Re: New case against RIM ... thanks 2Gorgeous
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Message: New case against RIM
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF TEXAS
DALLAS DIVISION
WI-LAN INC. and WI-LAN USA, INC.,
Plaintiffs, Civil Action No. _________
v. JURY TRIAL DEMANDED
RESEARCH IN MOTION LIMITED and
RESEARCH IN MOTION CORPORATION,
Defendants.
COMPLAINT
This is a complaint for patent infringement. The patents-in-issue include U.S.
Patent Nos. 8,184,661 and 8,274,991. Plaintiffs, Wi-LAN Inc. and Wi-LAN USA, Inc.,
for their Complaint state as follows:
PARTIES
1. Plaintiff Wi-LAN Inc. is a corporation existing under the laws of Canada
with its principal place of business at 11 Holland Ave., Suite 608, Ottawa, Ontario,
Canada K1Y 4S1. Wi-LAN Inc. is a publicly traded leading technology innovation and
licensing company actively engaged in research, development, and licensing of wireless
and digital display technologies. Plaintiff Wi-LAN USA, Inc. is a corporation existing
under the laws of the state of Florida with its principal place of business at 175 S.W. 7th
Street, No. 1803, Miami, Florida 33130. Wi-LAN USA, Inc. is a wholly owned
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subsidiary of Wi-LAN Inc. Plaintiffs will be collectively referred to herein as “Wi-
LAN.”
2. Upon information and belief, Defendant Research In Motion Limited is a
corporation organized and existing under the laws of Ontario, Canada with its principal
place of business at 295 Phillip Street, Waterloo, Ontario, Canada, N2L 3W8. Defendant
Research In Motion Limited directly or indirectly through subsidiaries or affiliated
companies markets, distributes, manufactures, imports, sells, and/or offers to sell
consumer electronic products, including mobile phones, tablets, accessories, and
associated equipment and software, in this judicial district and throughout the United
States. Upon information and belief, Defendant Research In Motion Limited may have
changed its corporate name or may now be doing business as “BlackBerry.”
3. Upon information and belief, Defendant Research In Motion Corporation is
a corporation organized and existing under the laws of the state of Delaware with a
principal place of business at 5000 Riverside Drive, Irving, Texas 75039. Defendant
Research In Motion Corporation directly or indirectly through subsidiaries, parents, or
affiliated companies markets, distributes, manufactures, imports, sells, and/or offers to
sell consumer electronic products, including mobile phones, tablets, accessories, and
associated equipment and software, in this judicial district and throughout the United
States. Upon information and belief, Defendant Research In Motion Corporation may
have changed its corporate name or may now be doing business as “BlackBerry.”
4. Upon information and belief, Defendant Research In Motion Corporation is
a wholly owned subsidiary of Defendant Research In Motion Limited and is the
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managing entity of the United States operations of Defendant Research In Motion
Limited. Upon information and belief, Defendant Research In Motion Limited and
Defendant Research In Motion Corporation share, at least some, directors and/or officers.
Upon information and belief, Defendant Research In Motion Limited exercises
operational control over Defendant Research In Motion Corporation.
JURISDICTION
5. This action for patent infringement arises under the Patent Act, 35 U.S.C. §
271, et seq. This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and
1338(a).
6. This Court has personal jurisdiction over Defendants. Defendants have
engaged in business in this judicial district, have at least one office in this judicial district,
and have committed or caused tortuous injury in this judicial district. Defendants have
additionally engaged in substantial and not isolated activity within this state. Upon
information and belief, Defendants have distributed and/or sold and continue to distribute
and/or sell large volumes of mobile phones and tablets into this judicial district.
7. Defendants have committed acts of patent infringement within this judicial
district. Defendants, directly or through intermediaries, import, manufacture, use, sell
and/or offer to sell (including through http://us.blackberry.com) products such as mobile
phones with LTE capability, including for example the BlackBerry Z10 and Q10, in the
United States and this district. Upon information and belief, Defendants’ products with
LTE capability have been used on LTE networks in the United States and elsewhere,
including at least one LTE network in this judicial district. Defendants reasonably should
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have anticipated being subject to suit in this judicial district. Defendants’ acts of patent
infringement are aimed at this judicial district and/or have effect in this judicial district.
8. Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391 and 1400(b).
COUNT I
Claim for Direct Patent Infringement of U.S. Patent No. 8,184,661
9. The allegations of paragraphs 1 through 8 are re-alleged as if fully set forth
herein.
10. Wi-LAN Inc. is the owner of United States Patent No. 8,184,661 (“the ’661
Patent”) which duly and legally issued on May 22, 2012.
11. Defendants make, import, sell, use, and/or offer to sell products such as
mobile phones that include LTE capability (“LTE Products”) in the United States.
Examples of LTE Products are Defendants’ BlackBerry Z10 mobile phone, which is
blackberry-z10/specifications.html) and Defendants’ BlackBerry Q10 mobile phone,
smartphones/blackberry-q10/specifications.html). Upon information and belief, the LTE
Products comply with and are configured to execute a specific protocol for logical
channel prioritization over an LTE network as defined in the 3rd Generation Partnership
Project (“3GPP”) LTE technical standard when using an LTE network.
12. Upon information and belief, the protocol for logical channel prioritization
over an LTE network is a built-in capability that is automatically executed when a user
uses Defendants’ LTE Products to communicate over an LTE network.
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13. Defendants, by making, using, selling, offering for sale and/or importing
Defendants’ LTE Products that are configured to execute the protocol for logical channel
prioritization over an LTE network defined in the 3GPP LTE technical standard,
including, for example, the BlackBerry Q10 and Z10, have directly infringed the ‘661
patent and continue to infringe the ‘661 patent.
14. Plaintiffs have provided notice pursuant to and in satisfaction of 35 U.S.C.
§ 287.
15. Plaintiffs have been and continue to be irreparably harmed and monetarily
harmed by Defendants’ direct infringement of the ’661 Patent. If Defendants’
infringement is not enjoined, Plaintiffs will continue to be irreparably and monetarily
harmed.
COUNT II
Claim for Direct Patent Infringement of U.S. Patent No. 8,274,991
16. The allegations of paragraphs 1 through 15 are re-alleged as if fully set
forth herein.
17. Wi-LAN Inc. is the owner of United States Patent No. 8,274,991 (“the ’991
Patent”) which duly and legally issued on Sep. 25, 2012. Wi-LAN USA, Inc. holds
certain exclusive rights under the ’991 Patent, including an exclusive right to license
Defendants.
18. The 3rd Generation Partnership Project (“3GPP”) LTE technical standard
defines a protocol for making uplink bandwidth requests over an LTE network.
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19. Defendants make, import, sell, use, and/or offer to sell products such as
mobile phones that include LTE capability (“LTE Products”) in the United States.
Examples of LTE Products are Defendants’ Blackberry Z10 mobile phone, which is
blackberry-z10/specifications.html) and Defendants’ Blackberry Q10 mobile phone,
which is advertised as including LTE capability (see http://us.blackberry.com/
smartphones/blackberry-q10/specifications.html). Upon information and belief, the LTE
Products comply with and execute the protocol for making uplink bandwidth requests
defined in the 3GPP LTE technical standard when using an LTE network.
20. The use of Defendants’ LTE Products for uplink transmission over an LTE
network results in performing a method for obtaining uplink transmission bandwidth as
claimed in the ‘991 Patent.
21. Upon information and belief, Defendants (including employees, agents,
and representatives of Defendants) have used Defendants’ LTE products’ built-in LTE
capability in the United States to directly infringe the ’991 Patent when obtaining uplink
transmission over an LTE network.
22. Plaintiffs have provided notice pursuant to and in satisfaction of 35 U.S.C.
§ 287.
23. Plaintiffs have been and continue to be irreparably harmed and monetarily
harmed by Defendants’ direct infringement of the ’991 Patent. If Defendants’
infringement is not enjoined, Plaintiffs will continue to be irreparably and monetarily
harmed.
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COUNT III
Claim for Contributory Patent Infringement of U.S. Patent No. 8,274,991
24. The allegations of paragraphs 1 through 23 are re-alleged as if fully set
forth herein.
25. Upon information and belief, Defendants also have been and are infringing
by way of contributory infringement, one or more claims of the ’991 Patent by their
actions relating to making, using, importing, selling and/or offering for sale their LTE
Products that incorporate components that are specifically designed to perform a method
for obtaining uplink transmission bandwidth as claimed in the ‘991 Patent to
communicate over an LTE network.
26. The use of Defendants’ LTE Products to obtain uplink transmission
bandwidth over an LTE network results in direct infringement of the ’991 Patent.
27. Upon information and belief, the protocol for making uplink bandwidth
requests is a built-in capability that is automatically executed when a user uses
Defendants’ LTE Products to communicate over an LTE network. Upon information and
belief, that built-in capability is embedded in one or more components (such as software
and/or hardware components, including computer code). Upon information and belief,
users of Defendants’ LTE Products, including employees, agents, representatives, and
customers of Defendants, use the products’ built-in LTE capability to directly infringe the
’991 Patent when obtaining uplink transmission over an LTE network.
28. Defendants’ LTE Products, and in particular the components of
Defendants’ LTE Products providing the capability of infringing the ‘991 Patent,
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constitute at least a material component of the invention claimed in the ’991 Patent in that
the products define customer premises equipment programmed to perform a method for
obtaining uplink transmission bandwidth as claimed in the ’991 Patent. This
functionality in Defendants’ LTE Products has no substantial non-infringing use and is
not a staple article of commerce. Upon information and belief, the built-in components
for making uplink bandwidth requests over an LTE network in the manner claimed in the
‘991 Patent, including the protocol defined in software for transmitting a “Scheduling
Request” (SR) using the “PUCCH” without entering into LTE’s “Random Access”
procedure during a timeout period as provided by the “timeAlignmentTimer,” have no
use other than for making uplink bandwidth requests over an LTE network in a manner
that infringes the ‘991 Patent. Upon information and belief, the embedded protocol for
making uplink bandwidth requests over an LTE network is used only when making an
uplink bandwidth request over an LTE network; it is not used when making an uplink
bandwidth request of a non-LTE network (such as a 3G network).
29. Defendants know and have known, or have been and remained willfully
blind to, the ‘991 Patent and the fact that their LTE Products, and particularly the
components of such products that provide the capability of making an uplink bandwidth
request over an LTE network as claimed in the ‘991 Patent, are especially made or
adapted for use in infringing the ‘991 Patent. For example, on May 8, 2013, Plaintiffs
informed Defendants of the ‘991 Patent and the infringement of such patent associated
with the making, selling, offering for sale, importing and using of the LTE Products such
as the BlackBerry Z10. Also on May 8, 2013, Plaintiffs provided Defendants with a copy
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of a prepared complaint alleging contributory and induced infringement of the ‘991
Patent associated with the making, selling, offering for sale, importing and using of the
LTE Products such as the BlackBerry Z10. That prepared complaint alleged, among
other things, that the built-in protocol for making an uplink bandwidth request over an
LTE network, was especially made or adapted for use in infringing the ‘991 Patent, was
not a staple of commerce, and had no substantial non-infringing use. Plaintiffs provided
such information and the prepared complaint by way of an email sent from Matthew Fox
to Noah Webster. Mr. Webster replied to that email, thus confirming its receipt, on May
8, 2013.
30. Prior to filing the instant complaint, Plaintiffs also had filed and served a
complaint alleging contributory and direct infringement of the ‘991 patent in a separate
court, associated with the making, using, importing, selling and offering for sale LTE
Products such as the BlackBerry Z10. Wi-LAN USA, Inc. v. Research in Motion Ltd.,
Case No. 1:13-cv-21661-DMM (S.D. Fla. 2013). That complaint was served on
Defendants on May 16, 2013.
31. Defendants have not, on information and belief, taken any steps to remove
or disable the capability of making infringing uplink bandwidth requests over an LTE
network from their LTE Products.
32. Plaintiffs have provided notice pursuant to and in satisfaction of 35 U.S.C.
§ 287.
33. Plaintiffs have been and continue to be irreparably harmed and monetarily
harmed by Defendants’ contributory infringement of the ’991 Patent. If Defendants’
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infringement is not enjoined, Plaintiffs will continue to be irreparably and monetarily
harmed.
COUNT IV
Claim for Induced Infringement of U.S. Patent No. 8,274,991
34. The allegations of paragraphs 1 through 33 are re-alleged as if fully set
forth herein.
35. Defendants’ actions induce infringement of the ’991 Patent.
36. Defendants have induced infringement of the ‘991 Patent, directly or
through intermediaries. In their literature and marketing materials, Defendants advertise
the LTE capability of the LTE Products and encourage or instruct users to use that
capability, which includes making an uplink bandwidth request over an LTE network as
covered by the ‘991 Patent. Examples of such literature and marketing material include
without limitation:
overview.html?IID=us:bb:desktop:homepage:Apr2013:hero:bb10-
discovermore
links to the following:
(stating, among other things, “Your Blackberry Z10 Deserves America’s Largest
LTE Network”)
new 4G LTE BlackBerry Z10® is . . .”)
BlackBerry Z10 Smartphone Safety and Product Information Guides
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BlackBerry Z10 Smartphone User Guide
BlackBerry Q10 Smartphone Safety and Product Information Guides
BlackBerry Z10 Smartphone User Guide
37. Defendants also have taken specific steps to encourage users of their LTE
Products to use the products in an infringing matter by not offering for sale in the Unites
States versions of their LTE Products that are not LTE capable. For example, on
information and belief, Defendants sell and offer for sale outside of the United States a
version of its Z10 mobile phone that is not LTE capable, but sell and offer for sale in the
United States only an LTE capable Z10 mobile phone.
38. Defendants know and have known their acts induce infringement of the
’991 Patent. For example, on May 8, 2013, Plaintiffs sent an email to Defendants
asserting induced infringement of the ‘991 Patent and a prepared complaint that included
allegations of induced infringement associated with Defendants’ making, importing,
using, selling and offering for sale LTE Products and encouraging users to use such
products on LTE networks.
39. Defendants knew or were willfully blind that use of the LTE Products on
LTE networks results in direct infringement of the ’991 Patent, and Defendants knew or
were willfully blind that they were encouraging users to use the LTE Products on LTE
networks as claimed in the ’991 Patent. Despite this knowledge, Defendants have
continued to encourage users to use the LTE Products on LTE networks and continued to
make, use, sell, offer for sale, and import the LTE Products. Upon information and belief,
Defendants have and had the specific intent to induce infringement of the ’991 Patent.
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Upon information and belief, Defendants have taken no steps to discourage or prevent
users to use the LTE Products on LTE networks and continued to make, use, sell, offer
for sale, and import the LTE Products.
40. Plaintiffs have provided notice pursuant to and in satisfaction of 35 U.S.C.
§ 287.
41. Plaintiffs have been and continue to be irreparably harmed and monetarily
harmed by Defendants’ inducement of infringement of the ’991 Patent. If Defendants’
infringement is not enjoined, Plaintiffs will continue to be irreparably and monetarily
harmed.
COUNT V
Willful Infringement of U.S. Patent No. 8,274,991
42. The allegations of paragraphs 1 through 41 are re-alleged as if fully set
forth herein.
43. Defendants’ infringement is willful. Despite knowledge of the ’991 Patent
and knowledge that use of the LTE Products on LTE networks infringes the ‘991 Patent,
Defendants have continued to make, use, sell, offer for sale, and/or import LTE Products
and have continued to encourage users to use the LTE Products as claimed in the ’991
Patent. Upon information and belief, to date, Defendants have not made any changes to
the operation of the LTE Products and have not provided their users with instruction on
how to avoid infringement since Defendants had notice of the ’991 Patent. To date,
Defendants have not produced or relied upon an opinion of counsel related to the ’991
Patent. To date, Defendants have not produced any evidence of investigation, design
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around or remedial actions with respect to infringement of the ’991 Patent. Defendants
have continued to act despite an objectively high likelihood that their actions constituted
infringement of the ’991 Patent and this likelihood was known or so obvious that it
should have been known to Defendants.
44. Plaintiffs has provided notice pursuant to and in satisfaction of 35 U.S.C. §
287.
45. Plaintiffs have been and continue to be irreparably harmed and monetarily
harmed by Defendants’ direct and indirect infringement of the ’991 Patent. If
Defendants’ infringement is not enjoined, Plaintiff will continue to be irreparably and
monetarily harmed.
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PRAYER FOR RELIEF
WHEREFORE, Plaintiffs respectfully request the following relief:
A. A judgment that Defendants have infringed the ’661 Patent;
B. A judgment that Defendants have infringed the ’991 Patent both directly
and indirectly;
C. A judgment and order requiring Defendants to pay all appropriate
damages, including enhanced damages, under 35 U.S.C. § 284;
D. A judgment and order requiring Defendants to pay the costs of this action,
including all disbursements, and attorney fees, if this case is exceptional as provided by
35 U.S.C. § 285;
E. Both preliminary and permanent injunctions against Defendants and their
officers, agents, employees, attorneys, and all persons in active concert or participation
with them, prohibiting infringement of the ’661 Patent;
F. Both preliminary and permanent injunctions against Defendants and their
officers, agents, employees, attorneys, and all persons in active concert or participation
with them, prohibiting infringement of the ’991 Patent; and
G. Such other and further relief that this Court may deem just and equitable.
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DEMAND FOR A JURY TRIAL
Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Plaintiffs demand a
trial by jury of all issues so triable.
Dated: June 25, 2013
Respectfully submitted,
DANIEL SHEEHAN & ASSOCIATES, LLP
By: /s/ Daniel J. Sheehan
DANIEL J. SHEEHAN
State Bar No. 18174500
dsheehan@dsa-law.com
JOHN M. PHALEN, JR.
State Bar No. 15895300
jphalen@dsa-law.com
M. PATRICK MCSHAN
State Bar No. 24047415
pmcshan@dsa-law.com
2501 N. Harwood Street, Suite 1280
Dallas, Texas 75201
(214) 468-8899 Telephone
(214) 468-8803 Facsimile
OF COUNSEL
(Pro Hac Vice Admission to be Requested)
ALAN G. CARLSON
acarlson@carlsoncaspers.com
PHILIP P. CASPERS
pcaspers@carlsoncaspers.com
DENNIS C. BREMER
dbremer@carlsoncaspers.com
SAMUEL A. HAMER
shamer@carlsoncaspers.com
WILLIAM F. BULLARD
wbullard@carlsoncaspers.com
CARLSON, CASPERS, VANDENBURGH
LINDQUIST & SCHUMAN, P.A.
16
225 South Sixth Street, Suite 4200
Minneapolis, Minnesota 55402
(612) 436-9600 Telephone
(612) 436-9605 Facsimile
Attorneys for Plaintiffs Wi-LAN USA, Inc. and
Wi-LAN Inc.
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