Case 3:16-cv-06180-WHA Document 84 Filed 03/20/17 Page 1 of 21
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`Natalie Hanlon Leh (pro hac vice)
`Mary (Mindy) V. Sooter (pro hac vice)
`Anne Lee (pro hac vice)
`WILMER CUTLER PICKERING
` HALE AND DORR LLP
`1225 Seventeenth Street, Suite 2600
`Denver, Colorado 80202
`Telephone:
`(720) 274-3135
`Facsimile:
`(720) 274-3133
`
`Kathryn D. Zalewski (SBN 263119)
`WILMER CUTLER PICKERING
` HALE AND DORR LLP
`950 Page Mill Road
`Palo Alto, California 94304
`Telephone:
`(650) 858-6000
`Facsimile:
`(650) 858-6100
`
`Jason H. Liss (pro hac vice)
`Sameer Ahmed (pro hac vice)
`Claire M. Specht (pro hac vice)
`Aaron Macris (pro hac vice)
`WILMER CUTLER PICKERING
` HALE AND DORR LLP
`60 State Street
`Boston, Massachusetts 02109
`Telephone:
`(617) 526-6000
`Facsimile:
`(617) 526-5000
`
`Attorneys for Plaintiff
`Comcast Cable Communications, LLC
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN FRANCISCO DIVISION
`
`
`
`COMCAST CABLE COMMUNICATIONS, LLC,
`Plaintiff,
`
`v.
`OPENTV, INC., and NAGRAVISION SA,
`Defendants.
`
`
`
`
`
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`
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`Case No. 3:16-cv-6180-WHA
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`SECOND AMENDED COMPLAINT
`FOR DECLARATORY JUDGMENT
`OF PATENT NONINFRINGEMENT
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`DEMAND FOR JURY TRIAL
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`Case 3:16-cv-06180-WHA Document 84 Filed 03/20/17 Page 2 of 21
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`Plaintiff Comcast Cable Communications, LLC (“Plaintiff” or “Comcast”) alleges for its
`Complaint against Defendants OpenTV, Inc., and Nagravision SA (“Defendants”) as follows:
`NATURE OF THE ACTION
`1.
`This action arises under 28 U.S.C. §§ 1331, 1338(a), 2201, and 2202.
`2.
`Comcast brings this action for a declaration that it does not infringe any claim of
`Defendants’ U.S. Patent Nos. 7,900,229 (the “’229 Patent”); 6,895,595 (the “’595 Patent”);
`6,725,461 (the “’461 Patent”); 5,907,322 (the “’322 Patent”); 6,985,586 (the “’586 Patent”);
`6,345,389 (the “’389 Patent”); 6,799,328 (the “’328 Patent”); 7,028,327 (the “’327 Patent”);
`7,243,139 (the “’139 Patent”); and 6,530,082 (the “’082 Patent”) (collectively “the Asserted
`Patents”).
`
`PARTIES
`3.
`Comcast Cable Communications, LLC is a Limited Liability Company organized
`and existing under the laws of the State of Delaware with its principal place of business in
`Philadelphia, Pennsylvania. Comcast provides video, high-speed Internet, and voice services to
`residential and business customers under the XFINITY brand, including in this judicial district.
`4.
`On information and belief, OpenTV, Inc. (“OpenTV”), is a Delaware corporation
`with its principal place of business and headquarters at 275 Sacramento Street, San Francisco,
`California.
`5.
`On information and belief, Nagravision SA (“Nagravision”) is a Swiss
`corporation with its headquarters and principal place of business in Cheseaux-sur-Lausanne,
`Switzerland. Upon information and belief, Nagravision’s principal place of business in the
`United States is in El Segundo, California.
`6.
`On information and belief, OpenTV and Nagravision are subsidiaries of Kudelski
`SA, a Swiss conglomerate. On information and belief, Nagra USA, Inc. (“Nagra USA”), is a
`New York corporation with its principal place of business and headquarters in San Francisco,
`California, and is also a subsidiary of Kudelski SA. Kudelski SA and its subsidiaries are referred
`to as the “Kudelski Group.”
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`COMCAST’S SECOND AMENDED COMPLAINT
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`Case 3:16-cv-06180-WHA Document 84 Filed 03/20/17 Page 3 of 21
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`7.
`The Kudelski Group has identified monetizing its intellectual property as one of
`its priorities and has made repeated use of the courts of this district to attempt to enforce its
`patents.
`
`JURISDICTION
`8.
`This is an action for declaratory relief under the Patent Laws of the United States,
`35 U.S.C. § 1 et seq.
`9.
`This Court has personal jurisdiction because, on information and belief,
`Defendants have, and have had, continuous and systematic contacts within the State of
`California, including this district. On information and belief, the headquarters and principal
`place of business of OpenTV is located in San Francisco, California and Nagravision’s principal
`place of business in the United States is located in El Segundo, California. Further, on
`information and belief, Defendants have purposefully directed business activities at this district
`and residents of this district have used services and products offered or sold by Defendants.
`10.
`For example, on information and belief, Defendants’ enforcement efforts have
`included hiring counsel who reside and practice in this district (such as Ian Feinberg of Feinberg
`Day Alberti & Thompson LLP, with respect to licensing negotiations between Time Warner
`Cable, Inc., and Defendants; Robert F. McCauley from Finnegan, Henderson, who is counsel for
`OpenTV, Nagravision, and another Kudelski subsidiary in OpenTV, Inc., Nagravision S.A. and
`Nagra France S.A.S. v. Apple, Inc., N.D. Cal. Case No. 3:15-cv-02008, as well as for OpenTV
`and Nagravision in OpenTV, Inc. and Nagravision S.A. v. Apple, Inc., N.D. Cal Case No. 3:14-
`cv-01622; and John Edwards at Kirkland & Ellis, who was counsel of record for OpenTV in
`OpenTV, Inc. v. Netflix, Inc., N.D. Cal. Case No. 3:14-cv-01525, and for both OpenTV and
`another Kudelski subsidiary in OpenTV, Inc. and Nagra France SAS v. Netflix, Inc., N.D. Cal.
`Case No. 3:14-cv-01723) for the express purpose of enforcing their patent rights.
`11.
`This Court has federal question jurisdiction under 28 U.S.C. §§ 1331 and 1338(a)
`because this is a civil action arising under the Patent Act. This Court has subject matter
`jurisdiction over Comcast’s declaratory judgment claims pursuant to 28 U.S.C. §§ 2201 and
`2202 because an immediate and substantial controversy exists between Comcast and Defendants
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`Case No. 3:16-cv-6180-WHA
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`Case 3:16-cv-06180-WHA Document 84 Filed 03/20/17 Page 4 of 21
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`with respect to whether the Asserted Patents cover Comcast’s activities based on Defendants’
`communications with Comcast asserting nine of the Asserted Patents as well as Defendants’
`patent portfolio as a whole, including among other things, Conditional Access Systems,
`Defendants’ pattern of intellectual property assertion against others, and Defendants’ assertion
`that Comcast infringes U.S. Patent No. 7,725,740 (the “’740 Patent”), U.S. Patent No. 7,725,720
`(the “’720 Patent”), and U.S. Patent No. 8,356,188 (the “’188 Patent”) in the U.S. District Court
`for the Eastern District of Texas—Nagravision SA v. Comcast Corp. et al., Case No. 2:16-cv-
`1362 (E.D. Tex. Dec. 5, 2016) (“EDTX Complaint”).
`12.
`On December 19, 2012, OpenTV filed an action for patent infringement against
`Netflix, Inc., in the United States District Court for the District of Delaware. OpenTV’s
`complaint alleged willful infringement by Netflix of seven U.S. patents. In support of its willful
`infringement allegation, OpenTV averred that it had notified Netflix of the OpenTV patent
`portfolio as well as several specific patents that it asserted may be relevant to Netflix’s services.
`13.
`On March 31, 2014, the District Court for the District of Delaware transferred
`OpenTV’s action against Netflix to this judicial district.
`14.
`On April 9, 2014, OpenTV and Nagravision filed an action for patent
`infringement against Apple Inc., in this district and alleged willful infringement of a number of
`patents, including the ’229 Patent. OpenTV, Nagravision, and Nagra France S.A.S. filed a
`second action against Apple Inc., in this district on May 5, 2015, alleging willful infringement of
`five additional patents, including the ’740 Patent.
`15.
`On October 30, 2015, OpenTV and Nagra France S.A.S. filed an action for patent
`infringement against Verizon Communications, Inc., asserting willful infringement by Verizon
`of a number of patents, including the ’139 Patent and the ’229 Patent. In support of its willful
`infringement allegation, OpenTV and Nagra France averred that they had contacted Verizon
`regarding a license to the patents and presented Verizon with details of its alleged infringement.
`16.
`On January 21, 2016, Yahoo! Inc. filed an action for declaratory judgment of
`noninfringement in this district against Kudelski SA and OpenTV, Inc., alleging that those
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`COMCAST’S SECOND AMENDED COMPLAINT
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`parties threatened litigation against Yahoo! and accused it of infringement of a number of
`patents, including the ’327 patent also at issue here.
`17.
`Similarly, on May 4, 2016, Time Warner Cable, Inc. (“TWC”), filed an action in
`this district for declaratory judgment of noninfringement against OpenTV, Inc., Nagravision SA,
`and Kudelski SA, alleging the same pattern of threatened litigation against TWC, including
`accusations of infringement of nine patents, including the ’322, ’082, ’595, ’586, and ’139
`patents also at issue here.
`18.
`On October 1, 2015, Clay Gaetje, who identified himself as Vice President for
`Licensing at Nagra/Kudelski, e-mailed David Marcus, Comcast’s Chief Patent Counsel. Mr.
`Gaetje used an “@nagra.com” email address and, on information and belief, Mr. Gaetje’s
`LinkedIn profile identifies his current position as “VP – IP Licensing at Nagra.”
`19.
`In his October 1, 2015, email, Mr. Gaetje asserted that “we have attempted to
`contact you to start a dialogue about the licensing of Kudelski’s patent portfolio to certain
`aspects of Comcast’s pay television and over-the-top video services.” Mr. Gaetje stated that
`“there is another company with whom we will soon either conclude an agreement or litigate” and
`that “if Comcast meaningfully engages with us beforehand, we can maintain Comcast’s status as
`an early licensee. If not, then any deal we strike with Comcast will be largely dictated by the
`other license or the litigation.”
`20.
`On November 3, 2015, following a response from Mr. Marcus, Mr. Gaetje stated
`that Kudelski Group’s “goal” was to enter into discussions toward a “patent cross license
`between the companies,” and offered to demonstrate the alleged “applicability of a representative
`set of our patents to Comcast’s pay television service (particularly as implemented with respect
`to set-top boxes provided by Pace), TV Everywhere services such as XFINITY TV Go, NBC
`Universal streaming services, and other services,” including by providing “detailed claim
`charts.” The email also stated that Nagra recently filed litigation against Verizon and enclosed
`that complaint.
`21.
`On November 12, 2015, Mr. Gaetje emailed Mr. Marcus and attached a
`presentation for Mr. Marcus’ review. In the email Mr. Gaetje asserted that the presentation
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`Case 3:16-cv-06180-WHA Document 84 Filed 03/20/17 Page 6 of 21
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`addressed “our patent portfolio as a whole” and included “15 representative patents, covering
`most aspects of Comcast’s video delivery and advertising services” including “Xfinity, X1,
`i-Guide, Xfinity DVR, X1 voice control, Whole Home DVR, Xfinity TV Anywhere,
`Xfinity.TV.Net, Spotlight, ad insertion, and others.” The email further asserted that he could
`provide claim charts as discussions progressed but was unable to do so without a non-disclosure
`agreement because of the litigation against Verizon. The email also asserted that the materials
`“should be sufficient to allow [Comcast] to understand the general basis for the assertion, and the
`breadth of the products and services implicated” and represented that “[n]one of the patents are
`being asserted against equipment or services provided by either Cisco or Arris.” Mr. Goetje also
`stated in the email that “[w]e suspect that these materials will take you some time to review.”
`22. Mr. Gaetje copied Greg Lundell, another attorney at Nagra USA, on his
`November 12, 2015, email. Upon information and belief, both Mr. Gaetje and Mr. Lundell are
`registered with the California State Bar and have a working address at Nagra USA in Mountain
`View, California.
`23.
`A true and correct copy of the presentation attached to Mr. Gaetje’s November
`12, 2015, email is attached as Exhibit 1 (the “November Presentation”). The November
`Presentation included a section entitled “Exemplary Patents Relevant to Comcast” and
`represented that “none of the patents in the following analysis are being asserted against
`equipment or services provided by either Cisco or Arris to Comcast or for use in the Comcast
`system.” The November Presentation identified 15 patents, including nine of the Asserted
`Patents, reproduced the text of specific claims, and purported to identify a “claim mapping” for
`each patent against Comcast products or services. The November Presentation further identified
`various purported service provider customers of Kudelski, including pay television providers like
`Comcast (e.g., “Suddenlink,” “Cable ONE,” “Midcontinent”), and Comcast Cable
`Communications, LLC subsidiary “Comcast Spotlight.”
`24.
`The November Presentation also identified U.S. Patent Number 6,148,081 (the
`“’081 Patent”), which was also asserted against Apple, Inc., as purportedly “mapping” to
`Comcast’s products and services. However, on January 28, 2016, Judge Edward Davila in the
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`Case 3:16-cv-06180-WHA Document 84 Filed 03/20/17 Page 7 of 21
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`Northern District of California found claims of the ’081 Patent and another OpenTV patent
`invalid for being directed to patent-ineligible subject matter under 35 U.S.C. § 101.
`25.
`In a January 5, 2016 email to Mr. Marcus, cc’ing Mr. Lundell, Mr. Goetje
`confirmed an in-person meeting for January 28, 2016 (the “January 28 Meeting”) and stated that
`“[w]e hope the materials we’ve sent so far provide an indication of the type, breadth, and depth
`of our patent portfolio.” The January 28 Meeting was attended by Comcast employees,
`including David Marcus, and representatives for Defendants, including Mr. Gaetje and Mr.
`Lundell. At this meeting, Defendants withdrew their assertion of the ’081 Patent in anticipation
`of the ruling from Judge Davila. But Defendants expressly stated again that the Kudelski Group
`believed its entire patent portfolio was applicable to pay television providers including Comcast,
`and that Kudelski Group was seeking a patent portfolio cross-license with Comcast.
`26.
`At the January 28 Meeting, Defendants presented their allegations relating to a
`subset of the fifteen patents included in the November Presentation. U.S. Patent Nos. 7,069,579
`(the “’579 Patent”), 7,661,117 (the “’117 Patent”), 6,018,768 (the “’768 Patent”), 6,006,256 (the
`“’256 Patent”), and 7,669,212 (the “’212 Patent”), which had been in the November 12
`presentation, were not included in the January 28 presentation. Defendants indicated they did
`not intend to discuss those patents further.
`27.
`Defendants also identified the ’082 Patent for the first time, and in the
`Presentation provided the text of claim 27 of that patent, purported to identify a “claim mapping”
`of that patent against “Comcast’s ability to make precise audience measurements,” and indicated
`that a “representative claim chart” would be “illustrated.”
`28.
`Defendants have not withdrawn their allegations regarding Comcast’s purported
`infringement of the Asserted Patents.
`29.
`Further demonstrating Defendants’ pattern of litigation, OpenTV, Inc., filed suit
`on March 16, 2016, against Hulu LLC in the Central District of California, Case No. 2:16-cv-
`1785, which includes allegations of infringement by Hulu of the ’327 and ’139 patents at issue
`here.
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`Case 3:16-cv-06180-WHA Document 84 Filed 03/20/17 Page 8 of 21
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`30.
`Finally, on December 5, 2016, Nagravision filed suit against various Comcast
`entities in the Eastern District of Texas alleging infringement of the ʼ720 Patent, the ʼ740 Patent,
`and the ʼ188 Patent.
`31.
`Because Defendants assert rights under the Asserted Patents based on identified
`ongoing activities of Comcast, and Comcast contends that it has the right to engage in the
`accused activities without a license, there is a substantial, justiciable controversy between
`Comcast and Defendants sufficient to warrant a declaratory judgment of their respective rights
`and duties.
`32.
`In view of the correspondence and communication with Comcast—and in light of
`Defendants’ pattern of conduct with other companies, its stated efforts to monetize its intellectual
`property, and its filing suit against Comcast alleging infringement of three patents—a threat of
`actual and imminent injury exists to Comcast that can be redressed by judicial relief, and that
`injury is sufficiently immediate and real to warrant the issuance of a declaratory judgment. Such
`injury includes, among other things, uncertainty as to whether the development, use, and sale of
`Comcast products and services will be free from infringement claims based on each of the
`Asserted Patents. Absent a declaration of noninfringement, Defendants will wrongfully assert
`the Asserted Patents against Comcast’s products and services, and will thereby cause Comcast
`irreparable injury and damage.
`VENUE AND INTRADISTRICT ASSIGNMENT
`33.
`Venue is proper in this district pursuant to 28 U.S.C. § 1391(b) because OpenTV
`resides in this district and Nagravision resides in the State of California. In addition, a
`substantial part of the events giving rise to the claims at issue occurred in this district and
`Defendants are subject to personal jurisdiction within this district.
`34.
`Pursuant to Civil Local Rules 3-5(b) and 3-2(c), intellectual property actions are
`assigned on a district-wide basis.
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`Case 3:16-cv-06180-WHA Document 84 Filed 03/20/17 Page 9 of 21
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`THE PATENTS
`U.S. Patent No. 7,900,229
`35.
`The ’229 Patent is titled “Convergence of interactive television and wireless
`technologies.” The ’229 Patent states that it was issued to Vincent Dureau of Palo Alto,
`California. A true and correct copy of the ’229 Patent is attached as Exhibit 2.
`36.
`The original assignee of the ’229 Patent identified on the patent’s face is
`OPENTV, Inc., of San Francisco, California. On information and belief, OpenTV claims to be
`the current owner by assignment of all right, title, and interest in the ’229 Patent.
`U.S. Patent No. 6,895,595
`37.
`The ’595 Patent is titled “Module manager for interactive television system.” The
`’595 Patent states that it was issued to Andrew Goodman of Menlo Park, California, and Jean
`Rene Menand of Palo Alto, California. A true and correct copy of the ’595 Patent is attached as
`Exhibit 3.
`38.
`The original assignee of the ’595 Patent identified on the patent’s face is OpenTV,
`Inc., of San Francisco, California. On information and belief, OpenTV claims to be the current
`owner by assignment of all right, title, and interest in the ’595 Patent.
`U.S. Patent No. 6,725,461
`39.
`The ’461 Patent is titled “Reminder system for broadcast and non-broadcast
`events based on broadcast interactive applications.” The ’461 Patent states that it was issued to
`Brian P. Dougherty of Lafayette, California, and Allan C. Thygesen and Michael Capuano of
`Menlo Park, California. A true and correct copy of the ’461 Patent is attached as Exhibit 4.
`40.
`The original assignee of the ’461 Patent identified on the patent’s face is Wink
`Communications, Inc., of Alameda, California. On information and belief, OpenTV claims to be
`the current owner by assignment of all right, title, and interest in the ’461 Patent.
`U.S. Patent No. 5,907,322
`41.
`The ’322 Patent is titled “Television event marking system.” The ’322 Patent
`states that it was issued to Gregory Kelly and Kenneth Goldberg of San Francisco, California;
`John Gee of Auburn, California; Phillip Levinson of Los Altos Hills, California; and Scott
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`Fullam of Mountain View, California. A true and correct copy of the ’322 Patent is attached as
`Exhibit 5.
`42.
`The original assignee of the ’322 Patent identified on the patent’s face is Catch
`TV Acquisition Corp. of Burlingame, California. On information and belief, OpenTV claims to
`be the current owner by assignment of all right, title, and interest in the ’322 Patent.
`U.S. Patent No. 6,985,586
`43.
`The ’586 Patent is titled “Distributed information and storage system.” The ’586
`Patent states that it was issued to Michael John Hill of Coppet, Switzerland. A true and correct
`copy of the ’586 Patent is attached as Exhibit 6.
`44.
`The original assignee of the ’586 Patent identified on the patent’s face is
`Nagracard S.A. of Cheseax-sur-Lausanne, Switzerland. On information and belief, Nagravision
`claims to be the current owner by assignment of all right, title, and interest in the ’586 Patent.
`U.S. Patent No. 6,345,389
`45.
`The ’389 Patent is titled “Interactive television system and method for converting
`non-textual information to textual information by a remote server.” The ’389 Patent states that it
`was issued to Vincent Dureau of Palo Alto, California. A true and correct copy of the ’389
`Patent is attached as Exhibit 7.
`46.
`The original assignee of the ’389 Patent identified on the patent’s face is OpenTV,
`Inc., of Mountain View, California. On information and belief, OpenTV claims to be the current
`owner by assignment of all right, title, and interest in the ’389 Patent.
`U.S. Patent No. 6,799,328
`47.
`The ’328 Patent is titled “Dynamic event information table schedule window.”
`The ’328 Patent states that it was issued to Felix Freimann of Sunnyvale, California, Jino
`Nguyen of Mountain View, California, and Jean-Rene Menand of Palo Alto, California. A true
`and correct copy of the ’328 Patent is attached as Exhibit 8.
`48.
`The original assignee of the ’328 Patent identified on the patent’s face is OpenTV,
`Inc., of San Francisco, California. On information and belief, OpenTV claims to be the current
`owner by assignment of all right, title, and interest in the ’328 Patent.
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`COMCAST’S SECOND AMENDED COMPLAINT
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`Case 3:16-cv-06180-WHA Document 84 Filed 03/20/17 Page 11 of 21
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`U.S. Patent No. 7,028,327
`49.
`The ’327 Patent is titled “Using the electronic program guide to synchronize
`interactivity with broadcast programs.” The ’327 Patent states that it was issued to Brian P.
`Dougherty of Lafayette, California, and C. Leo Meier of Berkeley, California. A true and correct
`copy of the ’327 Patent is attached as Exhibit 9.
`50.
`The original assignee of the ’327 Patent identified on the patent’s face is Wink
`Communication of Alameda, California. On information and belief, OpenTV claims to be the
`current owner by assignment of all right, title, and interest in the ’327 Patent.
`U.S. Patent No. 7,243,139
`51.
`The ’139 Patent is titled “Enhanced video programming system and method for
`incorporating and displaying retrieved integrated Internet information segments.” The ’139
`Patent states that it was issued to Craig Ullman, Jack D. Hidary, and Nova T. Spivack, all of
`New York. A true and correct copy of the ’139 Patent is attached as Exhibit 10.
`52.
`The original assignee of the ’139 Patent identified on the patent’s face is Open TV
`Corporation of San Francisco, California. On information and belief, OpenTV claims to be the
`current owner by assignment of all right, title, and interest in the ’139 Patent.
`U.S. Patent No. 6,530,082
`53.
`The ’082 Patent is titled “Configurable monitoring of program viewership and
`usage of interactive applications.” The ’082 Patent states that it was issued to Eric E. Del Sesto
`of Alameda, California, Timothy V. Travaille of Bellevue, Washington, Christopher J. Michel of
`Burbank, California, and Jana J. Paquette of Oakland, Maine. A true and correct copy of the
`’082 Patent is attached as Exhibit 11.
`54.
`The original assignee of the ’082 Patent identified on the patent’s face is Wink
`Communications, Inc., of Alameda, California. On information and belief, OpenTV claims to be
`the current owner by assignment of all right, title, and interest in the ’082 Patent.
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`Case No. 3:16-cv-6180-WHA
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`COMCAST’S SECOND AMENDED COMPLAINT
`FOR DECLARATORY JUDGMENT
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`Case 3:16-cv-06180-WHA Document 84 Filed 03/20/17 Page 12 of 21
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`CLAIMS FOR RELIEF
`COUNT I
`Declaratory Judgment of Noninfringement of U.S. Patent No. 7,900,229
`55.
`Paragraphs 1-54 are incorporated herein by reference.
`56.
`Comcast has not infringed and does not infringe any claim of the ’229 Patent,
`either directly or indirectly, literally or under the doctrine of equivalents, including through the
`use of user activity and data for advertising accused of infringement in the November 12, 2015,
`presentation. For example, the accused service does not meet at least the limitation of
`“transmitting data to a user responsive to the second user activity, wherein the transmitted data is
`based at least in part on the user profile, and wherein the first user activity affects a content of
`said data transmitted to the user responsive to the second user activity.” Comcast does not meet
`this requirement at least because Comcast does not transmit TV data to a Set-Top Box user based
`on a user profile and the Comcast Set-Top Box does not track individual user activity or update a
`user profile.
`57.
`As set forth above, an actual controversy exists between Comcast and Defendants
`with respect to infringement of the ’229 Patent and this controversy is likely to continue.
`Accordingly, Comcast desires a judicial determination and declaration of the respective rights
`and duties of the parties with respect to the ’229 Patent.
`58.
`Such a declaration is necessary and appropriate at this time in order that the
`parties may ascertain their respective rights and duties with respect to the matters set forth above.
`COUNT II
`Declaratory Judgment of Noninfringement of U.S. Patent No. 6,895,595
`59.
`Paragraphs 1-58 are incorporated herein by reference.
`60.
`Comcast has not infringed and does not infringe any claim of the ’595 Patent,
`either directly or indirectly, literally or under the doctrine of equivalents, including by providing,
`making, using, offering for sale, or selling the Comcast Xfinity playback with Restart service
`accused of infringement in the November 12, 2015, presentation. For example, the accused
`service does not meet at least the requirement of “storing . . . one or more requests generated by
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`Case No. 3:16-cv-6180-WHA
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`- 11 -
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`COMCAST’S SECOND AMENDED COMPLAINT
`FOR DECLARATORY JUDGMENT
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`

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`Case 3:16-cv-06180-WHA Document 84 Filed 03/20/17 Page 13 of 21
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`said interactive television application for one or more corresponding requested interactive
`television application modules.” No requests are generated by an interactive television
`application for interactive television application modules on a Comcast Set-Top Box. Further,
`no such requests are stored on Comcast Set-Top Boxes.
`61.
`As set forth above, an actual controversy exists between Comcast and Defendants
`with respect to infringement of the ’595 Patent and this controversy is likely to continue.
`Accordingly, Comcast desires a judicial determination and declaration of the respective rights
`and duties of the parties with respect to the ’595 Patent.
`62.
`Such a declaration is necessary and appropriate at this time in order that the
`parties may ascertain their respective rights and duties with respect to the matters set forth above.
`COUNT III
`Declaratory Judgment of Noninfringement of U.S. Patent No. 6,725,461
`63.
`Paragraphs 1-62 are incorporated herein by reference.
`64.
`Comcast has not infringed and does not infringe any claim of the ’461 Patent,
`either directly or indirectly, literally or under the doctrine of equivalents, including by providing,
`making, using, offering for sale, or selling Comcast’s i-Guide reminder service accused of
`infringement in the November 12, 2015, presentation. For example, because the data relating to
`reminders is not stored in memory in Comcast’s Set-Top Boxes, the accused service does not
`meet at least the limitation of “storing in the local memory of the broadcast receiver reminder
`data for the future broadcast, including data for determining a future time to display the reminder
`and a description of the future broadcast.” For the same reason, the accused service does not
`meet the limitation of “storing in the local memory of the broadcast receiver reminder data,
`including data for determining a future time to display the reminder, and a description of the
`broadcast program.”
`65.
`As set forth above, an actual controversy exists between Comcast and Defendants
`with respect to infringement of the ’461 Patent and this controversy is likely to continue.
`Accordingly, Comcast desires a judicial determination and declaration of the respective rights
`and duties of the parties with respect to the ’461 Patent.
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`Case No. 3:16-cv-6180-WHA
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`- 12 -
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`COMCAST’S SECOND AMENDED COMPLAINT
`FOR DECLARATORY JUDGMENT
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`

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`Case 3:16-cv-06180-WHA Document 84 Filed 03/20/17 Page 14 of 21
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`66.
`Such a declaration is necessary and appropriate at this time in order that the
`parties may ascertain their respective rights and duties with respect to the matters set forth above.
`COUNT IV
`Declaratory Judgment of Noninfringement of U.S. Patent No. 5,907,322
`67.
`Paragraphs 1-66 are incorporated herein by reference.
`68.
`Comcast has not infringed and does not infringe any claim of the ’322 Patent,
`either directly or indirectly, literally or under the doctrine of equivalents, including by providing,
`making, using, offering for sale, or selling its Xfinity DVR service accused of infringement in
`the November 12, 2015, presentation. For example, the accused service does not meet at least
`the limitations of “detecting . . . an associated date and time data from a real time clock circuit”
`or “storing the detected date and time data and the detected channel data as an activity record in
`an activity table.” During prosecution of the ’322 Patent, and in order to obtain allowance of the
`application that became the ’322 Patent over the prior art, the applicant argued that the date,
`time, and channel data are all locally retrieved and come from local circuits. ’322 Patent
`Prosecution History,