
II|_
TREVOR Q. CODDINGTON, PH.D.
MARTY
B.
READY
SAN DIEGO IP LAW GROUP
LLP
12526 High BluffDrive, Suite 300
San Diego, California 92130
Telephone: (858) 792-3446
Facsimile: (858) 792-3501
Counsel for Complainant
PATHWAY
INNOVATIONS AND TECHNOLOGIES,
INC.
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UNITED STATES INTERNATIONAL TRADE COMMISSION
WASHINGTON, D.C.
Investigation No.
In
the Matter o f
CERTAIN DOCUMENT
CAMERAS
AND
SOFTWARE
FOR
USE THEREWITH
COMPLAINT OF PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.
UNDER SECTION
337
OF THE
TARIFF
ACT OF 1930.
AS
AMENDED
COMPLAINANT
Pathway Innovations Technologies, Inc.
10211 Pacific Mesa Blvd., Ste. 412
San Diego, California 92121
(858)224-1489
COUNSEL FOR COMPLAINANT
James
V.
Fazio
Trevor Q. Coddington, Ph.D.
Marty B. Ready
SAN
DIEGO
IP LAW
GROUP
LLP
12526 High BluffDrive, Suite 300
San Diego, California 92130
Telephone: (858) 792-3446
Facsimile: (858) 792-3501
PROPOSED RESPONDENTS
Recordex USA, Inc.
10-50 46th Avenue
Long Island City,
New
York 11101
(718)392-5380
Registered Service Address: Same
QOMO HiteVision, LLC
46950 MagellanDrive
Wixom, Michigan 48393
(248) 960-0985
Registered Service Address:
Wilton
A. Horn
30833 Northwestern Highway, Suite 203
FarmingtonHills,Michigan
48334
Adesso, Inc.
160 Commerce Way
Walnut, California 91789
(909) 839-2929
Registered
Service Address:
All en Ku
160 Commerce Way
Walnut, California 91789
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TABLE
OF SUPPORTING
MATERIALS
EXHIB ITS
Exhibit No. Description
1 Certified copy ofU.S. Patent
No.
8,508,751
2
Certified
copy ofU.S. Patent No. D647,906
3 Certified copy of
U.S.
Patent
No. D674,389
,
4 Certified copy ofU.S. Patent No. D715,300
5
Certified
copy of
assignment records
for U.S.
Patent No. 8,508,751
6 Certified
copy
of
assignment
records
for U.S.
Patent
No.
D647,906
7
Certified
copy of
assignment
records for U.S. Patent
No.
D674,3 89
8 Certified
copy
ofassignment records for U.S. Patent No. D715,300
9 U.S.
Patent
No.
D647,906
Infringement
Claim
Chart Against Recordex
10 U.S.
Patent
No.
D674,389 Infringement Claim Chart Against
Recordex
11 U.S.
Patent
No. 8,508,751 Infringement
Claim
Chart Against Recordex
12 U.S. Patent No. D715,300 Infringement Claim
Chart
Against Recordex
13
TJ.S. Patent No. 8,508,751 Infringement
Claim
Chart
Against
QOMO
14 U.S.
Patent
No.
D647,906
Infringement Claim Chart Against Adesso
15 U.S.
Patent No. D674,389
Infringement
Claim Chart Against Adesso
16 Import records forRecordex
17
Purchase/Shipment
confirmation
and
package/product
labeling
for
Recordex
18 Alibaba.com records for QOMO
19 Import
records
for QOMO
u
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20 Purchase/Shipment
confirmation
and package/product labeling for QOMO
21 Import records for Adesso
22 Purchase/Shipment confirmation and package/product
labeling
for Adesso
23
Confidential
Declarationof Ji Shen filedunder seal)
24 Pathway s Practice of
U.S. Patent
No.
D647,906
25 Pathway's Practice ofU.S. Patent No. D674,389
26 Pathway's Practice ofU.S. Patent No. 8,508,751
27 Pathway's Practice
of
U.S. Patent No. D715,300
m
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APPENDICES
Appendix
Item Description
A Certified
copy
of file
wrapper
forU.S. PatentNo.
D647,906
B Certified copy of file wrapper for U.S. PatentNo.
D674,3
89
C Certifiedcopy
of
file wrapper for U.S. PatentNo. 8,508,751
D Certified copy of file wrapper for U.S. Patent No. D715,300
E
Teclmical
references citedin filewrapper forU.S. PatentNo. D647,906
F Technical references cited in file wrapperfor U.S. Patent No.D674,389
G Technical references cited in file wrapper for U.S. Patent No.
8,508,751
H Technical references cited in filewrapper for U.S. PatentNo.D715,300
1Due
to their
volume, the technical
references cited
in the
Asserted
Patents
are on the
enclosed
DVDs
IV
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TABLE OF CONTENTS
I.
INTRODUCTION
1
II.
COMPLAINANT
4
III. THE
PROPOSED RESPONDENTS :
5
IV .
THE TECHNOLOGY AND PRODUCTS AT
ISSUE
6
V.
THE
PATENTS IN SUIT AND NONTECHNICAL DESCRIPTIONS OF THE
•
INVENTIONS 7
A. Nontechnical Description of the 'D906 Patent 7
B. Nontechnical Description
of
the
D389
Patent 7
C. Nontechnical Description of the '751 Patent 8
D. Nontechnical Description of the
D300
Patent 9
E. Foreign Counterparts 9
F. United States Counterparts 9
G. No Licenses
9
VI. UNLAWFUL ACTS OF RESPONDENT RECORDEX USA, INC 10
A. Infringement
of
the 'D906 Patent 10
B. . Infringement
of
the
D389
Patent 10
C. Infringement of the '751 Patent 10
D. Infringement
of
the
D300
Patent 11
VII.
UNLAWFUL
ACTS OF
RESPONDENT QOMO
HITEVISION, LLC 12
A. Infringement of the '751 Patent . 12
VIII.
UNLAWFUL
ACTS OF RESPONDENT
ADESSO,
INC 13
A. Infringement
of the D906
Patent ....13
B. Infringement of the 'D389 Patent
' 13
LX. SPECIFIC INSTANCES OF
UNFAIR IMPORTATION AND
SALE 14
A. Unfair Importation and Sale By Recordex USA, Inc 14
B. Unfair Importation and Sale By QOMO HiteVision 15
C. Unfair Importation and Sale By Adesso, Inc 16
X. HARMONIZED
TARIFF SCHEDULE ITEM NUMBERS
16
XL
THE
DOMESTIC INDUSTRY
17
A. Pathway's Practice of Pathway's Asserted Patents 17
B. United States Investments in the Domestic Industry 18
1. Domestic Industry Under 19 U.S.C. § 1337(a)(3)(A) 19
v
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2. Domestic Industry Under 19 U.S.C. § 1337(a)(3)(B) 19
3. Domestic Industry Under 19 U.S.C. § 1337(a)(3)(C) 20
XII. RELATED LITIGATION • 21
XIII. RELIEF REQUESTED
21
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I.
INTRODUCTION
1. This Complaint is filed byPathway Innovations and Technologies, Inc.
. ( Pathway or Complainant )
under
Section 337 oftheTariffAct of 1930, as
amended, 19
U.S.C.
§1337, based on the unlawful importation into
the
United States, the
sale
for importation
into theUnited States, the sale within theUnited States after importation,
and/or
theuse within
theUnited Statesafter importationby the proposed Respondentsof certain documentcameras
andsoftware forusetherewith, whichinfringe oneormore
claims
ofU.S. Patent
Nos. D647,906
( the 'D906
patent );
D674,389 ( the 'D389
patent );
8,508,751 ( the '751 patent );
and
D715,300 ( the 'D300 patent )(collectively, the Asserted Patents ).
2. Formed in 2009, Pathway is a privately-held
company
that
designs,
develops and
sells
innovative products that
enhance learning,
improve communication, andhelp people save
time. The company is the designer and manufacturer ofHoverCam® branded software and
document cameras—a revolutionary productthat combines the features of a digital
camera
anda
scanner into a new form factor. Pathway has a strong track record for developinginnovative
products, especially for the education market. A HoverCam® document camera hovers over a
teacher's deskunobtrusively and is used by teachers to capture, manipulateandpresent seamless
video of documents and objects to students in real-time.
3.
Traditional scanners are
too slow for the c lass room and
conventional cameras
lack sufficient resolution, zoom video, annotation capability, and other functions needed for an
effective learning environment. However, a HoverCam® documentcameracaptures, digitizes
and displays documents immediately at an incredibly high resolution
of
8 megapixels, which is
about 4 times the resolution of a typical HD television. Moreover, HoverCam® users can
manipulate, annotate, zoom and resize documents and video without any loss in resolution, and
can record and playback seamless video at a remarkable 30 frames per second. HoverCam®
1
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document
cameras
have
won numerous awards andare
presently
used in
over 150,000
classrooms around the world.
4.
The proposed
Respondent Recordex
USA,
Inc. ( Recordex ) develops,
manufactures, imports, sells
for importation
into
the
United States, sells after
importation
into the
United States,
and
uses after
importation into
the
United States
document
cameras and
visual
'presentation equipment
and software for
use
therewith, including without
limitation
Recordex's
document cameras SimplicityCam
2i,
SimplicityCam 5e,
SimplicityCam
5i+, SimplicityCam 5z,
SimplicityCam
5z
AF, SimplicityCam
8z AF, andXSight
software, which is designed
specifically
for
Recordex's
document cameras
(collectively,
Recordex
Accused Products ).
As
set forth below,
the
Recordex Accused Products
are
sourced and manufactured abroad
in
locations
such
as
China
and
are
imported for saleinto theUnited
States.
5. The
proposed
Respondent QOMO HiteVision, LLC ( QOMO ) develops,
manufactures,
imports, sells for
importation
into
the
United
States,
sells
after importation
into the
United States,
and
uses
after
importation
into the United States document cameras
and
visual
presentation
equipment, and software for use
therewith,
including without limitation
QOMO's
portable
document
cameras
QView
QPC20, QPC20 Fl Flip Cam, CornerCam QPC30M,
QPC35
Caterpillar Cam, QView
QPC60A,
HDMI
QPC70, QPC80 Full
FT D
Document
Camera, and
Visualizer software, which isdesigned specifically
for
QOMO's document
cameras
(collectively,
QOxMOAccused Products ). As set
forth
below, the QOMO
Accused
Products are sourced and
manufactured
abroad
in
locations
suchas
China
andare
imported
for
sale
intothe
United States.
6. The proposed
Respondent
Adesso,
Inc. ( Adesso ) develops, manufactures,
imports, sells
for
importation into the United States, sells after importation into
the
United States,
and
uses
after importation
into the
United
States
document
cameras and visual
presentation
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equipment, including without
limitation Adesso's
NuScan 510 Visual Presenter (the Adesso
AccusedProduct )(the RecordexAccused Products, QOMOAccusedProducts,and theAdesso
Accused Product shall
be referred to collectively hereinas the Accused Products ). Asset forth
below, the AdessoAccused Product is sourced and manufactured abroad in locations such as
Chinaand is imported for sale into theUnitedStates.
7. The AccusedProducts incorporate, without any license from Pathway, many
technologies developed and patented by Pathway. The Asserted Patents and their asserted claims
(independent claims in
bold)
are listed below:
Patent
Number
Asser ted Cla ims
(independent
claims in bold)
'D906 patent
1
D389 patent 1
'751 patent
1,2,3,4-7,8, 9-17,18, and 20
D300
patent 1
8. Certified copies
of
Pathway's Asserted Patents are included at Exs. 1-4. Pathway
owns all rights, title and interest in each of the Asserted Patents, including the right to sue for
infringement. Certified copies
of
the assignment records for each
of
the Asserted Patents are
i n cluded a t
Exs.
5-8.
9.
As detailed in the Confident ial Declaration
o f
Ji
Shen
and
exhibits
A-F
thereto
submitted concurrently herewith (all as to which confidential treatment is respectfully requested),
a domestic industry as required by 19U.S.C. §§1337(a)(3)(A), (B), (C) exists in the United
States relating to articles protected by Pathway's Asserted Patents, including quantitatively
significant and demonstrable investments in plant and equipment; employment
of
labor and
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capital,
and
investment in the exploitation ofthe inventions claimed in the Asserted Patents,
including through engineering, research and development inthe
United
States.
10. Pathway seeks as relief
a permanent
limited
exclusion
order under
19
U.S.C.
§1337(d) barring from entry into the United States
that directly
and/or indirectly infringe the
Asserted
Patents,
specifically certain document cameras and software manufactured,
sold
and/or
imported
by Respondents. Pathway
further
seeks as relief a
permanent
cease and desist order
under 19 U.S.C.
§
1337(f)
prohibiting
Respondents from marketing, distributing, selling, offering
for
sale, warehousing inventory
for
distribution,
or
otherwise transferring
or bringing
into the
United States infringing
document
cameras
and
visual
presentation
equipment
and/or
their
components and software.
II. COMPLA INANT
11. Pathway is a
corporation organized and
existing
under the laws
of
the State
of
California,
having its
principal place
of
business located
at
10211 Pacific
Mesa
Blvd., Ste. 412,
San Diego,
California
92121.
Pathway
is the
assignee
of
the Asserted Patents,
with
the
sole right
to sue for all infringement thereof.
12. Pathway employs over
a
dozen engineers and other personnel
at
its
headquarters
inSan Diego, California. Moreover, since its formation in2009, Pathway has expended millions
of dollars andtensof thousands of hoursdesigning, researching, developing, engineering and
manufacturing its document camera products and software, which Pathway
continues
to refine
and improve to this day.
13. All
ofPathway's products practice
one
or
more claims
of
the inventions
disclosed
in
the Asserted Patents. As explained
in
more detail
in
the charts included as
Exhibits
24-27, one
ormore claims of the AssertedPatents is implemented in Pathway's HoverCam® T3document
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camera, FloverCam Solo 5 document camera, HoverCam Solo 8 camera, and HoverCamFlex
software.
14. Pathway hasmade and continues to invest millions of dollars in the design and
development of productsprotected by Pathway's AssertedPatents. In the UnitedStates,
Pathway exploits the technologies covered by the AssertedPatentsthroughvarious activities,
including
substantial
research and development, engineering, tooling, and product and warranty
support
among others.
In connection withthe exploitation of
these
technologies,
Pathway
has
made significantinvestments in the United States in facilities, engineering, equipment, labor and
capital as further described below.
III. THE PROPOSED RESPONDENTS
15. Oninformationand belief, proposed RespondentRecordex is a corporation
organized and existing under the laws of the State ofGeorgia with its principal place ofbusiness
at 10-50 46th Avenue, Long Island City, New
York
11101.
According
to New York Secretary of
State business records, Recordex has authorized the Department
of
State to mail service
of
process to
Recordex
USA,
Inc.,
10-50
46th
Avenue, Long
Island
City, New
York
11101.
Recordex develops, manufactures, imports, sells for importation into the United States, sells after
importation into the United States, and/or uses after importation into the United States the
Recordex Accused Products that infringe one or more claims of the Asserted Patents. Recordex
has willfully copied Pathway's products and has no patents or pending patent applications of its
own
16. On information and belief, proposed Respondent QOMO is a limited liability
company organized and existing under the laws of the State ofMichigan with its principal place
of
business at 46950 Magellan Drive, Wixom, Michigan 48393. QOMO may be servedvia its
registered agent for service
of
process Wilton A. Horn, 30833 Northwestern Highway, Suite 203,
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Farmington
Hills, Michigan
48334.
QOMO
develops, manufactures, imports, sells for
importation
into the United
States, sells
after importation into
the
United States, and/or uses after
importation into the United States the
QOMO
Accused Products that infringe
one or
more claims
of the
'751
patent. QOMO has
willfully copied
Pathway's products and software, and has no
patents or pending patent applications of its own.
17. On information and belief, proposed Respondent Adesso is a corporation
organized
and
existing under
the laws ofthe
State
of California withitsprincipal
place
of
business located at 160 CommerceWay, Walnut, CA 91789. Adessomay be servedvia its
registered
agent
for
service
of
process
AllenKu,
Adesso,
Inc.,
160
Commerce
Way,
Walnut,
CA
91789.
Adesso
develops,
manufactures,
imports, sells for importation into theUnited States,
sells
after importation
into the United
States,
and/or uses
after
importation
into
the
United
States
the Adesso Accused Product that infringes the 'D906 patent and 'D389 patent. Adesso has
willfully copied Pathway's
products. Adesso owns
andoperates a research and development
facility in
Shenzhen,
China. Adesso also
owns
and operates a factory inGuangdong, China.
18. On information and belief, Adesso manufactures abroad and imports into the
United States,
white
label
products including, butnot limited toQOMO's QView QPC20 and
Recordex' SimplicityCam 2i.
IV
THE
TE HNOLOGY
ND PRODU TS T
ISSUE
19. Thetechnology at issue relatesto high-resolution document
cameras
and
software
for use
therewith.
20. Specifically, theAccused Products include full-size and portable
document
cameras and
software
for use therewith.
The
Accused Products are manufactured abroad and
imported into
the
United
States to
enable users (among
other
things)
to
display, manipulate,
zoom and resize high-resolution
images
and video without any loss in resolution
and
toprovide
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real-time zoom-in-video and other
capabilities.
The Accused Products
are
sold for importation
into, imported
into,
sold after importation into,
and used
within the United States
by
oronbehalf
of the Respondents.
V. THE PATENTS IN SUIT AND NONTECHNICAL DESCRIPTIONS OF THE
INVENTIONS
21. As set forth
below,
Pathwayownsby assignment theentireright, title, andinterest
inandto
each
of Pathway's Asserted Patents.
See
Exs. 5-8.
22. Pursuant to CommissionRule 210.12(e), certified copies
of
the prosecution
histories of each oftheAsserted
Patents
have been
submitted with
this
Complaint
asAppendices
A-D. Pursuant to Commission Rule 210.12(c), the references cited in each of the Asserted
Patents have also been submitted with this Complaint as Appendices E-H. Due to their volume,
the technical
references ci ted
in th e
Asserted Patents ar e
included on DVDs.
A.
Nontechnical Description
of the D906 Patent
23. United States Design Patent No. D647,906, entitled Portable and Small Form
Factor Document Camera and Scanner with Extendible Folding Arms, issued on November 1,
2011, and lists Ji Shen as the sole inventor. The D906 patent expires on November 1,2025.
The 'D906 patent issuedfromUnited States Patent ApplicationNo. 29/354,427filed onJanuary
25,2010.
24. The 'D906 patent claims the ornamental design shown in figure nos. 1-3.
Pathway asserts that the design of one or more ofRecordex's and Adesso's document cameras is
substantially the same as the design shown in the D906 patent.
B. Nontechnical Description
of
the
D389
Patent
25. United States Design Patent No. D674,389, entitled Document Imaging
Instrument, issued on January 15, 2013, and lists Ji Shen as the sole inventor. The 'D389 patent
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expires
on
January
15, 2027. The
'D389 patent issued from United States Patent Application
No. 29/396
689
filed onJuly 5, 2011. The
'D389 patent
is a
continuation
inpart ofUnited States
Patent Application No.
29/354,427 filed
on January 25, 2010 (now U.S. Patent No. D647,906).
26.
The
'D389 patent claims the ornamental design
shown in
figure nos. 1-14.
Pathway asserts that the design ofone
or
more ofRecordex's
and
Adesso's document cameras is
substantially the
same
as the design
shown in
the
'D389 patent.
C. Nontechnical Description ofthe
751 Patent2
27. United States PatentNo. 8,508,751, entitled CapturingReal-Time
Video
With
Zooming
Capability
and
Scanning High
Resolution
Still
Images of
Documents Using
the Same
Apparatus,
issued
on August 13, 2013, and
lists
Ji Shen
and
Dongbing
Zhang
as co-inventors.
The
'751
patent expires
on January 28, 2030. The '751
patent issued from
United
States Patent
Application
No.
13/506,208
filed
on
April
4, 2012,
which
isa continuation of
International
Patent Application
No.
PCT/US2011/022549 filed on January
26, 2011,
which claims priority to
the U.S. Provisional Patent Application No.-
61/298,912
filed onJanuary 28,2010.
28. The '751 patent contains 20
claims,
including
4
independent
claims and
16
dependent claims. Pathway asserts
that
the Respondents Recordex's
and
QOMO's document
cameras and
software
foruse
therewith infringe
one or
more
claims ofthe
'751 patent,
directly
and/or
indirectly, either literally or under the doctrine of
equivalents.
29. The
'751
patent relates generally
to
document
cameras
and
software
for
use
therewith
capable
of
capturing
real-time
video
with
zooming capability.
The '751
patent
can,
among other
things, allow
users to capture, display, manipulate,
annotate,
zoom and re-size
images and video in
real-time
at very
high resolution
and frame rates.
2These
descriptions
and any other
descriptions
inthis Complaint are for illustrative purposes only.
Nothing
contained herein is
intended
to, either implicitly
or
explicitly,
express
any position regarding
the
proper construction
or
scope of
any claim.
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D.
Nontechnical Description of
the
D300 Patent
30.
United States Design
Patent
No.
D715,300,
entitled Imaging Device, issued on
October
14,
2014,
and lists Ji Shen asthe
sole inventor. The 'D300 patent
expires on
October
14, 2028. The
'D300
patent issued from United States
Patent
Application No. 29/371,908 filed
on January 12, 2012.
31. The 'D300patent
claims
theornamental design shown in figure nos. 1-4.
Pathway asserts that the design
ofone or
more
ofRecordex's
document cameras
is
substantially
the same as the design shown in the 'D389 patent.
E. Foreign
Counterparts
32. Thereare fourforeignpatent counterparts to the '751 patent,
namely,
China
Patent Application No.
201180004161,
Canada Patent Application No.
2,787,377, Europe Patent
Application No.
20110737562;
andJapanApplication No.
2012551257. These four
patent
applications are currentlypending. There are no foreign counterpartsto the 'D906, 'D389, and
'D300 patents.
F. United States Counterparts
33. United States Patent Application No. 13/948,650, filed on July 23, 2013, is a
continuation
of the 751
patent.
34. United States Patent Application No. 14/382,181, filed on August 29, 2014, is a
national stage entry
of
PCT/US2013/067444, filed on October 30, 2013, which is a continuation
of
the '751 patent. The '181 patent application also claims priority to United States Provisional
Patent Application No. 61/722,966, filed on November 6, 2012.
G.
No License s
35. No license to any of the Asserted Patents has been granted.
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V UNL WFUL TS
OF
RESPONDENT
RE ORDEX
USA
INC
A. Infringement of the D906 Patent
36.
Recordex
has engaged in unlawful andunfair acts including the
sale
for
importation into
the
United
States,
importation
into
the United
States,
sale within
the
United
States
after
importation, and/or
usewithin theUnited
States
after
importation
of
products
that
-infringe the D906 patent.
37. Recordex's SimplicityCam 5e embodies the design
covered
bythe 'D906
patent.
See
Ex. 9. In the eye ofanordinary observer, thedesign of
Recordex's
SimplicityCam 5eis
substantially
the
same
as
the
design
covered
bythe
'D906 patent.
See
id
B. Infringement of the D389 Patent
38. Recordex has engaged in unlawful andunfair acts including the sale for
importation into the
United States,
importation
into
the
United
States, sale within the United
States after
importation,
and/or use within
the
United States after importation
ofproducts that
infringe the D389 patent.
39. Recordex's SimplicityCam 5eembodies the design
covered
by the 'D389
patent.
See Ex. 10. Intheeyeofan
ordinary observer,
the design of Recordex's
SimplicityCam
5eis
substantially the same asthe
design covered
bythe 'D389patent. See id
C. Infringement
of
the 751 Patent
40. Recordexhas engaged in unlawful and unfair acts includingthe sale for
importation
into
the
United States,
importation intotheUnited
States,
sale
within
the
United
States
after
importation, and/or use
within
the United States after importation of the Recordex
Accused
Products
that
directly and/or
contributorily infringe claims 1-18 and20of the '751
patent.
10
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41. Respondent
Recordex directly infringes
at
least independent
claims 1,
3,and 8of
the '751 patent. See Ex. 11. Recordex's XSight software implements every step
of
claims 1, 3,
and 8. See id Any oneofthe accused Recordex document
cameras operated
in'connection with
Recordex's XSight software implements every step
of
claims 1, 3, and 8. See id. TheRecordex
Accused Products,
atthe
time
of
importation,
are
programmed
to perform all the steps ofmethod
claims 1, 3, and 8.
42.
Recordex
contributorily infringes at least independent
claims
1,3, 8, and18of the
'751
patent.
See
id
Recordex's XSight
software implements every
step of
claims
1,3, and 8
whenusedwith a customer's personal computer.See
id
Any one
of
the accusedRecordex
document cameras operated in connection with
Recordex's
XSight software implements every
step of claims 1,3, and 8 or embodies every element of claim 18 when used with a customer's
personal computer. See id Recordex
sells
theRecordex Accused Products knowing that those
products
are
especially
made or
especially adapted for
use in
infringement
of the '751
patent, and
nota staple article or commodity of commerce suitable for substantial
non-infringing
use. On
information and belief, there are no
non-infringing
uses. Recordex.has had actual knowledge of
the
'751 patent
at
least as
of
July
13,
2015, when Pathway filed
a
Complaint
asserting
the '751
patent against Recordex in the Southern District ofCalifornia, as discussed below.
D. Infringement of
the
D300 Patent
43. Recordex has engaged in unlawful and unfair acts including the salefor
importation into the United States, importation into the United States, sale within the United
States
after importation,
and/or
usewithin theUnited
States
after
importation
ofproducts that
infringe the 'D300 patent.
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44. Recordex's SimplicityCam 5i+embodies the design
covered
by the 'D300
patent.
See Ex.
12.
In
the
eye ofan
ordinary observer, the design
of
Recordex's
SimplicityCam 5i+
is
substantially the same
as
the
design covered
by
the
'D300
patent. See id.
VII. UNLAWFUL ACTS OF RESPONDENT
QOMO
HITEVISION, LLC
A. Infringement of the
751
Patent
45. QOMO
has engaged inunlawful
and
unfair acts
including
the
sale
for
importation
into
the United States,
importation
into the United
States,
sale within
the
United States
after
importation, and/or
use within the
United States
after importation
of
the QOMO Accused
Products
that
directly and/or
contributorily infringe
at
least
claims
1-10,
12-18,
and
20
ofthe
'751 patent.
46. Respondent
QOMO
directly
infringes
at
least independent claims 1, 3,
and
8of
the '751 patent. See Ex. 13. QOMO's Visualizer software implements every step of
claims 1, 3,
and 8.
See
id. Any one
of
the
accused
QOMO document
cameras operated in
connection with
QOMO's Visualizer
software
implements every
step
ofclaims
1,
3, and 8. See
id.
The QOMO
Accused Products, atthe time of
importation,
are
programmed
toperform all the steps ofmethod
claims 1, 3,
and
8.
47. QOMO contributorily
infringes
at least independent claims 1, 3,
8,
and
18
ofthe
'751 patent. See id.
QOMO's
Visualizer software implements every step ofclaims
1,
3, and 8
when used with
a
customer's personal computer.
See id
Any one
of the
accused QOMO
document cameras operated in connection with
QOMO's
Visualizer software
implements
every
step of
claims
1,
3,
and 8
or embodies
every element of
claim
18 when used
with
a customer's
personal computer. See id. QOMO
sells
the QOMO Accused Products knowing that those
products
are especially made or
especially
adapted for use in
infringement
ofthe '751
patent,
and
not a
staple article
orcommodity of commerce suitable for substantial
non-infringing
use. On
12
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information
and
belief,
there are no non-infringing uses. QOMO
has
had actual knowledge ofthe
'751 patent at least as
of
July 13, 2015, when Pathway filed
a
Complaint asserting the
'751
patent against QOMO in the Southern District of California, as discussed below.
VIII. U NLAWFUL ACT S OF RESPONDENT ADESSO. INC.
A.
Infringement
of
the
D906
Patent
48.
Adesso has engaged
inunlawful and unfair
acts
including the sale
for importation
into the
United States,
importation into theUnited States, salewithinthe United
States
after
importation,
and/or
use
within the United
States after importation
of
products that
infringe
the
D906
patent.
49.
Adesso's NuScan 510
Visual
Presenter embodies the design
covered
by the.
'D906 patent. See Ex. 14. In the eye of an ordinary observer, the design ofAdesso's NuScan 510
Visual Presenter
is
substantially
the same as the
design covered
by the 'D906
patent. See id
50. Recordex's SimplicityCam 5e embodies the designcovered by the 'D906patent.
SeeEx. 9. In the eye of an ordinary observer, the designof Recordex's SimplicityCam 5e is
substantially the same as the design covered by the 'D906 patent.
See id.
On information and
belief, Adesso manufacturesthe SimplicityCam 5e in China.
B.
Infringement
ofthe D389 Patent
51. Adessohas engaged inunlawful and unfair acts including the salefor importation
into the United States, importation into the United States, sale within the United States after
importation, and/orusewithinthe UnitedStates after importation
of
products that infringe the
D389 patent.
52. Adesso's NuScan 510 Visual Presenter embodies the design covered by the
'D389 patent. SeeEx. 15. In the eye of an ordinary observer, the design ofAdesso's NuScan510
Visual Presenter is substantially the sameas the design covered by the 'D389 patent. See
id
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53. Recordex's SimplicityCam 5e embodies the design covered by the 'D389 patent.
See
Ex.
10. In
the eye of
an ordinary
observer,
the design
of
Recordex's
SimplicityCam 5e is
substantially
the same as the design covered by the
'D389 patent. See
id.
On
information
and
belief,
Adesso
manufactures
the SimplicityCam 5e inChina.
IX.
SPECIFIC INSTANCES OF UNFAIR IMPORTATION AND SALE
A. Unfair Importation and Sale By Recordex USA, Inc.
54.
Recordex, either itselfor through
third parties
acting onbehalfof
Recordex,
is
engaged
inthe importation, sale for importation, sale after
importation
into the
United
States,
and/or
use
after importation into the United States
of
infringing document
cameras,
visual
presentation equipment and
software
for use therewith. Recordex Accused Products
are
manufactured in Chinaandimportedfor sale into theUnitedStates.
55. Forexample, according to import records available at
importgenius.com,
Recordex imported 508
cartons
from Yantian,
China
of visual presenter; parts for repair
products
on February
11,
2014. See Ex.
16
at 1.
Recordex
imported 491
cartons
from
Yantian,
China of visual presenter; parts for repair products onDecember. 28, 2013. See
id
at3.
Recordex imported
612 cartons
from Yantian,
China
of visual
presenter parts for
repair
products on March 2, 2013. See id. at 5. Recordex imported 134 cartons
from
Yantian, China of
visual
presenter, webcam,
3d
glasses, parts for repair products
on
August 25,
2012. See
id. at
7. The term
visual presenter
isused
synonymously with document camera
and todenote a
Recordex SimplicityCam. See e g id. at9. 3D
glasses
are included with a Recordex
SimplicityCam.
56. Moreover,
Complainant has
purchased
the
SimplicityCam
5e
and the
Simplicity
5i+ from a retailer in the United States.
See
Ex. 17. Both
of
these accused products include a
m a de in China label.
id.
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B. Unfair Importation and Sale By
QOMO
HiteVision
57. QOMO,
either
itself
or through third parties
acting on
behalfof
QOMO,
is
engaged
in
the
importation, sale for
importation,-sale
after importation into the
United
States,
and/or use
after
importation
into the
United States ofinfringing document cameras, visual
presentation
equipment,
and
components
and software thereof. QOMO Accused Products are
manufactured abroad and imported for sale into the United States.
58. For example, QOMO's
QPC35
Catepillar
Cam is
available for
purchase at
alibaba.com.
See e g Ex. 18. The QPC35 originates
from
Fujian,
China.
See id
59.
Moreover, according
to
import records available
at
importgenius.com,
QOMO
imported 31
cartons
from
Shanghai, China
of document
camera
products on
January
19, 2015.
SeeEx. 19at 1.QOMO imported 70 cartons from
Fuzhou,
Chinaof document
camera
products on
October
28, 2014.
See id at3.QOMO
imported
25 cartons
from Fuzliou,
China of
document
camera
products on
October 23, 2014.
See id.
at
5.
QOMO
imported 566
cartons
from
Yantian,
China
of
document
camera...
products on August 30, 2014. See
id. at
7.
QOMO imported 3
packages from
Shanghai,
China
of
document
..camera specification
QPC60A
products onNovember 14,2013. See id at 9.
QOMO's
QPC60A
document camera
is
an
accused product. QOMO imported 23 cartons from
Yantian,
China
of
portable document
camera-
QPC20 products
onMarch 2,
2013. See
id at 11. QOMO's
QPC20 document camera
is an accused product.
60.
Furthermore,
Complainant has purchased the
QPC20 document camera
from
a
retailer in the United
States.
See Ex. 20.
The
packaging oftheQPC20 includes a
made
in
China
label. id.
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C.
Unfair
Importation
and Sale
By
Adesso, Inc.
61. Adesso, either
itself
orthrough third parties
acting on behalf
ofAdesso, is
engaged
in the
importation,
sale for
importation,
sale
after importation into
the
United States,
and/or
use
after
importation
into the United States ofinfringing document cameras, visual
presentation
equipment,
and components and software thereof.
The
Adesso Accused Product is
; manufactured
abroad
and imported for sale into theUnited States.
62. For
example,
according to import
records
available at importgenius.com, Adesso
imported 283 cartons
from
Yantian, China of ..
.visual
presenter...
products on
February 4,
2014.
See
Ex.
21
at
1.
Adesso
imported
956
cartons from Yantian,
China of ...visual
presenter... products on January 17, 2014.
See
id. at 3. Adesso imported 940 cartons from
Fuzhou, China of
...visual
presenter... products on January 6, 2014.
See id.
at5. Adesso
imported 110 cartons
from
Yantian,
China
of .. .visual presenter products on December
23,
2013.
See
id
at 7. The
term
visual presenter is
used synonymously
with
document
camera
and to denote an Adesso NuScan 510. See, e.g.,
id
at 9.
63. Furthermore,
Complainant
has
purchased the NuScan 510 Visual
Presenter
from
a
retailerin the
United States.
SeeEx. 22. Thepackaging of theNuScan
510 Visual
Presenter
includes
an
Assembled
in
China label.
See
id
TheNuScan510
Visual Presenter product
itself
includes
a Made in
China
label. id.
X.
HARMONIZED TARIFF
SCHEDULE ITEM
NUMBERS
64. On informationandbelief, all Accused Products fall withinat least the
9006.59.91
(cameras,
not
instant
print,
not for roll
offilm,
not
fixed focus,
valued over 10
each);
9008.50.50 (photographic,
not cinematographic, enlargers/reducers) and/or 8521.90.00
(video recording and reproducing
apparatus,
not magnetic tape-type) classifications ofthe
Harmonized
Tariff Schedule ( HTS ) of
the
United
States.
These
identified HTS
numbers are
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intended solely for illustrative purposes and are not
exhaustive
or
exclusive of the products
accused of infringement
in
this Complaint. The
HTS
numbers
are
not intended to limit
the scope
of the investigation.
XI. THE DOMESTIC INDUSTRY
65.
As shown
by
the Confidential Declaration
ofJi
Shen
and
exhibits A-F thereto
• submitted
concurrently herewith
(all
to which
confidential
treatment
is
respectfully requested),
there
is
adomestic industry, as defined under
19
U.S.C.
§§
1337(a)(3)(A), (B), and/or (C),
comprising quantitatively significant
and
demonstrable
investments in
plant
and equipment,
employment
of
labor
and
capital, and
substantial investment
in the
exploitation
of
Pathway's
Asserted Patents
in
the United States,
including
through
research and
development, and
engineering in the United States.
A. Pathway s Practice of Pathway s Asserted Patents
66.
Pathway
makes extensive
use
of
the
inventions claimed
in
Pathway's
Asserted
Patents in numerous products, including
without
limitation Pathway's HoverCam®
S0I08,
S0I08
Wireless, Neo3, Mini5, Solo5, 3PO,
T3
and Ultra8
document
cameras, and has made and
continues to make significant domestic investments inthese products, as
more
fully set forth in
the
accompanying Confidential
Declaration of
Ji Shen
attached as
Ex. 23.
For
example,
Pathway
has sold in the United States millions
of dollars worth of
its HoverCam® S0I08,
S0I08
Wireless,
Neo3,
Mini5,
Solo5, 3PO, T3 and
Ultra8 document
cameras that
practice one
or
more
claims
of
the '751, 'D906, 'D389,
and 'D300
patents (the
Domestic
Industry Products ).
Pathway's
investments and expenditures initsdomestic
industries
for Pathway's Asserted
Patents
are
significant, continuing and
ongoing.
67.
Complainant's
HoverCam T3
document camera
embodies the design covered by
the 'D906 patent.
See
Ex. 24.
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68 Complainant's HoverCam T3 document camera embodies the design covered
by
the 'D389 patent.SeeEx. 25.
69. Complainant's HoverCam Flex software embodies method
claims
1, 3, and 8. See
Ex. 26. Any one
of
the accused Complainant's
document
cameras operated in connection with
the
HoverCam Flex
software
embodies
method claims 1, 3, and 8. See id. Complainant's
s
HoverCam Flex software used in connection
with
one ofComplainant's document cameras
and
personal computer embodies method claims 1, 3, and 8, and apparatus claim 18. See
id.
70. Complainant's HoverCam
Solo 5and Solo 8
document cameras
embody the
design covered
by
the
'D300 patent.
See
Ex. 27.
B. United States Investments in the Domestic Industry
71.
Pathway
has invested millions
of dollars
and years
of
effort in
the
engineering,
research, development, exploitation, advertising and promotion
of
the
Domestic Industry
Products in the United States. See
Ex.
23
(Confidential Declaration
ofJi
Shen).
72. As
discussed further below, and
as shown
by the Confidential
Declaration
ofJi
Shen and
exhibits A-F
thereto,
there is
a
domestic industry as defined
under
19 U.S.C.
§
1337(a)(3)(A)
because Pathway has made and continues to make significant
and
quantitatively
demonstrable investments in plant
and
equipment in the United States regarding
the
Domestic
Industry Products.
There is also
adomestic
industry as defined
under
19
U.S.C. §
1337(a)(3)(B)
because
Pathway
has
made
and
continues to
make
significant
and
quantitatively
demonstrable
investments in the employment
of
United States labor and capital in connection with the
Domestic Industry Products.
There is also adomestic
industry as defined
under 19
U.S.C.
§1337(a)(3)(C) because
Pathway
has
made
and
continues
to
make substantial
and quantitatively
demonstrable investments in the exploitation ofPathway's Asserted Patents through engineering,
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research
and development, advertising and promotion directed to the Domestic Industry Products
in
the
United States.
Domestic
Industry
Under
19
U.S.C.
§
1337 a) 3) A)
73. There is
a
domestic
industry
as
defined under Subsection
(A)
because Pathway
has
made and continues to make significant
and
quantitatively demonstrable
investments in
plant
andequipment
in
the
United States with respect to the
Domestic
Industry Products. Since 2010,
Pathway has invested a
significant
amount ofmoney
in connection
with
plant
and equipment
comprising operating
expenses, such as
equipment leasing,
product
production and
related costs
related
to
the Domestic Industry Products.
See
Ex.
23at
| f
6-7
Exs. A-F. All
of
Pathway's
U.S.-based
plant
and
equipment
are used
simultaneously
to
design,
sell and support
all Domestic
Industry
Products,
so it
is not possible
to
break-down
Pathway's
investments
in
plant
and
equipment ona
product-by-product basis.
Ex. 23, f 6.
74. Pathway's U.S.-based staffdesigns, develops, markets and sells the
Domestic
Industry
Products
in the
United
States from
its
headquarters in San Diego, California. Pathway's
U.S.-based
staff team
assists with research, design, development, planning, logistics,
sales,
marketing, order
processing, customer and technical support, and other activities associated with
the Domestic IndustryProducts. SeeEx. 23, |f 6, 7, 10.
2. Domestic Industry Under 19U.S.C. §
1337 a) 3) B)
75.
There isa domestic industry asdefined under Subsection (B)
because Pathway
hasmadeandcontinues tomakesignificant and quantitatively demonstrable investments in the
employment of labor and capital in the United States
with respect
to the Domestic Industry
Products. Further, since at least 2010, Pathway has employed dozens
of
research, development,
engineering,
human resources,
executive, sales,
marketing and
support
personnel,
and
Pathway's
investments include millions
of
dollars
in
compensation
paidto
such
personnel
related
to the
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Domestic
Industry Products.
Because all
of
Pathway's
staff
work
simultaneously
and
interchangeably on all Domestic
hidustry
Products,
it
is not possible
to
break-down Pathway's
labor and capital investments
on
aproduct-by-product basis. Instead, all ofPathway's labor
and
capital investments
are
properly
attributable to all
Domestic Industry
Products. Ex. 23,
f
11.
Pathway's
investments also include
millions
ofdollars in
capital
expenses related to the purchase
'and lease of office
space,
tooling, equipment, computers
and
other supplies, and of engineers in
connection
with the Domestic Industry
Products.
Ex.
23, fIf 8-12
Exs.
A-F.
3.
Domestic
Industry Under 19
U.S.C.
§
1337 a) 3) C)
76.
There is also a
domestic industry as defined under Subsection
(C)
because
Pathway has made and continues to make substantial and
quantitatively
demonstrable U.S.
investments in the exploitation
of
Pathway's
Asserted Patents through
the Domestic Industry
Products, including without
limitation
investments in the engineering, research, development,
sales,
marketing, product and
technical
support
for the Domestic
Industry Products. Ex. 23,
Tit
13-15 Exs. A-F. .
77.
Since 2010,
Pathway
has
spent millions ofdollars
in
research
and
development
costs, engineering and product production, advertising and promotion
related
to
the
Domestic
Industry Products. Ex. 23, ^ 13-15 Exs. A-F.
It
is virtually impossible to break-down
research and development or engineering costs
on
a
patent-by-patent
basis because Pathway's
engineering
team
works interchangeably and simultaneously on all Domestic
Industry
Products.
Ex. 23,115.
However, Pathway's
CEO estimates
that approximately
87
ofPathway's
U.S.
research
and development,
engineering and promotion
costs
are attributable to the
'751
patent.
Approximately 10 of
Pathway's
U.S.
research
and development,
engineering
and promotion
costs are attributable
to
the 'D300 patent. Approximately 2% of
Pathway's
U.S. research
and
development, engineering and promotion costs are attributable to
the
'D906
patent.
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Approximately 1
ofPathway's U.S.
research and development, engineering
and
promotion
costs are attributable to the 'D389 patent. Ex. 23,
^
15.
XII.
RELATED LITIGAT ION
78.
On July 13,2015,
Pathway filed
acomplaint for patent
infringement
against
Recordex in the
United
States District Court
for
theSouthern District ofCalifornia. See Civil
Action
No. 3:15-cv-01536-JLS-JLB.
In
that
action, Pathway
asserts
infringement
ofthe
'751,
'D906, 'D389,
and
'D300 patents. Pathway
has not yet
served
the
complaint on Recordex.
79.
On July 13, 2015, Pathway filed a complaint
for
patent infringement against
QOMO
inthe
United States
District
Court
forthe
Southern District
of
California.
See
Civil
Action No. 3:15-cv-01540-GPC-NLS. Inthat
action,
Pathway
asserts
infringement ofthe '751
patent. Pathwayhas not yet servedthe complaint on QOMO.
80.
On
July 13, 2015, Pathway filed
a
complaint for patent infringement against
Adesso
in theUnited
States
District Courtfor the Southern District of California. See Civil
Action No. 3:15-cv-01538-JAH-NLS.
In
that action, Pathway asserts infringement
ofthe
'D906
and 'D389
patents. Pathway
hasnot yet
served
the
complaint
on
Adesso.
XIII. RELIEF REQUESTED
81. WHEREFORE,
by reason
of the foregoing,
Pathway respectfully requests
that the
United States International Trade Commission:
a) Institute an immediate investigation,pursuant to Section337 of the TariffActof
1930, as
amended,
19
U.S.C.
§1337(a)(l)(B)(i) and
(ii), with respect
to
violations
of Section27 based upon the importation, sale for importation, sale after
importation, and
use after importation into theUnited States of the
Respondents'
document cameras, visual
presentation
equipment
and
related components
and
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software for use therewith that infringe
one or more asserted claims of
Complainant's '751,
'D906, 'D389, and 'D300
patents;
b) Schedule
and conduct a
hearing pursuant
to
19
U.S.C. §
1337 for the
purposes
of
(i)
receiving evidence and
hearing
argument concerning whether there
has
been a
violation
of
19
U.S.C.
§1337,
and
(ii) following the hearing, determining that
there
hasbeena violation of 19
U.S.C. §1337;
c) Issue apermanent limited
exclusion
order,
pursuant
to 19 U.S.C.
§1337(d)(l),
barring from entry into the United States
all
certain document cameras,
visual
presentation equipment
and
related
components and software
thereof
made
by or
on behalfofthe
Respondents,
that infringe one
or more
claims ofComplainant's
'751,
'D906,
'D389,and 'D300patents;
d) Issue a
permanent
cease and
desist
order,
pursuant
to
19
U.S.C. §
1337(f)
prohibiting Respondents, or others acting on
their
behalf,
from
importing,
marketing, advertising, demonstrating, warehousing inventory for distribution,
distributing, offering for sale, selling, licensing,
using,
or
transferring
outside
the
United States
for sale in
the United
States
any document
cameras, visual
presentation equipment and components and software
thereof
that
infringe one
or
more
claims
of
Complainant's
'751,
'D906,
'D389, and
'D300
patents;
e) Impose abond, pursuant to 19 U.S.C.
§13370),
upon importation of
any
document cameras, visual presentation
equipment
and components and
software
thereof that infringe one or more
claims
ofComplainant's '751,
'D906,
'D389,
and
'D300 patents during any Presidential
Review;
and
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f)
Grant such
other and furtlier
relief
as
the
Commission deems
just and
proper
based on
the
facts determined
by
the
investigation
and the authority of the
Commission.
Dated: August 18, 2015
23
JAMESV.FAZIO,
UK
.
TREVOR Q. CODDINGTON, PHD
MARTY B. READY
SAN DIEGO IP LAW GROUP LLP
12526High BluffDrive, Suite 300
San Diego, California 92130
Telephone: (858) 792-3446
Facsimile: (858) 792-3501
Counsel for Complainant
PATHWAY
INNOVATIONS
AND
TECHNOLOGIES
INC
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VERIFICATION
OF COMPLAINT
a
with
19 CF
R.
§§
210.4(c) and
210.12(a),
under
penalty
I, Ji
Shen,
declare,
in
accordance with iy
ur^ ^
of
perjury,
that
the
following
statements
are
true:
-, .rhief Executive Officer ofPathway Innovations and
1.
I am the President
and
Cruet
axecuuvc
a1 authorized by Pathway Innovations and Technologies,
Technologies,
Inc.
and
as
such, am
duly
authorized oy
r
Inc.
to
verify
the
foregoing Complaint.
2. ^C0mp amtis» W*