throbber
Case 3:20-cv-01509 Document 1 Filed 02/28/20 Page 1 of 20
`
`EMILY H. CHEN (Bar No. 302966)
`echen@desmaraisllp.com
`DESMARAIS LLP
`101 California Street
`San Francisco, California 94111
`Telephone: (415) 573-1900
`Facsimile: (415) 573-1901
`
`AMEET A. MODI (pro hac vice application pending)
`amodi@desmaraisllp.com
`RYAN G. THORNE (pro hac vice application pending)
`rthorne@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, New York 10169
`Telephone: (212) 351-3400
`Facsimile: (212) 351-3401
`
`Attorneys for Plaintiff Slack Technologies, Inc.
`
`
`
`
`UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`
`
`Slack Technologies, Inc.,
`
`Plaintiff,
`
`v.
`
`Phoji, Inc.,
`
` Case No. 3:20-CV-01509
`
`COMPLAINT FOR DECLARATORY
`JUDGMENT OF NONINFRINGEMENT
`
`DEMAND FOR JURY TRIAL
`
`
`
`Defendant.
`
`
`
`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NONINFRINGEMENT
`
`
`
`
`
`CASE NO. 3:20-CV-01509
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`Plaintiff Slack Technologies, Inc. (“Slack”) seeks a declaratory judgment that Slack does
`not infringe any claim of U.S. Patent No. 9,565,149 (“’149 patent,” Exhibit A).
`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. Slack seeks a declaratory judgment that Slack
`does not infringe any claim of the ’149 patent.
`PARTIES
`2.
`Slack is a Delaware corporation with its principal place of business at 500 Howard
`Street, San Francisco, California 94105. Slack, formerly known as Tiny Speck, Inc., has been
`registered with the California Secretary of State since March 2009. Slack employs nearly 1000
`employees in its headquarters in San Francisco, California. Slack provides a layer of the business
`technology stack that brings together people, applications and data—a hub for collaboration where
`people can effectively work together, access critical applications and services, and find important
`information to do their best work. People around the world use Slack to connect their teams, unify
`their systems and drive their business forward.
`3.
`On information and belief, Defendant Phoji, Inc. (“Phoji”)1 is a company
`incorporated and registered under the laws of Delaware. On information and belief, Phoji’s
`registered agent is The Corporation Trust Company, Corporation Trust Center, 1209 Orange
`Street, Wilmington, Delaware 19801. In correspondence with Slack, representatives of Phoji have
`alleged that Phoji has the right to assert the ’149 patent. On information and belief, Phoji
`distributes its primary product—a mobile application—almost exclusively through California
`businesses, including Google Inc.’s Google Play and Apple Inc.’s App Store.
`4.
`On information and belief, Phoji, Inc. was previously known as “Phoji, LLC.”
`Phoji, LLC was originally incorporated as “Brilliant Mobile LLC” on October 9, 2012 in
`Minnesota. On information and belief, Phoji, LLC was a Minnesota limited liability company
`with a principal place of business at 115 Washington Avenue North, Minneapolis, Minnesota
`
`
`1 All references to “Phoji” are to Phoji, Inc. unless otherwise noted.
`
`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NONINFRINGEMENT
`
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`CASE NO. 3:20-CV-01509
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`

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`55401, and with a registered address for service of 920 Second Avenue South, 1000 International
`Centre, Attn: Daniel J. Young, Minneapolis, Minnesota 55402. On information and belief, the
`Manager of Phoji, LLC was Jay Coatta, and its Registered Agent was Jon Christensen.
`5.
`On October 23, 2019, Phoji, LLC filed a “Conversion Filing 322C to Other
`Jurisdiction—Limited Liability Company (Domestic)” with the Minnesota Secretary of State. See
`Exhibit B, Oct. 23, 2019 Office of the Minnesota Secretary of State Articles of Conversion filed
`by Phoji, LLC. On information and belief, by filing these Articles of Conversion, Phoji, LLC
`converted itself to Phoji, Inc., a Delaware organization no longer authorized to transact business
`in the state of Minnesota, and whose agent for service of process is 1000 International Center, 920
`2nd Avenue S., Minneapolis, Minnesota 55402, c/o Barry O’Neil. As of February 20, 2019, Phoji,
`LLC’s status with the Minnesota Secretary of State is “Inactive.” See Exhibit C, Office of The
`Minnesota Secretary of State, Business Record Details for Phoji, LLC, available at
`https://mblsportal.sos.state.mn.us/Business/SearchDetails?filingGuid=2f6a0d51-2612-e211-
`bc43-001ec94ffe7f (last visited Feb. 20, 2020). On information and belief, by filing the Articles
`of Conversion pursuant to Chapter 322C.1008 of the Minnesota Statutes, Phoji, Inc. is for all
`purposes the same entity as Phoji, LLC, the entity that existed before the conversion. Minnesota
`Statue § 322C.1010.1, Effect of Conversion (“An organization that has been converted pursuant
`to sections 322C.1007 to 322C.1009 is for all purposes the same entity that existed before the
`conversion.”). When the conversion took effect, all property owned by Phoji, LLC vested in the
`new entity, Phoji, Inc. See Minnesota Statue § 322C.1010.2(1) (“all property owned by the
`converting organization remains vested in the converted organization”).
`6.
`Additionally, on December 26, 2018, Phoji, Inc. was formed in Delaware. See
`Exhibit D, Dec. 26, 2018 State of Delaware Articles of Incorporation. On the same day, Phoji,
`Inc. filed additional paperwork converting Phoji, LLC (Minnesota) to Phoji, Inc. (Delaware),
`pursuant to § 265 of the Delaware General Corporation Law. See Exhibit E, Dec. 26, 2018 State
`of Delaware Certificate of Conversion from a Limited Liability Company to a Corporation
`Pursuant to Section 265 of the Delaware General Corporation Law. Under Section 265 of the
`Delaware General Corporation Law, “the corporation of this State shall, for all purposes of the
`COMPLAINT FOR DECLARATORY JUDGMENT OF
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`laws of the State of Delaware, be deemed to be the same entity as the converting other entity . . .
`and all property, real, personal and mixed . . . and causes of action belonging to such other entity,
`shall remain vested in the domestic corporation to which such other entity has converted and shall
`be the property of such domestic corporation . . . .” Delaware General Corporation Law § 265(f).
`7.
`The U.S. Patent Office Patent Assignment Search Database indicates that Phoji,
`LLC is the most recent purported assignee of the ’149 patent. Exhibit F, USPTO Patent
`Assignment Search for U.S. Patent Application No. 14/072,418 (Feb. 19, 2020). For the reasons
`above, Phoji, Inc. is the same entity as the previously-existing Phoji, LLC and holds all property
`that Phoji, LLC previously held. Accordingly, on information and belief, the rights to enforce the
`’149 patent are vested in Phoji, Inc. Id.
`8.
`As described further herein, Phoji has repeatedly asserted to Slack that it (i.e., Phoji,
`Inc.) is the owner of the ’149 patent, and has repeatedly asserted that Slack infringes the ’149
`patent.
`9.
`The Court should not allow the threat of a future lawsuit against Slack to cast a
`cloud over Slack’s business, causing uncertainty for Slack regarding the ongoing provision or use
`of its products.
`10.
`There exists a substantial controversy between Slack and Phoji having adverse legal
`interests of sufficient immediacy and reality to warrant the issuance of a declaratory judgment of
`noninfringement.
`PHOJI HAS ATTEMPTED TO ASSERT THE ’149 PATENT IN CALIFORNIA
`11.
`The U.S. Patent and Trademark Office (“PTO”) issued the ’149 patent, titled
`“Media Messaging Methods, Systems, and Devices,” on February 7, 2017. A true and correct
`copy of the ’149 patent is attached as Exhibit A.
`12.
`Brilliant Mobile, LLC was the named applicant for the ’149 patent when the parent
`application, No. 14/072,418, was filed on November 5, 2013.
`13.
`On November 11, 2013, named inventor Robert Freidson assigned his interest in
`the ’149 patent to Brilliant Mobile, LLC. On November 11, 2013, named inventor Max Freidson
`assigned his interest in the ’149 patent to Brilliant Mobile, LLC. On November 13, 2013, named
`COMPLAINT FOR DECLARATORY JUDGMENT OF
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`inventor Sergey Toklachev assigned his interest in the ’149 patent to Brilliant Mobile, LLC. On
`November 18, 2013, named inventor Jay David Coatta assigned his interest in the ’149 patent to
`Brilliant Mobile, LLC. On July 31, 2014, named inventor John Mikkelsen assigned his interest in
`the ’149 patent to Brilliant Mobile, LLC. On November 17, 2014, over a year after the first
`inventor assignment was executed, the inventors’ assignments conveying their interests in the
`’149 patent to Brilliant Mobile, LLC—later known as Phoji, LLC and now known as Phoji, Inc.—
`were recorded with the PTO.
`14.
`In correspondence with Slack, representatives of Phoji have alleged that Phoji is
`the owner of the ’149 patent. On information and belief, Phoji is the current owner of all
`substantial rights in the ’149 patent.
`15.
`Phoji has taken steps, in this District, to assert the ’149 patent against Slack. Phoji’s
`purposeful efforts to enforce and license the ’149 patent in California as described below include
`multiple letters accusing Slack of infringing at least claim 1 of the ’149 patent, as well as several
`telephonic meetings with a Slack representative.
`16.
`On June 24, 2019, an agent of Phoji sent a letter to Slack’s San Francisco
`headquarters, asserting that Phoji is “a Delaware corporation and international SaaS [Software as
`a Service] company (www.phojiapp.com) . . . approaching companies that may have a business
`interest in licensing Phoji’s patent portfolio. Phoji, Inc. is the owner of U.S. Patent 9,565,149 B2
`entitled, MEDIA MESSAGING, METHODS, SYSTEMS AND DEVICES, which is generally
`directed to creating emojis from real media and integrating images and text in messaging and
`communication platforms . . . [T]he utilization and deployment of the Slack Emoji and the recent
`deployment of the clickable feature make us believe that Slack would find it beneficial to license
`Phoji, Inc. intellectual property. We welcome the opportunity to discuss the potential licensing
`agreement and terms.” Slack responded on June 26, 2019, detailing reasons why Slack does not
`infringe any of the ’149 patent’s claims.
`17.
`On October 8, 2019, an agent of Phoji sent a letter to Slack’s San Francisco
`headquarters, continuing to assert that “Slack infringes the claims of the ’149 patent.” Phoji
`
`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NONINFRINGEMENT
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`enclosed a four-page partial claim chart purporting to demonstrate infringement of elements of
`claim 1 of the ’149 patent.
`18.
`On October 14, 2019, a representative of Phoji had a telephonic meeting with a
`Slack representative from Slack’s San Francisco headquarters. In the meeting, the representative
`of Phoji expressed Phoji’s intention to license the ’149 patent to Slack. On the telephone call,
`Slack explained further reasons why it does not infringe the ’149 patent and therefore does not
`require a license.
`19.
`On November 6, 2019, Slack provided a further response to Phoji’s assertions,
`providing additional detail as to why Slack does not infringe the ’149 patent.
`20.
`On December 2, 2019, an agent of Phoji sent a letter to Slack’s San Francisco
`headquarters, stating that “Phoji continues to disagree with your analysis that Slack does not
`infringe upon the ’149 patent.” Phoji again requested that Slack agree to a one-time license of
`Phoji’s ’149 patent. On December 11, 2019, Slack responded to Phoji, explaining additional
`reasons why the ’149 patent does not cover any products or services offered by Slack.
`21.
`On December 13, 2019, an agent of Phoji sent a letter to Slack’s San Francisco
`headquarters, stating that, while it was open to “reasonable negotiations,” it could be left “with
`little choice but to consider alternative paths to address Slack’s infringement of the ’149 patent.”
`Phoji reiterated proposed terms for a one-time license of the ’149 patent. And Phoji set a deadline
`on the offer: “Phoji extends this offer at this time with the expectation that the terms of the
`agreement can be finalized and executed by December 31, 2019.”
`22.
`On December 17, 2019, an agent of Phoji had a telephonic meeting with a Slack
`representative, which Slack participated in from its San Francisco headquarters. In the meeting,
`Phoji protested that putting together a full claim chart of alleged infringement was a significant
`burden and expense. Phoji also expressed that it was not concerned about invalidity in view of
`any prior art.
`23.
`On December 20, 2019, a representative of Phoji had a telephonic meeting with a
`Slack representative, which Slack participated in from its San Francisco headquarters. Slack
`reiterated that the ’149 patent does not cover any products or services offered by Slack.
`COMPLAINT FOR DECLARATORY JUDGMENT OF
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`24.
`On December 23, 2019, a representative of Phoji had another telephonic meeting
`with a Slack representative, which Slack participated in from within this District. Slack reiterated
`that the ’149 patent does not cover any products or services offered by Slack.
`25.
`On January 7, 2020, a representative of Phoji had another telephonic meeting with
`a Slack representative, which Slack participated in from its San Francisco headquarters. In the
`meeting, Phoji again proposed a license agreement involving a one-time payment. Phoji explained
`that, if Slack did not license the ’149 patent, its Board of Directors considered litigation to be the
`next step.
`26.
`On January 14, 2020, a representative of Phoji had another telephonic meeting with
`a Slack representative, which Slack participated in from its San Francisco headquarters.
`27.
`On January 14, 2020, after the telephonic meeting that same day, a representative
`of Phoji sent an email to a Slack representative in Slack’s San Francisco headquarters, again
`proposing that Slack enter into a license agreement with Phoji regarding the ’149 patent for a one-
`time payment.
`28.
`On January 24, 2020, a representative of Phoji sent an email to a Slack
`representative in Slack’s San Francisco headquarters, reaffirming Phoji’s intention to attempt to
`resolve the matter.
`29.
`On January 24, 2020, Slack provided a further response to Phoji via e-mail,
`reaffirming that Slack does not require a license to a patent it does not practice. Slack again pointed
`out that Phoji had never attempted to demonstrate that Slack infringes any claim of the ’149 patent
`because Phoji had never provided a claim chart or any other material that identified any Slack
`functionality that allegedly meets every limitation of any single claim.
`30.
`On January 29, 2020, a representative of Phoji had a telephonic meeting with a
`Slack representative, which Slack participated in from its San Francisco headquarters. In the
`meeting, the representative of Phoji confirmed Phoji’s demand that Slack take a license to the
`’149 patent. On the telephone call, Slack explained further reasons why it does not infringe the
`’149 patent and therefore does not require a license. In an email following the telephonic meeting,
`the Phoji representative confirmed that Phoji did not intend to provide additional detail as to its
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`Case 3:20-cv-01509 Document 1 Filed 02/28/20 Page 8 of 20
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`infringement allegations: “As our counsel and I have both indicated Phoji does not intend to
`provide a complete claims chart to Slack regarding this matter. Phoji will only utilize a complete
`claims chart as part of a formal legal process.”
`31.
`On February 13, 2020, an agent of Phoji sent a letter to Slack’s San Francisco
`headquarters, requesting Slack to advise whether it “is interested in a business solution and
`avoiding the exposure and costs if Phoji is forced to litigate its infringement claims.” Phoji
`enclosed a claim chart purporting to demonstrate infringement of certain claims of the ’149 patent.
`32.
`On February 20, 2020, Slack provided a further response to Phoji by letter from its
`San Francisco headquarters, explaining that was reviewing Phoji’s February 13, 2020 chart,
`reiterating that Slack does not require a license to a patent it does not practice, and reaffirming that
`it had been engaged in good faith negotiations with Phoji since Phoji’s initial correspondence in
`June 2019.
`
`PHOJI DISTRIBUTES ITS MOBILE APPLICATIONS THROUGH
`CALIFORNIA-BASED COMPANIES
`
`33.
`On information and belief, Phoji has distributed and continues to distribute its
`mobile applications through California-based companies to consumers in California.
`34.
`For example, Phoji makes its mobile application available to users through The
`Apple App
`Store.
`
`Phoji
`on
`the App
`Store,
`See
`available
`at
`https://apps.apple.com/us/app/phoji/id988132052 (last visited Dec. 17, 2019).
`
`Id.
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`Case 3:20-cv-01509 Document 1 Filed 02/28/20 Page 9 of 20
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`35.
`Since September 30, 2015, Phoji has offered the Phoji app through the Apple App
`Store. Indeed, Phoji provided updates in 2015 and through August 2016, as shown by the Version
`History for the app:
`
`
`
`available
`
`at
`
`History,
`Version
`Store,
`App
`the
`on
`Phoji
`See
`https://apps.apple.com/us/app/phoji/id988132052 (last visited Dec. 17, 2019).
`36.
`As demonstrated above, Phoji distributed its products through Apple Inc., which on
`information and belief is a California corporation with its principal place of business in the
`Northern District of California.
`37.
`Phoji affirmatively chose to have its app distributed through the Apple App Store.
`On information and belief, in uploading Phoji’s app to the App Store, Phoji had to appoint Apple
`as its agent in regards to marketing and delivery of Phoji’s app. Thus, Phoji appointed a California
`corporation as its agent to distribute Phoji’s app within California and the rest of the United States.
`Additionally, on information and belief, in order to distribute the app via the App Store, Phoji had
`to agree with Apple to submit to jurisdiction in California in any lawsuit with Apple involving the
`Phoji app.
`38.
`On information and belief, in order to offer an application through the App Store,
`a third-party developer (such as Phoji) must be registered as an “Apple Developer,” agree to the
`Apple iOS developer Program License Agreement with Apple, and pay a $99 yearly registration
`fee.
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`39.
`As a further example, Phoji offers its mobile app through the Google Play app store.
`Phoji
`–
`Apps
`on
`Google
`Play,
`available
`at
`See
`https://play.google.com/store/apps/details?id=com.phoji.app (last visited Feb. 19, 2020).
`
`
`
`Id.
`
`40.
`Phoji’s app has been installed from the Google Play App store over 1,000 times and
`was last updated August 22, 2016. See Phoji – Apps on Google Play, available at
`https://play.google.com/store/apps/details?id=com.phoji.app (last visited Feb. 19, 2020).
`41.
`On information and belief, Phoji knew from at least September 2015 through the
`present, that Google’s principal place of business is in California.
`42.
`Phoji affirmatively chose to have its app distributed through the Google Play Store.
`On information and belief, Google Inc. is a Delaware corporation with its principal place of
`business located in the Northern District of California. On information and belief, in order to
`distribute its app through the Google Play store, Phoji had to agree to jurisdiction in California in
`any lawsuit with Google regarding the app.
`43.
`On its website, Phoji prominently asserts that its app is “patented,” i.e., that it
`practices one or more claims of the ’149 patent. For example, Phoji’s home page asserts that
`“Phoji is a patented cloud-based web app . . .” with the word “patented” hyperlinked to a copy of
`the ’149 patent. See Phoji – Home, available at http://www.phojiapp.com (last visited Feb. 28,
`2020).
`
`COMPLAINT FOR DECLARATORY JUDGMENT OF
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`Id.
`
`PHOJI CONDUCTS BUSINESS IN CALIFORNIA AND WITH COMPANIES IN
`CALIFORNIA
`
`44.
`On information and belief, Phoji conducts business in California and with
`companies in California.
`45.
`For example, on information and belief, a representative from Phoji attended the
`Connected Marketer Institute Summit in San Francisco, California on January 23 and 24, 2017.
`
`
`
`See Phoji, Facebook.com, https://www.facebook.com/pg/phoji/posts/ (Jan. 23, 2017) (last visited
`Feb. 26, 2020).
`46.
`As a further example, on information and belief, Jon Christensen, President and
`Chief Executive Officer of Phoji, traveled from Minnesota to Los Angeles, California in late
`January 2020 to conduct business.
`47.
`As a further example, Phoji conducts business with mCordis, which is a marketing
`services company with its only United States office in San Francisco. See Exhibit G, Business
`Wire, mCordis Establishes the Connected Marketer™ Institute to Help Brands and MarTech
`Era
`(Aug.
`9,
`2016),
`Providers
`Thrive
`in
`Connected
`available
`at
`https://www.businesswire.com/news/home/20160809005727/en/mCordis-Establishes-
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`Case 3:20-cv-01509 Document 1 Filed 02/28/20 Page 12 of 20
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`Connected-Marketer%E2%84%A2-Institute-Brands-MarTech (“mCordis is a strategic mobile and
`connected marketing advisory and educational marketing services company with offices in London
`and San Francisco.”) (last visited Feb. 20, 2020).
`48.
`Phoji is a charter member of mCordis’s The Connected Marketer Institute, which
`helps “brand marketers and marketing technology providers understand and adopt new strategies
`to serve connected individuals, in real-time, at scale.” See Exhibit G, Business Wire, mCordis
`Establishes the Connected Marketer™ Institute to Help Brands and MarTech Providers Thrive in
`Era
`(Aug.
`9,
`2016),
`available
`Connected
`https://www.businesswire.com/news/home/20160809005727/en/mCordis-Establishes-
`Connected-Marketer%E2%84%A2-Institute-Brands-MarTech (last visited Feb. 20, 2020).
`49.
`As a further example, Phoji also conducts business with Identity Praxis, Inc., which
`is an active California corporation. See Exhibit H, California Secretary of State Business Search
`– Entity Detail – C3857377 Identity Praxis, Inc. (Feb. 20, 2020). Michael Becker, who is the
`managing partner of both mCordis and Identity Praxis, Inc., posted his interview with Jon
`Christensen from Phoji on the Identity Praxis, Inc. website. See Exhibit I, Michael Becker, An
`Interview with Phoji, Identity Praxis, Inc., https://identitypraxis.com/2016/05/24/an-interview-
`with-phoji/ (May 24, 2016) (last visited Feb. 20, 2020).
`50.
`As a further example, Phoji’s website landing page, https://www.phojiapp.com,
`prominently features an example of its product allegedly being used in an advertisement from
`“Jamba Juice” on the “Escondido Promenade.”
`
`at
`
`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NONINFRINGEMENT
`
`-11-
`
`
`
`CASE NO. 3:20-CV-01509
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`Case 3:20-cv-01509 Document 1 Filed 02/28/20 Page 13 of 20
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`https://www.phojiapp.com/wp-content/uploads/2019/09/Jamba-Juice-Shortened.png (last visited
`Feb. 19, 2020). On information and belief, Jamba Juice on the Escondido Promenade is located
`in California, at 1282 Auto Park Way B, Escondido, California 92029.
`51.
`As a further example, Phoji’s website landing page also prominently features an
`example of its product allegedly being used in an advertisement from “Seatninja” offering
`reservations at “Stone Brewing World Bistro & Gardens – Liberty Station – San Diego.”
`
`
`
`https://www.phojiapp.com/wp-content/uploads/2019/09/Seatninga-Email-Image-223x300.png
`(last visited Feb. 19, 2020). On information and belief, the image is an advertisement by Seatninja
`COMPLAINT FOR DECLARATORY JUDGMENT OF
`-12-
`CASE NO. 3:20-CV-01509
`NONINFRINGEMENT
`
`
`
`

`

`Case 3:20-cv-01509 Document 1 Filed 02/28/20 Page 14 of 20
`
`for reservations at Stone Brewing World Bistro & Gardens, which is located in California, at 2816
`Historic Decatur Road, San Diego, California 92106. On information and belief, Seatninja, Inc.
`has a principal place of business at 600 Gianni Court, Roseville, California 95661. On information
`and belief, Phoji conducts business with Seatninja, Inc., which is a corporation located in
`California. On information and belief, Phoji, by conducting business with Seatninja, Inc., also
`thereby conducts business with Stone Brewing World Bistro & Gardens, which is a business
`located in California.
`
`JURISDICTIONAL STATEMENT
`52.
`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.
`53.
`This Court has subject matter jurisdiction over this action under 28 U.S.C. §§ 1331,
`1338(a), and 2201(a).
`54.
`This Court also has personal jurisdiction over Phoji at least because it has made
`sufficient contacts with the state of California, including this District, by purposefully directing
`revenue-generation and enforcement activities concerning the ’149 patent in this District,
`including at least its enforcement activities against Slack, which maintains its principal place of
`business in this District. See supra ¶¶ 2, 15–32. In addition, this Court has personal jurisdiction
`over Phoji at least because it has made sufficient contacts with the state of California, including
`this District, by purposefully directing development, licensing, revenue-generation, and marketing
`activities in the state of California and at residents of the state of California. See supra ¶¶ 11–51.
`55.
`This Court has personal jurisdiction over Phoji at least because Slack’s claim relates
`to Phoji’s activities in this District. For example, Slack maintains its headquarters and principal
`place of business in this District, and Phoji has alleged that Slack has committed acts of
`infringement here.
`56.
`It is fair and reasonable for this Court to exercise personal jurisdiction over Phoji
`in this action at least because, among other things, Phoji has directed its enforcement activities to
`Slack, which maintains its principal place of business in the District, and because witnesses and
`evidence concerning Slack’s noninfringement are located in this District.
`COMPLAINT FOR DECLARATORY JUDGMENT OF
`-13-
`NONINFRINGEMENT
`
`CASE NO. 3:20-CV-01509
`
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`Case 3:20-cv-01509 Document 1 Filed 02/28/20 Page 15 of 20
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`57.
`Therefore, personal jurisdiction may be exercised over Phoji in conformance with
`the United States Constitution, the California long-arm statute (i.e. California Code of Civil
`Procedure § 410.10), Federal Rule of Civil Procedure 4(k), and any other applicable law.
`58.
`Venue is proper in this District under 28 U.S.C. §§ 1391(b)–(c) because Phoji is
`subject to personal jurisdiction here and because a substantial part of the events giving rise to
`Slack’s claim occurred in this District. For example, Slack products and services are developed,
`sold, or offered for sale in this District. Slack seeks a declaration that its activities concerning
`those products and services do not constitute infringement of the ʼ149 patent. See supra ¶ 1.
`59.
`For the reasons set forth above, an immediate, real, and justiciable controversy
`exists between Phoji and Slack as to whether Slack is infringing or has infringed the ’149 patent.
`Because this action presents an actual controversy with respect to the noninfringement of the
`’149 patent, the Court may grant the declaratory relief sought pursuant to 28 U.S.C. § 2201 et seq.
`
`
`INTRADISTRICT ASSIGNMENT
`60.
`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.
`
`COUNT 1 – DECLARATION OF NONINFRINGEMENT OF U.S. PATENT NO. 9,565,149
`61.
`Slack repeats and realleges each and every allegation contained in paragraphs 1
`through 60 of this Complaint as if fully set forth herein.
`62.
`Phoji has alleged and continues to allege that Slack infringes the ’149 patent.
`However, as explained below, Slack has not infringed and does not infringe any valid and/or
`enforceable claim of the ’149 patent, directly or indirectly, literally or under the doctrine of
`equivalents, through the manufacture, use, sale, offer for sale, and/or import into the United States
`of any Slack products and/or services. By way of example, no Slack product and/or service
`satisfies at least limitations 1[e], 1[f], 1[g], and 1[h] of exemplary claim 1.
`
`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NONINFRINGEMENT
`
`-14-
`
`
`
`CASE NO. 3:20-CV-01509
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`Case 3:20-cv-01509 Document 1 Filed 02/28/20 Page 16 of 20
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`63.
`Exemplary claim 1 of the ’149 patent recites:
`Limitation Claim Language (emphasis added)
`[P]
`A communications system comprising:
`[a]
`a first user device presenting a first user interface;
`[b]
`a second user device presenting a second user interface;
`[c]
`a messaging cloud including:
`[d]
`at least one database of rich media data, and a semantic model, the semantic
`model configured to:
`categorize a personalized image library based on contact data and emotional
`state data;
`receive a contact data input from the first user device;
`receive an emotional state data input from the first user device; and
`automatically select an image for insertion into a message from a plurality of
`images in the personalized image library based on the received contact data and
`received emotional state data, and
`wherein the database is a Media Messaging Platform,
`a messaging service configured to:
`receive a message, the message including a rich media data request from the first
`user device,
`retrieve the requested rich media data from the at l

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