Glud & Marstrand A/S v. Viva Magnetics Ltd Hong Kong et. al.

8/2/2019 Glud & Marstrand A/S v. Viva Magnetics Ltd Hong Kong et. al.

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UNITED STATES DISTRICT COURTWESTERN DISTRICT OF WASHINGTON

GLUD & MARSTRAND A/S,

Plaintiff,

v.

VIVA MAGNETICS LTD. (HONGKONG), VIVA USA, INC. and VIVAMAGNETICS (CANADA) LTD.,

Defendants.

No.COMPLAINT FOR PATENTINFRINGEMENT AND BREACH OFCONTRACT

JURY DEMAND

Plaintiff Glud & Marstrand A/S (G&M), by and through its attorneys, alleges for

its Complaint against Viva Magnetics Ltd. (Hong Kong), Viva USA, Inc. and Viva

Magnetics (Canada) Ltd. (collectively, Viva) as follows:

NATURE OF THE ACTION

1. G&M brings this action to recover damages and obtain injunctive and other

relief arising from Vivas infringement of G&Ms patents and breach of a settlement

agreement between G&M and Viva reached in a previous action before this Court (theJanuary 2007 Settlement Agreement). G&M is the owner and developer of patented

technology relating to metal storage containers for storage media such as Digital Video

Discs (DVDs), Blu-ray Discs and Compact Discs (CDs). G&Ms claims arise out of

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COMPLAINT FOR PATENT INFRINGEMENT ANDBREACH OF CONTRACT Page 1

818 STEWART STREET, SUITE 1400SEATTLE WASHINGTON 98101

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Vivas breach of its agreement not to manufacture, cause to be manufactured, market or sell

a metal storage container that infringes the claims of U.S. Patent No. 7,051,872 (the 872

Patent) or the claim of U.S. Design Patent No. D562,049 (the D049 Patent), and Vivas

corresponding infringement of the 872 Patent and the D049 Patent.

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PARTIES

2. Plaintiff G&M is a limited liability entity organized and existing under the

laws of Denmark, with a principal place of business in Lsning, Denmark.7

3. Upon information and belief, Defendant Viva Magnetics Ltd. (Hong Kong)

is a limited liability company organized and existing under the laws of Hong Kong, China,

with a principal place of business in Hong Kong, China.

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4. Upon information and belief, Defendant Viva USA, Inc. is a corporation

organized and existing under the laws of the State of California, with a principal place of

business in Los Angeles, California.

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5. Upon information and belief, Defendant Viva Magnetics (Canada), Ltd. is a

limited liability company organized and existing under the laws of Canada, with a principal

place of business in Scarborough, Ontario, Canada.

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JURISDICTION AND VENUE

6. This Court has jurisdiction over G&Ms claims for infringement of the 872

Patent and the D049 Patent and for breach of the January 2007 Settlement Agreement by

stipulation of the parties and order of the Court, dated April 17, 2007, in Glud & Marstrand

A/S v. Microsoft Corp. and Viva Group Ltd. , Civil Action No. 05-1563 (RSM) (the

Stipulation and Order). As set forth in the Stipulation and Order: The Court shall retain

jurisdiction over this matter for the purposes of enforcing the January 2007 SettlementAgreement, including, but not limited to, any relief sought for a breach or default under the

January 2007 Agreement. A copy of the Stipulation and Order is attached as Exhibit 1.

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7. This Court also has jurisdiction over G&Ms claims for infringement of the

872 Patent and the D049 Patent arising under the patent laws of the United States, 35

U.S.C. 1 et seq. , pursuant to 28 U.S.C. 1331 and 1338(a).

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8. This Court also has supplemental jurisdiction over G&Ms claim for breachof the January 2007 Settlement Agreement pursuant to 28 U.S.C. 1367(a), because that

claim is so related to G&Ms claims for infringement of the 872 Patent and the D049

Patent that it forms part of the same case or controversy and derives from a common

nucleus of operative facts.

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9. This Court has personal jurisdiction over Viva by agreement between the

parties. Viva consented to the jurisdiction of the Court pursuant to the Stipulation and

Order and the January 2007 Settlement Agreement.

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10. This Court also has personal jurisdiction over Viva because, on information

and belief, Viva has sufficient contacts with this judicial district and Viva regularly

conducts business within this judicial district. Upon information and belief, Viva directly

or through its agents distributes, offers for sale or license, sells or licenses, and advertises

its products and services within the State of Washington and this judicial district, has

purposefully availed itself of the privileges and benefits of the laws of the State of

Washington, and committed acts of patent infringement during the course of its business in

this judicial district.

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11. Venue is proper in this judicial district pursuant to 28 U.S.C. 1391(b), (c)

and (d) and 1400(b). Venue is also proper in this judicial district because Viva consented to

venue in this judicial district pursuant to the Stipulation and Order and the January 2007

Settlement Agreement.

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G&MS CLAIMS OF INFRINGEMENT AND BREACH1

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The 872 Patent

12. Founded over 125 years ago, G&M is Scandinavias largest supplier of

metal packaging. G&M develops and manufactures metal packaging for various food andconsumer products and decorative tins for a wide variety of other products.

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13. Several years ago, G&M originated the idea of a metal case for storage

media, such as CDs and DVDs, that could be filled with conventional loading equipment

and, using proprietary technology, applying colored lacquering, embossing and hologram

printing directly into the metal surface of the case. G&M believed that such packaging

would be aesthetically pleasing, giving the packaged product a look of enhanced value, and

also serve as a deterrent to counterfeiters, who would be unable to duplicate such packaging

without considerable expense.

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14. The innovative work of G&Ms engineers and developers has been rewarded

with several United States Patents, including the 872 Patent.14

15. Each of the inventors of the 872 Patent has assigned the 872 Patent to

G&M, so that G&M is the sole owner of all right and title to the 872 Patent, including the

right to recover damages for infringement.

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The D049 Patent

16. Several years ago, a G&M engineer also invented a unique ornamental

design for a hard box for storage media disks. He was awarded the D049 Patent for his

invention.

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17. The inventor of the D049 Patent has assigned the D049 Patent to G&M, so

that G&M is the sole owner of all right and title to the D049 Patent, including the right to

recover damages for infringement.2324



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Vivas Infringement1

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23. Upon information and belief, Viva did cease manufacturing the products at

issue in the Prior Litigation. But notwithstanding its agreement not to manufacture any

storage metal box that infringes any claim of either the 872 Patent or the D049 Patent,following the January 2007 Settlement Agreement, Viva has resumed manufacturing

storage metal boxes that infringe claims of both the 872 Patent and theD049 Patent.

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24. Upon information and belief, Viva is currently manufacturing and selling at

least the following infringing products under its Metal Box for Blu-ray and DVD product

line: Metal Blu-ray Box 12.5mm, Metal Blu-ray Box 15mm, and Metal DVD Box.

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25. Upon information and belief, Vivas Metal Box for Blu-ray and DVD

product line is being used and offered for sale in the United States and/or imported into the

United States in connection with at least the following Blu-ray and/or DVD movie titles:

The Lion King; Bambi: Diamond Edition; The Incredibles; and Pirates of the

Caribbean: On Stranger Tides.

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26. Upon information and belief, Viva intends to use and offer for sale in the

United States and/or import into the United States its Metal Box for Blu-ray and DVD

product line in connection with additional Blu-ray and/or DVD movie titles in the near

future.

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27. G&M gave notice to Viva that its Metal Box for Blu-ray and DVD products

infringe claims of the 872 Patent on or about February 23, 2011 and again on or about

April 28, 2011.

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28. G&M gave notice to Viva that its Metal Box for Blu-ray and DVD products

infringe the claim of the D049 Patent on or about April 28, 2011. 23



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FIRST CAUSE OF ACTION1

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Patent Infringement

29. G&M hereby realleges and incorporates by reference each and every

allegation set forth in paragraphs 1 through 28 above. 430. On May 30, 2006, the 872 Patent entitled Metal Packaging was duly and

legally issued to G&M by the United States Patent and Trademark Office. G&M is the

owner, by valid assignment, of all right, title and interest in and to the 872 Patent. A true

and correct copy of the 872 Patent is attached as Exhibit 2.

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31. G&M has not licensed or otherwise authorized Viva to make, use, offer for

sale, sell or import into the United States any products that embody the inventions of the

872 Patent.

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32. On information and belief, Viva has directly infringed and continues to

directly infringe claims of the 872 Patent by making, using, offering for sale and/or selling

in the United States and/or importing into the United States one or more products including,

but not limited to, Metal Blu-ray Box 12.5mm, Metal Blu-ray Box 15mm, and Metal DVD

Box.

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33. Viva has had actual knowledge of the 872 Patent since at least September

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34. On information and belief, Viva has indirectly infringed and continues to

indirectly infringe claims of the 872 Patent by inducing end-users to infringe claims of the

872 Patent by using in the United States one or more products including, but not limited to,

Metal Blu-ray Box 12.5mm, Metal Blu-ray Box 15mm, and Metal DVD Box. Viva

intentionally took action that induced end-users to infringe claims of the 872 Patent by

marketing, selling, and supporting the infringing products. Viva has awareness of the 872

Patent and knew or was willfully blind to the fact that its actions would cause direct

infringement by end-users.

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35. Upon information and belief, Vivas infringement of claims of G&Ms 872

Patent has been and will continue to be willful, wanton and deliberate.

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36. G&M is damaged and irreparably injured by Vivas infringing activities and

will continue to be so damaged and irreparably injured unless and until Vivas infringingactivities are enjoined by this Court.

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SECOND CAUSE OF ACTION

Patent Infringement


allegation set forth in paragraphs 1 through 36 above. 9

38. On February 19, 2008, the D049 Patent entitled Hard Box for Media Disk

was duly and legally issued to G&M by the United States Patent and Trademark Office.

G&M is the owner, by valid assignment, of all right, title and interest in and to the D049

Patent. A true and correct copy of the D049 Patent is attached as Exhibit 3.

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39. G&M has not licensed or otherwise authorized Viva to make, use, offer for

sale, sell or import into the United States any products that embody the invention of the

D049 Patent.

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40. On information and belief, Viva has directly infringed and continues to

directly infringe the claim of the D049 Patent by making, using, offering for sale and/or

selling in the United States and/or importing into the United States one or more products

including, but not limited to, Metal Blu-ray Box 12.5mm, Metal Blu-ray Box 15mm, and

Metal DVD Box.

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41. Viva has had actual knowledge of the application for the D049 Patent since

at least January 19, 2007. Viva has had constructive notice of the D049 Patent since itissued, and actual notice of the D049 Patent since on or about April 28, 2011.

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indirectly infringe the claim of the D049 Patent by inducing end-users to infringe the claim26



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of the D049 Patent by using in the United States one or more products including, but not

limited to, Metal Blu-ray Box 12.5mm, Metal Blu-ray Box 15mm, and Metal DVD Box.

Viva intentionally took action that induced end-users to infringe the claim of the D049

Patent by marketing, selling, and supporting the infringing products. Viva has awareness of the D049 Patent and knew or was willfully blind to the fact that its actions would cause

direct infringement by end-users.

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43. Upon information and belief, Vivas infringement of the claim of G&Ms

D049 Patent has been and will continue to be willful, wanton and deliberate.

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44. G&M is damaged and irreparably injured by Vivas infringing activities and

will continue to be so damaged and irreparably injured unless and until Vivas infringing

activities are enjoined by this Court.

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THIRD CAUSE OF ACTION

Breach of Contract


allegation set forth in paragraphs 1 through 44 above. 15

46. G&M and Viva entered into a written contract referred to as the January

2007 Settlement Agreement that, inter alia , resulted in the dismissal of the Prior Litigation.17

47. The January 2007 Settlement Agreement is a valid and enforceable contract.

48. G&M has performed its obligations under the January 2007 Settlement

Agreement.20

49. As set forth above, by its actions infringing claims of the 872 Patent and the

D049 Patent, Viva has breached its obligations under the January 2007 Settlement

Agreement.

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2350. As a direct result of Vivas breaches of the January 2007 Settlement

Agreement, G&M has suffered damages and other harm.25



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51. G&M has suffered, and will continue to suffer, substantial and irreparable

damage to its position in the market, business reputation and goodwill for which G&M has

no adequate remedy at law, as well as losses in an amount to be determined.

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52. G&M is also entitled to recover its attorneys fees and costs pursuant to theterms of the January 2007 Settlement Agreement.5

PRAYER FOR RELIEF

WHEREFORE, G&M prays for judgment as follows:

A. An entry of judgment that the 872 Patent and the D049 Patent are each

valid and enforceable;9

B. An entry of judgment holding Viva liable for infringement of one or more

claims of each of the 872 Patent and the D049 Patent and for breach of the January 2007

Settlement Agreement;

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C. An order permanently enjoining Viva, its officers, agents, representatives,

employees, attorneys and affiliated companies, their assigns and successors in interest, and

those persons in active concert or participation with them, from continued acts of

infringement of the 872 Patent and the D049 Patent;

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D. An order awarding G&M all damages adequate to compensate for Vivas

infringement of the 872 Patent and the D049 Patent, and in no event less than a reasonable

royalty for Vivas acts of infringement, and for breach of the January 2007 Settlement

Agreement, together with prejudgment and post-judgment interest;

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E. Trebling of damages under 35 U.S.C. 284 in view of the willful and

deliberate nature of Vivas infringement of the 872 Patent and the D049 Patent, together

with prejudgment and post-judgment interest;

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G. Actual damages suffered by G&M as a result of Vivas unlawful conduct, in

an amount to be proven at trial, together with prejudgment and post-judgment interest;

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H. An order awarding G&M its costs and attorneys fees pursuant to the

January 2007 Settlement Agreement and/or 35 U.S.C. 285; and4I. Any and all other legal and equitable relief as may be available under the

law and which the Court may deem proper.6

DEMAND FOR A JURY TRIAL

G&M hereby demands a jury trial on all issues so triable under the law as provided

by Rule 38(b) of the Federal Rules of Civil Procedure.

Dated: March 16, 2012 YARMUTH WILSDON CALFO PLLC

By: /s/ Jeremy Roller Angelo J. Calfo, WSBA No. 27079Jeremy E. Roller, WSBA No. 32021818 Stewart Street, Suite 1400Seattle, WA 98101Telephone: (206) 516-3800Facsimile: (206) [email protected]

[email protected]

Patricia A. Martone( pro hac vice application to be filed)Craig B. Whitney( pro hac vice application to be filed)MORRISON & FOERSTER LLP1290 Avenue of the AmericasNew York, NY 10104Telephone: (212) 468-8000Facsimile: (212) [email protected]@mofo.com

Attorneys for Plaintiff GLUD & MARSTRAND A/S


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691.01 mc163501 3/16/12



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Hon. Ricardo S. Martinez

STIPULATION AND [PROPOSED] ORDER OFDISMISSAL WITH PREJUDICE - 1Civil Action No. 05-1563 (RSM)

GLUD-6-1001P39.doc

UNITED STATES DISTRICT COURTWESTERN DISTRICT OF WASHINGTON

GLUD & MARSTRAND A/S,

Plaintiff,

vs.

MICROSOFT CORP. and VIVA GROUPLTD.,

Defendants.

CIVIL ACTION NO. 05-1563 (RSM)

STIPULATION AND ORDEROF DISMISSAL WITH PREJUDICE

Note On Motion Calendar: April 11, 2007

The matter in difference between Plaintiff Glud & Marstrand A/S and Defendants Viva

Magnetics Ltd. Hong Kong, and Viva Magnetics (Canada) Ltd. having been settled pursuant to

an agreement entered into among those parties in January 2007 (hereinafter, the January 2007

Settlement Agreement);

IT IS HEREBY STIPULATED that:

1. The claims asserted by Plaintiff Glud & Marstrand A/S against Defendants Viva

Group, Viva Magnetics Ltd. Hong Kong, Viva Magnetics (Europe) N.V., Viva Magnetics

(Canada) Ltd., Viva USA, Inc. and Encore Holdings, Ltd. are hereby dismissed with prejudice

and with each party bearing its own attorneys fees and costs.

Case 2:05-cv-01563-RSM Document 122 Filed 04/17/07 Page 1 of 3Case 2:12-cv-00465 Document 1 Filed 03/16/12 Page 13 of 56


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STIPULATION AND ORDER OF DISMISSALWITH PREJUDICE - 2Civil Action No. 05-1563 (RSM)

GLUD-6-1001P39.doc

2. The claims asserted by Defendants Viva Magnetics Ltd. Hong Kong and Viva

Magnetics (Canada) Ltd. against Plaintiff Glud & Marstrand A/S are hereby dismissed with

prejudice and with each party bearing its own attorneys fees and costs.

3. The Court shall retain jurisdiction over this matter for the purposes of enforcing

the January 2007 Settlement Agreement, including, but not limited to, any relief sought for a

breach or default under the January 2007 Agreement.

We concur to the form of and entry of this Order.

For Plaintiff Glud & Marstrand A/S:

Gerald LevyRichard H. BrownPITNEY HARDIN LLP 7 Times Square, 20 th FloorNew York, NY 10036P: 212.297.5854

Lawrence D. Graham, WSBA No. 25,402Douglas A. Grady, WSBA No. 36,100BLACK LOWE & GRAHAM PLLC 701 Fifth Avenue, Suite 4800Seattle, WA 98104P: 206.381.3300

By: s/ Richard H. BrownDate: April 11, 2007

For Defendants Viva Magnetics Ltd. HongKong and Viva Magnetics (Canada) Ltd.

Robert C. FaberLawrence A. HoffmanDouglas Q. HahnOSTERLENK , FABER , GERB & SOFFEN LLP 1180 Avenue of the AmericasNew York, NY 10036P: 212.382.0700

Paul T. Meiklejohn, WSBA No. 17,477Alexander A. Baehr, WSBA No. 25,320DORSEY & WHITNEY LLP U.S. Bank Centre1420 Fifth Avenue, Suite 3400Seattle, WA 98101P: 206.903.8800

By: s/ Paul T. MeiklejohnDate: April 11, 2007



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STIPULATION AND ORDER OF DISMISSALWITH PREJUDICE - 3Civil Action No. 05-1563 (RSM)

GLUD-6-1001P39.doc

For Defendant Microsoft Corporation:

Warren J. Rheaume, WSBA No. 13,627Rima J. Alaily, WSBA No. 29,225HELLER EHRMAN LLP

701 Fifth Avenue, Suite 6100Seattle, WA 98104P: 206.447.0900

By: s/ Rima J. AlailyDate: April 11, 2007

ORDER

IT IS SO ORDERED this _17__ day of April , 2007.

ARICARDO S. MARTINEZ

UNITED STATES DISTRICT JUDGE



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Glud & Marstrand A/S v. Viva Magnetics Ltd Hong Kong et. al.

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