Case 3:17-cv-05583-VC Document 1 Filed 09/26/17 Page 1 of 8
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`Jeannine Sano (174190)
`jsano@whitecase.com
`Eric Krause (257925)
`ekrause@whitecase.com
`White & Case LLP
`3000 El Camino Real
`Five Palo Alto Square, 9th Floor
`Palo Alto, CA 94306-2109
`Telephone: (650) 213-0356
`Facsimile: (650) 213-8158
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`Attorneys for Plaintiff
`GOOGLE INC.
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`GOOGLE INC.,
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`Plaintiff,
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`Case No.
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`v.
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`PERSONAL AUDIO, LLC,
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`Defendant.
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`
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`COMPLAINT FOR
`DECLARATORY JUDGMENT
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`DEMAND FOR JURY TRIAL
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`Plaintiff Google Inc. (“Google”) alleges as following as its Complaint against Defendant
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`Personal Audio, LLC (“PA LLC”):
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`NATURE OF THE ACTION
`1. This is an action for declaratory judgment of non-infringement and invalidity of
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`U.S. Patent No. 6,199,076 (“’076 patent”) and U.S. Patent No. 7,509,178 (“’178 patent”) arising
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`under the Declaratory Judgment Act, 28 U.S.C. §§ 2201-02, and the patent laws of the United
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`States, 35 U.S.C. §§ 1, et seq. True and correct copies of the’076 patent and ’178 patent are
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`attached as Exhibits 1 and 2. Both patents expired on October 2, 2016.
`2.
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`Google requests this relief because PA LLC has alleged in a complaint filed in the
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`Eastern District of Texas that Google infringed certain claims of the ’076 and ’178 patents. See,
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`e.g., PA LLC’s Am. Compl. ¶¶ 73, 81 (“Defendant directly infringes the ’076 patent[/’178 patent]
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`Case 3:17-cv-05583-VC Document 1 Filed 09/26/17 Page 2 of 8
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`by making, using, offering to sell, and selling Google tablets and phones incorporating Google
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`Play Music in violation of 35 U.S.C. § 271(a).”). A true and correct copy of PA LLC’s First
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`Amended Complaint filed in the Eastern District of Texas is attached as Exhibit 3. Google has
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`moved to dismiss PA LLC’s amended complaint for improper venue in view of the Supreme
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`Court’s ruling in TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017).
`3.
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`An actual and justiciable controversy therefore exists under 28 U.S.C. §§ 2201-02
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`between Google and PA LLC as to whether the accused audio player devices with Google Play
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`Music are licensed, whether Google and Google Play Music infringed the asserted claims of the
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`’076 and ’178 patents, and whether the asserted claims of the ’076 and ’178 patents are invalid.
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`PARTIES
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`4.
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`Google is a Delaware corporation, headquartered at 1600 Amphitheatre Parkway,
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`Mountain View, California 94043. Google created Google Play Music.
`5.
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`On information and belief, PA LLC is a limited liability company organized and
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`existing under the laws of the State of Texas, with an office location at 550 Fannin Street, Suite
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`1313, Beaumont, Texas 77701. PA LLC is in the business of licensing patents through litigation
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`and has one employee, Brad Liddle, Plaintiff’s CEO and General Counsel. PA LLC does not
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`make or sell any products.
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`JURISDICTION AND VENUE
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`6.
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`Google files this complaint against PA LLC pursuant to the patent laws of the
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`United States, Title 35 of the United States Code, with a specific remedy sought based upon the
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`laws authorizing actions for declaratory judgment in the federal courts of the United States, 28
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`U.S.C. §§ 2201 and 2202, and under the patent laws of the United States, 35 U.S.C. §§ 1-390.
`7.
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`This Court has subject matter jurisdiction over this action, which arises under the
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`patent laws of the United States, pursuant to 28 U.S.C. §§ 1331, 1338(a), and 2201(a).
`8.
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`This Court has personal jurisdiction over PA LLC, which has taken specific
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`actions in California, including in the Northern District of California. On information and belief,
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`PA LLC has purposefully availed itself of the privileges and protections of this District by
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`systematically pursuing patent enforcement activities and negotiating and entering into license
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`Case 3:17-cv-05583-VC Document 1 Filed 09/26/17 Page 3 of 8
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`agreements with entities and individuals residing in California and in this District, including the
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`’076 and ’178 patents, with sufficient contacts with California and this District to be subject to
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`personal jurisdiction in this District.
`9.
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`Specifically, on information and belief, PA LLC has contacted and negotiated with
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`numerous entities or individuals located in this District between 2009 and 2017, including Google
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`in Mountain View, California, with demands to obtain patent licenses to the ’076 and ’178
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`patents. On information and belief, PA LLC has settled patent infringement actions involving the
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`asserted patents and thereby licensed, or effectively licensed, at least Acer, Apple, Inc.,
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`ASUSTek, Fuhu, Fujitsu, Huawei, Microsoft, Motorola Mobility, Inc. (formerly a subsidiary of
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`Google Inc.), and Samsung, all of which have offices in the Northern District of California.
`10.
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`Based on the Supreme Court’s decision in TC Heartland, the undisputed fact that
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`Google does not reside in the Eastern District of Texas, and PA LLC’s admission that it “never
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`pled … [that Google] has a ‘regular and established place of business’ in the Eastern District of
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`Texas,” see Personal Audio, LLC v. Google Inc., No. 1:15-cv-00350-RC, Opp’n Mot. Dismiss at
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`7, ECF No. 53, this dispute should be resolved in this District, where venue is proper.
`11.
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`Venue in this District is proper under 28 U.S.C. § 1391(b) because PA LLC is
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`subject to personal jurisdiction in this District, a substantial part of the events giving rise to
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`Google’s declaratory judgment claim of non-infringement, such as the development of Google
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`Play Music, occurred in this District. On information and belief, many of Plaintiff’s licensing and
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`enforcement activities involving the ’076 and ’178 patents also occurred in this District.
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`INTRADISTRICT ASSIGNMENT
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`12.
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`Pursuant to Civil L.R. 3-2(c) and 3-5(b), this is an Intellectual Property Action
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`subject to assignment on a district-wide basis.
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`FACTUAL BACKGROUND
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`13.
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`Google has been headquartered in this District since its founding. Google is
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`currently headquartered at 1600 Amphitheatre Parkway, Mountain View, California 94043,
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`located in this District. The majority of the Google engineers who work on Google Play Music
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`are located at Google’s headquarters in Mountain View, California or Google’s offices in San
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`Case 3:17-cv-05583-VC Document 1 Filed 09/26/17 Page 4 of 8
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`Bruno, California, also located in this District. The source code and documentation related to
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`Google Play Music is maintained at Google’s Mountain View headquarters or Google’s offices in
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`San Bruno as well.
`14.
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`On information and belief, PA LLC is a patent holding company whose sole
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`business is patent monetization, including activities related to licensing as well as other legal and
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`extrajudicial enforcement and/or defense of the validity of its patents.
`15.
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`Each claim of the ’076 and ’178 patent is directed to an apparatus (an audio player
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`device) and cannot be infringed solely by a software program.
`16.
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`In the action filed by PA LLC against Google in the Eastern District of Texas on
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`September 15, 2015, Personal Audio LLC v. Google Inc., Case No. 1:15-cv-00350-RC, PA LLC
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`has asserted claims 1-3, 5, 6, 13-15 of the ’076 patent and claims 1-21, 28, 29 of the ’178 patent,
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`which include claims that have been deemed unpatentable by the Patent Trial and Appeal Board.
`17.
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`In its action against Google pending in the Eastern District of Texas, PA LLC
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`identified dozens of device manufacturers that purportedly make, offer for sale, or sell audio
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`player devices in the United States or import audio player devices into the United States, which
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`allegedly include the Google Play Music application, but has only provided specific infringement
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`allegations for three devices: Google Pixel C Tablet, Sony Xperia Z3, and Blu Products Life XL.
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`A true and correct copy of PA LLC’s infringement contentions are attached as Exhibit 4.
`18.
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`PA LLC has licensed, or effectively licensed, the ’076 and ’178 patents to at least
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`the following companies: Acer, Amazon Digital Services, Apple, Inc., Apollo Brands, Archos,
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`ASUSTek, Azpen Innovation, Barnes & Noble, Inc., BlackBerry (formerly known as Research In
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`Motion), Coby Electronics, Fuhu, Fujitsu, HTC, Huawei, Lenovo, LG, Microsoft, Motorola
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`Mobility, Inc., Samsung, Sirius XM, Toshiba, XM Satellite Radio, and ZTE. See Summit Data
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`Sys., LLC v. EMC Corp., Case No. 10-749-GMS (D. Del. Sept. 25, 2014) (rejecting patent
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`plaintiff’s contention that given the accused infringer’s market size, it would be reasonable to
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`assume infringement in some non-licensed configuration and holding that accused infringer “need
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`not establish an affirmative defense [of license] when Summit’s sole theory of infringement was
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`unfounded”).
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`Case 3:17-cv-05583-VC Document 1 Filed 09/26/17 Page 5 of 8
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`19.
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`On information and belief, the Google Pixel C Tablet, Blu Products Life XL, and
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`the Sony Xperia Z3 are products that PA LLC has already licensed.
`20.
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`No version of Google Play Music directly or indirectly infringes any asserted
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`claim of the ’076 patent or the ’178 patent.
`21.
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`Google does not directly or indirectly infringe any asserted claim of the ’076
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`patent or the ’178 patent.
`22.
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`No third party infringes any asserted claim of the ’076 patent or the ’178 patent by
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`installing or using Google Play Music in any accused audio player devices. Google has not
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`caused, directed, requested, or facilitated any infringement and has not had any specific intent to
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`do so. Google Play Music is not designed for use in any combination that would infringe any
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`asserted claim of the ’076 patent or the ’178 patent. Furthermore, PA LLC has admitted that
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`Google Play Music has substantial uses that do not infringe any asserted claim of the ’076 patent
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`or the ’178 patent.
`23.
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`The asserted claims of the ’076 patent and the ’178 patent, as properly construed,
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`are invalid for failure to meet one or more of the requirements for patentability under 35 U.S.C.
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`§§ 101, 102, 103, and/or 112.
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`COUNT I:
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`DECLARATORY JUDGMENT OF LICENSE
`Google hereby restates and incorporates by reference the allegations set forth in
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`24.
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`paragraphs 1 through 23 of this Complaint as though fully repeated and set forth herein.
`25.
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`PA LLC purports to own all rights, title, and interest by assignment in the ’076
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`patent and ’178 patent, which have been extensively licensed.
`26.
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`In its amended complaint filed in the wrong venue, PA LLC has alleged that
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`Google directly and indirectly infringes the ’076 patent and the ’178 patent. See, e.g., Ex. 3 ¶¶
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`73-74, 81-82.
`27.
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`An actual and justiciable controversy exists between Google and PA LLC
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`regarding whether any of the accused devices that allegedly contain the Google Play Music
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`application are licensed as a result of PA LLC’s patent licenses. A judicial declaration is
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`Case 3:17-cv-05583-VC Document 1 Filed 09/26/17 Page 6 of 8
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`necessary to determine the respective rights of the parties regarding these patents and licenses.
`28.
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`Google seeks a judgment declaring that all accused devices with Google Play
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`Music made, offered for sale, sold, or imported into the United States are licensed.
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`COUNT II:
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`’076 PATENT DECLARATORY JUDGMENT OF NON-INFRINGEMENT
`29.
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`Google hereby restates and incorporates by reference the allegations set forth in
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`paragraph 1 through 23 of this Complaint as though fully repeated and set forth herein.
`30.
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`In its amended complaint filed in the wrong venue, PA LLC has alleged that
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`Google directly and indirectly infringes the ’076 patent. See, e.g., Ex. 3 ¶¶ 73-74.
`31.
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`An actual and justiciable controversy therefore exists between Google and PA
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`LLC regarding whether any of the accused devices that contain the Google Play Music
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`application have infringed any of the asserted claims of the ’076 patent. A judicial declaration is
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`necessary to determine the respective rights of the parties regarding the ’076 patent.
`32.
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`Google seeks a judgment declaring that Google and Google Play Music did not
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`directly or indirectly infringe any of the asserted claims of the ’076 patent.
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`COUNT III:
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`’178 PATENT DECLARATORY JUDGMENT OF NON-INFRINGEMENT
`33.
`Google hereby restates and incorporates by reference the allegations set forth in
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`paragraphs 1 through 23 of this Complaint as though fully repeated and set forth herein.
`34.
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`PA LLC purports to own all rights, title, and interest by assignment in the expired
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`’178 patent.
`35.
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`In its amended complaint filed in the wrong venue, PA LLC has alleged that
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`Google directly and indirectly infringes the ’178 patent. See, e.g., Ex. 3 ¶¶ 81-82.
`36.
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`An actual and justiciable controversy therefore exists between Google and PA
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`LLC regarding whether any of the accused devices that contain the Google Play Music
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`application have infringed any of the asserted claims of the ’178 patent. A judicial declaration is
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`necessary to determine the respective rights of the parties regarding the ’178 patent.
`37.
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`Google seeks a judgment declaring that Google and Google Play Music did not
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`Case 3:17-cv-05583-VC Document 1 Filed 09/26/17 Page 7 of 8
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`directly or indirectly infringe any of the asserted claims of the’178 patent.
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`COUNT IV:
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`’076 PATENT DECLARATORY JUDGMENT OF INVALIDITY
`Google hereby restates and incorporates by reference the allegations set forth in
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`38.
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`paragraphs 1 through 23 of this Complaint as though fully repeated and set forth herein.
`39.
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`An actual and justiciable controversy therefore exists between Google and PA
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`LLC regarding whether the asserted claims of the ’076 patent are valid and enforceable. A
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`judicial declaration is necessary to determine the respective rights of the parties regarding the
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`’076 patent.
`40.
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`invalid.
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`Google seeks a judgment declaring that the asserted claims of the ’076 patent are
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`COUNT V:
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`’178 PATENT DECLARATORY JUDGMENT OF INVALIDITY
`Google hereby restates and incorporates by reference the allegations set forth in
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`41.
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`paragraphs 1 through 23 of this Complaint as though fully repeated and set forth herein.
`42.
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`An actual and justiciable controversy therefore exists between Google and PA
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`LLC regarding whether the asserted claims of the ’178 patent are valid and enforceable. A
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`judicial declaration is necessary to determine the respective rights of the parties regarding the
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`’178 patent.
`43.
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`invalid.
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`Google seeks a judgment declaring that the asserted claims of the ’178 patent are
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`PRAYER FOR RELIEF
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`WHEREFORE, Google prays for judgment as follows:
`A.
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`Declaring that Google Play Music does not infringe and Google has not directly or
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`indirectly infringed any of the asserted claims of the ’076 patent;
`B.
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`Declaring that Google Play Music does not infringe and Google has not directly or
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`indirectly infringed any of the asserted claims of the ’178 patent;
`C.
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`Declaring that the accused devices with Google Play Music are licensed;
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`Case 3:17-cv-05583-VC Document 1 Filed 09/26/17 Page 8 of 8
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`D.
`E.
`F.
`G.
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`Declaring that the asserted claims of the ’076 patent are invalid;
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`Declaring that the asserted claims of the ’178 patent are invalid;
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`Declaring that judgment be entered in favor of Google and against PA LLC;
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`Enjoining PA LLC from claiming that Google, Google Play Music or any device
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`Finding that this is an exceptional case under 35 U.S.C. § 285;
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`with Google Play Music infringe the ’076 and ’178 patents;
`H.
`I.
`J.
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`Awarding Google its costs and attorneys’ fees in connection with this action; and
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`Awarding Google such other and further relief as the Court deems just and proper.
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`Google demands a jury trial on all issues and claims so triable.
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`JURY DEMAND
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`Dated: September 26, 2017
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`Respectfully submitted,
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`By: /s/ Eric Krause
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`Eric Krause
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