Case 2:20-cv-00475-DAO Document 2 Filed 06/30/20 PageID.

2 Page 1 of 7

Damian C. Smith (2991) damian.smith@techlawventures.com

Terrence J. Edwards (9166) terrence.edwards@techlawventures.com

TechLaw Ventures, PLLC

Attorneys for Plaintiff J Morita Manufacturing Corp.
Technology Law Center
3290 W. Mayflower Ave.
Lehi, Utah 84043
Telephone: (801) 805-3684
Facsimile: (801) 852-8203

IN THE UNITED STATES DISTRICT COURT, FOR THE DISTRICT OF UTAH

CENTRAL DIVISION, SALT LAKE COUNTY

)
J MORITA MFG. CORP., )
a Japan Corporation, )
) Case No. 2:20-cv-00475
Plaintiff, ) Magistrate Judge Daphne A. Oberg
)
vs. )
) COMPLAINT
)
KAVOKERR GROUP, ) (Jury Trial Demanded)
)
Defendant. )
)

Plaintiff, J MORITA MANUFACTURING CORP. (“Plaintiff”), by and through its

undersigned counsel, hereby complains against Defendant KAVOKERR (“Defendant”) as

follows:

PARTIES

1. Plaintiff is a corporation organized and existing under the laws of Japan.

1
 Case 2:20-cv-00475-DAO Document 2 Filed 06/30/20 PageID.3 Page 2 of 7

2. Plaintiff alleges, upon information and belief, that Defendant is group comprised

of KaVo Dental GmbH and Kerr GmbH, both German corporations. KaVo and Kerr are owned

by Envista Holdings Corporation, a Delaware corporation, as revealed by SEC filings of Envista

Holdings Corporation, and are referred to as “KavoKerr” in advertising and marketing, including

in a website at www.kavokerr.com.

NATURE OF THE ACTION

3. Defendant manufactures and markets a certain CT/Panorama Imaging Device

called the KaVo OP3D (the “Device”).

4. Plaintiff alleges that the Device infringes five separate U.S. patents owned by

Plaintiff, namely, United States Patent No. 6,118,842 (hereinafter “the ‘842 Patent”); U.S. Patent

No. 6,289,074 (hereinafter “the ‘074 Patent”); U.S. Patent No. 7,347,622 (hereinafter “the ‘622

Patent”); U.S. Patent No. 7,486,759 (hereinafter “the ‘759 Patent”); and U.S. Patent No. 8,300,762

(hereinafter “the ‘762 Patent”) (collectively, the “Patents”), under the Patent Laws of the United

States, 35 U.S.C. § 1 et seq. and more specifically under 35 U.S.C. §§ 271, 281, 283, 284, and

285. Copies of the respective patents are attached hereto as Exhibits and incorporated herein.

JURISDICTION AND VENUE

5. This Court has jurisdiction over the subject matter of this action pursuant to 28

U.S.C. §§ 1331 and 1338(a) because this action arises under the Patent Laws of the United States,

35 U.S.C. § 271 et seq.

6. In addition to the foregoing, this also is a civil action with complete diversity of

citizenship between Plaintiff and Defendant, with the amount in controversy exceeding $75,000.

Thus, jurisdiction of this Court also is founded upon 28 U.S.C. § 1332.

2
 Case 2:20-cv-00475-DAO Document 2 Filed 06/30/20 PageID.4 Page 3 of 7

7. This Court has personal jurisdiction over Defendant because Defendant directly

and/or through authorized intermediaries, ships, distributes, offers for sale, sells, and /or advertises

its products and services in the United States and the State of Utah and in this District, including

via its website at www.kavokerr.com, and through representatives assigned to the State of Utah.

Upon information and belief, Defendant has committed patent infringement in the State of Utah.

Upon information and belief, Defendant solicits customers in the State of Utah. On information

and belief, Defendant has many customers who are residents of the State of Utah who each use

Defendant’s products and services in the State of Utah. Therefore, Defendant is subject to the

jurisdiction of this Court pursuant to Rule 4(k)(1)(A) of the Federal Rules of Civil Procedure and

Utah Code Ann. § 78-27-24.

8. Venue is proper in this judicial district as to Defendant pursuant to 28 U.S.C. §§

1391 and 1400(b).

THE PATENTS

9. Paragraphs 1 - 8 are incorporated by reference as if fully set forth herein.

10. On September 12, 2000, the ‘842 Patent entitled “X-Ray Imaging Apparatus” was

duly and lawfully issued by the United States Patent and Trademark Office (“PTO”). A true and

correct copy of the ‘842 Patent is attached hereto as Exhibit A and is incorporated herein by this

reference.

11. On September 11, 2001, the ‘074 Patent entitled “X-Ray Computed Tomography

Method and System” was duly and lawfully issued by the United States Patent and Trademark

Office (“PTO”). A true and correct copy of the ‘074 Patent is attached hereto as Exhibit B and is

incorporated herein by this reference.

3
 Case 2:20-cv-00475-DAO Document 2 Filed 06/30/20 PageID.5 Page 4 of 7

12. On March 25, 2008, the ‘622 Patent entitled “X-Ray CT Scanner and Scan Method”

was duly and lawfully issued by the PTO. A true and correct copy of the ‘622 Patent is attached

hereto as Exhibit C and is incorporated herein by this reference.

13. On February 3, 2009, the ‘759 Patent entitled “X-Ray Computer Tomography

Apparatus” was duly and lawfully issued by the PTO. A true and correct copy of the ‘759 Patent

is attached hereto as Exhibit D and is incorporated herein by this reference.

14. On October 30, 2012, the ‘762 Patent entitled “X-Ray CT Imaging Apparatus” was

duly and lawfully issued by the PTO. A true and correct copy of the ‘762 Patent is attached hereto

as Exhibit E and is incorporated herein by this reference.

15. Plaintiff is the owner of all right, title and interest in and to the Patents or otherwise

possesses all rights of recovery under the Patents, including the right to sue and recover all past,

present and future damages for infringement thereof, including past infringement, and to enjoin

acts of infringement of the Patents.

COUNT FOR PATENT INFRINGEMENT AND CLAIM FOR RELIEF

16. Plaintiff hereby incorporates the preceding paragraphs 1 through 15 of this

Complaint into this First Count for Patent Infringement and Claim for Relief as though fully set

forth herein.

17. In violation of 35 U.S.C. § 271(a), Defendant has infringed and continues to

infringe claims 11 and 14 of the ‘842 Patent by making, using, offering to sell, and selling (directly

or through affiliates, subsidiaries, divisions or intermediaries), in this District and elsewhere in the

United States, the Device which embodies the inventions claimed in ‘842 Patent.

4
 Case 2:20-cv-00475-DAO Document 2 Filed 06/30/20 PageID.6 Page 5 of 7

18. In violation of 35 U.S.C. § 271(a), Defendant has infringed and continues to

infringe claims 1, 7, 13, 14, 15 and 23 of the ‘074 Patent by making, using, offering to sell, and

selling (directly or through affiliates, subsidiaries, divisions or intermediaries), in this District and

elsewhere in the United States, the Device which embodies the inventions claimed in ‘074 Patent.

19. In violation of 35 U.S.C. § 271(a), Defendant has infringed and continues to

infringe claim 11 of the ‘622 Patent by making, using, offering to sell, and selling (directly or

through affiliates, subsidiaries, divisions or intermediaries), in this District and elsewhere in the

United States, the Device which embodies the inventions claimed in ‘622 Patent.

20. In violation of 35 U.S.C. § 271(a), Defendant has infringed and continues to

infringe claims 1, 2 and 6 of the ‘759 Patent by making, using, offering to sell, and selling (directly

or through affiliates, subsidiaries, divisions or intermediaries), in this District and elsewhere in the

United States, the Device which embodies the inventions claimed in ‘759 Patent.

21. In violation of 35 U.S.C. § 271(a), Defendant has infringed and continues to

infringe claims 1, 2, 4, 5 and 8 of the ‘762 Patent by making, using, offering to sell, and selling

(directly or through affiliates, subsidiaries, divisions or intermediaries), in this District and

elsewhere in the United States, the Device which embodies the inventions claimed in ‘762 Patent

22. Plaintiff has not licensed or otherwise authorized Defendant to make, use, sell, offer

for sale, import, or otherwise practice in the United States of America the Device under any of the

foregoing Patents.

23. Plaintiff is entitled to recover from Defendant the damages sustained by Plaintiff as

a result of the Defendant’s wrongful acts in an amount subject to proof at trial, which, by law,

5
 Case 2:20-cv-00475-DAO Document 2 Filed 06/30/20 PageID.7 Page 6 of 7

cannot be less than a reasonable royalty, together with interest and costs as fixed by this Court

under 35 U.S.C. § 284.

24. Defendant’s selling of the Device was made and continues to be made with

knowledge of the Patents and such acts constitute willful and deliberate infringement, which

thereby make this case exceptional and entitle Plaintiff to increased damages (up to three times the

amount found or assessed) and reasonable attorneys’ fees pursuant to 35 U.S.C. §§ 284 and 285.

25. Defendant’s infringement of Plaintiff’s rights under the Patents will continue to

damage Plaintiff, causing irreparable harm for which there is no adequate remedy at law, unless

enjoined by this Court.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff respectfully requests that this Court enter a final order and

judgment against Defendant as follows:

A. An adjudication that Defendant infringes the claims of the Patents as set forth

above;

B. An award of all damages to compensate Plaintiff for Defendant’s past infringement

and any future infringement up to the date such judgment is entered, including interest, costs and

disbursement as justified under 35 U.S.C. § 284 and, if necessary, to adequately compensate

Plaintiff for Defendant’s infringement, and an accounting of all infringing sales, manufacture, uses,

importation and offers for sale including, but not limited to, those not presented at trial;

C. A declaration that this case is exceptional under 35 U.S.C. § 285;

D. An award to Plaintiff of its attorneys’ fees, costs, and expenses incurred in this

action;

6
 Case 2:20-cv-00475-DAO Document 2 Filed 06/30/20 PageID.8 Page 7 of 7

E. That Plaintiff be granted permanent injunctive relief pursuant to 35 U.S.C. §

283 enjoining Defendant, its officers, agents, servants, employees, and all those persons in active

concert or participation with any of them, from any further acts of infringement of the Patents;

F. An award to Plaintiff of pre-judgment and post-judgment interest on the damages

caused to it by reason of Defendant’s infringement of the Patents;

G. An award to Plaintiff of Defendant’s total profits, or the greatest amount allowable

under law, related to the sale of Defendant’s products found to infringe the Patents, pursuant to 35

U.S.C. § 289; and

H. An award to Plaintiff of all its costs and expenses incurred in this litigation,

including without limitation reasonable attorneys’ fees.

DEMAND FOR JURY TRIAL

Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Plaintiff hereby demands trial

by jury on all claims and issues so triable.

Dated June 30, 2020.

TechLaw Ventures, PLLC

________________________________________________
Terrence J. Edwards
terrence.edwards@techlawventures.com

Damian C. Smith
damian.smith@techlawventures.com

3290 W. Mayflower Ave.

Lehi, UT 84043
Telephone: 801-805-3684

Counsel for Plaintiff J MORITA MFG. CORP.