Case 1:23-cv-01245-JFM Document 99 Filed 11/14/24 Page 1 of 35 PageID #: 3012
`
`IN THE UNITED STATES DISTRICT COURT
`OF DELAWARE
`
`
`
`
`C.A. No. 1:23-1245-JFM
`
`
`JURY TRIAL DEMANDED
`
`
`- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - x
`
`
`
`
`
`
`:
`ZAXCOM, INC.,
`
`
`
`:
`
`
`
`
`
`
`:
`
`
`
`
`Plaintiff,
`:
`
`
`
`
`
`
`:
`
`
`
`
`v.
`
`:
`
`
`
`
`
`
`:
`
`
`
`
`
`
`:
`RODE MICROPHONES, LLC. and
`:
`FREEDMAN ELECTRONICS PTY LTD., :
`
`
`
`
`
`
`:
`
`
`
`
`Defendants.
`:
`
`
`
`
`
`
`:
`- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - x
`
`
`AMENDED COMPLAINT
`
`Plaintiff, Zaxcom, Inc. (“Zaxcom” or “Plaintiff), for its Amended Complaint against
`
`Defendants Rode Microphones, LLC (“RodeUS”) and Freedman Electronics Pty Ltd.
`
`(“Freedman")(collectively, the “Defendants”)(the Plaintiff and Defendants referred to herein
`
`individually as a “Party” and collectively as the “Parties”) alleges as follows:
`
`PARTIES
`
`1.
`
`Zaxcom is a corporation organized and existing under the laws of the state of New
`
`Jersey with its principal place of business at 230 West Parkway, Unit 9, Pompton Plains, New
`
`Jersey 07444.
`
`2.
`
`Upon information and belief, RodeUS is a corporation organized and existing under
`
`the laws of the state of Delaware, which may be served on its registered agent, The Corporation
`
`Trust Company, at its registered office located at 1209 Orange Street, Wilmington, Delaware. See
`
`Exhibit A.
`
`3.
`
`Upon information and belief, RodeUS has its principal place of business at 1209
`
`
`
`
`
`RØDE Exhibit 1051
`RØDE Microphones, LLC, et. al v. Zaxcom, Inc.
`Page 1 of 35
`
`

`

`Case 1:23-cv-01245-JFM Document 99 Filed 11/14/24 Page 2 of 35 PageID #: 3013
`
`Orange Street, Wilmington, Delaware.
`
`4.
`
`Upon information and belief, Freedman is a corporation organized and existing
`
`under the laws of Australia, operating under Australian Business Number (ABN) 91 000 576 483.
`
`See Exhibit B.
`
`5.
`
`6.
`
`Upon information and belief, Freedman is the parent company of RodeUS.
`
`Upon information and belief, Freedman trades as “Rode Microphones” (“RodeAU
`
`Business Name”) and “Rode.” See Exhibits C and D, Section 1, Background, respectively.
`
`7.
`
`Upon information and belief, Freedman has its principal place of business at 107
`
`Carnarvon Street Silverwater, NSW 2128 Australia. See Exhibit E.
`
`JURISDICTION AND VENUE
`
`8.
`
`This is an action for patent infringement arising under the patent laws of the
`
`United States of America, Title 35, United States Code §§1, et seq. Zaxcom brings this action: to
`
`halt the Defendants’ infringement of U.S. Patent Nos. (i) 7,711,443, which issued May 4, 2010
`
`(the “‘443 Patent”), (ii) 7,929,902, which issued April 19, 2011 (the “‘902 Patent”), (iii)
`
`8,385,814, which issued February 26, 2013 (the “‘814 Patent”), (iv) 9,336,307, which issued
`
`May 10, 2016 (the “‘307 Patent”), (v) 10,276,207, which issued April 30, 2019 (the “‘207
`
`Patent”), (vi) 11,610,605, which issued on March 21, 2023 (the “’605 Patent”), and (vii)
`
`12,051,444, which issued on July 30, 2024 (“the ‘444 patent”)(collectively referred to herein as
`
`the “Zaxcom Patents” or “Patents-in-Suit”); and to halt the Defendants’ interference with
`
`Zaxcom’s exclusive rights to market, sell, and distribute products pursuant to the Zaxcom
`
`Patents in the United States.
`
`9.
`
`Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391(b), 1391(c)
`
`and 1400(b) because, among other things, RodeUS is incorporated in Delaware and therefore
`
`
`
`2
`
`RØDE Exhibit 1051
`RØDE Microphones, LLC, et. al v. Zaxcom, Inc.
`Page 2 of 35
`
`

`

`Case 1:23-cv-01245-JFM Document 99 Filed 11/14/24 Page 3 of 35 PageID #: 3014
`
`resides in this District. Venue is appropriate for Freedman because it is the parent company of
`
`RodeUS, and it is subject to personal jurisdiction in this judicial district. Upon information and
`
`belief, Freedman has also committed acts of infringement in the judicial district, including
`
`importing products into this district, and maintains a regular and established place of business
`
`within this judicial district via the RodeUS location in the district.
`
`10.
`
`This Court has exclusive subject matter jurisdiction over this case for patent
`
`infringement under 28 U.S.C. §§ 1331 and 1338(a).
`
`11.
`
`This Court also has subject matter jurisdiction over the Parties based upon
`
`complete diversity of the Plaintiff and Defendants pursuant to 28 U.S.C. §1332(a). Plaintiff
`
`Zaxcom is a New Jersey corporation, Defendant RodeUS is a Delaware limited liability
`
`company, and Defendant Freedman is an Australian Proprietary Company.
`
`12.
`
`Freedman is the parent company of RodeUS, is purchasing and distributing
`
`infringing product into the U.S. through its U.S. subsidiary, RodeUS, and is jointly liable for the
`
`actions of RodeUS under theories of alter ego, agency, and its direct conduct. Plaintiff has incurred
`
`damages in excess of the statutory threshold of monetary damage of at least $75,000.
`
`13.
`
`The claims asserted herein all arise from a common nucleus of operative facts and
`
`the proof of each of the claims will include overlapping facts.
`
`14.
`
`This Court has personal jurisdiction over RodeUS, because RodeUS is incorporated
`
`in Delaware.
`
`15.
`
`This Court has personal jurisdiction over RodeUS and Freedman because both have
`
`committed acts of patent infringement in this judicial district in violation of 35 U.S.C. § 271.
`
`16.
`
`This Court has personal jurisdiction over RodeUS and Freedman because, upon
`
`information and belief, they have, at a minimum, solicited and conducted business within the state
`
`
`
`3
`
`RØDE Exhibit 1051
`RØDE Microphones, LLC, et. al v. Zaxcom, Inc.
`Page 3 of 35
`
`

`

`Case 1:23-cv-01245-JFM Document 99 Filed 11/14/24 Page 4 of 35 PageID #: 3015
`
`of Delaware by placing its infringing products into the stream of commerce throughout the United
`
`States and being actively engaged in transacting business in Delaware and having committed the
`
`complained of tortious acts in Delaware. RodeUS and Freedman, directly and/or through
`
`subsidiaries and agents, imports, distributes, offers for sale, and sells its products in the United
`
`States, including Delaware, through, at a minimum, commercial internet websites and physical
`
`retail stores.
`
`17.
`
`This Court’s exercise of personal jurisdiction over Freedman is consistent with the
`
`Delaware Long Arm Statute, 10 Del. C. 3194, and traditional notions of fair play and substantial
`
`justice.
`
`18.
`
`Upon information and belief, RodeUS and Freedman have derived substantial
`
`revenue from offering infringing products for sale, selling infringing products, contributing to
`
`infringement of the Zaxcom Patents, and inducing infringement of the Zaxcom Patents, all in this
`
`district.
`
`19.
`
`RodeUS and Freedman know that its products are available for sale in this district,
`
`thereby availing itself of the privilege of acting in the state of Delaware.
`
`20.
`
`The Defendants are offering infringing products for sale in this district by offering
`
`for sale wireless transmitters and receivers, and related accessories, including, without limitation,
`
`its Wireless Go II Dual Channel Wireless Microphone System (“Rode Go II”) and its Wireless Pro
`
`Dual-Channel Wireless Microphone System (“Rode Pro”) products through its distribution
`
`channels in this district.
`
`21.
`
`Upon information and belief, RodeUS and Freedman market and offer the Rode
`
`Go II and Rode Pro for sale in this judicial district and throughout the United States through
`
`Rode’s website and online store at https://rode.com/en-
`
`
`
`4
`
`RØDE Exhibit 1051
`RØDE Microphones, LLC, et. al v. Zaxcom, Inc.
`Page 4 of 35
`
`

`

`Case 1:23-cv-01245-JFM Document 99 Filed 11/14/24 Page 5 of 35 PageID #: 3016
`
`us/microphones/wireless/wirelessgoii?gad_source=1&gclid=CjwKCAjw1t2pBhAFEiwA_-A-
`
`NK7pncEHZns6m_aJC9zalkmNhi3k-FVHlnCZiW7J5n-U2yX7k_pIhhoCmrIQAvD_BwE
`
`(“Rode Go II Purchase Page”) and https://rode.com/en-
`
`us/microphones/wireless/wirelesspro?buyitnow=true (“Rode Pro Purchase Page”), respectively,
`
`of the rode.com website (“Rode Website,”), which is available to purchasers in the district.
`
`Screen captures from the Rode Go II Purchase Page and Rode Pro Purchase Page showing the
`
`Rode Go II and Rode Pro being offered for sale throughout the United States including Delaware
`
`is attached as Exhibit F1 and F2, respectively.
`
`22.
`
`The Rode Website lists both RodeUS and Freedman on its support page, with
`
`Freedman using its RodeAU Business Name. See Exhibit E.
`
`23.
`
`The privacy policy for the Rode Website (through which the Rode Go II and Rode
`
`Pro products may be purchased in the district) states “[w]e’re RODE Microphones (Freedman
`
`Electronics Pty Ltd T/A Rode Freedman Electronics Pty Ltd; ABN 91 000 576 483).” See
`
`Exhibit D, pg. 1.
`
`24.
`
`The terms and conditions for the Rode Website (through which the Rode Go II
`
`and Rode Pro products may be purchased in the district) states “RODE Microphones operates the
`
`websites rode.com…” and lists Freedman’s Australian address as the address for RODE
`
`Microphones in Section 21, Contact. See Exhibit G, pgs. 1 and 3.
`
`25.
`
`Section 6 of the terms and conditions for the Rode Website (through which the
`
`Rode Go II and Rode Pro product may be purchased in the district) states “RODE is a registered
`
`trademark of RODE Microphones/Freedman Electronics.” See Exhibit G, pg. 1.
`
`26.
`
`The USPTO lists Freedman as the owner of U.S. Registration No. 3,973,968 for
`
`the mark “RØDE.” See Exhibit H.
`
`
`
`5
`
`RØDE Exhibit 1051
`RØDE Microphones, LLC, et. al v. Zaxcom, Inc.
`Page 5 of 35
`
`

`

`Case 1:23-cv-01245-JFM Document 99 Filed 11/14/24 Page 6 of 35 PageID #: 3017
`
`27.
`
`The Rode Go II and Rode Pro products are sold in physical retail stores including,
`
`but not limited to, the Concord Pike Best Buy store located in Wilmington, Delaware. Screen
`
`captures of the Concord Pike Best Buy webpages, namely,
`
`https://www.bestbuy.com/site/searchpage.jsp?st=rode+go+ii&_dyncharset=UTF-
`
`8&_dynSessConf=&id=pcat17071&type=page&sc=Global&cp=1&nrp=&sp=&qp=&list=n&af=
`
`true&iht=y&usc=All+Categories&ks=960&keys=keys and
`
`https://www.bestbuy.com/site/searchpage.jsp?st=rode+wireless+pro&_dyncharset=UTF-
`
`8&_dynSessConf=&id=pcat17071&type=page&sc=Global&cp=1&nrp=&sp=&qp=&list=n&af=
`
`true&iht=y&usc=All+Categories&ks=960&keys=keys showing the Rode Go II and Rode PRO,
`
`respectively, being offered for sale in Wilmington, DE is attached as Exhibits I1 and I2,
`
`respectively.
`
`ZAXCOM’S BUSINESS AND PATENTS
`
`28.
`
`Zaxcom is a leading designer and manufacturer of professional audio equipment.
`
`Zaxcom has been awarded various awards including three Emmy award for outstanding
`
`achievement in Engineering Development and two Academy awards for the design and
`
`engineering of the Zaxcom Digital Wireless Microphone System and Deva multi-track location
`
`sound recorder. As a result of its development and promotional efforts, Zaxcom’s audio
`
`equipment is sought after by consumers, especially consumers in the television and film
`
`industries and professional sporting leagues. Aside from the current infringement of one or more
`
`of the Zaxcom patents, Zaxcom is the sole supplier to the television and film industries and
`
`professional sporting leagues for recording systems that allow locally generated audio to be both
`
`locally and remotely recorded with timestamp data as audio data in a manner that facilitates the
`
`repair or combination of such audio data in post-recording engineering.
`
`
`
`6
`
`RØDE Exhibit 1051
`RØDE Microphones, LLC, et. al v. Zaxcom, Inc.
`Page 6 of 35
`
`

`

`Case 1:23-cv-01245-JFM Document 99 Filed 11/14/24 Page 7 of 35 PageID #: 3018
`
`29.
`
`On May 4, 2010, the United States Patent and Trademark Office (“USPTO”) duly
`
`and legally issued the ’443 patent entitled “VIRTUAL WIRELESS MULTITRACK
`
`RECORDING SYSTEM.” A true and correct copy of the ’443 patent is attached hereto as
`
`Exhibit J1.
`
`30.
`
`On April 19, 2011, the USPTO duly and legally issued the ’902 patent entitled
`
`“VIRTUAL WIRELESS MULTITRACK RECORDING SYSTEM.” A true and correct copy of
`
`the ’902 patent is attached hereto as Exhibit J2.
`
`31.
`
`On February 26, 2013, the USPTO duly and legally issued the ’814 patent entitled
`
`“VIRTUAL WIRELESS MULTITRACK RECORDING SYSTEM.” A true and correct copy of
`
`the ’814 patent is attached hereto as Exhibit J3.
`
`32.
`
`On May 10, 2016, the USPTO duly and legally issued the ’307 patent entitled
`
`“VIRTUAL WIRELESS MULTITRACK RECORDING SYSTEM.” A true and correct copy of
`
`the ’307 patent is attached hereto as Exhibit J4.
`
`33.
`
`On April 30, 2019, the USPTO duly and legally issued the ‘207 patent entitled
`
`“VIRTUAL WIRELESS MULTITRACK RECORDING SYSTEM.” A true and correct copy of
`
`the “207 patent is attached hereto as Exhibit J5.
`
`34.
`
`On March 21, 2023, the USPTO duly and legally issued the ‘605 patent entitled
`
`“SYSTEMS AND METHODS FOR REPAIRING REMOTELY RECORDED AUDIO DATA.”
`
`A true and correct copy of the “605 patent is attached hereto as Exhibit J6.
`
`35.
`
`On July 30, 2024, the USPTO duly and legally issued the ‘444 patent entitled
`
`“SYSTEMS AND METHODS FOR REPAIRING REMOTELY RECORDED AUDIO DATA.”
`
`A true and correct copy of the ‘444 patent is attached hereto as Exhibit J7.
`
`36.
`
`Each of the Zaxcom Patents is valid and legally enforceable.
`
`
`
`7
`
`RØDE Exhibit 1051
`RØDE Microphones, LLC, et. al v. Zaxcom, Inc.
`Page 7 of 35
`
`

`

`Case 1:23-cv-01245-JFM Document 99 Filed 11/14/24 Page 8 of 35 PageID #: 3019
`
`37.
`
`Zaxcom is the sole and exclusive owner of all rights, title and interest in the
`
`Patents-In-Suit and holds the exclusive right to take all actions necessary to enforce its rights in
`
`the Patents-In-Suit, including the filing of this patent infringement lawsuit.
`
`38.
`
`Zaxcom has the right to recover all damages for past, present, and future
`
`infringement of the Patents-In-Suit and to seek injunctive relief as appropriate under the law.
`
`FACTUAL ALLEGATIONS
`
`39.
`
`The Patents-In-Suit are directed generally to systems and methods for wireless
`
`recording of multi-track audio files without the data corruption or loss of data that typically
`
`occurs with wireless data transmission.
`
`40.
`
`Upon information and belief, Freedman and RodeUS promote, offer for sale, and
`
`sell wireless microphone systems and audio processing products, including its Rode Go II and
`
`Rode PRO products.
`
`41.
`
`Upon information and belief, the Defendants market such products, and
`
`specifically the Rode Go II and Rode PRO, to compete with Zaxcom’s products, including but
`
`not limited to, Zaxcom’s ZMT4 series transmitter products.
`
`42.
`
`The Rode Go II product includes two transmitters, one receiver, a carry pouch,
`
`cables, and microphone covers.
`
`43.
`
`The Rode PRO product includes two transmitters, one receiver, two MagClip
`
`GOs (to clip a transmitter to clothing), various cases, cables, and microphone covers.
`
`44.
`
`Notwithstanding Zaxcom’s rights, Defendants, without permission or
`
`authorization, have infringed and continue to infringe one or more claims of the Patents-In-Suit
`
`at least by: (i) offering for sale, and selling; and/or (ii) knowingly and actively contributing to
`
`and/or inducing the infringement by others of one or more of the Zaxcom Patents by using,
`
`
`
`8
`
`RØDE Exhibit 1051
`RØDE Microphones, LLC, et. al v. Zaxcom, Inc.
`Page 8 of 35
`
`

`

`Case 1:23-cv-01245-JFM Document 99 Filed 11/14/24 Page 9 of 35 PageID #: 3020
`
`selling, and/or offering for sale certain electronic audio equipment, including the Rode Go II and
`
`Rode PRO products. In addition, Defendants have infringed one or more claims of the Patents-
`
`In-Suit under 35 U.S.C. §§ 271(f)(1) and (f)(2) by importing the Rode Go II and the Rode Pro
`
`products into the United States and subsequently exporting them outside the United States.
`
`COUNT I – PATENT INFRINGEMENT
`(Infringement of the ’443 Patent)
`
`Zaxcom repeats and realleges the allegations of the preceding paragraphs as if
`
`45.
`
`fully set forth herein.
`
`The ‘443 Patent is valid and enforceable.
`
`Zaxcom is the owner of all rights, title, and interest in the ‘443 Patent through
`
`46.
`
`47.
`
`assignment.
`
`48.
`
`Zaxcom has not licensed or otherwise authorized RodeUS or Freedman to make,
`
`use, offer for sale, sell, or import any products that embody the inventions of the ’443 patent.
`
`Defendants have infringed and are willfully infringing the ‘443 Patent, either literally or under
`
`the doctrine of equivalents, either directly or indirectly, in violation of 35 U.S.C. § 271 et seq.,
`
`by: importing, exporting, marketing, offering to sell, selling and distributing the Rode Pro
`
`product in the United States; inducing users to use the infringing Rode Pro products in a manner
`
`that infringes one or more of the Patents-In-Suit; and contributing to the infringement of the
`
`Patent-In-Suit, all in violation of Zaxcom’s protected U.S. patent rights.
`
`49.
`
`Defendants are knowingly and intentionally inducing others to use the Rode Pro
`
`products in a manner that infringes one or more of the Zaxcom Patents. This is evidenced by, at a
`
`minimum, free educational videos created by Defendants and published on YouTube instructing
`
`users how to use the Rode Pro in a manner that infringes one or more of the Zaxcom Patents. See
`
`Exhibit K2, Listing of Rode Pro Educational Videos. Further, Defendants have published a
`
`
`
`9
`
`RØDE Exhibit 1051
`RØDE Microphones, LLC, et. al v. Zaxcom, Inc.
`Page 9 of 35
`
`

`

`Case 1:23-cv-01245-JFM Document 99 Filed 11/14/24 Page 10 of 35 PageID #: 3021
`
`“Wireless Pro User Guide & Support” Manual detailing methods of using the Rode Pro product
`
`in a manner that infringes one or more of the Zaxcom Patents. See Exhibit M2. The Defendants
`
`knowingly induce the infringing acts with a specific intent to encourage infringement by that
`
`person via these freely accessible online videos and manuals.
`
`50.
`
`Defendants have contributed to, and continue to contribute to, infringement of one
`
`or more of the Patents-In-Suit by third parties. Third parties are using the Rode Go II and Rode
`
`Pro products in a manner that infringes one or more of the Patents-In-Suit. See, at a minimum,
`
`Exhibits L1 and L2, respectively. Defendants knew its Rode Go II and Rode Pro products were
`
`designed for use with various third-party components including, but not limited to, cell phones
`
`and cameras (“Third Party Components”) (collectively, the “Combination”). See, for example,
`
`Exhibit K1, Video 4, 0:22-1:10 (instructing users how to connect the Rode Go II system to a
`
`smartphone). See also Exhibit K1, Video 2, 2:31-2:51 (instructing users how to connect the Go II
`
`Receiver to a camera and adjust settings). See also Exhibit K2, Video 4, 0:18-0:32 (instructing
`
`users how to connect the Wireless Pro to a computer and iOS or Android smartphone). See also
`
`Exhibit M1, pg. 3 and Exhibit M2, pg. 12 (Listing of Third-Party Products compatible with the
`
`Rode Pro). The Combination of the Rode Go II or Rode Pro with such Third-Party Components
`
`is both patented and infringes various claims of one or more of the Patents-In-Suit. The Rode Go
`
`II and Rode Pro are not staple goods and have no substantial non-infringing use, and the Rode
`
`Go II and Rode Pro are each a material part of the Combination.
`
`
`
`10
`
`RØDE Exhibit 1051
`RØDE Microphones, LLC, et. al v. Zaxcom, Inc.
`Page 10 of 35
`
`

`

`Case 1:23-cv-01245-JFM Document 99 Filed 11/14/24 Page 11 of 35 PageID #: 3022
`
`51.
`
`The Rode Go II and Rode Pro products being imported, offered for sale, and sold
`
`by Freedman and/or RodeUS infringe one or more claims of the ‘443 Patent. Exemplary claim
`
`charts demonstrating infringement of claims 1 – 4, 7-9, 15, 17, 19 – 20, and 22 – 27 by the Rode
`
`Go II and Rode Pro products are attached hereto as Exhibit O.
`
`52.
`
`Defendant’s infringement is intentional and deliberate. Defendant was put on
`
`notice of all of the Patents-in-Suit with the exception of the ‘605 Patent and the ‘444 Patent
`
`(which had not yet issued) at least as early as March 26, 2021, when the first cease-and-desist
`
`letter (“1st Notice Letter”) was sent to Mr. Damian Wilson of RodeUS and Mr. Peter Freedman
`
`of Freedman from Zaxcom. The 1st Notice Letter detailed the infringement of the Rode Go II on
`
`one or more of the Zaxcom Patents.
`
`53.
`
`In response to the 1st Notice Letter, Zaxcom was informed by Mr. Alex Shtraym,
`
`counsel for RodeUS and Freedman, that “Freedman Electronics is the parent company to RØDE,
`
`which assumes custody of the Wireless Go II in Australia and sells the product in the U.S.”
`
`54.
`
`Defendants were again put on notice of all of the Patents-in-Suit including the
`
`‘605 Patent on August 25, 2023, when a second cease-and-desist letter (“2nd Notice Letter) was
`
`sent to Mr. Shtraym on behalf of RodeUS and Freedman from Zaxcom regarding the Rode Pro
`
`product. The 2nd Notice Letter detailed the infringement of the Rode Pro product on one or more
`
`of the Zaxcom Patents.
`
`55.
`
`The Defendants’ infringement of the ‘443 Patent has injured Zaxcom. Zaxcom is
`
`entitled to a declaration of infringement and to recover from Defendants the damages suffered
`
`by Zaxcom as a result of the Defendants’ wrongful acts in an amount to be proven at trial,
`
`including lost profits and an amount not less than a reasonable royalty, together with interests
`
`and costs, the trebling of such damages under 35 U.S.C. § 284 due to the willful nature of the
`
`
`
`11
`
`RØDE Exhibit 1051
`RØDE Microphones, LLC, et. al v. Zaxcom, Inc.
`Page 11 of 35
`
`

`

`Case 1:23-cv-01245-JFM Document 99 Filed 11/14/24 Page 12 of 35 PageID #: 3023
`
`infringement, together with interests and costs, a declaration that this case is exceptional
`
`pursuant to 35 USC § 285 and awarding attorneys’ fees and costs, and pre- and post- judgment
`
`interest on damages.
`
`56.
`
`The Defendants’ infringement of the ‘443 Patent will continue to cause Zaxcom
`
`irreparable injury and damage for which there is no adequate remedy at law unless and until the
`
`Defendants’ are permanently enjoined from infringing the ‘443 Patent.
`
`57.
`
`Upon information and belief, Defendants’ infringement of the ’443 patent has
`
`been willful pursuant to 35 U.S.C. § 284.
`
`COUNT II – PATENT INFRINGEMENT
`(Infringement of the ’902 Patent)
`
`Zaxcom repeats and realleges the allegations of the preceding paragraphs as if
`
`58.
`
`fully set forth herein.
`
`The ‘902 Patent is valid and enforceable.
`
`Zaxcom is the owner of all rights, title, and interest in the ‘902 Patent through
`
`59.
`
`60.
`
`assignment.
`
`61.
`
`Zaxcom has not licensed or otherwise authorized RodeUS or Freedman to make,
`
`use, offer for sale, sell, or import any products that embody the inventions of the ’902 patent.
`
`Defendants have infringed and are willfully infringing the ‘902 Patent, either literally or under
`
`the doctrine of equivalents, either directly or indirectly, in violation of 35 U.S.C. § 271 et seq.,
`
`by: importing, exporting, marketing, offering to sell, selling and distributing the Rode Go II and
`
`Rode Pro products in the United States; inducing users to use the infringing Rode Go II and
`
`Rode Pro products in a manner that infringes one or more of the Zaxcom Patents; and
`
`contributing to the infringement of the Patent-In-Suit, all in violation of Zaxcom’s protected U.S.
`
`patent rights.
`
`
`
`12
`
`RØDE Exhibit 1051
`RØDE Microphones, LLC, et. al v. Zaxcom, Inc.
`Page 12 of 35
`
`

`

`Case 1:23-cv-01245-JFM Document 99 Filed 11/14/24 Page 13 of 35 PageID #: 3024
`
`62.
`
`The Defendants have induced infringement, and continue to induce infringement
`
`of, one or more of the Zaxcom Patents by third parties in violation of 35 U.S.C. §271.
`
`Defendants are knowingly and intentionally inducing others to use the Rode Go II products in a
`
`manner that infringes one or more of the Zaxcom Patents. This is evidenced by, at a minimum,
`
`free educational videos created by Defendants and published on YouTube instructing users how
`
`to use the Rode Go II in a manner that infringes one or more of the Zaxcom Patents. See Exhibit
`
`K1, Listing of Rode Go II Educational Videos. Further, Defendants have published a “Wireless
`
`Go II User Guide & Support” Manual detailing methods of using the Rode Go II product in a
`
`manner that infringes one or more of the Zaxcom Patents. See Exhibit M1. The Defendants
`
`knowingly induce the infringing acts with a specific intent to encourage infringement by that
`
`person via these freely accessible online videos and manuals.
`
`63.
`
`Defendants are knowingly and intentionally inducing others to use the Rode Pro
`
`products in a manner that infringes one or more of the Zaxcom Patents. This is evidenced by, at a
`
`minimum, free educational videos created by Defendants and published on YouTube instructing
`
`users how to use the Rode Pro in a manner that infringes one or more of the Zaxcom Patents. See
`
`Exhibit K2, Listing of Rode Pro Educational Videos. Further, Defendants have published a
`
`“Wireless Pro User Guide & Support” Manual detailing methods of using the Rode Pro product
`
`in a manner that infringes one or more of the Zaxcom Patents. See Exhibit M2. The Defendants
`
`knowingly induce the infringing acts with a specific intent to encourage infringement by that
`
`person via these freely accessible online videos and manuals.
`
`64.
`
`Defendants have contributed to, and continue to contribute to, infringement of one
`
`or more of the Patents-In-Suit by third parties. Third parties are using the Rode Go II and Rode
`
`Pro products to infringe one or more of the Zaxcom Patents. See, at a minimum, Exhibits L1 and
`
`
`
`13
`
`RØDE Exhibit 1051
`RØDE Microphones, LLC, et. al v. Zaxcom, Inc.
`Page 13 of 35
`
`

`

`Case 1:23-cv-01245-JFM Document 99 Filed 11/14/24 Page 14 of 35 PageID #: 3025
`
`L2, respectively. Defendants knew its Rode Go II and Rode Pro products were designed for use
`
`with various third-party components including, but not limited to, cell phones and cameras
`
`(“Third Party Components”) (collectively, the “Combination”). See, for example, Exhibit K1,
`
`Video 4, 0:22-1:10 (instructing users how to connect the Rode Go II system to a smartphone).
`
`See also Exhibit K1, Video 2, 2:31-2:51 (instructing users how to connect the Go II Receiver to a
`
`camera and adjust settings). See also Exhibit K2, Video 4, 0:18-0:32 (instructing users how to
`
`connect the Wireless Pro to a computer and iOS or Android smartphone). See also Exhibit M1,
`
`pg. 3 and Exhibit M2, pg. 12 (Listing of Third-Party Products compatible with the Rode Pro).
`
`The Combination of the Rode Go II or Rode Pro with such Third-Party Components is both
`
`patented and infringes various claims of one or more of the Patents-In-Suit. The Rode Go II and
`
`Rode Pro are not staple goods and have no substantial non-infringing use, and the Rode Go II
`
`and Rode Pro are each a material part of the Combination.
`
`65.
`
`The Rode Go II and Rode Pro products being imported, offered for sale, and sold
`
`by Freedman and/or RodeUS infringe one or more claims of the ‘902 Patent. Exemplary claim
`
`charts demonstrating infringement of claims 1-6, 9-10, 13, and 16-26 areattached hereto as
`
`Exhibit O.
`
`66.
`
`Defendant’s infringement is intentional and deliberate. Defendant was put on
`
`notice of all of the Patents-in-Suit with the exception of the ‘605 Patent and the ‘444 Patent
`
`(which had not yet issued) at least as early as March 26, 2021, when the 1st Notice Letter” was
`
`sent to Mr. Damian Wilson of RodeUS and Mr. Peter Freedman of Freedman from Zaxcom. The
`
`1st Notice Letter detailed the infringement of the Rode Go II on one or more of the Zaxcom
`
`Patents.
`
`67.
`
`In response to the 1st Notice Letter, Zaxcom was informed by Mr. Alex Shtraym,
`
`
`
`14
`
`RØDE Exhibit 1051
`RØDE Microphones, LLC, et. al v. Zaxcom, Inc.
`Page 14 of 35
`
`

`

`Case 1:23-cv-01245-JFM Document 99 Filed 11/14/24 Page 15 of 35 PageID #: 3026
`
`counsel for RodeUS and Freedman, that “Freedman Electronics is the parent company to RØDE,
`
`which assumes custody of the Wireless Go II in Australia and sells the product in the U.S.”
`
`68.
`
`Defendants were again put on notice of all of the Patents-in-Suit including the
`
`‘605 Patent on August 25, 2023, when the 2nd Notice Letter was sent to Mr. Shtraym on behalf of
`
`RodeUS and Freedman from Zaxcom regarding the Rode Pro product. The 2nd Notice Letter
`
`detailed the infringement of the Rode Pro product on one or more of the Zaxcom Patents.
`
`69.
`
`The Defendants’ infringement of the ‘902 Patent has injured Zaxcom. Zaxcom is
`
`entitled to a declaration of infringement and to recover from Defendants the damages suffered
`
`by Zaxcom as a result of the Defendants’ wrongful acts in an amount to be proven at trial,
`
`including lost profits and an amount not less than a reasonable royalty, together with interests
`
`and costs, the trebling of such damages under 35 U.S.C. § 284 due to the willful nature of the
`
`infringement, together with interests and costs, a declaration that this case is exceptional
`
`pursuant to 35 USC § 285 and awarding attorneys’ fees and costs, and pre- and post- judgment
`
`interest on damages.
`
`70.
`
`The Defendants’ infringement of the ‘902 Patent will continue to cause Zaxcom
`
`irreparable injury and damage for which there is no adequate remedy at law unless and until the
`
`Defendants’ are permanently enjoined from infringing the ‘902 Patent.
`
`71.
`
`Upon information and belief, Defendants’ infringement of the ’902 patent has
`
`been willful pursuant to 35 U.S.C. § 284.
`
`COUNT III – PATENT INFRINGEMENT
`(Infringement of the ’814 Patent)
`
`
`
`72.
`
`Zaxcom repeats and realleges the allegations of the preceding paragraphs as if
`
`fully set forth herein.
`
`
`
`15
`
`RØDE Exhibit 1051
`RØDE Microphones, LLC, et. al v. Zaxcom, Inc.
`Page 15 of 35
`
`

`

`Case 1:23-cv-01245-JFM Document 99 Filed 11/14/24 Page 16 of 35 PageID #: 3027
`
`The ‘814 Patent is valid and enforceable.
`
`Zaxcom is the owner of all rights, title, and interest in the ‘‘814 Patent through
`
`73.
`
`74.
`
`assignment.
`
`75.
`
`Zaxcom has not licensed or otherwise authorized RodeUS or Freedman to make,
`
`use, offer for sale, sell, or import any products that embody the inventions of the ’814 Patent.
`
`Defendants have infringed and are willfully infringing the ‘814 Patent, either literally or under
`
`the doctrine of equivalents, either directly or indirectly, in violation of 35 U.S.C. § 271 et seq.,
`
`by: importing, exporting, marketing, offering to sell, selling and distributing the Rode Go II and
`
`Rode Pro products in the United States; inducing users to use the infringing Rode Go II and
`
`Rode Pro products in a manner that infringes one or more of the Zaxcom Patents; and
`
`contributing to the infringement of the Patent-In-Suit, all in violation of Zaxcom’s protected U.S.
`
`patent rights.
`
`76.
`
`The Defendants have induced infringement, and continue to induce infringement
`
`of, one or more of the Zaxcom Patents by third parties in violation of 35 U.S.C. §271.
`
`Defendants are knowingly and intentionally inducing others to use the Rode Go II products in a
`
`manner that infringes one or more of the Zaxcom Patents. This is evidenced by, at a minimum,
`
`free educational videos created by Defendants and published on YouTube instructing users how
`
`to use the Rode Go II in a manner that infringes one or more of the Zaxcom Patents. See Exhibit
`
`K1, Listing of Rode Go II Educational Videos. Further, Defendants have published a “Wireless
`
`Go II User Guide & Support” Manual detailing methods of using the Rode Go II product in a
`
`manner that infringes one or more of the Zaxcom Patents. See Exhibit M1. The Defendants
`
`knowingly induce the infringing acts with a specific intent to encourage infringement by that
`
`person via these freely accessible online videos and manuals.
`
`
`
`16
`
`RØDE Exhibit 1051
`RØDE Microphones, LLC, et. al v. Zaxcom, Inc.
`Page 16 of 35
`
`

`

`Case 1:23-cv-01245-JFM Document 99 Filed 11/14/24 Page 17 of 35 PageID #: 3028
`
`77.
`
`Defendants are knowingly and intentionally inducing others to use the Rode Pro
`
`products in a manner that infringes one or more of the Zaxcom Patents. This is evidenced by, at a
`
`minimum, free educational videos created by Defendants and published on YouTube instructing
`
`users how to use the Rode Pro in a manner that infringes one or more of the Zaxcom Patents. See
`
`Exhibit K2, Listing of Rode Pro Educational Videos. Fu