SKF v. Azima Et. Al.

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IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF TEXAS

SKF USA INC., Plaintiff, v. AZIMA, INC., AZIMA DLI, LLC, AZIMA HOLDINGS, INC., and AZIMA SERVICES, INC., Defendants.

) ) ) ) ) ) ) ) ) ) )

Civil Action No. 4:14-cv-524 Jury Trial Demanded

ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT

Plaintiff SKF USA Inc. (“SKF”) alleges as follows: THE PARTIES

1.

Plaint Plaintiff iff SKF USA Inc. Inc. (“SKF” (“SKF” or “Plai “Plainti ntiff” ff”)) iiss a Del Delawar awaree corp corpora oratio tion n with with its

 principal place of business at 890 Forty Foot Road, P.O. Box 352, Lansdale, P Pennsylvania, ennsylvania, 19446. SKF is a subsidiary of AB SKF, a Swedish company. 2.

SKF is eng ngag ageed in, inter n, inter alia, alia, the business of manufacturing and selling plain,

rolling element, and magnetic bearings, bearing housings, seals, actuators, lubrication devices and systems, systems, and vibration vibration and condition monitoring monitoring equipment equipment and services. services. SKF also provides training, consultation, and engineering design services, among other related products and services. 3.

SKF operat operates es a Solutio Solution n Factory Factory facili facility ty at 3443 North North Sam Housto Houston n Pkwy W

#100, Houston, Houston, Texas 77086, located within this judicia judiciall district. district. The SKF Solution Factory facility provides SKF’s customers with ready access to a portfolio of SKF services and competencies, which include but are not limited to the remote condition monitoring products and -1-

 

services servi ces at issue in this matter. matter. Documents Documents and potential witnesses witnesses relevant relevant to the issues in dispute in this matter are located within this judicial district. 4.

Upon Upon info informa rmatio tion n and and belief, belief, Defend Defendant ant Azima, Azima, Inc. Inc. is is a corpora corporatio tion n orga organize nized d

under the laws of Delaware with its principal place of business at 300 Trade Center, Suite 4610 Woburn, Massachusetts 01801. 5.

Upon Upon inform informati ation on and belief, belief, Defend Defendant ant Azima Azima DLI, DLI, LLC LLC is a corp corpora oratio tion n

organized organi zed under the laws of Delaware Delaware with its principal principal place of business business at 300 Trade Center, Suite 4610 Woburn, Massachusetts 01801. 6.

Upon Upon inform informati ation on and belief, belief, Defend Defendant ant Azima Azima Holding Holdings, s, In Inc. c. is a corpora corporatio tion n

organized organi zed under the laws of Delaware Delaware with its principal principal place of business business at 300 Trade Center, Suite 4610 Woburn, Massachusetts 01801. 7.

Upon Upon info informa rmatio tion n and and belief, belief, Defend Defendant ant Azima Azima Servic Services, es, Inc. Inc. is is a corpora corporatio tion n

organized organi zed under the laws of Delaware Delaware with its principal principal place of business business at 300 Trade Center, Suite 4610 Woburn, Massachusetts 01801. 8.

Upon Upon inform informati ation on and belief, belief, Azima, Azima, Inc., Inc., Azi Azima ma DLI, DLI, LLC, LLC, and Azima Azima

Holdings, Inc. are wholly owned subsidiaries of Azima Services, Inc. (collectively, “Azima”). Upon information information and belief, Azima, Inc. is licensed to do business in Texas. THE PATENTS

9.

SKF holds holds all right, right, title, title, and intere interest st in and to United United States States Patent Patent No.

5,845,230, entitled “Apparatus and Method for the Remote Monitoring of Machine Condition” (“the `230 Patent”). Patent”). The `230 Patent was duly and properly issued issued by the United States Patent & Trademark Trade mark Office Office on December December 1, 1998. A true copy of the `230 patent patent is attached hereto as Exhibit A. -2-

 

10.

SKF holds holds all all righ right, t, titl title, e, and and inter interest est in and and to United United States States Pate Patent nt No. No.

6,489,884, entitled “Apparatus and Method for the Remote Monitoring of Machine Condition” (“the `884 Patent”). Patent”). The `884 Patent was duly and properly issued issued by the United States Patent & Trademark Trade mark Office Office on December December 3, 2002. A true copy of the `884 patent patent is attached hereto as Exhibit B. 11.

SKF holds holds all all righ right, t, titl title, e, and and inter interest est in and and to United United States States Pate Patent nt No. No.

6,006,164, 6,006,1 64, entitled “Portable “Portable Vibration Vibration Monitor” (“the `164 Patent”). Patent”). The `164 Patent was duly and properly properly issued by the United States Patent & Tradem Trademark ark Office on Decembe Decemberr 21, 1999. A true copy of the `164 patent is attached hereto as Exhibit C. 12.

The United United States States Patent Patent and Tradema Trademark rk Offi Office ce (“USP (“USPTO” TO”)) iissu ssued ed an an  ex parte

reexaminati reexam ination on certificate certificate regarding the `164 Patent on June 16, 2009. A true copy of the certificate is attached hereto as part of Exhibit C. JURISDICTION AND VENUE

13.

Upon Upon inform informati ation on and belief, belief, Azima Azima is engaged engaged in, inter in, inter alia, alia, the business of 

manufacturing and selling vibration and condition monitoring equipment and services. Azima  provides training, consultation, and engineering services s ervices in Texas. Azima specifically has sought out and has committed one or more acts of infringement within this judicial district by offering to sell or selling its infringing products and services within this judicial district. 14.

st

For example example,, Azima Azima exhibit exhibited ed its produc products ts at the 41 Turbomachinery & 28 st

th

th

Internation Inter national al Pump User Symposia and the 42 Turbomachinery & 29 International Pump User  TM

Symposia in this judicial district. Azima demonstrated the functionality of its WATCHMAN TM

TRIO

TM

, and SpriteMAX SpriteMAX

st

th

,

systems at the 41 Turbomachinery & 28 International Pump User 

Symposia in this judicial district. -3-

 

15.

This This actio action n arise arisess under under the the Unit United ed State Statess Paten Patentt Laws, Laws, 35 35 U.S.C. U.S.C. §§ 1, 1, et  et seq. seq.

16.

The Cour Courtt has exclusi exclusive ve subje subject ct matte matterr jurisd jurisdict iction ion under under 28 U.S.C. U.S.C. §§ 13 1331 31 and and

1338(a). 17.

The Court has personal personal jurisdicti jurisdiction on over Azima as, upon informatio information n and and belief, belief,

Azima carries on continuous, systematic, and ongoing business in Texas. 18.

The Court has personal personal jurisdicti jurisdiction on over Azima as, upon informatio information n and and belief, belief,

Azima has committed specific acts of infringement of at least one claim of at least one of the  patents-in-suit by offering for sale and selling infringing products within this judicial district, and on information and belief elsewhere as well. 19.

These These infr infring inging ing produc products, ts, as alle alleged ged above, above, have have not not been been auth authori orized zed in in any

manner by SKF. Azima has never been authorized authorized or otherwise otherwise granted the right to manufacture, offer for sale, sell, use, or import into the United States or otherwise distribute  products covered co vered by any of the claim(s) of at least one of the patents-in-suit. 20.

Azima’s Azima’s iinfrin nfringement gement of the claims of the patents-inpatents-in-suit suit has been willful willful and

deliberate. delibe rate. Azima has had actual knowledge knowledge of the `230 patent patent since at least October 2011. 21.

Upon informatio information n and and belief, belief, Azima is infringing infringing,, and will continue continue to infringe infringe

upon the patents-in-suit to the irreparable damage of SKF unless enjoined by the Court. 22.

SKF SKF ha hass no adequ adequat atee remedy remedy at la law. w.

23.

Upon Upon infor informat mation ion and and belie belief, f, venu venuee is proper proper in in the the Distr District ict Court Court for for the the

Southern Souther n District of Texas pursuant pursuant to 28 U.S.C. §§ 1391 and 1400(b). THE ACCUSED PRODUCTS AND NOTICE OF INFRINGEMENT

24.

On information information and belief, belief, Defendant Defendant Azima is a condition condition monito monitoring ring services services

company that manufactures, offers for sale, and sells in the United States diagnostic equipment -4-

 

and continuous and predictive monitoring services of ball bearings and bearing systems found in large engines, commercial machinery, automobiles, powerhouses, turbines, and the like, under  TM

the brand name WATCHMAN United States a line of TRIO

. Azima also manufacture manufactures, s, offers for sale, and sells sells in the

TM

manual data collectors for the predictive monitoring of ball

 bearings and bearing systems found in large engines, en gines, commercial co mmercial machinery, automobiles, TM

 powerhouses, turbines, and the like, for use with WATCHMAN

services. servi ces. Azima also

manufactures, offers for sale, and sells in the United States, its SpriteMAX

TM

online monitoring

hardware, for the continuous and predictive monitoring of ball bearings and bearing systems found in large engines, commercial machinery, automobiles, powerhouses, turbines, and the like. TM

The SpriteMAX

includes a communication infrastructure and a vibration monitoring

capability. 25.

TM

Azim Azimaa ha hass mark market eted ed its its WA WATC TCHM HMAN AN

district. distr ict. Azima has marketed marketed its TRIO TRIO

 products and services in this judicial

TM

 products and services in this judicial district. Azima

TM

has marketed its SpriteMAX 26.

 products and services in this judicial district.

Azima Azima had had actu actual al noti notice ce of the claims claims of at at least least the the `230 `230 pate patent nt as as early early as

Octoberr 2011. SKF, through the use of a patent Octobe p atent licensing licensing company, company, approached approached Azima’s then Vice President of Operations and Business Development and then Vice President of Technology and offered offered Azima a license license to the `230 patent. patent. Azima, through through its then Vice President President of  Technology, Techno logy, subsequently subsequently declined to take a license under the `230 patent from SKF. 27.

Azima Azima infr infring inges es at at least least claims claims 5 and 6 of the `230 `230 Pate Patent, nt, claims claims 1 and and 3 of the

`884 Patent, and claim 11 of the `164 Patent, by manufactur manufacturing, ing, selling, offering offering to sell, and using the products and services bearing the WATCHMAN

TM

names (collectively, “vibration monitoring products and systems”). -5-

TM

, TRIO

TM

and SpriteMAX

 brand

 

COUNT I INFRINGEMENT OF THE `230 PATENT

28.

The averments averments of paragraphs paragraphs 1-27 of this complaint complaint are incorporate incorporated d by refer reference ence

as though fully set forth herein. 29.

Azima, Azima, in viol violati ation on of 35 U.S.C U.S.C.. § 271, 271, has has and and conti continue nuess to infrin infringe ge at at least least

claimss 5 and 6, among others, of the `230 Patent by manufacturi claim manufacturing, ng, selling, offering offering to sell, and using, its vibration monitoring products and systems without authority from SKF. 30.

Azima’s Azima’s vibrat vibration ion monitoring monitoring products products and and system systemss ssatisf atisfy y all the limitations limitations of 

claim 5 of the `230 Patent either literally literally or under the doctrine of equivalents. equivalents. 31.

Furthermor Furthermore, e, Azima’s Azima’s vibration vibration monitoring monitoring products products and systems systems satisfy satisfy all the

limitations of claim 6 of the `230 Patent either literally or under the doctrine of equivalents. 32.

Azima’s Azima’s infringeme infringement, nt, among other things, things, makes this case exceptional exceptional pursuant pursuant

to 35 U.S.C. § 285. 33.

Azima’s Azima’s infringing infringing acts have caused, caused, aand nd unless restrained restrained and enjoined, enjoined, will

continue to cause, irreparable injury and damage to SKF for which SKF has no adequate remedy at law. Unless Unless permanently enjoined enjoined by this Court, Azima will continue to so infringe infringe at least claims 5 and 6 of the `230 Patent. COUNT II INFRINGEMENT OF THE `884 PATENT

34.

The averments averments of paragraphs paragraphs 1-33 of this complaint complaint are incorporate incorporated d by refer reference ence

as though fully set forth herein.

-6-

 

35.

Azima, Azima, in viol violati ation on of 35 U.S.C U.S.C.. § 271, 271, has has and and conti continue nuess to infrin infringe ge at at least least

claimss 1 and 3, among others, of the `884 Patent by manufacturi claim manufacturing, ng, selling, offering offering to sell, and using its vibration monitoring products and systems without authority from SKF. 36.

Azima’s Azima’s vibrat vibration ion monitoring monitoring products products and and system systemss ssatisf atisfy y all the limitations limitations of 

claim 1 of the `884 Patent either literally literally or under the doctrine of equivalents. equivalents. 37.

Furthermor Furthermore, e, when used, Azima’s Azima’s vibration vibration monitoring monitoring products products and services services

 perform all of the th e steps of o f the method set forth in claim 3 of the `884 Patent Paten t either literally or  under the doctrine of equivalents. 38.

Azima’s Azima’s infringeme infringement, nt, among other things, things, makes this case exceptional exceptional pursuant pursuant

to 35 U.S.C. § 285. 39.

Azima’s Azima’s infringing infringing acts have caused, caused, aand nd unless restrained restrained and enjoined, enjoined, will

continue to cause, irreparable injury and damage to SKF for which SKF has no adequate remedy at law. Unless Unless preliminarily preliminarily and permanently permanently enjoined by this Court, Azima will continue to so infringe at least claims 1 and 3 of the `884 Patent. COUNT III INFRINGEMENT OF THE `164 PATENT

40.

The averments averments of paragraphs paragraphs 1-39 of this complaint complaint are incorporate incorporated d by refer reference ence

as though fully set forth herein. 41.

Azima, Azima, in viol violati ation on of 35 U.S.C U.S.C.. § 271, 271, has has and and conti continue nuess to infrin infringe ge at at least least

claim 11, among others, of the `164 Patent by b y manufacturing, manufacturing, selling, offering offering to sell, and using its vibration monitoring products and systems without authority from SKF. 42.

Azima’s Azima’s vibrat vibration ion monitoring monitoring products products and and system systemss ssatisf atisfy y all the limitations limitations of 

claim 11 of the `164 Patent either either literally or under the doctrine doctrine of equivalents. equivalents. -7-

 

43.

Azima’s infringement, among other things, makes this case exceptional pursuant

to 35 U.S.C. § 285. 44.

Azima’s infringing acts have caused, and unless restrained and enjoined, will

continue to cause, irreparable injury and damage to SKF for which SKF has no adequate remedy at law. Unless permanently enjoined by this Court, Azima will continue to so infringe at least claim 11 of the `164 Patent. PRAYER FOR RELIEF

WHEREFORE, SKF respectfully prays that this Court grant judgment in its favor  and award the following relief: 1.

The entry of judgment that Azima infringes the `230, `884, and `164 Patents;

2.

The entry of an order permanently enjoining and restraining Azima and its

 parents, affiliates, subsidiaries, officers, agents, servants, employees, attorneys, successors, and assigns and all those persons in active concert or participation with them or any of them, from making, or having made, importing into the United States, using, offering for sale, selling, or  causing to be sold, any product or process falling within the scope of any claim of the `230, `884, and `164 Patents, or otherwise infringing, or contributing to or inducing infringement of any claim of the `230, `884, and `164 Patents. 3.

The award of damages adequate to compensate SKF for Azima`s infringement,

 but in no event less than a reasonable royalty for the use made of the invention, together with interest and costs under 35 U.S.C. § 284; 4.

An award of damages to be trebled pursuant to 35 U.S.C. § 284;

5.

A declaration that Azima’s infringement was willful;

6.

An award of SKF’s costs; -8-

 

7.

An award award of prepre- and post-ju post-judgm dgment ent intere interest st on the damage damagess assess assessed; ed;

8.

An order order declar declaring ing this this case case excepti exceptiona onall pursua pursuant nt to 35 U.S.C. U.S.C. § 285 and

awarding SKF its reasonable attorney fees; 9.

An order order requir requiring ing Azima Azima to acc account ount to SKF for its profit profitss and expense expensess llost ost

through throug h the infringing infringing sales realized realized by b y Azima and any subsidiary of Azima; and 10.

Such Such other other and furthe furtherr rrelie elieff as the Court Court deems deems just just and and prope proper. r. JURY DEMAND

SKF hereby demands a trial by jury.

-9-

 

March 3, 2014

Respectfully submitted,

/s/ /s/ Phillip  Phillip B. Philbin Phillip B. Philbin LEAD ATTORNEY S.D. Texas Bar No. 11636 Stephanie N. Sivinski S.D. Texas Bar No. 1785516 Haynes and Boone, LLP 2323 Victory Avenue, Suite 700 Dallas, Dalla s, Texas Texas 75219 Phone: 214-651-5121 214-651-5121 Fax: 214-200-0867 214-200-0867  [email protected] [email protected]

 Attorneys for SKF USA, Inc. Of Counsel : Bradley J. Olson Haynes and Boone, LLP 1615 L Street, NW Suite 800 Washington, DC 20036-5610 Phone: 202-654-4539 Fax: 202-654-4249  [email protected]  Attorneys for SKF USA, Inc.

- 10 -

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