Case 2:16-cv MRH Document 18 Filed 02/14/17 Page 1 of 11 IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF PENNSYLVANIA

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1 Case 2:16-cv MRH Document 18 Filed 02/14/17 Page 1 of 11 IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF PENNSYLVANIA MINELAB ELECTRONICS PTY LTD, v. Plaintiff, XP METAL DETECTORS and DETECTOR ELECTRONICS CORP., Defendants. Civil Action Judge Mark R. Hornak Electronically Filed JURY TRIAL DEMANDED FIRST AMENDED COMPLAINT Plaintiff Minelab Electronics Pty Ltd ( Minelab, through its counsel, hereby alleges the following for its First Amended Complaint against Defendants XP Metal Detectors ( XP and Detector Electronics Corp. ( Detector : 1. This is a civil action for the infringement of United States Patent No. 7,310,586 entitled Metal Detector with Data Transfer ( the 586 patent. 2. Minelab has a principal place of business at Technology Park, 2 Second Avenue, Mawson Lakes, SA 5095, Australia. 3. XP has a place of business at 8 rue du developpement, ZI de VIC, Castanet-Tolosan, France. 4. Detector has a place of business at 23 Turnpike Road, Southborough, Massachusetts PERSONAL JURISDICTION AND VENUE 5. This Court has jurisdiction under 28 U.S.C and 1338(a. 6. Venue is proper under 28 U.S.C. 1391(b, 1391(c and 1400(b.

2 Case 2:16-cv MRH Document 18 Filed 02/14/17 Page 2 of Through its United States distributor, Detector, XP has sold and offered to sell infringing products in this Commonwealth and in this judicial district. PATENT INFRINGEMENT IN VIOLATION OF 35 U.S.C Minelab repeats and re-alleges the averments contained in paragraphs 1 through 7 of this Complaint as if fully stated herein. 9. This is a claim for the infringement of the 586 patent, a true and correct copy of which is attached as Exhibit A hereto. 10. Minelab is the owner, by assignment, of the 586 patent which was duly and lawfully issued by the United States Patent and Trademark Office on December 18, The 586 patent issued from United States Patent Application No. 10/927,214, which was filed on August 25, The 586 patent claims priority to Australian Patent Application No , which was filed on August 29, The inventions claimed in the 586 patent, including in claims 10 and 15, were conceived of and reduced to practice at least as early as August 29, 2003, the date which Australian Patent Application No was filed. 14. The 586 patent and its claims relate generally to a metal detector and methods of using a metal detector where data, such as operating parameters, can be received by the metal detector from an external source and used to modify the data, such as operating parameters, stored in memory in the metal detector. 15. In or around August 2003, it was not considered conventional for a metal detector to be capable of receiving data, such as operating parameters, from an external source so as to modify operating parameters that are stored in memory of the metal detector. 2

3 Case 2:16-cv MRH Document 18 Filed 02/14/17 Page 3 of In or around August 2003, the conventional state of the art required users to manually adjust inputs (e.g., dials physically present on the metal detector in order to configure the metal detector and adapt the metal detector to a new environment or target. Indeed, while metal detectors that were considered to be modern or advanced in or around August 2003 had many parameters that could be altered by its operator, see Exhibit A, at col. 1, lines 14-17, it was not the case that these modern or advanced metal detectors had the capability of receiving data, such as operating parameters, from an external source so as to modify the operating parameters stored in memory in the metal detector. 17. The inventions described and claimed in the 586 patent, including in claims 10 and 15, solve technical problems that existed with respect to modern and advanced metal detectors in existence in or around August 2003 that allowed for parameters to be altered by its operator with a view to maximizing the sensitivity of the detector in a particular environment. Exhibit A, at col. 1, lines For instance, these existing modern and advanced metal detectors posed a problem for many users because configuring the detector requires skill in the manner of setting the parameters of their detectors in order for the devices to be as sensitive as possible to targets that they want to find, while being insensitive to those targets that the operator has no desire to disinter. Id. The values of these operating parameters affect the functionality and operability of the metal detector because an incorrect setting may result in a target being missed or an undesirable object being detected. 18. Another problem with metal detectors in existence in or around August 2003 was that a single metal detector may not be suitable for multiple different environments. Exhibit A, at col. 1, lines As explained in the specification: A further problem is that the nature of the predominant trash may change from one environment to another. The nature of the desired target may also change. 3

4 Case 2:16-cv MRH Document 18 Filed 02/14/17 Page 4 of 11 With currently available art, an operator is required to own several complete detectors to enjoy the advantage of having maximal sensitivity to disparate targets in different environments. The patterns of transmissions of the transmitter and the patterns of demodulation affect the type of targets to which the detector will be most sensitive and least sensitive. Id. 19. In addition to different types of trash, different environments may also have different soil types that can cause false detections and/or otherwise affect the operability of the metal detector. 20. The invention set forth in claim 10 of the 586 patent is directed to a method of operating an improved metal detector. The method includes, inter alia, receiving operating parameter data via a wireless connection from an external data source, storing the operating parameter data in memory within the metal detector, and modifying the operating parameters of the metal detector to conform to the set of values of operating parameters specified by the operating parameter data. 21. Performance of the method of claim 10 requires, inter alia, a special purpose metal detector having, among other features, internal memory, a receiver to wirelessly receive data from an external source, and the processing capability to modify the existing operating parameters of the metal detector to conform to the operating parameter data that has been wirelessly received by the metal detector. These were not conventional features of a metal detector in or around August Performance of the method of claim 10 additionally requires an external data source having operating parameter data where the external data source can wirelessly transfer operating parameter data to the metal detector. Such an external data source was not conventional in or around August The invention set forth in claim 10 addresses the aforementioned technical problems with existing metal detectors by, among other features, receiving operating parameter 4

5 Case 2:16-cv MRH Document 18 Filed 02/14/17 Page 5 of 11 data via a wireless connection from a data source external to the metal detector, storing the operating parameter data in an electronic memory within the metal detector, and modifying the operating parameters of the metal detector to conform to the set of values of operating parameters specified by the operating parameter data. Through performance of the claimed method, a less skilled operator is able to successfully use a single metal detector in multiple operating environments and with different types of targets and trash. This way, the less skilled operator can benefit from the knowledge of a more experienced operator or the wisdom of the detecting community. 23. The operating parameters that are modified by the invention set forth in claim 10 affect the operability and functionality of the metal detector. For example, operating parameters may affect the timing and frequency of the transmitted signals. Exhibit A, at col. 2, lines ( Parameters affecting the performance of a metal detector which may advantageously be modified by a user include the transmit pattern, which describes the variation of the transmitted search signal with time.. The operating parameters may also change and affect the received signal demodulation, which may depend upon changes to the transmitted signal. Id. ( The demodulation pattern describes the variation with time of the sampling of the signal on a receive coil with time, to generate a receive search signal.. Operating parameters may also improve the operation and functionality of a metal detector by changing or affecting how a signal is filtered and/or how different objects are discriminated. On the other hand, incorrectly setting the operating parameters can render the metal detector inoperative. 24. XP and Detector are contributorily infringing and inducing the infringement of at least claims 10 and 15 of the 586 patent. XP and Detector will continue to infringe the 586 patent unless enjoined by this Court. 5

6 Case 2:16-cv MRH Document 18 Filed 02/14/17 Page 6 of XP is directly, or through its distributors, manufacturing, using, selling and/or offering to sell the DEUS metal detector in the United States. Detector is a distributor of XP metal detectors and is selling and offering to sell the DEUS metal detector in the United States. 26. The DEUS metal detector can be operated in a manner where data stored in the metal detector can be modified by data stored in an external source. For example, the DEUS metal detector is advertised as including a wireless digital link so that the operating parameters of the metal detector can be adjusted through wireless signals received from an external data source in the form of a remote control unit, which is described as being capable of adjusting the detection settings by wirelessly conveying operating parameter data to the metal detector. XP s advertisements of the DEUS product, as well as the instruction manual provided with the DEUS product, specifically instruct users of the DEUS product to operate the DEUS product in a manner that infringes at least claims 10 and 15 of the 586 patent by wirelessly transferring operating parameter data from an external data source to the metal detector so as to modify the operating parameters of the metal detector to conform to the set of values of operating parameters specified in the received operating parameter data. 27. The DEUS metal detector includes the ability to select values of operating parameters and to store such values as data, and XP and Detector instruct their customers to operate the DEUS metal detector in a manner to carry out the following steps: receiving operating parameter data via an electronic transmission link from a data source external to the metal detector, the operating parameter data being a set of values of operating parameters; storing the operating parameter data in an electronic memory within the metal detector; and modifying the operating parameters of the metal detector to conform to the set of values of operating parameters specified by the operating parameter data, wherein the electronic 6

7 Case 2:16-cv MRH Document 18 Filed 02/14/17 Page 7 of 11 transmission link includes a wireless connection transmitting through space between the metal detector and the external data source. 28. Upon information and belief, the operating parameters used by the DEUS metal detector include one or more of: filters to be applied to a receive search signal; an amplitude range of a conductance component of a receive search signal; an amplitude range of an inductive component of a receive search signal; and an information set indicating the values of one or more user modifiable settings of the detector. For example, in relation to the filters (feature (a of claim 15, the DEUS metal detector can change the filters applied to a receive search signal through the Reactivity setting, Non-motion setting, or Silencer setting, and in relation to feature (d of claim 15, information displayed on the headset changes when the settings are changed with the remote. 29. Use of the DEUS product in its ordinary and intended way results in infringement of at least claims 10 and 15 of the 586 patent under 35 U.S.C Upon information and belief, the DEUS product has been used in its ordinary and intended way in the United States, thereby infringing at least claims 10 and 15 of the 586 patent. 30. Minelab sells multiple metal detectors in the United States including the CTX 3030 and the E-TRAC. These products are marked with a label directing the public to the Minelab website for a list of applicable patents. The Minelab website indicates that these products and the use thereof are subject to the 586 patent. 31. By letter dated June 23, 2016, XP was put on direct notice that the use of the DEUS product infringed at least claim 10 of the 586 patent. 7

8 Case 2:16-cv MRH Document 18 Filed 02/14/17 Page 8 of Upon information and belief, XP and Detector continued to instruct, and are still instructing, their customers to use the DEUS product in a manner that infringes the 586 patent after becoming aware of the 586 patent. 33. Upon information and belief, XP and Detector have actively induced and continue to actively induce infringement of the 586 patent without authority or license from Minelab in violation of 35 U.S.C. 271(b. For example, XP and Detector have been and continue to actively induce this infringing activity by encouraging and instructing customers to use the DEUS headset and remote control features so as to directly infringe at least claims 10 and 15 of the 586 patent. By encouraging and instructing its customers to do so knowing that this use will directly infringe the 586 patent, or remaining willfully blind to this fact, XP and Detector specifically intend to cause direct infringement of the 586 patent. 34. In manufacturing and selling the DEUS product and promoting the use of such product with the headset and remote control features, XP and Detector have contributed to the infringement of at least claims 10 and 15 the 586 patent without authority or license from Minelab in violation of 35 U.S.C. 271(c. The DEUS product equipped with the headset and remote control features has no substantial non-infringing use other than to practice at least claims 10 and 15 of the 586 patent. 35. The activities of XP and Detector in infringing the 586 patent are willful and wanton, constituting willful infringement of such United States Patent under 35 U.S.C Minelab has been irreparably damaged and will continue to be irreparably damaged by reason of XP s and Detector s infringement of the 586 patent unless this Court restrains the infringing acts of XP and Detector. Minelab is without an adequate remedy at law. 8

9 Case 2:16-cv MRH Document 18 Filed 02/14/17 Page 9 of 11 WHEREFORE, Minelab prays: A. that XP and Detector, their officers, employees, agents, and those persons in active participation with them be permanently enjoined from infringing United States Patent No. 7,310,586; B. that a decree be entered adjudging that XP and Detector infringed United States Patent No. 7,310,586 and that such infringement was willful; C. that XP and Detector be ordered to pay damages to Minelab pursuant to 35 U.S.C. 284, including interest from the dates of infringement, resulting from XP s and Detector s infringement of United States Patent No. 7,310,586; D. that XP and Detector be ordered to pay to Minelab treble damages pursuant to 35 U.S.C. 284, resulting from XP s and Detector s willful infringement of United States Patent No. 7,310,586; E. that Minelab be awarded its costs of this action and reasonable attorneys fees pursuant to 35 U.S.C. 284 and 285; and F. that Minelab be awarded such further relief as this Court may deem just and proper. DEMAND FOR JURY TRIAL Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Minelab hereby demands a trial by jury for all issues triable by a jury. Respectfully submitted, THE WEBB LAW FIRM Dated: February 14, 2017 s/ Kent E. Baldauf, Jr. Kent E. Baldauf, Jr. (PA ID No Bryan P. Clark (PA ID No Christian D. Ehret (PA ID No

10 Case 2:16-cv MRH Document 18 Filed 02/14/17 Page 10 of 11 One Gateway Center 420 Ft. Duquesne Blvd., Suite 1200 Pittsburgh, PA (fax Attorneys for Plaintiff 10

11 Case 2:16-cv MRH Document 18 Filed 02/14/17 Page 11 of 11 CERTIFICATE OF SERVICE I hereby certify that on the 14 th day of February, 2017, I electronically filed the foregoing FIRST AMENDED COMPLAINT with the Clerk of Court using the CM/ECF system which sent notification to all counsel of record. THE WEBB LAW FIRM s/ Kent E. Baldauf, Jr. Kent E. Baldauf, Jr.

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