MTE v. Mirus International et. al

8/2/2019 MTE v. Mirus International et. al.

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UNITED STATES DISTRICT COURTWESTERN DISTRICT OF WISCONSIN

MTE CORPORATION AN SL POWERELECTRONICS COMPANY,

Plaintiff,v. Civil Action No : 12-cv-332

MIRUS INTERNATIONAL, INC., and JURY TRIAL DEMANDED1061933 ONTARIO INC.Defendants.

COMPLAINTPlaintiff MTE Corporation an SL Power Electronics Company (MTE), by and

through its attorneys, for its Complaint, states and alleges as follows:THE PARTIES

1. MTE is a Wisconsin corporation having its principal place of business a t N83W13330 Leon Road, Menomonee Falls, Wisconsin.

2. Sin ce 1985, MTE ha s been a long standing member of th e bus ines scommunity in Wisconsin. MTE is an industry-respected innovator and an internationalsupplier of power quality electromagnetic products designed to protect power equipmentfrom power surges, and improve the reliability of adjustable frequency d ri ve s. MTE se rves awide range of industries and has continually shown growth and profitability. MTE des ignsand manufactures line/load reactors, Matrix Passive Harmonic Filters, Matrix PureSineActive Harmonic Filter, EMI/RFI filters, DC l ink choke s, dv/dt and sine w ave m otorprotection filters, plus numerous custom magnetic products that provide power quality

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solutions in a broad range of applications. These products are typically used in industrialplants and commercial buildings where non-linear loads and attendant harmonics producedby these loads are present. MTE also designs, manufactures and tests custom powersubsystems for select Original Equipment Manufacturers worldwide. MTE has established aglobal distribution system consisting of over 400 stocking distributors.

3. Upon information and belief, Defendant 1061933 Ontario Inc. (Ontario) isa company organized under the laws of Canada having its principal place of business at 801Sheppard Avenue West, North York, Ontario M3H 2T3. Upon information and belief,Ontario purports to be a manufacturer of certain electromagnetic power products. However,upon information and belief, Ontario does not have a manufacturing facility separate from afacility from which Mirus International, Inc. operates. Further, upon information and belief,Ontario does no t have a corporate Web site.

4. Upon information and belief, Defendant Mirus International, Inc. (Mirus,and together with Ontario, Defendants) is a company organized under the laws of Canadahaving its principal place of business at 31 Sun Pac Boulevard, Brampton, Ontario, Canada.Upon information and belief, Mirus purports to be an exclusive licensee and distributor forelectromagnetic power products manufactured by Ontario. However, according to its Website, Mirus claims to be the manufacturer (rather than Ontario) of the electromagnetic powerproducts that Mirus promotes, sells, and distributes: A t Mirus, we are motivated by thechallenge of finding solutions for the most difficult of power quality problems and to designthe highest efficiency transformer and harmonic filtering products on the market.

See http://mirusinternational.comlcompany.html (last checked May 1, 2012).2

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JURISDICTION AND VENUE5. MTE repeats and realleges the allegations of 9[ 1-4 as if set forth herein.6. This Court has subject matter jurisdiction under the provisions of 28 U.S.C.

1331, 1338(a), 1391, 1400(b), 2201(a), and 2202 because this is an action arising underthe patent laws of the United States, including 35 U.S.C. 271, 273 and 281 - 285, andunder the Federal Declaratory Judgment Act.

7. Upon information and belief, Mirus maintains continuous and systematiccontacts with Wisconsin in the normal course of its business, including b ut not limited to,regularly marketing, shipping, and selling its electromagnetic power products and Ontarioselectromagnetic power products to the United States, which are then sold and used within theUnited States generally, including within this District. According to Mirus website, Mirusactively promote[s] the financial and environmental benefits of our highly efficienttransformer products and [is] proud to be Energy Star Partners, US Green Building Councilmembers and Rebuild America Business Partners.

8. Upon information and belief, fo r ove r a decade, since at least 1999, Mirusmarketed, shipped, sold, and/or installed its electromagnetic power products and Ontarioselectromagnetic power products to hundred of its customers within the United States

generally, including customers within Wisconsin who purchased and/or used, in theirordinary course of business, Ontario electromagnetic products and Mirus electromagneticproducts. Attached as Exhibit A is a true and correct copy of a Partial List of MinisLineator Customers, which includes as customers the following entities: ABB (WI), UnicoInc (WI), and Integrated Drive Systems (WI). The Pa rti al List of Mirus Lineator

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Customers is publicly available. See Exhibit B (internet search results displaying link to thesame).

9. Upon information and belief, Mirus marketed, sold, and installed itselectromagnetic power products and Ontarios electromagnetic power products at numerousU.S. customers that include U.S. high technology, manufacturing, entertainment, andindustrial companies; U.S. banks and financial institutions, and U.S. governmental agencies.Attached as Exhibit C is a true and correct copy of an excerpt from Mirus corporatebrochure, which shows its customers. Upon information and belief, a number of thecompanies and organizations identified in Exhibit C have a presence in Wisconsin.

10. Upon information and belief, Mirus has specifically targeted Wisconsin for itselectromagnetic power products and Ontarios electromagnetic power products. When aprospective customer from Madison, Wisconsin submits its zip code on Mirus website,Minis directs such prospective Wisconsin customer to its Wisconsin agent, Weldy/LamontAssociate, Inc. (Weldy/Lamont). A true and correct copy of a screenshot of Miruswebsites Find Sales Agent function is attached as Exhibit D.

11. Upon information and belief, Weldy/Lamont identifies itself to beManufacturers Representatives For Electrical Power Products and identifies Mirus as amanufacturer that Weldy/Lamont represents for mission critical power equipment. A trueand correct copy of a screenshot of Weldy/Lamont s website is attached Exhibit E. Uponinformation and belief, Wisconsin customers can place orders for Mirus products directlywith its Wisconsin agent, Weldy/Lamont Consequently, Minis established a distribution

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system in Wisconsin for its electromagnetic power products and Ontarios electromagneticpower products.

12. Upon information and belief , in contrast to specifically targeting prospectivecustomers in Wisconsin, when a prospective customer from another state, New Jersey,submits its New Jersey zip code, Mirus directs such prospective New Jersey customer toMirus itself. A t rue and correct copy of a screenshot of Mirus websites Find Sales Agentresponse to a New Jersey z ip code is attached as Exhibit F.

13. Upon information and bel ie f, Mirus is the exclusive distributor of Ontario.Ontario therefore placed its electromagnetic products in a stream of commerce with fullknowledge that its products would be sold and used in Wisconsin.

14. On or about February 8, 2011, Mirus and Ontar io sent a letter via facsimile toMTE at MTEs Wisconsin facsimile number, and included MTEs Wisconsin address (theFebruary 8, 2011 Letter). A true and correct copy of the February 8, 2011 Letter isattached as Exhibit G shows. In the February 8, 2011 Letter, Miru s and Ontario accusedMTE of patent infringement and threatened to seek injunctive relief, damages, profits,damages for willful infringement, attorneys fees and such other remedies as are available atlaw ... in... the U.S. Mirus and Ont ario further demanded th at MTE , the Wisconsincorporation, immediately stop selling its products, cease[] all promotion and sales,agree to refrain from manufacturing or selling any product, and provide an accounting of[MTE] sales. See Ex. G at 2.

15. Upon information and belief, Minis is subject to personal jurisdiction in th isDistrict by virtue of all contacts in Wisconsin and in the District referenced herein, including,

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inter alia, its electromagnetic power products have been used in this District, it ha s solicitedbusiness in this District, it has regularly conducted business in this District, it ha spurposefully availed itself of the rights and benefits of Wisconsin law, an d it ha s substantial,continuous, an d systematic contacts with Wisconsin. Consequently, Mirus ha s conducted,engaged in, an d carried on business in Wisconsin under 801.05 of the Wisconsin long-armstatute.

16. Upon information and belief, Ontario is subject to personal jurisdiction in thisDistrict by virtue of all contacts in Wisconsin and in th e District referenced herein, including,inter alia, its electromagnetic power products have been used in this District, it ha s solicitedbusiness in this District, it ha s regularly conducted business in this District, it ha spurposefully availed itself of the rights and benefits of Wisconsin law, and it ha s substantial,continuous, an d systematic contacts with Wisconsin. Consequently, Ontario ha s conducted,engaged in, and carried on business in Wisconsin under 801.05 of the Wisconsin long-armstatute.

17. Venue is proper in this judicial district under 28 U.S.C. 1391 (d) an d 1400 (b).

COUNT I: INFRINGEMENT OF PLAINTIFF MTESU.S. PATENT NO. 7,142,081 BY DEFENDANT MIRUS18. MTE repeats and realleges the allegations of 91 1 -1 7 a s if set forth herein.19. MTE has spent and continues to spend significant resources on developing

an d protecting its intellectual property.

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20. U.S. Patent No . 7,142,081, entitled Multiple three-phase inductor with acommon core (the 081 Patent) was duly and legally issued on November 28, 2006 toMTE, as assignee of Todd A. Shudarek, all of Wisconsin. A true and correct copy of the081 Patent is attached hereto as Exhibit H.

21. MTE owns the 081 Patent in its entirety.22. The 081 Patent is MTEs valued asset that protects its competitive advantage

and very successful multi-million dollar product line of its electromagnetic power products,including, inter alia, Series D Matrix Filter. Specifically, claim 1 of the 081 Patent coversMTEs Series D Matrix Filter.

23. Upon information and belief, Ontario and Mirus knew about the 081 Patentas early as June of 2007, when Ontario identified the 081 Patent to the United State Patentand Trademark Office during an patent examination of its own patent application thatmatured into Ontarios U.S. Patent No. 7,449,799. See Exhibit L at 1, identifing the 081Patent in the section References Cited. MTEs counsel noted this fact in a letter datedFebruary 24, 2011 to Defendants counsel (a true and correct copy of which is attached asExhibit I), which stated in relevant part that:

Third, even from a very cursory review of prosecution ofU.S. Patent No. 7,449,799, it appears that you have beenpersonally aware of our clients U.S. Patent 7,142,081 atleast since June of 2007, when you filed an IDS listing the081 patent. Your imputed knowledge of the 081 patentthus dates back almost four (4) years.

(emphasis added).24. On March 2, 2011, when Defendants counsel responded to MTEs counsels

February 24, 2011 letter, Defendants did not dispute their knowledge of the 081 Patent since7

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June of 2007. A true and correct copy of Defendants counsels letter dated March 2, 2011 isattached as Exhibit J.

25. Upon information and bel ie f, Mirus, with ful l knowledge of the 081 Patent,has infringed and continues to infringe at least claim 1 of the 081 Patent, by reason ofMirus unauthorized making, using, selling and/or offering for sale in this judicial district andelsewhere, its branded electromagnetic power products, such as AUHF-40-480-60-D-EO andother similar products, each of which incorporate a structure that s at is fy e ach and every

element of at least claim 1 of the 081 Patent.26. For example, Mirus AUHF-40-480-60-D-EO electromagnetic power product

satisfies each and every element of at least claim 1 of the 081 Patent as f ol lows. Below arephotographs of Mirus AUHF-40-480-60-D-EO electromagnetic power product which wasused in Wisconsin. These photographs are annotated with claim elements of claim 1 of

MTEs 081 Patent.

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9

Third Electrical

Fifth ElectricalTransverse gapalong each of thefourth, fifth and sixth

Photograph 1: Front view

OM1I2l2 12*Core legs are coveredby red brackets and

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Photograph 2: Side view27. As the above detailed photographs show, Mirus exemplary infringing

electromagnetic power product, AUHF-40-480-60-D-EO, satisfies each and every claimelements of claim 1 of the 081 Patent, including the claim element that requires electriccurrents flowing through the first, second, third, fourth, fifth and sixth electrical coils toproduce magnetic flux which flows through the second core bridge.

28. These infringing articles, as alleged above, have not been manufactured orauthorized in any manner by MTE, nor ha s Mirus ever been authorized or otherwise grantedthe right to use, manufacture, offer for sale, sell, distribute, or import into the United States

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First core oridgeBrackets that arefabricated of a lowmagneticallypermeable material

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devices made according to the 081 Patent.29. Upon information and belief, Mirus has a notice of its infringement under 35

U.S.C. 287. Upon information and belief, Mirus infringement of the 081 Patent has beenwillful and deliberate under 35 U.S.C. 284. For example, in the February 8, 2011 Letter,Mirus specifically references the 081 Patent. See Ex. G at 1. Further, in the February 8,2011 Letter Defendants counsel claims that:

Ou r client further believes that you deliberately copied thedesign of our clients Lineator AUHF in order to createthe Series D Matrix Filter...(emphasis added).

30. On February 23 , 2011, counsel for Mirus and Ontario wrote another letter (theFebruary 23, 2011 Letter) to MTEs counsel asserting that Defendants view MTEs SeriesD Matrix Filter, which is covered by claim 1 of the 081 Patent, to be a direct competitor toMirus and Ontario electromagnetic power products such as shown in the photograph above.A true and correct copy of the February 23, 2011 Letter is attached hereto as Exhibit K.

31. On March 20, 2012, counsel for Defendants Mirus and Ontario wrote anotherletter to MTEs counsel (the March 20 , 2012 Letter), asserting that the configuration ofthe Series D filter being sold by MTE . . . is not as shown in Figure 1 of the MTE patent(Shudarek, US 7,142,081). A true and correct copy of the March 20, 2012 Letter is attachedas Exhibit P. Such assertions demonstrate that Defendants have done a substantial study ofand have substantial knowledge and understanding of the 081 Patent and its claims.

32. The foregoing actions by Mirus demonstrate that Mirus, with full knowledgeof the 081 Patent, continues and will continue to directly infringe the 081 Patent; engages

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and will engage to actively induce others including, inter alia, Ontario, to infringe the 081Paten t; and contributes and will contributes to the infringement by others including, interalia, Ontario, of the 081 Patent. Such infringing actions by Mirus have caused and willcontinue to cause irreparable damage to MTE, unless enjoined by the Court. MTh has noadequate remedy at law.

COUNT II: INFRINGEMENT OF MTES081 PATENT BY DEFENDANT ONTARIO33. MTE repeats and realleges the allegations of 9[ 1-32 as if set forth herein.34. As se t fo rth above, in the February 8, 2011 Letter, Ontario specifically

acknowledged that it is the manufacturer of the above detailed infringing articles. See Ex. Gat 2. These infringing articles, as alleged above, have not been manufactured or authorized inany manner by MTE, nor has Ontario ever been authorized or otherwise granted the r ight touse, manufacture, offer for sale, sell, distribute, or import into the United States devices madeaccording to the 081 Patent.

35. As set forth above, Ontario has a notice of its infringement under 35 U.S.C. 287. As detailed above, upon information and belief, Ontarios infringement of the 081Patent has been willful and deliberate under 35 U.S.C. 284.

36. The foregoing actions by Ontario demonstrate that Ont ario , w ith fullknowledge of the 081 Patent, continues and will continue to directly infringe the 081Patent; engages and will engage to actively induce others including, inter alia, Mirus, toinfringe the 081 Patent; and contributes and will contributes to the infringement by othersinluding, inter alia, Mirus, of the 081 Patent. Such infringing actions by Ontario have

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caused and will continue to cause the irreparable damage to MTE, unless enjoined by theCourt. MTE has no adequate remedy at law.

COUNT III: DECLARATORY JUDGMENT OF NON-INFRINGEMENT OFDEFENDANT ONTARIOS U.S. PATENT NO. 7,449,79937. MTE repeats and realleges the allegations of 1[ 1-36 as if set forth herein.38. MTE seeks relief and vindication of MTEs rights vis--vis U.S. Patent Nos.

7,449,799 (the 799 Patent) free from accusations of patent infringement by Ontario andMirus. A true and correct copy of the 799 Patent is attached as Exhibit L.

39. MTE has no liability for infringement of the 799 Patent because, among otherreasons, MTEs has not infringed any claim of the 799 Patent directly or indirectly, literallyor under the doctrine of equivalents.

An Actual Controversy Is Present Amon2 Parties40. MTEs business encompasses an extensive array of electromagnetic power

products that are designed to protect power equipment from power surges, and improve thereliability of adjustable frequency drives in the wide range of industries. For example, MTEhas manufactured and will continue to manufacture Series D Matrix Filter and similarelectromagnetic power products.

41. In the February 8, 2011 Letter, Ontario stated 1061933 Ontario Inc. is theowner of the 799 Patent, thereby indicating, on information and belief, Ontarios assertionof the ownership of the full interest in the 799 Patent. See Ex. G at 2. The February 8, 2011Letter also indicates, on information and belief, that Mirus asserts to be an exclusive licenseeof the 799 Patent. Id.

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42. As detailed above , the February 8, 2011 Letter from counsel for Defendants toMTEs General Manager, entitled Mirus International mc described 1061933 On tarioInc . as the develop er and manufacture of the Lineator AUHF harmonic filter. See Ex. Gat 2.

43. The February 8, 2011 Lette r further stated that 1061933 Ontario Inc. is theowner of U.S. Patent No. 7,449,799 and published Canadian patent application no. 2,498,993covering this produ ct. See id.

44. The February 8, 2011 Letter further stated that [ojur client has becom eaw are of your Series D Matrix Filter , and considers that this harmonic filter infringes theclaims in th e paten t. See id.

45. The only patent indentified in the February 8, 2011 Letter was the 799 Paten t.46. On or about February 15, 2011, counsel for MTE replied to the February 8,

2011 Letter, ind icating that MTE respects the legitimate in tellectual property rights ofothers. As you can appreciate , it will ta ke some time for us to complete our evaluation. I willcontact you promptly within 60 days after our evaluation is complete. A true and co rrectcopy of the February 15, 2011 letter is attached hereto as Exhibit M.

47. On or about February 23, 2011, Defendants counsel responded to MTEscounsels February 15, 2011 le tter, statin g, Thank you for your interim response.How ever , yo ur client has recently sta rte d competing directly with our client based on the irimpugned produc t. We consider a furthe r two month de lay in addressing this matter to beunreasonable and very prejudicial to ou r client. Is you r client prep ared to stop promoting and

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selling this product pending your formal response? A true and correct copy of Defendantscounsels February 23 , 2011 letter is attached as Exhibit K.

48. On or about February 24, 2011, counsel for MTE replied to DefendantsFebruary 23, 2011 letter as follows:

I am frankly surprised by your position with respect tomy request for the 60-day evaluation period which is acommonly accepted and reasonable request under theU.S. legal practice. Such an evaluation period isparticularly warranted where, as here, our client onlybecame aware of your clients grievance for the firsttime upon receipt of your first letter, dated February 8,2011. Moreover, your demand in your February 23 , 2011letter that our client stop promoting and selling thisproduct pending our evaluation is highly unreasonableunder U.S. legal practice. I trust that you will re-consideryour position and will withdraw your ill-founded demandsaccordingly.

(emphasis added). A true and correct copy of the MTEs counsels February 24 , 2011 letteris attached as Exhibit I.

49 . On or about March 2, 2011, Defendants counsel responded to MTEscounsels letter of February 24 , 2011, stating We will review any further issues when wereceive your clients substantive response. A true and correct copy of this correspondence isattached as Exhibit J.

50. On or about April 19 , 2011, counsel for MTE provided a substantive responseto the accusations of infringement of the 799 Patent raised by the February 8, 2011 Letter(the April 19, 2011 Letter). A true and correct copy of the April 19, 2011 Letter isattached as Exhibit N.

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51. In the April 19, 2011 Letter, counsel for MTE explained in detail why MTEsallegedly infringing Series D Matrix Filter did no t infringe any claims of the 799 Patent.Specifically, with respect to the meaning of independent claims of the 799 Patent, counselfor MTE s ta ted that:

Here, the broadest claims of th e M iru s 799 patent areindependent claims 1 and 8. Both independent claims 1and 8 commonly recite the limitation whereby the linewinding and associated cross-link winding . . . aremaRnetically coupled by the magnetic shunt. (emphasisadded.) This limitation includes a phrase magneticallycoupled. In order to construe this phrase of the Minis799 patent, the specification and the prosecution historymust be analyzed. In addition, since under the U .S . law ,the construction of this phrase must be consistent with atleast another claim limitation of the independent claim 1 ofat least one magnetic shunt, extending across andmagnetically coupled to the core legs at an intermediatepart thereof (emphasis added), which defines the claimedmeaning of the term magnetic shunt. As detailed below,the phrase maRnetically coupled is construed to meanpassing the same magnetic flux(es) -- i.e. the limitationof at least one magnetic shunt, extending across andma,gnetically coupled to the core legs at an intermediatepart thereof is construed to mean at least one magneticshunt, extending across at an intermediate part of thecore legs and passing the same magnetic flux(es) as thecore legs.

****Therefore, since the Mirus 799 patent discloses that itsmagnetic shunt or shared yoke magneticallylinks/connects and s ince the term magnetically coupledmust be construed to mean passing the same magneticflux(es), the claim limitation of, inter alia, claim 1 ofwhereby the line winding and associated cross-linkwinding for each phase are ma,netically coupled by themagnetic shunt must be construed to mean wherebyusing the magnetic shunt results in the line winding andassociated link winding for each phase are passing the

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same magnetic flux(es) among each other. Any differentconstruction, as detailed above, would be antithetical to thedisclosure of the 799 patent and its prosecution history ofthe claim term magnetically coupled.See Ex . N at 2-3.52. In the April 19, 2011 Letter, counsel for MTE further provided a detailed

analysis as to why, in view of the above detailed meaning of independent claims of the 799Patent, MTEs allegedly infringing Series D Matrix Filter did not meet each and everyelement of independent claims 1 and 8 of Defendants 799 Patent, by stating that:

The facts of ou r investigation prove that MTEs Series DMatrix Filter is composed of at least two inductors . Legsof a first inductor are oppositely positioned to legs of thesecond inductor . Th e oppositely positioned legs of theinductors are separated by a bridge made from a highpermeability Si-Fe magnetic material which is in a form ofnumerous laminations (the magnetic bridge). Magneticflux(es), which are generated by coils located on theoppositely positioned legs of the inductors, necessarilyflow(s ) a long the magnetic bridges longitudinal axisbecause the magnetic material of the magnetic bridgenecessarily make the magnetic bridge the preferred pathover a path of going through the opposite inductor.Consequently, since the magnetic bridge is the preferredpath for the first inductors magnetic fluxes, those magneticfluxes do perpendicularly cross the magnetic bridgeslongitudinal axis to pass through the second inductor.Consequently, the coils located on the oppositelypositioned legs of the two inductors do pass the samemagnetic flux(es). Therefore, the magnetic bridgemagnetically decouples the coils located on theoppositely positioned legs of the two inductors.As such, the accused MTEs Series D Matrix Filter doesno t meet, at least, the Mirus 799 patents claim limitationof whereby the line winding and associated cross-linkwinding . . . are maRneticallv coupled by the magnetic shuntwhich are required by both independent claims 1 and 8. Asdetailed above, the above limitation of the Mirus 799patent requires the opposite coils to pass the same

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magnetic flux(es) because of the magnetic shunt of theMirus 799 patent. In contrast, the magnetic bridge of theMThs Series D Matrix Filter -- which is the magneticshunt of the Mirus 799 patent, -- does not cause oppositecoils of pass the same magnetic flux(es). Therefore, themagnetic shunt of the MTE s Series D Matrix Filtermagnetically decouples the opposite coils.Consequently, the facts of ou r investigation establish thatMTEs Series D Matrix Filter do es n ot literally infringeclaims of the 799 patent.Further , the doctrine of equivalents does apply here. Asdetailed above, the magnetic bridge of MTEs Series DMatrix Filter uses magnetic material to magneticallydecouple the opposite coils. In contrast, the Mirus 799patent expressly discloses that the material thatmagnetically decouples the opposite coils must becomposed of non-magnetic material.See Ex . N at 4-5.

53. Consequently, based on its analysis detailed above, in th e April 19, 2011Letter, counsel for MTE concluded that [a]s detailed above, ou r investigation demonstratesthat the numerous allegations raised by your Letter have no merit. Consequently, our c lien treasonably v iews your Letter as nothing more th an unfair practice by your client whoadmitted to be competing directly with ou r client. See id. at 7.

54. On or about May 17, 2011, a lmost a month after the receipt of the April 19,2011 Letter, counsel for Defendants responded, stating Your argument against infringementis invalid and your assertion of non-infringement is denied. . . . Our client reserves the right toall available remedies and relief. A true and correct copy of this Defendants counsels May17, 2011 letter is attached as Exhibit 0.

55. On or about March 20, 2012, counsel for Defendants wrote a letter to MTEscounsel with the subject l ine Mirus International Inc. et al. v. MTE Corporation FEDERAL

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COURT FILE T-588-12. A true and correct copy of this correspondence is attached asExhibit P.

56. In the March 20 , 2012 letter, counsel for Mirus and Ontario informed counselfor MTE that Defendants launched a patent infringement action in Canada against MTEbased on Defendants Canadian Patent No . 2,498,993, asserting that:

Minis seeks to have its patent rights respected by itscompetitor. For this reason, our firm has previously writtento you relating to the U.S. corresponding patent No .7,449,799. With the issuance of the 993 Patent, Mirus haspatent coverage in both Canada and the United Statesrelating to the use of a magnetic shunt in a filter using across-winding. Now that the 993 Patent has issued, Minisis able to take action in Canada to enforce its patent rightsas against MTE Corporation.Minis has f il ed the attached statement of claim in FederalCourt naming MTE Corporation as a defendant.It may be possible for MTE to return to a non-infringingconfiguration and to settle this d ispute by payingreasonable compensation for the pre-grant period duringwhich the Series D filter was being sold by MTE. To allowthe parties to come to a reasonable arrangement along theselines, and to avoid the expense and disruption of litigation,the attached statement of claim has ij yet been sent ou tfor service as against MTE . Howev er, my client hasinstructed me to commence litigation by serving thestatement of claim if it is no t possible to come to anegotiated resolution.See Ex . P at 1-2.

57. As shown in the chart below, Defendants Canadian patent claims areidentical to claims recited in Defendants 799 Patent in the United States.

Claim 1 of Canadian Patent No. 2,498,993 Claim 1 of the 799 Patent1. A harmonic mitigating device for 1. A harmonic mitigating device formitigating harmonic currents generated by a mitigating harmonic currents generated by aload having an input connected to a power load having an input connected to a power

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distribution system and an outpu t connected distribution system and an output connectedto the load, comprising to the load, comprisinga magnetic core having three core legs, each a magnetic core having three core legs, eachcorresponding with one of three phases of corresponding with one of three phases ofthe power distribution system, the power distribution system,at leas t one magnetic shunt, extending at least one magnetic shunt, extendingacross and magnetically coupled to the core across and magnetically coupled to the corelegs at an intermediate part thereof, such legs at an intermediate part thereof, suchthat first and second parts of each core leg that first and second parts of each core legare separated from one another and disposed are separated from one another and disposedon either side of the shunt, on either side of the shunt,for each phase, a first reactive element for each phase, a first reactive elementcomprising a line winding having a first end comprising a line winding having a first endfor connection to a first line and a second for connection to a first line and a secondend, the line winding being disposed on the end , the line winding being disposed on thefirst part of the core leg, first part of the core leg,for each phase, a second reactive element for each phase, a second reactive elementcomprising a first cross-link winding, comprising a first cross-link winding,disposed on the second part of the core leg disposed on the second part of the core legand having a first end connected to the and having a f ir st end connected to thesecond end of the l ine winding and a second second end of the line winding and a secondend connected to a capacitor, the capacitor end connected to a capacitor, the capacitorhaving a second end connected to a having a second end connected to adifferent phase or to a capacitor associated different phase or to a capacitor associatedwith a different phase, with a different phase,whereby the line winding and associated whereby the line winding and associatedcross-link winding for each phase are cross-link winding for each phase aremagnetically coupled by the magnetic magnetically coupled by the magneticshunt. shunt.58. At no time did Defendants counsel request or propose that any of the

materials exchanged between the parties be exchanged pursuant to a confidentialityagreement.

59. At no time did Defendants counsel promise no t to sue MTE for a certainperiod of t ime while MTE reviewed Defendants 799 patent.

60. An actual controversy between parties with adverse legal interes ts exists asbetween Mirus and Ontario and MTE with respect to Exhibits A-P. In particular,

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Defendants March 20, 2012 letter has created an ongoing definite and concrete legal andfactual dispute by notifying MTE of Defendants belief that MTE s specific ongoing activity(Plaintiff MTE s manufacturing, promoting and selling its Series D Matrix Filter) in view ofspecific patent and claims should be immediately stopped. See Ex. P at 1-2.

61. Th e actual and ongoing controversy created by Defendants actions touchesth e le ga l relations of parties having adverse legal interests. In this instance, DefendantsMirus and Ontario have created an ongoing adverse legal relationship between Defendantsand MTE as to whether MTE should s top a t least the production of its Series D Matrix Filterand similar products.

62. Th e actual and ongoing controversy created by Defendants actions hascreated a definite and concrete, substantial controversy with sufficient reality to warrant theissuance of a declaratory judgment. As detailed above, Defendants direct accusations ofpatent infringement create a real threat that MTE s ability to freely exploit its non-infringingproducts will be harmed by Defendants accusations of patent infringement. Defendantsaccusations are real and immediate threat b y v irtu e of their above identified activities,including, inter alia, the filing of the patent infringement action in Canada regarding theidentical patent claims.

63. MTE contends that it has the rig ht to engage in the ongoing activities,including to produce and sell its Series D Matrix Filter and similar electromagnetic powerproducts unrestricted from Defendants 799 patent.

64. MTE has promptly (within two months of the March 20, 2012 letter) acted torequest specific relief from this Court.

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65. Defendants actions have placed MTE in the position of either pursuingallegedly illegal behavior or abandoning that which MTE claims a right to do, thuswarranting the issuance of a declaratory judgment.

66. Consequently, for all reasons detailed above, MTE and Defendants Mirus andOntario have adverse legal interests regarding the scope and enforceability of the claims ofthe 799 patent. Further, MTEs electromagnetic power products do no t infringe theDefendants 799 patent. Accordingly, a substantial, definite and concrete controversy existsbetween the parties as to the scope and enforceability of the claims of the 799 patent.Absent a declaration of non-infringement, Defendants will continue to wrongly assert the799 patent against MTE, and thereby cause MTE irreparable harm.

DEMAND FOR JURY TRIALPlaintiff requests a jury trial under Fed. R. Civ. P. 38 on all issues so triable.

PRAYER FOR RELIEFWHEREFORE, Plaintiff prays for a judgment as follows:1. Declare that Defendants acts and conduct infringe the 081 Patent and the

exclusive rights in said patent held by MTE;2. Declare that such infringements are willful;3. Pursuant to 35 U.S.C. 283, enter a permanent injunction which:

a. Enjoins the Defendants, their officers, agents, employees, privies,subsidiaries, successors, and a ssi gn s and all holding by, through orunder th em , a nd all those act ing for them or in their behalf, frominfringing upon the 081 Patent; and

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b. Enjoins the Defendants, their officers, a ge nts, em plo yee s,representatives, and all other persons in active participation with them,to recall from all distributors, wholesalers, retailers and all othersknown to Defendants, all products which infringe upon 081 Patent,and requires Defendants to file with this Court and to serve uponMTE, within 30 days after service of the Courts Order as hereinprayed, a report in writing under oath setting forth in detail the mannerand form in which Defendants have complied with the Courts Order;

c. Require Defendants to account to MTE for all profits and expensesrealized by Defendants and b y an y subsidiary of the Defendants;

d. Award MTE damages adequate to compensate for the infringement,pursuant to 35 U.S.C. 284, but in no event less than a reasonableroyalty, together with prejudgment and post-judgment interest andcosts, taking account of MTEs actual damages and Defendantsprofits as a result of the infringement; and

e. Grant an award of treble damages, pursuant to 35 U.S.C. 284;4. Declare that MTEs electromagnetic power products, including Series D

Matrix Filter and similar products, do no t infringe any claim of the 799 Patent directly orindirectly, literally or under the doctrine of equivalents;

5. Find tha t this case is exceptional and award MTE reasonable attorneys fees asthe prevailing party, pursuant to 35 U.S.C. 285 ; and

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6. Grant such other and further relief as the equity of the case may require and asthis Court may deem just and proper, together with costs and disbursements of this action,including attorneys fees.

Dated this 7 th day ofMay, 2012.

BOARDMAN & CLARK LLP

, State Bar No. 1043138for PlaintffMTE Corporation an SLPower Electronics Company1 South Pinckney Street, 4th FloorP. 0. Box 927Madison, WI 53701-0927Telephone: 608-257-9521Facsimile: 608-283-1709GREENBERG TRAURIG, LLPOF COUNSEL:Barry J. SchindlerMichael A. NicodemaMetLife Building200 Park AvenueNew York, New York 10166Tel: (212) 801-9200Attorneysfor PlaintiffMTE Corporation an SLPower Electronics Company

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Documents

MTE v. Mirus International et. al