Peter D.

Weinstein, SBN 212948

ONE3 IP MANAGEMENT
1560-1 Newbury Rd., #327
Newbury Park, CA 91320
P (800) 478-2152
F 619.238.1562
Philip P. Mann, Pro Hac Vice Pending
MANN LAW GROUP
1218 Third Ave., Suite 1809
Seattle, WA 98101
P 206.436.0900
F 866.341.5140
Attorneys for Plaintiff IRORI Technologies, Inc.

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF CALIFORNIA
)
IRORI TECHNOLOGIES, INC.
) Cause No. '13CV2647 LAB NLS
)
Plaintiff,
) COMPLAINT FOR
v.
) PATENT INFRINGEMENT
LUMINEX CORPORATION
)
) JURY TRIAL DEMANDED
Defendant.
)
Plaintiff IRORI Technologies complains of Defendant Luminex
Corporation (Luminex or Defendant) as follows:
NATURE OF LAWSUIT
1.

This is a claim for patent infringement arising under the patent laws

of the United States, Title 35 of the United States Code.

THE PARTIES
2.

Plaintiff IRORI Technologies (IRORI) is a Delaware Corporation

having a principal place of business in San Diego County, California. IRORI is

the owner, by assignment, of U.S. Patents No. 6,372,428 (the '428 Patent) issued
April 16, 2002 and entitled Remotely Programmable Matrices With Memories
(copy attached as Exhibit A), No. 6,416,714 (the '714 Patent) issued July 9, 2002
and entitled Remotely Programmable Matrices With Memories (copy attached

as Exhibit B), and No. 6,352,854 (the '854 Patent) issued March 25, 2002 and
entitled Remotely Programmable Matrices With Memories (copy attached as
Exhibit C). IRORI owns all right, title, and interest in, and has standing to sue for
infringement of the '428, '714 and '854 Patents.
3.

On information and belief, Defendant Luminex Corporation

(Luminex) is a Texas Corporation having a principal place of business at 12212

Technology Blvd., Austin, TX 78727.
JURISDICTION AND VENUE
4.

This is an action for patent infringement arising under the patent laws

of the United States of America, Title 35 U.S.C. 1, et seq. This Court has
jurisdiction over the subject matter of this Complaint under 28 U.S.C. 1331
and 1338(a).
5.

Personal Jurisdiction over the defendant is proper in this Court in

that Defendant Luminex has done, and continues to do business in this district.
Venue in this judicial district is proper under 28 U.S.C. 1391(b), (c) and/or
1400(b) in that a substantial part of the events giving rise to the patent
infringement claims herein have taken place and may still be taking place in this
judicial district.
THE SUBJECT PATENTS
6.

The '428, '714 and '854 Patents are each directed to techniques for

using encoded beads for, among other applications, individually tracking

molecules during chemical synthesis, in molecular assays or in high throughput
screening. Such techniques find particular value when performing multiplexed,
high-throughput bioassays in connection with drug discovery, clinical diagnostics
and other such activities. By multiplexing, reagent usage is minimized,
throughput is increased and a lower cost per test can be achieved. This is
especially true in complex sample testing, where the ability to simultaneously use
a large number of distinct identification codes on a variety of assay particles
permits fast and accurate analysis of several tests within the same sample, and for
a variety of different sample types.

7.

Each of the 428, 714 and 854 Patents is entitled, Remotely

Programmable Matrices With Memories and contains multiple claims directed to

combinations, apparatus and methods for employing or otherwise implementing
the patented techniques. Each of the 428, 714 and 854 Patents was properly
and duly issued by the United States Patent and Trademark Office and each of the
428, 714 and 854 Patents is presumed to be valid.
DEFENDANT'S ACTS OF INFRINGEMENT
8.

IRORI restates and incorporates by reference paragraphs 1 through 7

above as if fully re-stated herein.

9.

Defendant Luminex is a leading developer, manufacturer and

supplier of biological testing technologies with applications throughout the

diagnostic and life science industries. Among other things, Luminex's xMAP and
xTAG technologies enable large numbers of biological tests or bioassays to be
conducted and analyzed quickly, cost-effectively and accurately. Luminex's
technologies perform discrete bioassays on the surface of color-coded beads,
otherwise known as microspheres, which are then read in a compact analyzer.
10.

Incorporated into the Luminex xMAP and xTAG technologies is a

matrix including a number of beads, sometimes referred to by Luminex as

xMAP microspheres wherein each bead includes a dye having one of
approximately one-hundred unique colors. The use of such unique colors in
individual beads thus provides a memory encoding for each bead. The color of
each bead can be determined by exciting the beads in a device, also provided by
Luminex, known as the Luminex Flow Cytomometer. By systematically loading
the beads with various electromagnetically tagged molecules or biological
particles, and thereafter determining, through use of the Luminex Flow
Cytomometer what color beads have reacted with a particular sample, several
bioassays can simultaneously be performed in a rapid, economical manner.
11.

The Luminex xMAP and xTAG technologies made, sold, offered for

sale and used by Luminex incorporate the technologies, and utilize the methods,
developed by IRORI and disclosed and claimed in the '428, '714 and '854 Patents.

12.

Luminex has been and is infringing the 428, 714 and 854 Patents

under 35 U.S.C. 271(a) by making, using, offering for sale, selling and/or
importing devices, apparatus, supplies, consumables and other items covered by
one or more claims of the 428, 714 and 854 Patents. By way of example, not
limitation, a representative and preliminary claim chart showing how products,
devices and other technologies made, sold, offered for sale, used or imported into
the United States by Luminex infringe at least Claim 1 and others of the 428
Patent is attached as Exhibit D.

By way of example, not limitation, a

representative and preliminary claim chart showing how products, devices and
other technologies made, sold, offered for sale, used or imported into the United
States by Luminex infringe at least Claim 1 and others of the 714 Patent is
attached as Exhibit E. By way of example, not limitation, a representative and
preliminary claim chart showing how products, devices and other technologies
made, sold, offered for sale, used or imported into the United States by Luminex
infringe at least Claim 1 and others of the 854 Patent is attached as Exhibit F.
13.

Luminex has been on notice of the 428, 714 and 854 Patents and

IRORI's claims of infringement, and, for at least this reason, Luminexs

infringement is believed to be willful.
14.

Luminex has been and is contributorily infringing the 428, 714 and

854 Patents under 35 U.S.C. 271(c) by offering to sell or selling within the
United States or importing into the United States at least one component of
products that constitute a material part of the invention recited in the Claims of
the 428, 714 and 854 Patents, knowing the same to be especially made or
especially adapted for use in an infringement of such patents.
15.

Luminex's direct infringement, contributory infringement, and

inducement to infringe have been willful and have deliberately injured and will
continue to injure IRORI unless and until the Court enters an injunction
prohibiting further infringement and, specifically, enjoining further manufacture,
use, importation, sale and/or offer for sale of products or technologies that fall
within the scope of the '428, '714 and '854 Patent claims.

PRAYER FOR RELIEF

WHEREFORE, IRORI asks this Court to enter judgment against Defendant
and against its subsidiaries, affiliates, agents, servants, employees and all persons
in active concert or participation with them, granting the following relief:
A.

An award of damages adequate to compensate IRORI for the

infringement that has occurred, together with prejudgment interest from the date
infringement of the 428, 714 and 854 Patents began;
B.

Increased damages as permitted under 35 U.S.C. 284;

C.

A finding that this case is exceptional and an award to IRORI of its

attorneys fees and costs as may be appropriate under 35 U.S.C. 285;

D.

A permanent injunction prohibiting further infringement, inducement

and contributory infringement of the the 428, 714 and 854 Patents.
E.

Pre-judgment interest calculated from the time of the first occurrence

of any infringing activity through and until entry of judgment;

F.

Post-judgment interest calculated from entry of a final judgment in

this matter until such time as the final judgment is fully satisfied; and
G.

Such other and further relief as this Court or a jury may deem proper

and just.
JURY DEMAND
IRORI demands a trial by jury on all issues presented in this Complaint.
Dated: November 1, 2013

ONE3 IP MANAGEMENT
&
MANN LAW GROUP
By:

/s Peter D. Weinstein
Peter D. Weinstein
peter.weinstein@one3ip.com
and
Philip P. Mann (pro hac vice pending)
phil@mannlawgroup.com
Attorneys for Plaintiff
IRORI TECHNOLOGIES, INC.