Case 3:19-cv-06352-EMC Document 1 Filed 10/04/19 Page 1 of 8
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`SHOOK, HARDY & BACON L.L.P.
`Jason M. Richardson
`One Montgomery, Suite 2600
`San Francisco, California 94104
`Telephone:
`415.544.1900
`Facsimile:
`415.391.0281
`
`Trent Webb (to be admitted pro hac vice)
`Ryan J. Schletzbaum (to be admitted pro hac vice)
`2555 Grand Blvd.
`Kansas City, MO 64108
`
`
`Attorneys for Apple Inc.
`Apple Inc.
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`
`Plaintiff,
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`APPLE INC.,
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`vs.
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`PRINCEPS INTERFACE TECHNOLOGIES
`LLC,
`
`
`Defendant.
`
`Case No. 19-cv-6352
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`COMPLAINT FOR DECLARATORY
`JUDGMENT OF NON-INFRINGEMENT
`OF U.S. PATENT NO. 6,703,963
`
`JURY TRIAL DEMANDED
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`Case 3:19-cv-06352-EMC Document 1 Filed 10/04/19 Page 2 of 8
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`Plaintiff Apple Inc. (“Apple”) files this Complaint for Declaratory Judgment of
`Noninfringement against Defendant Princeps Interface Technologies LLC (“Princeps” or
`“Defendant”), and in support of its Complaint alleges as follows:
`NATURE OF THE ACTION
`1.
`This is an action for a declaratory judgment of noninfringement arising under the
`patent laws of the United States, Title 35 of the United States Code.
`2.
`Apple is a leading designer and manufacturer of mobile communication devices,
`personal computers and portable digital media players. As a result of its significant investment in
`research and development, Apple has developed innovative technologies that have changed the face
`of the computing and telecommunications industries for four decades.
`3.
`Apple’s many pioneering and revolutionary products spanning its history include the
`Macintosh PC (first released in 1984), PowerBook (first released in 1991), Newton (first released
`in 1993), PowerMac (first released in 1994), iMac (first released in 1998), iPod (first released in
`2001), iTunes Store (opened in 2003), MacBook (first released in 2006), iPhone and Apple TV (first
`released in 2007), Apple App Store (opened in 2008), Siri (first released 2010), iPad (first released
`in 2010), Apple Watch (first released in 2015), and AirPods (first released in 2016).
`4.
`The United States Patent & Trademark Office has awarded Apple thousands of patents
`protecting the technological inventions underlying Apple’s groundbreaking products and services.
`Many well-known functionalities and features of Apple’s products were made possible with the
`inventions of Apple engineers.
`5.
`Defendant, on the other hand, is a patent assertion entity formed for the sole purpose
`of generating revenue by asserting patents against other companies’ products. Defendant’s prior
`actions and statements have created a substantial controversy of sufficient immediacy and reality to
`warrant the issuance of a declaratory judgment of noninfringement as to whether Apple products
`practice U.S. Patent No. 6,703,963 (“the ‘963 Patent” or “Asserted Patent”).
`6.
`Defendant has claimed, through claim charts and pleadings served on Apple, that
`certain Apple products infringe the ‘963 Patent. However, Apple’s products do not infringe the
`‘963 Patent, as detailed in the allegations below.
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`Case 3:19-cv-06352-EMC Document 1 Filed 10/04/19 Page 3 of 8
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`7.
`This Court should not allow the threat of a future lawsuit to harm and cause
`uncertainty to Apple’s business.
`
`THE PARTIES
`8.
`Apple is a California corporation having its principal place of business at One Apple
`Park Way, Cupertino, California 95014. Apple has over 20,000 employees who work in or near its
`headquarters in Cupertino, California.
`9.
`On information and belief, Princeps is a Delaware corporation with a place of business
`at Princeps Interface Technologies LLC, c/o Kustal and Kustal, P.C., 261 West 35th Street, Suite
`No. 1003, New York, New York 10001.
`JURISDICTION AND VENUE
`10. The Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. §§
`1331 and 1338(a) because this action involves claims arising under the patent laws of the United
`States, 35 U.S.C. § 1, et seq., and under the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201
`and 2202.
`11. Defendant is subject to personal jurisdiction in this Court because, on information and
`belief, Defendant has directed and continues to direct acts to this District, including acts pertaining
`to the Asserted Patent. For example, in connection with Defendant’s business, Defendant has
`targeted at least one other company located in this District by asserting infringement allegations in
`this District for the same ‘963 Patent at issue here. See Princeps Interface Techs. LLC v. ASUSTek
`Computer Inc., et al. Case No. 4-19-cv-04298-JSW (N.D. Cal.). For these reasons and for those
`stated below, Defendant has continuous and systematic contacts within the State of California,
`including this District, and has purposefully directed business activities into and in this District.
`12. Defendant served Apple with claim charts alleging that Apple’s iPhone X, iPhone 8,
`iPad, iPad Pro, iPad Air, and iPod Touch using Apple’s iOS operating system (the “Apple Accused
`Products”) sold or offered for sale in this District infringe at least claims 1-3, 9, 12, and 60 of the
`‘963 Patent. Furthermore, on information and belief, Defendant has engaged in conduct with other
`companies in efforts to monetize Defendant’s intellectual property through litigation, including at
`least one lawsuit in this District involving the same ‘963 Patent at issue here. See Princeps Interface
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`Case 3:19-cv-06352-EMC Document 1 Filed 10/04/19 Page 4 of 8
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`Techs. LLC v. ASUSTek Computer Inc., et al. Case No. 5-19-cv-04298-JSW (N.D. Cal.).
`Defendant’s Complaint in its lawsuit against ASUSTek Computer Inc. et al, acknowledges that the
`ASUS Computer International has its U.S. headquarters in Fremont, California, which is also in this
`District. Id., ECF. No. 1, at 2. Defendant’s conduct further includes serving claim charts and
`asserting infringement allegations for the ‘963 Patent against other corporations that have a principal
`place of business in this District, including Google LLC (headquarters located in Mountain View,
`California) and Samsung Semiconductor, Inc. (U.S. Regional Office located in San Jose,
`California). See Princeps Interface Techs. LLC v. Google LLC, et al., Case No. 1:19-cv-01102-
`CFC (D. Del.); Princeps Interface Techs. LLC v. Samsung Elecs. Co., Ltd, et al., Case No. 1:19-cv-
`01103-CFC (D. Del.). Defendant also asserts the above alleged infringers that all have principal
`places of business in this District (i.e., ASUS Computer International, Google LLC, Samsung
`Semiconductor, Inc.) infringe the same patent claims being asserted against Apple: claims 1-3, 9,
`12, and 60 of the ‘963 Patent.
`13. This Court also has personal jurisdiction over Defendant because Defendant has
`purposefully availed itself of the benefits of California law and has more than sufficient minimum
`contacts with California, including within this District, such that this declaratory judgment action
`meets the requirements of California’s long-arm statute.
`14. For example, Apple resides in this District and Defendant has alleged that Apple has
`committed acts of infringement in this District related to the Asserted Patent and the Apple Accused
`Products. This District is also the most convenient District for the present declaratory judgment
`claims because, among other things, witnesses and evidence concerning the Apple Accused
`Products are located in this District.
`15. Additionally, Defendant is subject to specific personal jurisdiction in this Court and
`has consented to venue in this Court for purposes of litigating the ‘963 Patent because Defendant
`has initiated litigation in this Court concerning the ’963 Patent. See Princeps Interface Techs. LLC
`v. ASUSTek Computer Inc., et al. Case No. 5-19-cv-04298-NC (N.D. Cal.).
`16. Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391(b) and 1391(c) because
`a substantial part of the events giving rise to the claims alleged in this Complaint occurred in this
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`Case 3:19-cv-06352-EMC Document 1 Filed 10/04/19 Page 5 of 8
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`District and Defendant is subject to the Court’s personal jurisdiction with respect to this civil action.
`17. For these reasons and the reasons set forth below, a substantial controversy exists
`between the parties which is of sufficient immediacy and reality to warrant declaratory relief.
`INTRADISTRICT ASSIGNMENT
`18. This is an intellectual property action subject to district-wide assignment pursuant to
`Local Rules 3-2(c) and 3-5(b).
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`THE ASSERTED PATENT
`19. On March 9, 2004, the United States Patent and Trademark Office (the “Patent
`Office”) issued the ‘963 Patent, entitled “Universal Keyboard” to Timothy B. Higginson. A true
`and correct copy of the ‘963 Patent is attached as Exhibit A. On information and belief, Princeps
`purports to own by assignment the ‘963 Patent.
`20. The ‘963 Patent issued from U.S. Patent Application No. 10/247,065 (“the ‘065
`Application”) filed on September 12, 2002.
`21. On June 20, 2003, the Patent Office rejected all claims in the ‘065 Application as
`either anticipated or obvious in view of the prior art.
`22.
`In response to this rejection, the applicant amended claim 1 of the ‘065 Application
`to require, among other things, that “the input keys and domain control are simultaneously presented
`by the input device.”
`23. Also in response to the Patent Office rejection, the applicant for the ‘065 Application
`argued that amended claim 1 was patentable over the prior art. In particular, the applicant stated:
`
`[I]n contrast to simultaneously presenting the input keys and domain (level) control,
`as recited in claims 1, 36, and 64, the Platte ‘949 patent discloses replacing a
`previously displayed set of input/level selection keys, including a selected input
`key that initiated displaying a next input key level, by a new set of input keys. Thus,
`even in the event that an input (e.g., PLAY) key in the Platte remote control device
`is considered the claimed ‘domain control,’ the selected ‘domain control’
`disappears from the input interface when the new set of input keys are presented on
`the input interface. Therefore, Platte does not disclose simultaneously presenting
`the input keys and the domain control (that selects one of multiple domain levels)
`as recited in amended claim 64 as well as claims 1 and 36.
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`Case 3:19-cv-06352-EMC Document 1 Filed 10/04/19 Page 6 of 8
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`COUNT ONE
`(Declaratory Judgment of Non-Infringement of U.S. Patent No. 6,703,963)
`24. Apple repeats and realleges Paragraphs 1 through 23 of this Complaint.
`25. Apple has not infringed and does not infringe at least claim 1 of the ‘963 Patent either
`directly, contributorily, or by inducement, literally or under the doctrine of equivalents, including
`through its making, use, importation into the United States, sale, and/or offer for sale of the Apple
`Accused Products.
`26. Claim 1 of the ‘963 Patent is directed to:
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`An information input device, comprising:
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` a
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` functional mode control for selecting a first functional mode of operation of
`multiple functional modes of operation by the input device;
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` a
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` domain control for selecting one of multiple domain levels within the first
`functional mode wherein each domain level is associated with a set of domain-
`level values;
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` a
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` plurality of input keys, separate and distinct from the domain control, assigned
`to the set of domain-level values associated with a selected domain level and
`functional mode, wherein each input key assigned to a domain-level value is
`associated with a signal, representative of the domain-level value, transmitted by
`the input device in response to actuation of the input key; and
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` a
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` function-specific display indicating a domain-level value associated with each
`input key for a currently selected functional mode and domain level combination,
`wherein the input keys and domain control are simultaneously presented by the
`input device. (Exhibit A, ‘963 Patent, at 13:28-49.)
`
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`27. The Apple Accused Products do not infringe at least claim 1 of the ‘963 Patent
`because the Apple Accused Products do not include every limitation required by claim 1. As one
`example, claim 1 requires the alleged input keys to be “separate and distinct from the domain
`control” and “assigned to the set of domain-level values associated with a selected domain level.”
`According to Defendant’s claim charts, the alleged “domain control(s)” in the Apple Accused
`Products are the Globe and Emoji symbols appearing in the lower left location on the iOS keyboard.
`Defendant’s claim charts further allege that the characters on the iOS keyboard are input keys.
`However, in the Apple Accused Products the iOS keyboard characters are not input keys that are
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`Case 3:19-cv-06352-EMC Document 1 Filed 10/04/19 Page 7 of 8
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`separate and distinct from the Globe and Emoji symbols and assigned to a set of domain-level values
`within the meaning of claim 1.
`28. Separately and additionally, the Apple Accused Products do not infringe at least claim
`1 of the ‘963 Patent because the Apple Accused Products do not include a function-specific display
`wherein the input keys and domain control are simultaneously presented by the input device. In
`order to overcome the examiner’s prior art rejections during prosecution, as explained above, the
`applicant amended claim 1 to require presenting the input keys and domain control simultaneously
`on the display and argued that the prior art did not disclose this limitation. According to Defendant’s
`infringement claim charts, the alleged “domain control(s)” in the Apple Accused Products are the
`Globe and Emoji symbols appearing in the lower left location on the iOS keyboard. Defendant’s
`claim charts further allege that the characters on the iOS keyboard are input keys. However, in the
`Apple Accused Products the iOS keyboard characters are not simultaneously displayed with the
`alleged associated domain control within the meaning of claim 1. For example, the Emoji symbol
`(i.e., accused as being a domain control) does not appear simultaneously with Emoji characters (i.e.,
`accused as being input keys).
`29. Accordingly, at least for the above reasons, the Apple Accused Products do not
`infringe at least claim 1 of the ‘963 Patent, either literally or under the doctrine of equivalents.
`30. Apple also does not induce infringement of the ‘963 Patent, or otherwise indirectly
`infringe the ‘963 Patent, for at least the reasons stated above there is no direct infringement of the
`‘963 Patent and because Apple has not acted with specific intent necessary for induced infringement.
`31. Apple also does not contributorily infringe at least claim 1 of the ‘963 patent for at
`least the reasons stated above there is no direct infringement of the ‘963 Patent and because the
`Accused Products have substantial non-infringing uses, including, at least, inputting text using a
`QWERTY keyboard.
`32. As set forth above, there exists an actual controversy between Apple and Defendant
`with respect to alleged infringement of the ‘963 Patent of sufficient immediacy and reality to warrant
`the issuance of a declaratory judgment as to whether the asserted claims of the ‘963 patent are
`infringed. Accordingly, Apple desires a judicial determination and declaration of the respective
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`Case 3:19-cv-06352-EMC Document 1 Filed 10/04/19 Page 8 of 8
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`rights and duties of the parties with respect to the ‘963 Patent.
`33. Apple is entitled to a judicial determination that Apple has not directly infringed,
`induced others to infringe, or contributed to the infringement of the asserted claims of the ‘963
`patent.
`34. A judicial declaration is necessary and appropriate so that Apple may ascertain its
`rights regarding the claims of the ’963 patent.
`PRAYER FOR RELIEF
`WHEREFORE, Apple respectfully requests that judgment be entered:
`A.
`Declaring that Apple has not and does not infringe, either directly, contributorily, by
`inducement, or willfully, any claim of the ‘963 patent by making, using, selling,
`offering to sell, and/or importing of the Apple Accused Products;
`B.
`Finding this to be an exceptional case under 35 U.S.C. § 285, and awarding Apple its
`reasonable attorney’s fees;
`C.
`Awarding Apple its costs associated with this case;
`D.
`Awarding Apple any other remedy or relief to which Apple may be entitled and which
`the Court deems just, proper, and equitable.
`JURY DEMAND
`Apple demands a trial by jury on all claims and issues so triable.
`October 4, 2019
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`Respectfully Submitted
`SHOOK, HARDY & BACON L.L.P.
`By: /s/ Jason Richardson
`
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`Attorney for Apple Inc.
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