Case 3:19-cv-06773 Document 1 Filed 10/18/19 Page 1 of 19
`
`
`
`
`
`Brandon Brown (SBN 266347)
`KIRKLAND & ELLIS LLP
`555 California Street
`San Francisco, California 94104
`Telephone: (415) 439-1400
`Facsimile: (415) 439-1500
`brandon.brown@kirkland.com
`
`Gregory S. Arovas (pro hac vice pending)
`Todd M. Friedman (pro hac vice pending)
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, NY 10022
`Telephone: (212) 446-4800
`Facsimile: (212) 446-4900
`Email: greg.arovas@kirkland.com
`Email: todd.friedman@kirkland.com
`
`David Rokach (pro hac vice pending)
`G. William Foster (pro hac vice pending)
`KIRKLAND & ELLIS LLP
`300 N. LaSalle Avenue
`Chicago, Illinois 60654
`Telephone: (312) 862-2000
`Facsimile: (312) 862-2200
`Email: david.rokach@kirkland.com
`Email: billy.foster@kirkland.com
`
`Attorneys for Plaintiffs
`Samsung Electronics Co., Ltd. and
`Samsung Electronics America, Inc.
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`
`
`
`CASE NO. _________________
`
`COMPLAINT FOR DECLARATORY
`JUDGMENT OF PRECLUSION,
`NONINFRINGEMENT, AND
`INVALIDITY
`
`DEMAND FOR JURY TRIAL
`
`
`))))))))))
`
`
`)
`)
`)
`)
`
`SAMSUNG ELECTRONICS CO., LTD and
`SAMSUNG ELECTRONICS AMERICA,
`INC.
`
`
`Plaintiffs,
`
`
`v.
`
`IXI MOBILE (R&D) LTD. and IXI IP,
`LLC,
`
`
`Defendants.
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`
`
`CASE NO. _____________
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:19-cv-06773 Document 1 Filed 10/18/19 Page 2 of 19
`
`
`
`Plaintiffs Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (collectively,
`“Samsung”) seek a declaratory judgment that res judicata1 bars Defendants IXI Mobile (R&D), Ltd.
`and IXI IP, LLC (collectively, “IXI”) from asserting U.S. Patent No. 7,039,033 (the “’033 Patent”)
`against Samsung. In the alternative, Samsung seeks a declaratory judgment that (1) Samsung does not
`infringe the ’033 Patent and (2) the ’033 Patent is invalid.
`
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action for a declaratory judgment arising under the patent laws of the United
`
`States, Title 35 of the United States Code. Samsung seeks a declaratory judgment that res judicata
`
`bars IXI from asserting the ’033 Patent against Samsung. In the alternative, Samsung seeks a
`
`declaratory judgment that Samsung does not infringe the ’033 Patent and that the ’033 Patent is invalid.
`
`PARTIES
`
`2.
`
`Samsung Electronics Corporation, Ltd. (“SEC”) is based in Seoul, South Korea. SEC
`
`designs and manufactures a wide variety of products, including cellular mobile devices.
`
`3.
`
`Samsung Electronics America, Inc. (“SEA”) is a New York corporation with its
`
`principal place of business at 105 Challenger Road, Ridgefield Park, New Jersey 07660.
`
`4.
`
`On information and belief, Defendant IXI Mobile (R&D) Ltd. (“IXI Mobile (R&D)”),
`
`formerly known as IXI Mobile (Israel) Ltd., is a company incorporated and registered under the laws
`
`of Israel with a registered address of 11 Moshe Levi Street Lezion 75658, Israel. On information and
`
`belief, IXI Mobile (R&D) is a subsidiary of non-party IXI Mobile, Inc. On information and belief, at
`
`the time the ’033 Patent was prosecuted, and until at least 2007, IXI Mobile, Inc. and its subsidiary
`
`IXI Mobile (R&D) were based in Belmont, California. IXI Mobile (R&D) has alleged that it
`
`previously owned the ’033 Patent, and that it now has an exclusive license to the ’033 Patent.
`
`
`
`1 “Res judicata” is also commonly known as “claim preclusion.” To avoid confusion with patent
`“claims,” Samsung uses the term res judicata in this Complaint.
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`
`
`1
`
`CASE NO. _____________
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:19-cv-06773 Document 1 Filed 10/18/19 Page 3 of 19
`
`
`
`5.
`
`On information and belief, Defendant IXI IP LLC (“IXI IP”) is a New York limited
`
`liability company with its principal place of business at 405 Lexington Avenue, New York, New York
`
`10174 and with a registered address for service of 1218 Central Avenue, Suite 100, Albany, New York
`
`12205. IXI IP has alleged that it is the owner of the ’033 Patent and has exclusively licensed the ’033
`
`Patent to IXI Mobile (R&D). On information and belief, IXI IP is a patent licensing entity formed in
`
`April 2014 that produces no products, and instead exists solely to assert IXI’s patents.
`
`IXI, FOUNDED IN CALIFORNIA, DEVELOPS, PROSECUTES, ENFORCES, AND
`LICENSES ITS PATENTS IN CALIFORNIA
`IXI Was Founded in California and Used California Counsel to Prosecute and
`Obtain the ’033 Patent
`
`A.
`
`6.
`
`On information and belief, IXI Mobile, Inc. was founded in 2000 and was
`
`headquartered in Redwood City or in Belmont, California, both of which are within this District. On
`
`information and belief, Defendant IXI Mobile (R&D), the alleged former owner and current exclusive
`
`licensee of the ’033 Patent, was a subsidiary of IXI Mobile, Inc., and was also located in Redwood
`
`City or in Belmont, California, within this District, until at least 2007. A true and correct copy of IXI
`
`Mobile, Inc.’s SEC Form 8-K Report dated August 12, 2008, listing the location of IXI Mobile, Inc.’s
`
`headquarters in Belmont, California, is attached hereto as Exhibit A (IXI Mobile, Inc., Current Report
`
`(Form 8-k) (Aug. 13, 2008)). IXI has alleged that during the time in which IXI Mobile, Inc. was
`
`headquartered in California, IXI Mobile, Inc. and its subsidiary IXI Mobile (R&D) designed,
`
`developed, and commercialized products, including the IXI Ogo family of mobile devices that IXI
`
`asserts practice the ’033 patent.
`
`7.
`
`On information and belief, IXI retained patent prosecution counsel in California to
`
`prosecute and secure the ’033 Patent. The ’033 Patent was prosecuted by the California law firm
`
`Vierra Magen Marcus Harmon & DeNiro LLP, located in San Francisco, California.
`
`8.
`
`The U.S. Patent and Trademark Office (“PTO”) issued the ’033 Patent, titled “System,
`
`Device and Computer Readable Medium for Providing Networking Services on a Mobile Device,” on
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`
`
`2
`
`CASE NO. _____________
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:19-cv-06773 Document 1 Filed 10/18/19 Page 4 of 19
`
`
`
`November 13, 2007. A true and correct copy of the ’033 Patent is attached as Exhibit B, which
`
`includes an Ex Parte Reexamination Certificate, issued February 1, 2018, that issued new and
`
`amended claims for the ’033 Patent, and an Inter Partes Review Certificate, issued January 16, 2019,
`
`that cancelled multiple claims of the ’033 Patent. Exhibit B (U.S. Patent No. 7,039,033).
`
`B.
`
`IXI Sued Samsung For Infringing Originally Issued Claims Of The ’033 Patent
`In A Case That Was Transferred To And Currently Remains Pending In The
`Northern District of California
`
`9.
`
`On June 17, 2014, IXI sued Samsung in the U.S. District Court for the Southern District
`
`of New York, alleging that Samsung devices that include “Wireless Hotspot” functionality (the
`
`“accused products”) infringe certain originally issued claims of the ’033 Patent. See Complaint, IXI
`
`Mobile (R&D) Ltd. et al. v. Samsung Elecs. Co., Ltd. et al, No. 1:14-cv-7954-RJS (S.D.N.Y. June 17,
`
`2014), Dkt. No. 1.
`
`10.
`
`IXI similarly sued Apple Inc. (“Apple”) and BlackBerry Limited and BlackBerry
`
`Corporation (collectively, “BlackBerry”), in the Southern District of New York for purportedly
`
`infringing the same patents. See IXI Mobile (R&D) Ltd. et al. v. Apple Inc., No. 1:14-cv-7954-RJS
`
`(S.D.N.Y. Oct. 2, 2014); IXI Mobile (R&D) Ltd. et al. v. Blackberry Ltd. et al., No. 1:14-cv-4428-RJS
`
`(S.D.N.Y. filed Jun. 18, 2014). IXI’s lawsuits against Samsung, Apple, and BlackBerry (the “2014
`
`Litigations”) were related, but not consolidated.
`
`11.
`
`On February 3, 2015, Samsung, Apple, and BlackBerry moved to transfer the 2014
`
`Litigations from the Southern District of New York to the Northern District of California. On August
`
`6, 2015, the Southern District of New York granted the motions and transferred the cases to the
`
`Northern District of California. See Opinion and Order, IXI Mobile (R&D) Ltd. et al. v. Apple Inc.,
`
`No. 1:14-cv-7954-RJS (S.D.N.Y. Aug. 6, 2015), Dkt. No. 79. All of the cases were assigned to Judge
`
`Gilliam. See IXI Mobile (R&D) Ltd. et al. v. Apple Inc., No. 4:15-cv-3755-HSG (N.D. Cal. filed Aug.
`
`17, 2015); IXI Mobile (R&D) Ltd. et al. v. Samsung Elecs. Co. et al., No. 4:15-cv-3752-HSG (N.D.
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`
`
`3
`
`CASE NO. _____________
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:19-cv-06773 Document 1 Filed 10/18/19 Page 5 of 19
`
`
`
`Cal. filed Aug. 17, 2015); IXI Mobile (R&D) Ltd. et al. v. Blackberry Ltd. et al., No. 4:15-cv-3754-
`
`HSG (N.D. Cal. filed Aug. 17, 2015)
`
`12.
`
`In the 2014 Litigations, Samsung, Apple, and BlackBerry deposed a California-based
`
`co-inventor of the ’532 and ’033 Patents in Palo Alto, California, which is within this District, on July
`
`1, 2015.
`
`C.
`
`13.
`
`Cancellation of IXI’s Originally Asserted Claims of the ’033 Patent
`
`On June 19, 2015, Samsung and Apple filed a petition for inter partes review (“IPR”)
`
`with the Patent Trial and Appeal Board (“PTAB”) on all of the originally issued claims of the ’033
`
`Patent asserted in the 2014 Litigations. Samsung Elecs. Co., Ltd. et al. v. IXI IP, LLC, No. IPR 2015-
`
`01444 (P.T.A.B. filed Jun. 19, 2015).
`
`14.
`
`On December 30, 2015, the PTAB instituted review of all of the challenged claims of
`
`the ’033 Patent in the IPR petition filed by Samsung and Apple. The PTAB subsequently found that
`
`all of the instituted claims were obvious.
`
`15.
`
`IXI appealed the PTAB’s final written decision regarding the ’033 Patent to the Federal
`
`Circuit. On September 10, 2018, the Federal Circuit affirmed the PTAB’s decision. IXI IP, LLC v.
`
`Samsung Elecs. Co., 903 F.3d 1257 (Fed. Cir. 2018). The PTO issued an IPR certificate cancelling
`
`the challenged claims of the ’033 Patent on January 16, 2019. Ex. B. at 29-30.
`
`D.
`
`Ex Parte Reexamination of the ’033 Patent and IXI’s Accusations Against
`Samsung for Infringement of Claims Involved in the Reexamination
`
`16.
`
`In March 2017, after the PTAB found all asserted claims of the ’033 Patent obvious,
`
`and during the pendency of IXI’s appeal of that decision to the Federal Circuit, IXI filed a request for
`
`ex parte reexamination of the ’033 Patent.
`
`17.
`
`On February 1, 2018, the ex parte reexamination of the ’033 Patent concluded, resulting
`
`in one amended claim (claim 56) and 68 new claims (claims 57 through 124) (collectively, the
`
`“Reexam Claims”). Ex. B at 24-28.
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`
`
`4
`
`CASE NO. _____________
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:19-cv-06773 Document 1 Filed 10/18/19 Page 6 of 19
`
`
`
`18.
`
`On March 7, 2019, IXI filed a motion in the 2014 Litigations to amend its preliminary
`
`infringement contentions to, inter alia, add unspecified Reexam Claims of the ’033 Patent. Defendants
`
`argued that IXI’s motion should be barred by res judicata or, alternatively, that IXI’s motion should
`
`be denied for failure to show “good cause.” IXI argued that res judicata does not preclude it from
`
`asserting the Reexam Claims of the ’033 Patent against Samsung and that IXI should be permitted to
`
`amend its infringement contentions. The Court denied IXI’s motion on October 11, 2019. The Court
`
`determined that IXI had not met its burden to amend its infringement contentions because: (1) IXI did
`
`not demonstrate sufficient diligence; and (2) Samsung would be unduly prejudiced by the amendment.
`
`The Court did not decide whether IXI’s new claims are barred by res judicata and stated that “[i]f
`
`Plaintiffs want to enforce their newly-minted claims, they can try to do so in a new case.” Therefore,
`
`there is a real and justiciable controversy between Plaintiffs and Samsung regarding the enforceability
`
`of the ’033 Patent against Samsung.
`
`JURISDICTIONAL STATEMENT
`
`19.
`
`This action arises under the Declaratory Judgment Act, 28 U.S.C. § 2201 et seq., and
`
`under the patent laws of the United States, Title 35 of the United States Code.
`
`20.
`
`This Court has subject matter jurisdiction over this action under 28 U.S.C. §§ 1331,
`
`1338(a), and 2201(a).
`
`21.
`
`This Court has personal jurisdiction over IXI Mobile (R&D). Among other things, on
`
`information and belief, IXI Mobile (R&D) was, at the time the ’033 Patent was prosecuted, based in
`
`this District and was a subsidiary of IXI Mobile, Inc., a California company. IXI Mobile (R&D) has
`
`also taken steps, in this District, to assert the ’033 Patent against Samsung.
`
`22.
`
`This Court also has personal jurisdiction over IXI IP. Among other things, on
`
`information and belief, IXI IP has purposefully directed development, prosecution, licensing, and
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`
`
`5
`
`CASE NO. _____________
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:19-cv-06773 Document 1 Filed 10/18/19 Page 7 of 19
`
`
`
`enforcement activities into California for its patents, including the ’033 Patent, which it allegedly
`
`exclusively licenses to IXI Mobile (R&D). See supra ¶¶ 3-8.
`
`23.
`
`Furthermore, counsel for IXI Mobile (R&D) and IXI IP conceded at the pre-motion
`
`conference on the motion to transfer that the Northern District of California was an “appropriate place”
`
`for its suit:
`
`THE COURT: Well, there’s no dispute that Northern District of California would be
`an appropriate place, right?
`[IXI’s COUNSEL]: There’s absolutely no dispute . . . .
`
`IXI Mobile (R&D) Ltd. v. Apple Inc., Case No. 4:15-cv-03755-HSG, Dkt. 30-01 at 99 (Exhibit S, Pre-
`
`Motion Conference Transcript), at 5:13-15. IXI did not dispute that there was personal jurisdiction
`
`over IXI Mobile (R&D) or IXI IP in the parties’ transfer briefing. See, e.g., id., Dkt. 31 [IXI’s
`
`Opposition]; id., Dkt. 71 [Order Granting Motion to Transfer] at 3 (“The parties do not dispute that
`
`these actions could have been brought in the Northern District of California . . . .”).
`
`24.
`
`IXI has also taken steps, in this District, to assert the ’033 Patent against Samsung. See
`
`IXI Mobile (R&D) Ltd. v. Samsung Elecs. Co. Ltd. et al, Case No. 4:15-cv-03752-HSG Dkt. 166
`
`(motion to amend infringement contentions to assert reexamined claims of the ’033 Patent against
`
`Samsung).
`
`25.
`
`IXI has also previously litigated and is currently litigating offensive claims for
`
`infringement of its patents in this District, further supporting personal jurisdiction over IXI. See, e.g.,
`
`IXI Mobile (R&D) Ltd. et al. v. Blackberry Ltd. et al., No. 3:15-cv-03754 (voluntarily dismissed
`
`without prejudice in February 2019); IXI Mobile (R&D) Ltd. et al. v. Lenovo Grp. Ltd. et al., No. 4:15-
`
`cv-05439; IXI Mobile (R&D) Ltd. et al. v. LG Corp. et al., No. 4:15-cv-05442; IXI Mobile (R&D) Ltd.
`
`et al. v. Samsung Elecs. Co., Ltd. et al., No. 4:15-cv-03752; and IXI Mobile (R&D) Ltd. et al. v. Apple,
`
`Inc., No. 3:15-cv-03755.
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`
`
`6
`
`CASE NO. _____________
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:19-cv-06773 Document 1 Filed 10/18/19 Page 8 of 19
`
`
`
`26.
`
`Venue is proper in this District under 28 U.S.C. §§ 1391(b)-(c) because a substantial
`
`part of the events giving rise to Samsung’s claim occurred in this District, and because IXI is subject
`
`to personal jurisdiction here.
`
`27.
`
`An immediate, real, and justiciable controversy exists between IXI and Samsung as to
`
`whether IXI is estopped from asserting the ’033 Patent against Samsung, whether Samsung is
`
`infringing or has infringed the ’033 Patent, and whether the ’033 Patent is invalid. Because this action
`
`presents an actual controversy with respect to the enforceability, the noninfringement, and the
`
`invalidity of the ’033 Patent, the Court may grant the declaratory relief sought pursuant to 28 U.S.C.
`
`§ 2201 et seq.
`
`INTRADISTRICT ASSIGNMENT
`
`28.
`
`For purposes of intradistrict assignment under Civil Local Rules 3-2(c) and 3-5(b), this
`
`Intellectual Property Action will be assigned on a district-wide basis.
`
`CLAIMS FOR RELIEF
`FIRST CLAIM FOR RELIEF
`
`(Declaratory Judgment That Res Judicata Bars IXI From Asserting U.S. Patent No. 7,039,033
`Against Samsung)
`
`Samsung repeats and realleges each and every allegation contained in the paragraphs
`
`29.
`
`above as if fully set forth herein.
`
`30.
`
`The ongoing litigation between IXI and Samsung—IXI Mobile (R&D) Ltd. et al. v.
`
`Samsung Electronics Co., Ltd. et al., No. 4-15-cv-03752—involves the same parties, IXI and
`
`Samsung.
`
`31.
`
`In the prior litigation, the Federal Circuit affirmed the PTAB’s final written decision
`
`finding the originally asserted claims of the ’033 Patent unpatentable, ultimately resulting in the
`
`cancellation of those claims. All appeals have now been exhausted. Accordingly, the PTAB’s final
`
`written decision and the Federal Circuit’s affirmance of the PTAB’s final written decision are final
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`
`
`7
`
`CASE NO. _____________
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:19-cv-06773 Document 1 Filed 10/18/19 Page 9 of 19
`
`
`
`judgments on the merits. See XY, LLC v. Trans Ova Genetics, L.C., 890 F.3d 1282, 1294 (Fed. Cir.
`
`2018) (“[T]he Patent Trial and Appeal Board of the U.S. Patent and Trademark Office (Board) held
`
`that these claims are unpatentable in a final written decision from an inter pares review proceeding. .
`
`. . [W]e affirm the Board’s decision. . . . That affirmance renders final a judgment on the invalidity
`
`of the [asserted patent], and has an immediate issue-preclusive effect on any pending or co-pending
`
`actions involving the patent.”) (emphasis added).
`
`32.
`
`The prior litigation involved the same claim or cause of action—assertion of the ’033
`
`Patent against Samsung and evaluation of invalidity of the ’033 Patent. See Senju Pharm. Co. v.
`
`Apotex Inc., 746 F.3d 1344, 1353 (Fed. Cir. 2014) (“[I]n the absence of a clear showing that such a
`
`material difference in fact exists in a disputed patentable reexamination claim, it can be assumed that
`
`the reexamined claims will be a subset of the original claims and that no new cause of action will be
`
`created . . . .”) (emphasis added).
`
`33.
`
`34.
`
`Accordingly, res judicata bars IXI from asserting the ’033 Patent against Samsung.
`
`As a result of the acts described in the foregoing paragraphs, there exists a substantial
`
`controversy of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.
`
`35.
`
`A judicial declaration is necessary and appropriate so that Samsung may ascertain its
`
`rights regarding the ’033 Patent.
`
`36.
`
`Samsung is entitled to a judicial declaration that res judicata bars IXI from asserting
`
`the ’033 Patent against Samsung.
`
`SECOND CLAIM FOR RELIEF
`(Declaratory Judgment of Noninfringement of U.S. Patent No. 7,039,033)
`
`37.
`
`Samsung repeats and realleges each and every allegation contained in the above
`
`paragraphs as if fully set forth herein.
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`
`
`8
`
`CASE NO. _____________
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:19-cv-06773 Document 1 Filed 10/18/19 Page 10 of 19
`
`
`
`38.
`
`IXI has alleged and continues to allege that Samsung infringes the ’033 Patent. As
`
`explained above, res judicata bars IXI’s assertion of the ’033 Patent against Samsung. Should the
`
`Court disagree, the Court should enter judgment declaring that Samsung does not infringe the ’033
`
`Patent.
`
`39.
`
`Exemplary claim 65 of the ’033 Patent recites:
`
`Limitation
`
`Claim Language (emphasis added)
`
`[P]
`
`[a]
`
`[b]
`
`[c]
`
`[d]
`
`[e]
`
`[f]
`
`[g]
`
`
`
`A system for providing access to the Internet, comprising:
`
`a first wireless device, in a short distance wireless network, having a software
`component to access information from the Internet by communicating with a
`cellular network in response to a first short-range radio signal wherein the first
`wireless device communicates with the cellular network and receives the first
`short-range radio signal,
`
`wherein the first wireless device comprises router software to establish the
`short distance wireless network, wherein the router software comprises a
`routing component for exchange of IP packets;
`
`wherein the first wireless device includes a speaker, a microphone, and a
`touchscreen,
`
`wherein the first wireless device includes software applications including a
`telephony application, a personal information manager application including
`emails, and a location application for providing a current location of the first
`wireless device; and,
`
`a second wireless device, in the short distance wireless network, to provide the
`first short-range radio signal,
`
`wherein the software component includes a network address translator
`software component to translate between a first Internet Protocol (“IP”)
`address provided to the first wireless device from the cellular network and a
`second address for the second wireless device provided by the first wireless
`device,
`
`wherein the software component includes a service repository software
`component to identify a service provided by the second wireless device.
`
`40.
`
`Samsung has not infringed and does not infringe any valid and/or enforceable claim of
`
`the ’033 Patent, directly or indirectly, literally or under the doctrine of equivalents, through the
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`
`
`9
`
`CASE NO. _____________
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:19-cv-06773 Document 1 Filed 10/18/19 Page 11 of 19
`
`
`
`manufacture, use, sale, and/or offer for sale of Samsung’s accused products. By way of example,
`
`Samsung’s accused products do not satisfy at least limitations 65[f] and 65[g] of exemplary claim 65.
`
`41.
`
`First, Samsung’s accused products do not include the “network address translator
`
`software component” claimed in limitation 65[f] at least because Samsung’s accused devices do not
`
`include a “network address translator software component” that translates between a first IP address
`
`provided to the Samsung device from a cellular network and a second IP address for a different accused
`
`Samsung device that is provided by the first accused Samsung device, as claimed in limitation 65[f]..
`
`For example, Samsung’s phones do not include the claimed “network address translator software
`
`component” that translates between a first IP address provided to the phone from a cellular network
`
`and a second IP address for a tablet connected to a phone via Wireless Hotspot functionality, as
`
`claimed in limitation 65[f].
`
`42.
`
`Second, Samsung’s accused products do not include a “service repository software
`
`component” as claimed in limitation 65[g] at least because Samsung’s accused products do not store
`
`information that allows applications on multiple devices to discover services.
`
`43.
`
`Thus, Samsung’s accused products do not satisfy at least limitations 65[f] and 65[g] of
`
`exemplary claim 65. The remaining claims of the ’033 Patent are not infringed for at least similar
`
`reasons.
`
`44.
`
`As a result of the acts described in the foregoing paragraphs, there exists a substantial
`
`controversy of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.
`
`45.
`
`A judicial declaration is necessary and appropriate so that Samsung may ascertain its
`
`rights regarding the ’033 Patent.
`
`46.
`
`Samsung is entitled to a judicial declaration that it has not infringed and does not
`
`infringe the ’033 Patent.
`
`THIRD CLAIM FOR RELIEF
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`
`
`10
`
`CASE NO. _____________
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:19-cv-06773 Document 1 Filed 10/18/19 Page 12 of 19
`
`
`
`(Declaratory Judgment of Invalidity of U.S. Patent No. 7,039,033)
`
`Samsung repeats and realleges each and every allegation contained in the paragraphs
`
`47.
`
`above as if fully set forth herein.
`
`48.
`
`As explained above, res judicata bars IXI’s assertion of the ’033 Patent against
`
`Samsung. Should the Court disagree, the Court should enter judgment declaring that the ’033 Patent
`
`is invalid.
`
`49.
`
`The ’033 Patent is invalid under 35 U.S.C. §§ 102 and/or 103 because its claims are
`
`anticipated and/or rendered obvious by prior art. By way of example, exemplary claim 65 is invalid
`
`under 35 U.S.C. §§ 102 and/or 103 because it is anticipated and/or obvious in view of prior art.
`
`50.
`
`As an example, claim 65 is invalid as obvious in view of International Publication No.
`
`WO 2001/76154 A2 (“Marchand”), U.S. Patent No. 6,560,642 (“Nurmann”), and International
`
`Publication No WO 1999/22338 (“Williams”). Claim 65 is identical to claim 1 of the ’033 Patent
`
`(which the PTAB found unpatentable over Marchand, Nurmann, and U.S. Patent No. 6,771,635
`
`(“Vilander”)), with the exception that claim 65 further includes (i) router software, (ii) a speaker,
`
`microphone, and touch screen, and (iii) software for email and location services. Those additional
`
`limitations were not novel or non-obvious in view of the prior art as of the purported May 2001 priority
`
`date, including Williams. Claim 65 is therefore invalid.
`
`51. Marchand discloses “an ad-hoc network … established for a plurality of devices, and a
`
`gateway that provides access through the ad-hoc network to external wireless IP networks.” Marchand
`
`at 4:15-19. Marchand also discussed mobile phones having multiple IP addresses and receiving IP
`
`packets from a network through a “public IP address” and forwarding those packets to a “private IP
`
`address” of a destination device. Marchand at 4:23-30; 7:12-17; 10:30-31. Nurmann discloses an IP
`
`gateway that establishes local IP networks, performs IP address allocation for devices in a local IP
`
`network, and manages routing of IP packets to and from the local IP network. Nurmann at 1:9-12;
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`
`
`11
`
`CASE NO. _____________
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:19-cv-06773 Document 1 Filed 10/18/19 Page 13 of 19
`
`
`
`2:54-60; 3:26-46. Williams describes a “portable computer,” such as a cellular telephone, that
`
`implements a speaker, a microphone, and a touch screen display. Williams at 5:5-7; 10:24-25; 14:20-
`
`22; 17:24-26. Williams discloses multiple functions of a “portable computer,” including email,
`
`location functionality, and cellular telephone service. Williams at 14:20-22; 25:12-14; 15:1-2.
`
`52.
`
`The preamble of claim 65 recites a “system for providing access to the Internet.” This
`
`limitation is verbatim identical to the preamble of claim 1, which was previously found by the PTAB
`
`to be taught by Marchand as supplemented by Nurmann and Vilander. Marchand discloses, or at a
`
`minimum renders obvious, this limitation. For example, Marchand’s system includes a mobile phone
`
`that operates as a gateway “between an external wireless Internet Protocol (IP) network and devices
`
`in the ad-hoc network.” Marchand at 4:21-23. The gateway is “used to connect a plurality of devices
`
`[in a Piconet/ad-hoc network] … to an IP-based network such as the Internet.” Marchand at Fig. 3,
`
`13:12-14.
`
`53.
`
`Limitation 65[a] of claim 65 recites “a first wireless device, in a short distance wireless
`
`network, having a software component to access information from the Internet by communicating with
`
`a cellular network in response to a first short-range radio signal wherein the first wireless device
`
`communicates with the cellular network and receives the first short-range radio signal.” This
`
`limitation is verbatim identical to the first limitation of claim 1, which was previously found by the
`
`PTAB to be taught by Marchand as supplemented by Nurmann and Vilander. Marchand discloses, or
`
`at a minimum renders obvious, this limitation. For example, Marchand discloses a mobile phone that
`
`is “simultaneously … connected to a cellular network and to an ad-hoc Bluetooth Piconet.” Marchand
`
`at 6:23-25. Devices in Marchand communicate with the mobile phone using a short-range radio link.
`
`Marchand at 1:29-31; 7:9-11. During operation, the mobile phone receives IP packets from a public
`
`network “through its public IP address, and forwards the received packets to the private IP address of
`
`the destination device” in a local network. Marchand at 7:14-17. The mobile phone “also translates
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`
`
`12
`
`CASE NO. _____________
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:19-cv-06773 Document 1 Filed 10/18/19 Page 14 of 19
`
`
`
`in the other direction for data going out of” the local network to the external IP network. Marchand
`
`at 7:14-17. In addition, Marchand discloses software, including a link layer, network transport layer,
`
`operating system layer, Java technology layer, JINI technology layer, JINI call control client, and SIP
`
`client, performing the functionality of the mobile phone.
`
`54.
`
`Limitation 65[b] of claim 65 recites “wherein the first wireless device comprises router
`
`software to establish the short distance wireless network, wherein the router software comprises a
`
`routing component for exchange of IP packets.” Marchand and Nurmann render obvious this
`
`limitation. For example, Marchand discloses that “[t]he H.323 and/or SIP clients in the mobile phone
`
`are enhanced to behave as a server application in order for Bluetooth compliant devices to talk to other
`
`device that contain a SIP and/or an H.323 client.” Marchand at 8:25-17. Marchand’s mobile gateway
`
`utilizes various types of software components for exchange of IP packets between devices by
`
`performing routing and communications over the cellular and local wireless networks, including
`
`software components to implement a link layer, network transport layer, operating system layer, Java
`
`technology layer, JINI technology layer, Bluetooth radio chipset, and “an interface/Application
`
`Programming Interface (API) which is an abstraction of a SIP and/or H.323 call control client.
`
`Marchand at 2:14-16; 2:27-31; 6:18-20; 6:27-30. For example, Marchand’s mobile phone includes
`
`the protocol stack shown in Marchand’s Fig. 2. Furthermore, Nurmann performs IP address allocation
`
`for devices in a local IP network and manages routing of IP packets to and from the local IP network.
`
`Marchand at 1:9-12; 2:54-60; 3:26-46. It would have been obvious to implement Nurmann’s DHCP
`
`server component on Marchand’s gateway, which, when active, allocates private IP addresses to
`
`devices connected to a network. The DHCP server is router software that establishes the short distance
`
`wireless network by allocating IP addresses, and it comprises a routing component for exchange of IP
`
`packets. Nurmann at 1:20-53; 2:6-67; 3:39-50; 4:36-50.
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`
`
`13
`
`CASE NO. _____________
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`

`Case 3:19-cv-06773 Document 1 Filed 10/18/19 Page 15 of 19
`
`
`
`55.
`
`Limitation 65[c] of claim 65 recites “wherein the first wireless device includes a
`
`speaker, a microphone, and a touchscreen.” Marchand and Williams render obvious this limitation.
`
`For example, Marchand explains that devices that “provide multimedia and telephony capabilities”
`
`would include “microphones, speakers, and video cameras.” Marchand at 7:2-6. Williams discloses
`
`that it was well-known to implement a speaker and microphone in a mobile phone and also describes
`
`a touch screen. Williams at 5:5-7; 17:24-26. Implementing a speaker and a microphone, as disclosed
`
`in Williams, as well as a touchscreen on a wireless device, such as Marchand’s mobile phone, was
`
`well-known prior to the ’033 Patent.
`
`56.
`
`Limitation 65[d] of claim 65 recites “wherein the first wireless device includes software
`
`applications including a telephony application, a personal information manager application including
`
`emails, and a location application for providing a current location of the first wireless device.”
`
`Marchand and Williams render obvious