UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WISCONSIN MTE CORPORATION AN SL POWER ELECTRONICS COMPANY, Plaintiff, v.

MIRUS INTERNATIONAL, INC., and 1061933 ONTARIO INC. Defendants. Civil Action No: 12-cv-332 JURY TRIAL DEMANDED

COMPLAINT Plaintiff 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 at N83

W13330 Leon Road, Menomonee Falls, Wisconsin. 2. Since 1985, MTE has been a long standing member of the business MTE is an industry-respected innovator and an international

community in Wisconsin.

supplier of power quality electromagnetic products designed to protect power equipment from power surges, and improve the reliability of adjustable frequency drives. MTE serves a wide range of industries and has continually shown growth and profitability. MTE designs and manufactures line/load reactors, Matrix Passive Harmonic Filters, Matrix PureSine Active Harmonic Filter, EMI/RFI filters, DC link chokes, dv/dt and sine wave motor protection filters, plus numerous custom magnetic products that provide power quality 1

NJ 227,415,349v1 5-4-12

solutions in a broad range of applications. These products are typically used in industrial plants and commercial buildings where non-linear loads and attendant harmonics produced by these loads are present. MTE also designs, manufactures and tests custom power

subsystems for select Original Equipment Manufacturers worldwide. MTE has established a global distribution system consisting of over 400 stocking distributors. 3. Upon information and belief, Defendant 1061933 Ontario Inc. (Ontario) is

a company organized under the laws of Canada having its principal place of business at 801 Sheppard 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 a facility from which Mirus International, Inc. operates. Further, upon information and belief, Ontario does not 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 Canada having 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 for electromagnetic power products manufactured by Ontario. However, according to its Web site, Mirus claims to be the manufacturer (rather than Ontario) of the electromagnetic power products that Mirus promotes, sells, and distributes: At Mirus, we are motivated by the challenge of finding solutions for the most difficult of power quality problems and to design the highest efficiency transformer and harmonic filtering products on the market.

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

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JURISDICTION AND VENUE 5. 6. MTE repeats and realleges the allegations of

9[ 1-4 as if set forth herein.

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 under
the patent laws of the United States, including 35 U.S.C. under the Federal Declaratory Judgment Act. 7. Upon information and belief, Mirus maintains continuous and systematic

271, 273 and 281

285, and

contacts with Wisconsin in the normal course of its business, including but not limited to, regularly marketing, shipping, and selling its electromagnetic power products and Ontarios electromagnetic power products to the United States, which are then sold and used within the United States generally, including within this District. According to Mirus website, Mirus actively promote[s] the financial and environmental benefits of our highly efficient transformer products and [is] proud to be Energy Star Partners, US Green Building Council members and Rebuild America Business Partners. 8. Upon information and belief, for over a decade, since at least 1999, Mirus

marketed, shipped, sold, and/or installed its electromagnetic power products and Ontarios electromagnetic power products to hundred of its customers within the United States generally, including customers within Wisconsin who purchased and/or used, in their ordinary course of business, Ontario electromagnetic products and Mirus electromagnetic products. Attached as Exhibit A is a true and correct copy of a Partial List of Minis

Lineator Customers, which includes as customers the following entities: ABB (WI), Unico Inc (WI), and Integrated Drive Systems (WI). 3 The Partial List of Mirus Lineator

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Customers is publicly available. See Exhibit B (internet search results displaying link to the same). 9. Upon information and belief, Mirus marketed, sold, and installed its

electromagnetic power products and Ontarios electromagnetic power products at numerous U.S. customers that include U.S. high technology, manufacturing, entertainment, and industrial 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 corporate brochure, which shows its customers. Upon information and belief, a number of the companies and organizations identified in Exhibit C have a presence in Wisconsin. 10. Upon information and belief, Mirus has specifically targeted Wisconsin for its

electromagnetic power products and Ontarios electromagnetic power products. When a prospective customer from Madison, Wisconsin submits its zip code on Mirus website, Minis directs such prospective Wisconsin customer to its Wisconsin agent, Weldy/Lamont Associate, Inc. (Weldy/Lamont). A true and correct copy of a screenshot of Mirus

websites Find Sales Agent function is attached as Exhibit D. 11. Upon information and belief, Weldy/Lamont identifies itself to be

Manufacturers Representatives For Electrical Power Products and identifies Mirus as a manufacturer that Weldy/Lamont represents for mission critical power equipment. A true and correct copy of a screenshot of Weldy/Lamont s website is attached Exhibit E. Upon information and belief, Wisconsin customers can place orders for Mirus products directly with its Wisconsin agent, Weldy/Lamont Consequently, Minis established a distribution

NJ 227,415,349v1 5-4-12

system in Wisconsin for its electromagnetic power products and Ontarios electromagnetic power products. 12. Upon information and belief, in contrast to specifically targeting prospective

customers in Wisconsin, when a prospective customer from another state, New Jersey, submits its New Jersey zip code, Mirus directs such prospective New Jersey customer to Mirus itself. A true and correct copy of a screenshot of Mirus websites Find Sales Agent response to a New Jersey zip code is attached as Exhibit F. 13. Upon information and belief, Mirus is the exclusive distributor of Ontario.

Ontario therefore placed its electromagnetic products in a stream of commerce with full knowledge that its products would be sold and used in Wisconsin. 14. On or about February 8, 2011, Mirus and Ontario sent a letter via facsimile to

MTE at MTEs Wisconsin facsimile number, and included MTEs Wisconsin address (the February 8, 2011 Letter). A true and correct copy of the February 8, 2011 Letter is

attached as Exhibit G shows. In the February 8, 2011 Letter, Mirus and Ontario accused MTE of patent infringement and threatened to seek injunctive relief, damages, profits, damages for willful infringement, attorneys fees and such other remedies as are available at law
...

in... the U.S.

Mirus and Ontario further demanded that MTE, the Wisconsin

corporation, 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 this

District by virtue of all contacts in Wisconsin and in the District referenced herein, including, 5

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inter alia, its electromagnetic power products have been used in this District, it has solicited
business in this District, it has regularly conducted business in this District, it has purposefully availed itself of the rights and benefits of Wisconsin law, and it has substantial, continuous, and systematic contacts with Wisconsin. Consequently, Mirus has conducted, engaged in, and carried on business in Wisconsin under statute.

801.05 of the Wisconsin long-arm

16.

Upon information and belief, Ontario is subject to personal jurisdiction in this

District by virtue of all contacts in Wisconsin and in the District referenced herein, including,

inter alia, its electromagnetic power products have been used in this District, it has solicited
business in this District, it has regularly conducted business in this District, it has purposefully availed itself of the rights and benefits of Wisconsin law, and it has substantial, continuous, and systematic contacts with Wisconsin. Consequently, Ontario has conducted, engaged in, and carried on business in Wisconsin under statute. 17. 1400 (b). Venue is proper in this judicial district under 28 U.S.C.

801.05 of the Wisconsin long-arm

1391 (d) and

COUNT I: INFRINGEMENT OF PLAINTIFF MTES U.S. PATENT NO. 7,142,081 BY DEFENDANT MIRUS
18. 19. MTE repeats and realleges the allegations of

91 1-17 as if set forth herein.

MTE has spent and continues to spend significant resources on developing

and protecting its intellectual property.

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20.

U.S. Patent No. 7,142,081, entitled Multiple three-phase inductor with a

common core (the 081 Patent) was duly and legally issued on November 28, 2006 to MTE, as assignee of Todd A. Shudarek, all of Wisconsin. A true and correct copy of the 081 Patent is attached hereto as Exhibit H. 21. 22. MTE owns the 081 Patent in its entirety. 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 covers MTEs Series D Matrix Filter. 23. Upon information and belief, Ontario and Mirus knew about the 081 Patent

as early as June of 2007, when Ontario identified the 081 Patent to the United State Patent and Trademark Office during an patent examination of its own patent application that matured into Ontarios U.S. Patent No. 7,449,799. See Exhibit L at 1, identifing the 081 Patent in the section References Cited. MTEs counsel noted this fact in a letter dated February 24, 2011 to Defendants counsel (a true and correct copy of which is attached as Exhibit I), which stated in relevant part that: Third, even from a very cursory review of prosecution of U.S. Patent No. 7,449,799, it appears that you have been personally aware of our clients U.S. Patent 7,142,081 at least since June of 2007, when you filed an IDS listing the 081 patent. Your imputed knowledge of the 081 patent thus 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 since

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June of 2007. A true and correct copy of Defendants counsels letter dated March 2, 2011 is attached as Exhibit J.
25.

Upon information and belief, Mirus, with full knowledge of the 081 Patent,

has infringed and continues to infringe at least claim 1 of the 081 Patent, by reason of Mirus unauthorized making, using, selling and/or offering for sale in this judicial district and elsewhere, its branded electromagnetic power products, such as AUHF-40-480-60-D-EO and other similar products, each of which incorporate a structure that satisfy each 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 follows. Below are photographs of Mirus AUHF-40-480-60-D-EO electromagnetic power product which was used in Wisconsin. These photographs are annotated with claim elements of claim 1 of MTEs 081 Patent.

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Third Electrical

Fifth Electrical

Transverse gap along each of the fourth, fifth and sixth

OM1I2l2 12
legs are covered by red brackets and Photograph 1: Front view
* Core

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First core oridge Brackets that are fabricated of a low magnetically permeable material

Photograph 2: Side view 27. As the above detailed photographs show, Mirus exemplary infringing

electromagnetic power product, AUHF-40-480-60-D-EO, satisfies each and every claim elements of claim 1 of the 081 Patent, including the claim element that requires electric currents flowing through the first, second, third, fourth, fifth and sixth electrical coils to produce magnetic flux which flows through the second core bridge. 28. These infringing articles, as alleged above, have not been manufactured or

authorized in any manner by MTE, nor has Mirus ever been authorized or otherwise granted the right to use, manufacture, offer for sale, sell, distribute, or import into the United States 10

NJ227,415,349v1 5-4-12

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

287. Upon information and belief, Mirus infringement of the 081 Patent has been 284. For example, in the February 8, 2011 Letter,

willful and deliberate under 35 U.S.C.

Mirus specifically references the 081 Patent. See Ex. G at 1. Further, in the February 8, 2011 Letter Defendants counsel claims that: Our client further believes that you deliberately copied the design of our clients Lineator AUHF in order to create the Series D Matrix Filter... (emphasis added). 30. On February 23, 2011, counsel for Mirus and Ontario wrote another letter (the

February 23, 2011 Letter) to MTEs counsel asserting that Defendants view MTEs Series D Matrix Filter, which is covered by claim 1 of the 081 Patent, to be a direct competitor to Mirus 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 another

letter to MTEs counsel (the March 20, 2012 Letter), asserting that the configuration of the 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 attached as Exhibit P. Such assertions demonstrate that Defendants have done a substantial study of and have substantial knowledge and understanding of the 081 Patent and its claims. 32. The foregoing actions by Mirus demonstrate that Mirus, with full knowledge

of the 081 Patent, continues and will continue to directly infringe the 081 Patent; engages

11

NJ 227,415,349v1 5-4-12

and will engage to actively induce others including, inter alia, Ontario, to infringe the 081 Patent; and contributes and will contributes to the infringement by others including, inter alia, Ontario, of the 081 Patent. Such infringing actions by Mirus have caused and will continue to cause irreparable damage to MTE, unless enjoined by the Court. MTh has no adequate remedy at law. COUNT II: INFRINGEMENT OF MTES 081 PATENT BY DEFENDANT ONTARIO 33. 34. MTE repeats and realleges the allegations of

9[ 1-32 as if set forth herein.

As set forth above, in the February 8, 2011 Letter, Ontario specifically

acknowledged that it is the manufacturer of the above detailed infringing articles. See Ex. G at 2. These infringing articles, as alleged above, have not been manufactured or authorized in any manner by MTE, nor has Ontario ever been authorized or otherwise granted the right to use, manufacture, offer for sale, sell, distribute, or import into the United States devices made according 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 081 Patent has been willful and deliberate under 35 U.S.C. 36.

284.

The foregoing actions by Ontario demonstrate that Ontario, with full

knowledge of the 081 Patent, continues and will continue to directly infringe the 081 Patent; engages and will engage to actively induce others including, inter alia, Mirus, to infringe the 081 Patent; and contributes and will contributes to the infringement by others inluding, inter alia, Mirus, of the 081 Patent. Such infringing actions by Ontario have

12

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caused and will continue to cause the irreparable damage to MTE, unless enjoined by the Court. MTE has no adequate remedy at law. COUNT III: DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF DEFENDANT ONTARIOS U.S. PATENT NO. 7,449,799 37. 38. MTE repeats and realleges the allegations of 1[ 1-36 as if set forth herein. 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 and Mirus. 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 other

reasons, MTEs has not infringed any claim of the 799 Patent directly or indirectly, literally or under the doctrine of equivalents. An Actual Controversy Is Present Amon2 Parties 40. MTEs business encompasses an extensive array of electromagnetic power

products that are designed to protect power equipment from power surges, and improve the reliability of adjustable frequency drives in the wide range of industries. For example, MTE has manufactured and will continue to manufacture Series D Matrix Filter and similar electromagnetic power products. 41. In the February 8, 2011 Letter, Ontario stated 1061933 Ontario Inc. is the

owner of the 799 Patent, thereby indicating, on information and belief, Ontarios assertion of the ownership of the full interest in the 799 Patent. See Ex. G at 2. The February 8, 2011 Letter also indicates, on information and belief, that Mirus asserts to be an exclusive licensee of the 799 Patent. Id.

13

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42.

As detailed above, the February 8, 2011 Letter from counsel for Defendants to

MTEs General Manager, entitled Mirus International mc described 1061933 Ontario Inc. as the developer and manufacture of the Lineator AUHF harmonic filter. See Ex. G at 2. 43. The February 8, 2011 Letter further stated that 1061933 Ontario Inc. is the

owner of U.S. Patent No. 7,449,799 and published Canadian patent application no. 2,498,993 covering this product. See id. 44. The February 8, 2011 Letter further stated that [ojur client has become

aware of your Series D Matrix Filter, and considers that this harmonic filter infringes the claims in the patent. See id. 45. 46. The only patent indentified in the February 8, 2011 Letter was the 799 Patent. On or about February 15, 2011, counsel for MTE replied to the February 8,

2011 Letter, indicating that MTE respects the legitimate intellectual property rights of others. As you can appreciate, it will take some time for us to complete our evaluation. I will contact you promptly within 60 days after our evaluation is complete. A true and correct copy of the February 15, 2011 letter is attached hereto as Exhibit M. 47. On or about February 23, 2011, Defendants counsel responded to MTEs

counsels February 15, 2011 letter, stating, Thank you for your interim response. However, your client has recently started competing directly with our client based on their impugned product. We consider a further two month delay in addressing this matter to be unreasonable and very prejudicial to our client. Is your client prepared to stop promoting and

14

NJ 227,415,349v1 5-4-12

selling this product pending your formal response? A true and correct copy of Defendants counsels February 23, 2011 letter is attached as Exhibit K. 48. On or about February 24, 2011, counsel for MTE replied to Defendants

February 23, 2011 letter as follows:

I am frankly surprised by your position with respect to my request for the 60-day evaluation period which is a commonly accepted and reasonable request under the U.S. legal practice. Such an evaluation period is particularly warranted where, as here, our client only became aware of your clients grievance for the first time upon receipt of your first letter, dated February 8, 2011. Moreover, your demand in your February 23, 2011 letter that our client stop promoting and selling this product pending our evaluation is highly unreasonable under U.S. legal practice. I trust that you will re-consider your position and will withdraw your ill-founded demands accordingly. (emphasis added). A true and correct copy of the MTEs counsels February 24, 2011 letter
is attached as Exhibit I. 49. On or about March 2, 2011, Defendants counsel responded to MTEs

counsels letter of February 24, 2011, stating We will review any further issues when we receive your clients substantive response. A true and correct copy of this correspondence is attached as Exhibit J. 50. On or about April 19, 2011, counsel for MTE provided a substantive response

to the accusations of infringement of the 799 Patent raised by the February 8, 2011 Letter (the April 19, 2011 Letter). attached as Exhibit N. A true and correct copy of the April 19, 2011 Letter is

15

NJ227,415,349v1 5-4-12

51.

In the April 19, 2011 Letter, counsel for MTE explained in detail why MTEs

allegedly infringing Series D Matrix Filter did not infringe any claims of the 799 Patent. Specifically, with respect to the meaning of independent claims of the 799 Patent, counsel for MTE stated that: Here, the broadest claims of the Mirus 799 patent are independent claims 1 and 8. Both independent claims 1 and 8 commonly recite the limitation whereby the line winding and associated cross-link winding are maRnetically coupled by the magnetic shunt. (emphasis added.) This limitation includes a phrase magnetically coupled. In order to construe this phrase of the Minis 799 patent, the specification and the prosecution history must be analyzed. In addition, since under the U.S. law, the construction of this phrase must be consistent with at least another claim limitation of the independent claim 1 of at least one magnetic shunt, extending across and magnetically coupled to the core legs at an intermediate part thereof (emphasis added), which defines the claimed meaning of the term magnetic shunt. As detailed below, the phrase maRnetically coupled is construed to mean passing the same magnetic flux(es) i.e. the limitation of at least one magnetic shunt, extending across and ma,gnetically coupled to the core legs at an intermediate part thereof is construed to mean at least one magnetic shunt, extending across at an intermediate part of the core legs and passing the same magnetic flux(es) as the core legs.
. . .
--

****

Therefore, since the Mirus 799 patent discloses that its magnetic shunt or shared yoke magnetically links/connects and since the term magnetically coupled must be construed to mean passing the same magnetic flux(es), the claim limitation of, inter alia, claim 1 of whereby the line winding and associated cross-link winding for each phase are ma,netically coupled by the magnetic shunt must be construed to mean whereby using the magnetic shunt results in the line winding and associated link winding for each phase are passing the 16

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same magnetic flux(es) among each other. Any different construction, as detailed above, would be antithetical to the disclosure of the 799 patent and its prosecution history of the 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 799 Patent, MTEs allegedly infringing Series D Matrix Filter did not meet each and every element of independent claims 1 and 8 of Defendants 799 Patent, by stating that: The facts of our investigation prove that MTEs Series D Matrix Filter is composed of at least two inductors. Legs of a first inductor are oppositely positioned to legs of the second inductor. The oppositely positioned legs of the inductors are separated by a bridge made from a high permeability Si-Fe magnetic material which is in a form of numerous laminations (the magnetic bridge). Magnetic flux(es), which are generated by coils located on the oppositely positioned legs of the inductors, necessarily flow(s) along the magnetic bridges longitudinal axis because the magnetic material of the magnetic bridge necessarily make the magnetic bridge the preferred path over a path of going through the opposite inductor. Consequently, since the magnetic bridge is the preferred path for the first inductors magnetic fluxes, those magnetic fluxes do perpendicularly cross the magnetic bridges longitudinal axis to pass through the second inductor. Consequently, the coils located on the oppositely positioned legs of the two inductors do pass the same magnetic flux(es). Therefore, the magnetic bridge magnetically decouples the coils located on the oppositely positioned legs of the two inductors. As such, the accused MTEs Series D Matrix Filter does not meet, at least, the Mirus 799 patents claim limitation of whereby the line winding and associated cross-link winding are maRneticallv coupled by the magnetic shunt which are required by both independent claims 1 and 8. As detailed above, the above limitation of the Mirus 799 patent requires the opposite coils to pass the same
. . .

17

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magnetic flux(es) because of the magnetic shunt of the Mirus 799 patent. In contrast, the magnetic bridge of the MThs Series D Matrix Filter which is the magnetic shunt of the Mirus 799 patent, does not cause opposite coils of pass the same magnetic flux(es). Therefore, the magnetic shunt of the MTE s Series D Matrix Filter magnetically decouples the opposite coils. Consequently, the facts of our investigation establish that MTEs Series D Matrix Filter does not literally infringe claims of the 799 patent. Further, the doctrine of equivalents does apply here. As detailed above, the magnetic bridge of MTEs Series D Matrix Filter uses magnetic material to magnetically decouple the opposite coils. In contrast, the Mirus 799 patent expressly discloses that the material that magnetically decouples the opposite coils must be composed of non-magnetic material.
---

See Ex. N at 4-5. 53. Consequently, based on its analysis detailed above, in the April 19, 2011

Letter, counsel for MTE concluded that [a]s detailed above, our investigation demonstrates that the numerous allegations raised by your Letter have no merit. Consequently, our client reasonably views your Letter as nothing more than unfair practice by your client who admitted to be competing directly with our client. See id. at 7. 54. On or about May 17, 2011, almost a month after the receipt of the April 19,

2011 Letter, counsel for Defendants responded, stating Your argument against infringement is invalid and your assertion of non-infringement is denied.
. . .

Our client reserves the right to

all available remedies and relief. A true and correct copy of this Defendants counsels May 17, 2011 letter is attached as Exhibit 0. 55. On or about March 20, 2012, counsel for Defendants wrote a letter to MTEs

counsel with the subject line Mirus International Inc. et al. v. MTE Corporation FEDERAL

18

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

Exhibit P. 56.
In the March 20, 2012 letter, counsel for Mirus and Ontario informed counsel

for MTE that Defendants launched a patent infringement action in Canada against MTE based on Defendants Canadian Patent No. 2,498,993, asserting that: Minis seeks to have its patent rights respected by its competitor. For this reason, our firm has previously written to you relating to the U.S. corresponding patent No. 7,449,799. With the issuance of the 993 Patent, Mirus has patent coverage in both Canada and the United States relating to the use of a magnetic shunt in a filter using a cross-winding. Now that the 993 Patent has issued, Minis is able to take action in Canada to enforce its patent rights as against MTE Corporation. Minis has filed the attached statement of claim in Federal Court naming MTE Corporation as a defendant.

It may be possible for MTE to return to a non-infringing configuration and to settle this dispute by paying reasonable compensation for the pre-grant period during which the Series D filter was being sold by MTE. To allow the parties to come to a reasonable arrangement along these lines, and to avoid the expense and disruption of litigation, the attached statement of claim has ij yet been sent out for service as against MTE. However, my client has instructed me to commence litigation by serving the statement of claim if it is not possible to come to a negotiated resolution. See Ex. P at 1-2. 57. As shown in the chart below, Defendants Canadian patent claims are

identical to claims recited in Defendants 799 Patent in the United States.

Claim 1 of Canadian Patent No. 2,498,993 1. A harmonic mitigating device for mitigating harmonic currents generated by a load having an input connected to a power 19 Claim 1 of the 799 Patent 1. A harmonic mitigating device for mitigating harmonic currents generated by a load having an input connected to a power

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distribution system and an output connected to the load, comprising a magnetic core having three core legs, each corresponding with one of three phases of the power distribution system, at least one magnetic shunt, extending across and magnetically coupled to the core legs at an intermediate part thereof, such that first and second parts of each core leg are separated from one another and disposed on either side of the shunt, for each phase, a first reactive element comprising a line winding having a first end for connection to a first line and a second end, the line winding being disposed on the first part of the core leg, for each phase, a second reactive element comprising a first cross-link winding, disposed on the second part of the core leg and having a first end connected to the second end of the line winding and a second end connected to a capacitor, the capacitor having a second end connected to a different phase or to a capacitor associated with a different phase, whereby the line winding and associated cross-link winding for each phase are magnetically coupled by the magnetic shunt. 58.

distribution system and an output connected to the load, comprising a magnetic core having three core legs, each corresponding with one of three phases of the power distribution system, at least one magnetic shunt, extending across and magnetically coupled to the core legs at an intermediate part thereof, such that first and second parts of each core leg are separated from one another and disposed on either side of the shunt, for each phase, a first reactive element comprising a line winding having a first end for connection to a first line and a second end, the line winding being disposed on the first part of the core leg, for each phase, a second reactive element comprising a first cross-link winding, disposed on the second part of the core leg and having a first end connected to the second end of the line winding and a second end connected to a capacitor, the capacitor having a second end connected to a different phase or to a capacitor associated with a different phase, whereby the line winding and associated cross-link winding for each phase are magnetically coupled by the magnetic shunt.

At no time did Defendants counsel request or propose that any of the

materials exchanged between the parties be exchanged pursuant to a confidentiality agreement. 59. At no time did Defendants counsel promise not to sue MTE for a certain

period of time while MTE reviewed Defendants 799 patent. 60. An actual controversy between parties with adverse legal interests exists as In particular,

between Mirus and Ontario and MTE with respect to Exhibits A-P. 20

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Defendants March 20, 2012 letter has created an ongoing definite and concrete legal and factual 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 of specific patent and claims should be immediately stopped. See Ex. P at 1-2. 61. The actual and ongoing controversy created by Defendants actions touches In this instance, Defendants

the legal relations of parties having adverse legal interests.

Mirus and Ontario have created an ongoing adverse legal relationship between Defendants and MTE as to whether MTE should stop at least the production of its Series D Matrix Filter and similar products. 62. The actual and ongoing controversy created by Defendants actions has

created a definite and concrete, substantial controversy with sufficient reality to warrant the issuance of a declaratory judgment. As detailed above, Defendants direct accusations of patent infringement create a real threat that MTE s ability to freely exploit its non-infringing products will be harmed by Defendants accusations of patent infringement. Defendants accusations are real and immediate threat by virtue of their above identified activities, including, inter alia, the filing of the patent infringement action in Canada regarding the identical patent claims. 63. MTE contends that it has the right to engage in the ongoing activities,

including to produce and sell its Series D Matrix Filter and similar electromagnetic power products unrestricted from Defendants 799 patent. 64. MTE has promptly (within two months of the March 20, 2012 letter) acted to

request specific relief from this Court. 21

NJ227,415,349v1 5-4-12

65.

Defendants actions have placed MTE in the position of either pursuing

allegedly illegal behavior or abandoning that which MTE claims a right to do, thus warranting the issuance of a declaratory judgment. 66. Consequently, for all reasons detailed above, MTE and Defendants Mirus and

Ontario have adverse legal interests regarding the scope and enforceability of the claims of the 799 patent. Further, MTEs electromagnetic power products do not infringe the

Defendants 799 patent. Accordingly, a substantial, definite and concrete controversy exists between 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 the 799 patent against MTE, and thereby cause MTE irreparable harm. DEMAND FOR JURY TRIAL Plaintiff requests a jury trial under Fed. R. Civ. P. 38 on all issues so triable. PRAYER FOR RELIEF WHEREFORE, 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. 3. Declare that such infringements are willful; Pursuant to 35 U.S.C. a.

283, enter a permanent injunction which:

Enjoins the Defendants, their officers, agents, employees, privies, subsidiaries, successors, and assigns and all holding by, through or under them, and all those acting for them or in their behalf, from infringing upon the 081 Patent; and 22

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b.

Enjoins

the

Defendants,

their

officers,

agents,

employees,

representatives, and all other persons in active participation with them, to recall from all distributors, wholesalers, retailers and all others known to Defendants, all products which infringe upon 081 Patent, and requires Defendants to file with this Court and to serve upon MTE, within 30 days after service of the Courts Order as herein prayed, a report in writing under oath setting forth in detail the manner and form in which Defendants have complied with the Courts Order; c. Require Defendants to account to MTE for all profits and expenses realized by Defendants and by any 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 reasonable royalty, together with prejudgment and post-judgment interest and costs, taking account of MTEs actual damages and Defendants profits as a result of the infringement; and e. 4. Grant an award of treble damages, pursuant to 35 U.S.C. 284;

Declare that MTEs electromagnetic power products, including Series D

Matrix Filter and similar products, do not infringe any claim of the 799 Patent directly or indirectly, literally or under the doctrine of equivalents; 5. Find that this case is exceptional and award MTE reasonable attorneys fees as

the 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 as

this Court may deem just and proper, together with costs and disbursements of this action, including attorneys fees. Dated this 7th day of May, 2012. BOARDMAN & CLARK LLP

, State Bar No. 1043138 for PlaintffMTE Corporation an SL Power Electronics Company 1 South Pinckney Street, 4th Floor P. 0. Box 927 Madison, WI 53701-0927 Telephone: 608-257-9521 Facsimile: 608-283-1709

GREENBERG TRAURIG, LLP OF COUNSEL: Barry J. Schindler Michael A. Nicodema MetLife Building 200 Park Avenue New York, New York 10166 Tel: (212) 801-9200 Attorneys for PlaintiffMTE Corporation an SL Power Electronics Company

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