Case 1:16-cv-10705-RGS Document 1 Filed 04/13/16 Page 1 of 18 IN THE UNITED STATE DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS DOUGLAS CARP, ) ROBERT CARP ) Plaintiffs ) ) v. ) Civil Action No. 16-10705 ) ALIBABA GROUP HOLDING LTD. ) JURY TRIAL DEMANDED __________________________________________) COMPLAINT FOR PATENT INFRINGEMENT Plaintiffs Robert Carp and Douglas Carp (“Plaintiffs”) by way of Complaint against the above-named Defendant (“Defendant”) alleges the following: NATURE OF THE ACTION 1. This is an action for patent infringement arising under the Patent Laws of the United States, 35 U.S.C. § 1 et seq. THE PARTIES 2. Plaintiffs Robert Carp and Douglas Carp are partners with a place of business at 1215 Chestnut Street, Newton, MA 02464. 3. Defendant Alibaba Group Holding Limited, (hereinafter “Alibaba”) is a Chinese company organized under the laws of the Cayman Islands with its principal place of business located at 1 Matheson Street, Causeway Bay, Hong Kong. Alibaba has appointed Corporation Service Company of New York City as their Agent for Service. JURISDICTION AND VENUE 4. This is an action for patent infringement arising under the Patent Laws of the United States, Title 35 of the United States Code. 5. This Court has subject matter jurisdiction under 28 U.S.C. § § 1331 and 1338. 6. Defendants are subject to the jurisdiction of this Court because of M.G.L. c. 1 PLAINTIFFS ROBERT AND DOUGLAS CARP’S COMPLAINT FOR PATENT INFRINGEMENT Case 1:16-cv-10705-RGS Document 1 Filed 04/13/16 Page 2 of 18 223A, §§ 6-7. Venue is proper in this judicial district under 28 U.S.C. §§ 1391(c) and 1400(b). FACTUAL BACKGROUND 7. On January 6, 2004, U.S. Patent No. D484841 (the “841 Patent”) entitled “Boat Cleat” was duly issued by the United States Patent and Trademark Office to inventor David J. Ziemer. The 841 Patent has been duly and legally assigned to Douglas Carp and his partner Robert Carp. A copy of the 841 Patent is attached as Exhibit A. 8. On January 6, 2004, U.S. Patent D484842 (“the 842 Patent”) entitled “Boat Cleat” was duly and legally issued by the United States Patent and Trademark Office to inventor David J. Ziemer. The 842 Patent has been duly and legally assigned to Douglas Carp and his partner Robert Carp. A copy of the 842 Patent is attached as Exhibit B. 9. On December 30, 2003, U.S. Patent D484448 (“the 448 Patent”) entitled “Boat Cleat” was duly and legally issued by the United States Patent and Trademark Office to inventor David J. Ziemer. The 448 Patent has been duly and legally assigned to Douglas Carp and his partner Robert Carp. A copy of the 448 Patent is attached as Exhibit C. 10. On December 30, 2003, U.S. Patent D48449 (“the 449 Patent”) entitled Boat Cleat was duly and legally issued by the United States Patent and Trademark Office to inventor David J. Ziemer. The 449 Patent has been duly and legally assigned to Douglas Carp and his partner Robert Carp. A copy of the 449 Patent is attached as Exhibit D. 11. On or about August 4, 2015 the Plaintiffs sent an email communication to Defendant Alibaba that the company had allowed one of their suppliers to infringe the ‘841, 842’, ‘448, and the ‘449 patents through the operation of its web site www.alibaba.com. Upon information and belief Alibaba’s legal department received this email and sent a return email to Attorney Carp stating that “The product listing as you identified has already been processed and will be removed once our system refreshes 2 PLAINTIFFS ROBERT AND DOUGLAS CARP’S COMPLAINT FOR PATENT INFRINGEMENT Case 1:16-cv-10705-RGS Document 1 Filed 04/13/16 Page 3 of 18 within 24 hours.” 12. Attorney Carp again found that Alibaba had not removed the infringing items, and sent them another email on March 17, 2016, noting that the link they provided to the infringing supplier had never been removed, and declined to use their portal to report intellectual property and copyright fraud. The portal mandates that the aggrieved patent holder must agree to their choice of venue, and that arbitration was mandatory. Attorney Carp repeated his request to immediately remove the violating images and material. 13. Alibaba’s legal department sent Attorney Carp an email on March 18th, 2016 stating that “The product listing has clearly been removed already last time when we sent you the email.” 14. Attorney Carp has since been to the web site on a number of occasions, and all of the supposedly removed links were still operational, and the supplier has claimed to have sold $340,000 or more of the patented product in 38 separate transactions. Exhibits E, F and G are screen shots of Alibaba’s supplier who has created the copies of the patented material taken on April 7, 2016 from Alibaba’s web site. FIRST CLAIM FOR RELIEF INFRINGEMENT OF U.S. PATENT NO. D489312 (35 U.S.C. § 271) 15. The allegations set forth in the foregoing paragraphs 1 through 14 are hereby realleged and incorporated herein by reference. 16. Upon information and belief, Defendants have infringed one or more claims of the ‘841 Patent in this judicial district and elsewhere by making, using, selling, and/or offering for sale services and products that infringe and/or perform processes that infringe one or more claims of the ‘841 Patent (“Accused Services and Products for the ‘841 Patent”). 17. Upon information and belief, Defendants Accused Services and Products for the ‘841 Patent include but are not limited to the Defendant’s original boat cleats, but to further reproductions in different sizes. 3 PLAINTIFFS ROBERT AND DOUGLAS CARP’S COMPLAINT FOR PATENT INFRINGEMENT Case 1:16-cv-10705-RGS Document 1 Filed 04/13/16 Page 4 of 18 18. Defendants had actual knowledge of the ’841 Patent and its alleged infringement of the patent since at least the time it received Carp’s communication on or about August 4, 2015. 19. Because of Defendant’s infringement of the ‘841 Patent, the Plaintiffs have suffered damages. SECOND CLAIM FOR RELIEF INFRINGEMENT OF U.S. PATENT NO. D484842 (35 U.S.C. § 271) 20. The allegations set forth in the foregoing paragraphs 1 through 19 are hereby realleged and incorporated herein by reference. 21. Upon information and belief, Defendant has infringed one or more claims of the ‘842 Patent in this judicial district and elsewhere by making, using, selling and/or offering for sale services and products that infringe and/or perform processes that infringe one or more claims of the ‘842 patent (“Accused Services and Products for the ‘842 Patent”). 22. Upon information and belief, Defendant’s Accused Services and Products for the ‘842 patent include but are not limited to the Defendant’s original boat cleats, but to further reproduction in different sizes. 23. Defendants had actual knowledge of the ‘842 patent and its alleged infringement of that patent since at least the time it received Carp’s communication on or about August 4, 2015. 24. Because of Defendant’s infringement of the ‘842 Patent, the Plaintiffs have suffered damages. THIRD CLAIM FOR RELIEF INFRINGEMENT OF U.S. PATENT NO. D484448 (35 U.S.C. § 271) 25. The allegations set forth in the foregoing paragraphs 1 through 24 are hereby realleged and incorporated herein by reference. 4 PLAINTIFFS ROBERT AND DOUGLAS CARP’S COMPLAINT FOR PATENT INFRINGEMENT Case 1:16-cv-10705-RGS Document 1 Filed 04/13/16 Page 5 of 18 26. Upon information and belief, Defendant has infringed and continued to infringe one or more claims of the ‘448 Patent in this judicial district and elsewhere by making, using, selling and/or offering for sale services and products that infringe and/or perform processes that infringe one or more claims of the ‘448 patent (“Acccused Services and Products for the ‘448 Patent”). 27. Upon information and belief, Defendant’s Accused Services and Products for the ‘448 patents include but are not limited to the Defendants’ original boat cleats, but to further reproduction in different sizes. 28. Defendant had actual knowledge of the ‘448 patent and its alleged infringement of that patent since at least the time it received Carp’s communication on or about August 4, 2015. 29. Upon information and belief, since at least the time it received Carp’s email, Defendants have committed and continues to commit acts of contributory infringement of the ‘448 patent under 35 U.S.C. § 271 (c) by providing products, including the Accused Services and Products to others, including but not limited to its customers and partners, knowing or willfully blind to the fact that these products constitute a material part of the invention, were especially made or adapted for use in an infringement of the ‘448 patent, and no substantial non-infringing uses. 30. In particular, the Accused Services and Products include several different patented boat cleats of marine animals. These boat cleats have no substantial non- infringing uses at least because they contain mounts and material and are advertised by the Defendants as the same product covered by the patents. Defendants have known or remained willfully blind to these facts since at least the date it received the email from Carp notifying Defendants that such activities infringed the ‘448 Patent. 31. Upon information and belief, since at least the time it was contacted by Carp by email on or about August 4, 2015, Defendant has induced and continues to induce others to infringe at least one claim of the ‘448 patent under 35 U.S.C. § 271 (b) by, among other things, and with specific intent or willful blindness, actively aiding and abetting others to infringe, including but not limited to Defendants’ partners and customers, whose use of the Accused Services and Products constitutes direct infringement of at least one claim of the ‘448 patent. 5 PLAINTIFFS ROBERT AND DOUGLAS CARP’S COMPLAINT FOR PATENT INFRINGEMENT Case 1:16-cv-10705-RGS Document 1 Filed 04/13/16 Page 6 of 18 32. In particular, Defendants’ actions that aid and abet others such as its partners and customers to infringe include advertising and distributing the Accused Services and Products and providing literature, and design services regarding the Accused Services and Products. On information and belief, Defendants have engaged in such actions with specific intent to cause infringement or with willful blindness to the resulting infringement because Defendant has had actual knowledge of the ‘448 Patent since at least the date it received the email from Carp notifying Defendants that such activities infringed upon the ‘448 Patent. 33. Despite Plaintiffs’ notice regarding the ‘448 Patent, Defendants have continued to infringe the ‘448 Patent. On information and belief, Defendants’ infringement has been and continues to be willful. 34. Plaintiffs have been harmed by Defendants’ infringing activities. FOURTH CLAIM FOR RELIEF INFRINGEMENT OF U.S. PATENT NO. D484449 (35 U.S.C. § 271) 35. The allegations set forth in the foregoing paragraphs 1 through 34 are hereby realleged and incorporated herein by reference. 36. Upon information and belief, Defendants have infringed and continue to infringe one or more claims of the ‘449 Patent in this judicial district and elsewhere by offering for sale services and products that infringe and/or perform processes that infringe one or more claims of the ‘449 Patent (“Accused Services and Products for the ‘449 Patent”). 37. Upon information and belief, Defendants’ Accused Services and Products for the ‘449 Patent include but are not limited to Defendants’ original boat cleats, but to further reproduction in different sizes. 38. Defendants had actual knowledge of the ‘449 Patent and its alleged infringement of that patent since at least the time it received Plaintiffs’ phone emailed notice of infringement on or about August 4, 2015. 39. Upon information and belief, since at least the time it received Plaintiffs’ August 4, 2015 email notice and, Defendants have induced and continue to induce others 6 PLAINTIFFS ROBERT AND DOUGLAS CARP’S COMPLAINT FOR PATENT INFRINGEMENT Case 1:16-cv-10705-RGS Document 1 Filed 04/13/16 Page 7 of 18 to infringe at least one claim of the ‘449 patent under U.S.C. § 271 (b) by, among other things, and with specific intent or willful blindness, actively aiding and abetting others to infringe, including but not limited to Defendants’ partners and customers, whose use of the Accused Services and Products constitutes direct infringement of at least one claim of the ‘449 patent. 40. In particular, Defendants’ actions that aid and abet others such as its partners and customers to infringe include advertising and distributing the Accused Services and Products and consulting services regarding the Accused Services and Products. On information and belief, Defendants have engaged in such actions with specific intent to cause infringement or with willful blindness to the resulting infringement because Defendant has had actual knowledge of the ‘449 Patent since at least the date it received the email from Carp notifying Defendants that such activities infringed upon the ‘449 Patent. 41. Despite Plaintiffs’ notice regarding the ‘449 Patent, the Defendants have continued to infringe the ‘449 patent. On information and belief, Defendants’ infringement has been continues to be willful. 42. The Plaintiffs have been harmed by Defendants’ infringing activities. JURY DEMAND Plaintiffs demand a trial jury on all issues triable as such. PRAYER FOR RELIEF WHEREFORE, Robert and Douglas Carp respectfully requests that this Court enter judgment for them and against Defendants as follows: a. An adjudication that Defendants have infringed the ‘841, 842, 448, and 449 Patents; b. An award of damages to be paid by Defendants adequate to compensate the Plaintiffs for Defendants’ past infringement of the above Patents, and any continuing or future infringement through the date such judgment is entered, 7 PLAINTIFFS ROBERT AND DOUGLAS CARP’S COMPLAINT FOR PATENT INFRINGEMENT Case 1:16-cv-10705-RGS Document 1 Filed 04/13/16 Page 8 of 18 including interest, costs, expenses and an accounting of all infringing acts including, but not limited to, those acts not presented at trial; c. An order that Defendants pay an ongoing royalty in an amount to be determined for any continued infringement of the above Patents after the date judgment is entered. d. An award of treble damages under 35 U.S.C. § 284; e. A declaration finding this to be an exceptional case, and awarding Robert and Douglas Carp attorney fees under 35 U.S.C. § 285; and f. For such further relief at law and in equity as the Court may deem just and proper. Dated: April 8, 2016 Respectfully Submitted, /s/Robert H. Carp Massachusetts Bar No. 676732 Carp Law Offices, LLC 1215 Chestnut Street Newton, MA 02464 Email: [email protected] Attorney for Plaintiffs (pro se) Douglas and Robert Carp 8 PLAINTIFFS ROBERT AND DOUGLAS CARP’S COMPLAINT FOR PATENT INFRINGEMENT Case 1:16-cv-10705-RGS Document 1 Filed 04/13/16 Page 9 of 18 ASSIGNMENT OF PATENTS 9 PLAINTIFFS ROBERT AND DOUGLAS CARP’S COMPLAINT FOR PATENT INFRINGEMENT Case 1:16-cv-10705-RGS Document 1 Filed 04/13/16 Page 10 of 18 ASSIGNMENT OF PATENTS (CONTINUED) 10 PLAINTIFFS ROBERT AND DOUGLAS CARP’S COMPLAINT FOR PATENT INFRINGEMENT