Maya Group v. JCF Research Associates

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Lawrence R. LaPorte (CA SBN 103003)[email protected] G. Novak (CA SBN 261388)[email protected] SHAPIRO LLP20 49 C entury Park E ast , Suite 70 0L o s An ge le s, C A 9 0 0 6 7 - 3 1 0 9T elephone: (3 10 ) 772 -83 00Facsimile: (31 0) 77 2-8 3 01Attorneys for PlaintiffTHE MAYA GROUP, INC.

THE MAYA GROUP, INC., a Californiacorporation,Plaintiff,

VS.

JCF RESEARCH ASSOCIATES, INC., aN ew Jersey corporation,

Defendant.

" 0 3 A P R 12 P M 3 : 22CLERK U.S. ST OT C0;11 TCENTRAL 01ST. cF CALIF.LOS ANGEIESBY

C&U 3 1 0 . 0 2 5 9/COMPLAINT FORDECLARATORY JUDGMENT OFPATENT NON-INFRINGEMENT,INVALIDITYDEMAND FOR JURY TRIAL

UNITED STATES DISTRICT COURTCENTRAL DISTRICT OF CALIFORNIA

Plaintiff, The Maya Group, Inc. ("Maya Group"), for its Complaint againstDefendant JCF Research Associates, Inc. ("JRA") avers the following through itsundersigned counsel:

NATURE OF THE CASE1 .his is an action under the Declaratory Judgment Act, 28 U.S.C. 2201et seq., seeking an Order confirming that Maya Group does not infringe any claim ofU.S. Patent No. 5,415,151 (the 151 Patent"). Maya Group also seeks an Order

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1 declaring that the 151 Patent is invalid and unenforceable.2HE PARTIES3.laintiff Maya Group is a corporation incorporated under the laws of4 California, with its principal place of business located in Torrance, California.5.pon information and belief, Defendant JRA is a New Jersey6 corporation, with its principal place of business located in Stirling, New Jersey.7URISDICTION AND VENUE8.his Court has subject matter jurisdiction pursuant to 28 U.S.C. S 1 3 3 1 ,9 1338, 2201 and 2202. As detailed below, JRAs actions have created an actual10 controversy within the meaning of 28 U.S.C. 2201 as to the validity, alleged

11 infringement, and enforceability of the 151 Patent. The controversy is substantial,12 between parties having adverse legal interests, and of sufficient immediacy and reality13 to warrant the issuance of a declaratory judgment.14.his Court has personal jurisdiction over JRA because JRA directed the15 acts giving rise to the actual controversy between the parties existing in this action to16 Maya Groups principal place of business within this Judicial District.17.RA further directed the acts giving rise to the actual controversy18 between the parties existing in this action to the Office of undersigned counsel within19 this Judicial District.2 0.n information and belief, JRA has negotiated licenses for the 15121 patent with companies incorporated in California and located in this Judicial District22 including, but not limited to, JAKKS Pacific, Inc., a California corporation having a23 principal place of business in Malibu, California.24.enue is proper in this Judicial District under 28 U.S.C. 1391 and25400.2 6/ I2 7 II2 8

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1ACTUAL BACKGROUND REGARDING THE SUBSTANTIAL2ONTROVE RSY BETWEEN THE PARTIES3.RA is listed on the face of the 151 patent as the assignee and allegedly4 owns the 151 patent. The 151 patent issued on May 16, 1995.50. On or around March 6, 2013, JRA, through its counsel, sent a letter to the6 Maya Group alleging that: "The Maya Group, Inc. needs a license to the 151 patent7 in conjunction with its line of toy guns, such as its "Xploderz Night Fighterz" series8 (e.g. models GEN-700 and GEN-1000), that clearly embody all of the elements of9 several of the claims of the 151 patent."101. In the March 6 letter, JRA further alleged that: "JRA is willing to offer a

1 1 non-exclusive license to Maya in exchange for a 5% royalty (standard in the industry)12 on all sales, beginning from Mayas commencement of sales through the expiration of13 the patent."142. In the March 6 letter, JRA further alleged that: "JRA believes that such15 an arrangement would be mutually beneficial."163. Between March 6, 2013 and April 10, 2013, Maya Group and JRA17 exchanged various communications related to JRAs allegations.184. On April 10, 2013, JRA directly threatened litigation against Maya19 Group. On April 10, JRA, through its counsel, sent an email to Maya Groups20 attorney, threatening to litigate if Maya Group did not take a license immediately. In21 the April 10 email, JRA, through its counsel, stated: "I must hear from you today and22 will need something substantial to keep this dialog going, otherwise I am under strict23 orders to drop the hammer today." The email continued: " ...if we are forced to24 litigate, you know the drill..."255. JRAs explicit and repeated threats to enforce its patent rights against the26 Maya Group create an actual and substantial controversy between JRA and Maya27 Group having adverse legal interests of sufficient immediacy and reality to warrant the28 issuance of a declaratory judgment.

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CLAIM FOR RELIEFCOUNT I

(Declaratory Judgment of Non-Infringement)16. Maya Group restates and incorporates by reference Paragraphs 1-14 of

this Complaint.17. Maya Group does not directly or indirectly infringe any claim of the 151

Patent, either literally or under the doctrine of equivalents, as its "Xploderz NightFighterz" products operate in a fundamentally different manner than described andclaimed in the 151 Patent.

18. Maya Group has not induced others to infringe the 151 Patent under 35U.S.C. 271(b).

19. Maya Group has not contributed to others infringement of the 15 1 Patentunder 35 U.S.C. 271 (c).

20. Maya Group seeks a judicial determination and declaration of therespective rights and duties of the parties based on iRAs allegations and MayaGroups contentions. Such a determination and declaration is necessary andappropriate at this time so that the parties may ascertain their respective rights andduties regarding the non-infringement of the 151 Patent.

COUNT II(Declaratory Judgment of Invalidity)

21. Maya Group restates and incorporates by reference Paragraphs 1-19 ofthis Complaint.

22. All of the claims of the 151 Patent are invalid for failing to comply withthe conditions and requirements for patentability as set forth in the United StatesPatent Laws, 35 U.S.C. 102, 103, and/or 112, and the rules and regulations andlaws pertaining thereto.

23. Maya Group seeks a judicial determination and declaration of therespective rights and duties of the parties based on JRAs allegations and Maya

COMPLAINT FOR DECLARATORY JUDGMENT

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I. Groups contentions. Such a determination and declaration is necessary and2 appropriate at this time so that the parties may ascertain their respective rights and3 duties regarding the invalidity of the 151 Patent.4RAYER FOR RELIEF

5herefore, Plaintiff Maya Group prays for judgment against Defendant JRA as6 follows:7.n order adjudging that Maya Group does not directly or indirectly8nfringe, either literally or under the doctrine of equivalents, any claim.9f the 151 Patent;10.n order adjudging that Maya Group has not induced others to infringe11ny claim of the 151 Patent;12.n order adjudging that Maya Group does not contribute to others13nfringement of any claim of the 151 Patent;14.n order adjudging that all of the claims of the 151 Patent are invalid;15.n order enjoining JRA, and its agents, employees, representatives,16.ounsel, and all persons in active concert or participation with any of17hem, directly or indirectly, from threatening or charging infringement of18r instituting any action for infringement of the 151 Patent against19aya Group, its suppliers, and its customers;2 0.n order that Maya Group be awarded its costs as the prevailing party;21nd2 2.uch other and further relief, at law or in equity, to which Maya Group is23

ustly entitled.2 42 526272 8

I-/III [Signature page follows]I-IIII

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DA TED : April 12, 2013ICKSTEIN SHAPIRO LLPBy:Z je


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1URY DEMAND2 The Maya Group, Inc. hereby demands a trial by jury on any issue so triable.345 Dated: April 12, 2013y: Lawrence R. LaPorte6ttorneys for Plaintiff, THE MAYA GROUP,7NC.8910

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Lawrence R. LaPorte (CA SBN 103003)[email protected] SHAPIRO LLP2049 Century Park East, Suite 700Los Angeles, CA 90067-3109Telephone: (310) 772-8300

UNITED STATES DISTRICT CO URTCENTRAL D ISTRICT OF CA LIFORNIA

TH E M AYA GRO UP, INC., a California corporation, CAS E NUMBER

V .LAINTIFF(S) CV13 -JCF RESEARCH ASSOCIATES, INC., a New Jerseycorporation,

S U M M O N SDEFENDANT( S ) .

TO: DEFENDANT(S):A lawsuit has been filed against you.Within 21 days after service of this summons on you (not counting the day you received it), youmu st serve on the plaintiff an answer to the attached Ecom plaint 0 mended complaint0 counterclaim 0 cross-claim or a mo tion under Rule 12 of the Federal Rules of Civil Procedure. The answeror motion m ust be served on the plaintiffs attorney, Lawrence R. LaPortewhose address isDICK STEIN SH APIRO LLP 2049 Century Park East, Suite 700 Los Angeles, CA 90067 *If you fail to do so,

judgm ent by default will be entered against you for the relief demanded in the com plaint. You also mu st fileyour answer or m otion with the court.

Clerk, U.S. District CourtMA W

Dated:APR 122013y:A R I L Y N D A VDeputy Cler(Seal of the Court)Mfl

[Use 60 days if the defendant is the United States or a United States agency, or is an officer or employee of the United States. Allowed60 days by Rule 12(a)(3)].

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UNITED STATES DISTRICT COURT, CENTRAL DISTRICT OF CALIFORNIACIVIL COVER SHEET(a) PLAINTIFFS (Check box if you are representing yourself L i )EFENDANTSCheck box if you are representing yourself El)The Maya Group, Inc., a California CorporationCF Research Associates, Inc., a New Jersey corporationb) Attorneys (Firm Name, Address and Telephone Number. If youprovide same.)re representing yourself, provide same.)Lawrence R. LaPorte (CA SBN 103003)

Dickstein Shapiro LLP2049 Century Park East, Ste. 700Los Angeles, CA 90067Tel: 310-772-8300

BASIS OF JURISDICTION (Place an X in one box only.)II. CITIZENSHIP OF PRINCIPAL PARTIES-For Diversity Cases Only(Place an X in one box for plaintiff and one for defendant)U.S. Government. Federal Question (U.S.TFEFTFCitizen of This Statei i L I 1 Incorporated or Principal Placei 4LPlaintiffovernment Not a Party)f Business in this StateCitizen of Another State L i 2 Li 2 Incorporated and Principal Place ofLi 5LU.S. Government1 4 . Diversity (Indicate Citizenshipitizen or Subject of ausiness in Another StateDefendant of Parties i n Item Ill)oreign CountryI 3 Li 3 Foreign Nationl 6. ORIGIN (Place an X in one box only.)

1. Originali 2. Removed fromi . Remanded fromi 4. Reinstated or L i 5. Transferred from Anotheri 6. Multi- District.Proceedingtate Courtppellate Courteopenedistrict (Specify)it igation. REQUESTED IN COMPLAINT: JURY DEMAND: N Yes L i No (Check "Yes" only if demanded in complaint.)

L i Yes N Noi MONEY DEMANDED IN COMPLAINT: $I. CAUSE OF ACTION (Cite the U.S. Civil Statute under which you are filing and write a brief statement of cause. Do not cite jurisdictional statutes unless diversity.)Declaratory Judgment Act, 28 U.S.C. Section 2201; Complaint for declaratory judgment of patent non-infringement, invalidityNATURE OF SUIT (Place an X in one box only).OTHER STATUTES CONTRACT REAL PROPERTY CONT. IMMIGRATION PR ISONER PET IT IONS PR OPER T Y R IGHT Si 375 False Claims Act L i 110 Insurance L i 240 T orts to Land L i 462 Naturalization Habeas Corpus: L i 820 Copyr ightsi 400 State Li 120 Marine L i 245 Tort Product ApplicationL i 4 6 5 Oth e r L i 463 Alien DetaineeL i 510 Motions to Vacate 830 PatentReapportionmenti 410 Antitrust L i 130 Miller Act

LiabilityL i 290 All Other Real Immgration Actions SentenceL i 530 General

L i 840 TrademarkT OR T S SOCIAL SECURITYi 430 Banks and Banking L i 140 Negotiable Property L i 535 Death PenaltyOR T S P E R S O N A L P R O P E R T Y L i 861 HIA (1395ff)L i 862 Black Lung (923)i 450 Commerce/ICCRates/Etc.

InstrumentL i 150 Recovery o f Other:ERSONAL INJURY L i 370 Other FraudL i 310 AirplaneL i 315 Airplanei 460 Deportation Overpayment &Enforcement of L i 371 Truth in Lending L i 540 Mandamus/OtherL i 550 Civil Rights L i 863 DIWC/DIWN (405 (g)i 470 Racketeer InfluencedJudgment

L i 151 Medicare Act Product LiabilityL i 320 Assault, Libel & L i 380 Other Personal L i 555 Prison Condition L i 864 SSID Tit le XVI& Corrupt Org.i 480 Consumer Credit L i 152 Recovery of SlanderProperty DamageL i 385 Property Damage L i 560 Civil Detainee L i 865 RSI (405 (g))

i 490 Cable/Sat Defaulted Student L i 330 Fed. EmployersLiability Product Liability C o n d i ti o n s o fConfinement FEDERAL T A X SUITSBANKRUPTCY FORFEITURE/PENALTY L i 870 Taxes (U .S. Plaintiff oDefendant)i 850 Securities/Com- Loan (Excl. Vet.)L i 153 Recovery of L i 340 Marine L i 422 Appeal 28 L i 625 Drug Relatedmodities/Exchangei 890 Other Statutory Overpayment of

L i 345 Marine ProductLiability U S C 158L i 423 Withdrawal 28 Seizure of Property 21USC 8 8 1 L i 871 IRS-Third Party 26 USActions Vet. BenefitsL i 160 Stockholders L i 350 Motor Vehicle U S C 157 7609CIVIL RIGHTSi 891 Agricultural Acts Suits L i 355 Motor Vehicle L i 690 Otheri 893 Environmental L i 190 Other Product LiabilityL i 360 Other Personal L i 440 Other Civi l R ights LABORMatters

895 Freedom of Info. ContractL i 195 Contract InjuryL i 362 Personal Injury-L i 441 VotingL i 4 4 2 Emplo yme n t L i 7 1 0 Fair Labor StandardsActAct

896 ArbitrationProduct LiabilityL i 196 Franchise Med MalpraticeL i 365 Personal Injury- F - 1 4 4 3 Housing! L i

720 Labor/Mgmt,Relations899 Admin. Procedures

Product LiabilityL i 367 Health Care! AccomodationsL i 445 American with L i 740 Railway Labor ActREAL PROPERTYL i 2 1 0 L a n dct/Review of Appeal of Pharmaceutical Disabilities- L i 751 Famly and MedicalAgency Decision CondemnationL i 22 0 Foreclosure Personal InjuryProduct Liability EmploymentL i 446 American with Leave ActL i 790 Other Labor950 Constitutionality of L i 230 Rent Lease & L i 368 Asbestos Disabilities-Other LitigationState Statutes Ejectment sonal Injury L i 791 Employee Ret. Inc.Kl ______________________ Secur ity_Act

Case Number:W v A J VC J 7 JAFTER C O M P L E T I N G P A G E 1 OF FORM CV-71, C O M P L E T E T H E INFORMATION REQUESTED ON PAGE 2.

211 3) IVIL COVER SHEET ag e 1 o f 2



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UNITED STATES DISTRICT COUR T, CENTRAL DISTRICT OF CALIFORNIACIVIL COVER SHEET

Has this action been previously filed in this court and dismissed, remanded or closed? NOiii YESIf yes, list case number(s): Have any cases been previously filed in this court that are related to the present case?OESIf yes, list case number(s):

Civil cases are deemed related if a previously filed case and the present case:(Check all boxes that apply)IA. Arise from the same or closely related transactions, happenings, or events; orB. Call for determination of the same or substantially related or similar questions of law and fact; orC. For other reasons would entail substantial duplication of labor if heard by different judges; orIii D. Involve the same patent, trademark or copyright,.one of the factors identified above in a, b or c also is present.

(When completing the following information, use an additional sheet if necessary.). - - -List the County in this District; California County outside of this District; State if other than California; or Foreign Country, in which EACH name

Check here if the government, its agencies or employees is a named plaintiff. If this box is checked, go to item (b).ty in this District:*alifornia County outside of this District; State, if other than California; or ForeignI Country

ngeles

List the County in this District; California County outside of this District; State if other than California; or Foreign Country, in which EACH namedt resides.Check here if the government, its agencies or employees is a named defendant. If this box is checked, go to item (c).

ty in this District : *alifornia County outside of this District; State, if other than California; or ForeignCountryNew Jersey

List the County in this District; California County outside of this District; State if other than California; or Foreign Country, in which EACH claim ar

stri c t : *alifornia County outside of this District; State, if other than California; or ForeignCountryngelesngeles, urenge, oan bernaralno, tiversiae, Ventura, Santa Barbara, or San Luis Obispo CountiesIn land condemnation cases, use the location of the tract of land involvedSIGNATURE OF ATTORNEY (OR SELF-REPRESENTED LITIGANT):.-C..- PATE: 04/12/13

Lawrence R. LaPorteCV-71 (JS-44) Civil Cover Sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or

Statistical codes relating to Social S ecurity Cases:Nature of Suit Code Abbreviationubstantive Statement of Cause of Action

86 1 HIA All claims for health insurance benefits (Medicare) under Title 18, Part A, of the Social Security Act, as amended. Also,include claims by hospitals, skilled nursing facilities, etc., for certification as providers of services under the program.(42 U.S.C. 1935FF(b))862 BL All claims for "Black Lung" benefits under Title 4, Part B, of the Federal Coal Mine Health and Safety Act of 1969. (30 U.S.C.923)863 DIWC All claims filed by insured workers for disability insurance benefits under Title 2 of the Social Security Act, as amended; plusall claims filed for childs insurance benefits based on disability. (42 U.S.C. 406 (g))8 6 3 DIWW All claims filed for widows or widowers insurance benefits based on disability under Title 2 of the Social Security Act, asamended. (42 U.S.C. 405 (g))86 4 SSID All claims for supplemental security income payments based upon disability filed under Title 16 of the Social Security Actamended.8 65 RS I All claims for retirement (old age) and survivors benefits under Title 2 of the Social Security Act, as amended.(42 U.S.C. 405 (a)IVIL COVER SHEETage 2 of 2

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Maya Group v. JCF Research Associates

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