Case 3:20-cv-04448 Document 1 Filed 07/03/20 Page 1 of 11
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`Katherine D. Prescott (SBN 215496 | prescott@fr.com)
`FISH & RICHARDSON P.C.
`500 Arguello Street, Suite 500
`Redwood City, CA 94063
`Phone: 650-839-5070
`Fax: 650-839-5071
`
`Indranil Mukerji, (pro hac vice application to be filed), mukerji@fr.com
`FISH & RICHARDSON P.C.
`1000 Maine Ave. SW, Suite 1000
`Washington, D.C. 20024
`Phone: (202) 783-5070
`Fax: (202) 783-2331
`
`Benjamin K. Thompson, (pro hac vice application to be filed), bthompson@fr.com
`Lawrence R. Jarvis, (pro hac vice application to be filed), jarvis@fr.com
`FISH & RICHARDSON P.C.
`1180 Peachtree Street, NE, 21st Floor
`Atlanta, GA 30309
`Phone: 404-582-5005
`Fax: 404-582-5002
`
`Attorneys for Plaintiff APPLE INC.
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`
`
`Civil Action No. 3:20-cv-4448
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT OF U.S.
`PATENT NOS. 7,292,870 AND
`7,894,837
`
`DEMAND FOR JURY TRIAL
`
`APPLE INC.,
`Plaintiff,
`v.
`ZIPIT WIRELESS, INC.,
`
`
`Defendant.
`
`
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`
`
`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT
`CASE NO. 3:20-CV-4448
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`Case 3:20-cv-04448 Document 1 Filed 07/03/20 Page 2 of 11
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`COMPLAINT FOR DECLARATORY JUDGMENT
`Plaintiff Apple Inc. (“Apple”) hereby alleges for its Complaint against
`Defendant Zipit Wireless, Inc. (“Zipit”) as follows:
`NATURE AND HISTORY OF THE ACTION
`1.
`This is an action for a declaratory judgment of non-infringement of U.S.
`Patent Nos. 7,292,870 (“the ’870 patent”) and 7,894,837 (“the ’837 patent”)
`(collectively, the “Zipit Patents”). Zipit has alleged that Apple has infringed these
`patents, and Apple disagrees.
`2.
`Zipit previously asserted the Zipit Patents against Apple. Specifically,
`Zipit filed suit against Apple on June 11, 2020, accusing Apple of infringing the Zipit
`Patents directly, contributorily, and by inducement. (See Zipit Wireless, Inc., v.
`Apple Inc., Civil Action No. 1:20-cv-02488-ELR (N.D. Ga.) (“the Former Zipit
`Litigation”), ECF No. 1.)
`3. Without any prior notice to Apple, Zipit voluntarily dismissed the
`Former Zipit Litigation without prejudice on June 24, 2020 and the action was
`terminated on June 25, 2020.
`4.
`The parties’ history extends back beyond Zipit’s actual lawsuit. Zipit, as
`it alleged in its Complaint in the Former Zipit Litigation, first contacted Apple
`regarding the Zipit Patents several years before filing suit. See Former Zipit
`Litigation ECF No. 1 at 38, 43. In fact, Zipit’s and Apple’s respective representatives
`met at Apple’s Cupertino, California headquarters in 2015 for the express purpose of
`conducting extensive negotiations regarding the Zipit Patents (including whether a
`license was appropriate at all). Overall, the parties’ interactions took place over the
`course of several years, from at least 2014 through 2016, and further encompassed
`the exchange of many rounds of correspondence about the Zipit Patents.
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT
`CASE NO. 3:20-CV-4448
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`Case 3:20-cv-04448 Document 1 Filed 07/03/20 Page 3 of 11
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`5.
`Zipit maintained throughout these conversations that Apple required a
`license to the Zipit Patents. Apple maintains that it does not infringe any claims of
`the Zipit Patents. The parties never reached agreement.
`6.
`Zipit’s actions have created a real and immediate controversy between
`Zipit and Apple as to whether Apple’s products and/or services infringe any claims of
`the Zipit Patents. Both the pre-suit negotiations between Apple and Zipit, wherein
`Zipit insisted that Apple requires a license to the Zipit Patents, and Zipit’s dismissal
`of the Former Zipit Litigation without prejudice, demonstrates that it is highly likely
`that Defendant Zipit will again assert infringement of the Zipit Patents against Apple.
`In the meantime, the cloud of Zipit’s allegations and litigation hangs over Apple.
`7.
`As set forth herein, Apple does not infringe the Zipit Patents. Therefore,
`an actual and justiciable controversy exists between the parties as to whether Apple’s
`products and/or services infringe any claims of the Zipit Patents. The facts and
`allegations recited herein show that there is a real, immediate, and justiciable
`controversy concerning these issues. A judicial declaration is necessary to determine
`the respective rights of the parties regarding the asserted patents, and Apple
`respectfully seeks a judicial declaration that the Zipit Patents are not infringed by any
`Apple products and/or services.
`
`THE PARTIES
`8.
`Plaintiff Apple is a California corporation with its principal place of
`business at One Apple Park Way, Cupertino, California 95014.
`9.
`On information and belief, and based on Zipit’s allegations in the
`Former Zipit Litigation, Defendant Zipit is a Delaware Corporation with a principal
`place of business located at 101 North Main Street, Suite 201, Greenville, South
`Carolina 29601.
`10. On information and belief, including Zipit’s allegations in the Former
`Zipit Litigation, Zipit claims to own the Zipit Patents.
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT
`CASE NO. 3:20-CV-4448
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`Case 3:20-cv-04448 Document 1 Filed 07/03/20 Page 4 of 11
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`JURISDICTION AND VENUE
`11. This action arises under the Declaratory Judgment Act, 28 U.S.C. §§
`2201-2202, and under the Patent Laws of the United States, 35 U.S.C. §§ 1 et seq.
`12. This Court has subject matter jurisdiction over the claims alleged in this
`action at least under 28 U.S.C. §§ 1331, 1332, 1338, 2201, and 2202, because this
`Court has exclusive jurisdiction over declaratory judgment claims arising under the
`Patent Laws pursuant to 28 U.S.C. §§ 1331, 1338, 2201, and 2202.
`13. This Court can provide the relief sought in this Declaratory Judgment
`Complaint because an actual case and controversy exists between the parties within
`the scope of this Court’s jurisdiction pursuant to 28 U.S.C. § 2201, at least because
`Zipit sued Apple for patent infringement, despite the fact that Apple does not
`infringe, and has not infringed, any claims of the Zipit Patents. While Zipit
`dismissed the Former Zipit Litigation, it did so without prejudice, leaving open the
`possibility of Zipit suing Apple again on these same patents. Zipit’s actions have
`created a real, live, immediate, and justiciable case or controversy between Zipit and
`Apple.
`14. Zipit has consciously and purposefully directed activities at Apple, a
`company that resides and operates in this District. As previously described, Apple
`and Zipit had extensive pre-suit communications regarding the Zipit Patents over the
`course of several years. Zipit also came to the District for an in-person meeting at
`Apple’s facilities in Cupertino to discuss the Zipit Patents. Throughout, Zipit
`maintained that Apple required a license to the Zipit Patents. Zipit purposefully
`directed these activities relating to the Zipit Patents at Apple in this District, and this
`action arises out of and directly relates to Zipit’s contacts with Apple in this District.
`15.
`In doing so, Zipit has established sufficient minimum contacts with the
`Northern District of California such that Zipit is subject to specific personal
`jurisdiction in this action. The exercise of personal jurisdiction based on these
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT
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`Case 3:20-cv-04448 Document 1 Filed 07/03/20 Page 5 of 11
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`repeated and pertinent contacts does not offend traditional notions of fairness and
`substantial justice.
`16. Venue in this District is proper under 28 U.S.C. §§ 1391(b), (c), and (d)
`with respect to Apple’s declaratory judgment claims. As discussed above, this Court
`has personal jurisdiction over Zipit because Zipit has engaged in actions in this
`District that form the basis of Apple’s claims against Zipit—namely, the pre-suit
`communications and interactions with Apple representatives in Cupertino, and the
`meeting at Apple’s Cupertino headquarters.
`17. An actual and justiciable controversy exists under 28 U.S.C. §§ 2201-
`2202 between Apple and Zipit as to whether the Zipit’s Patents are infringed by the
`Apple products and/or services that Zipit alleged to infringe the Zipit Patents in the
`Former Zipit Litigation.
`
`PATENTS-IN-SUIT
`18. The ’870 patent, entitled “Instant Messaging Terminal Adapted For Wi-
`Fi Access Points,” states on its face that it issued on November 6, 2007. A true and
`correct copy of the ’870 patent is attached as Exhibit A.
`19. The ’837 patent, entitled “Instant Messaging Terminal Adapted For Wi-
`Fi Access Points,” states on its face that it issued on February 22, 2011. A true and
`correct copy of the ’837 patent is attached as Exhibit B.
`FIRST CLAIM FOR RELIEF
`(Declaratory Judgment That Apple Does Not Infringe The ’870 Patent)
`20. Apple repeats and realleges each and every allegation contained in
`paragraphs 1 through 19 of this Complaint as if fully set forth herein.
`21.
`In view of the facts and allegations set forth above, there is an actual,
`justiciable, substantial, and immediate controversy between Apple, on the one hand,
`and Zipit, on the other, regarding whether Apple infringes any claim of the ’870
`patent.
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT
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`Case 3:20-cv-04448 Document 1 Filed 07/03/20 Page 6 of 11
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`22. Apple does not infringe, and has not infringed, any claim of the ’870
`patent. For example, the ’870 patent has two independent claims (i.e., claims 1 and
`20) and Zipit previously identified claim 20 as allegedly infringed in the Former Zipit
`Litigation. Claim 20 is reproduced below:
`
`20. A method for managing wireless network access and instant
`messaging through a wireless access point with a handheld instant
`messaging terminal comprising:
`
`entering textual characters and graphical symbols with a data entry
`device of a handheld terminal to form instant messages for delivery to an
`instant messaging service;
`
`displaying the entered textual characters and graphical symbols on a
`display of the handheld terminal;
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`communicating instant messages with a wireless, Internet protocol
`access point, the instant messages being communicated with a
`communications module and wireless transceiver in the handheld
`terminal;
`
`coordinating authentication for coupling the handheld instant messaging
`terminal to a local network through the wireless, Internet protocol access
`point;
`
`implementing instant messaging and sessions protocols to control a
`conversation session through the wireless, Internet protocol access point,
`the instant messaging and session protocols being implemented within
`the handheld instant messaging terminals;
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`displaying conversation histories for active conversations terminated by
`a loss of a network connection; and
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`automatically searching for wireless, Internet protocol network beacons
`after the conversation histories are displayed.
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT
`CASE NO. 3:20-CV-4448
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`Case 3:20-cv-04448 Document 1 Filed 07/03/20 Page 7 of 11
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`23. Claim 1 recites similar limitations. Apple does not infringe any claims
`of the ’870 patent at least because no Apple product or service meets or embodies at
`least the following limitations as recited in the claims: “entering textual characters
`and graphical symbols with a data entry device of a handheld terminal to form instant
`messages for delivery to an instant messaging service”; “displaying the entered
`textual characters and graphical symbols on a display of the handheld terminal”;
`“communicating instant messages with a wireless, Internet protocol access point, the
`instant messages being communicated with a communications module and wireless
`transceiver in the handheld terminal”; “coordinating authentication for coupling the
`handheld instant messaging terminal to a local network through the wireless, Internet
`protocol access point”; “implementing instant messaging and sessions protocols to
`control a conversation session through the wireless, Internet protocol access point,
`the instant messaging and session protocols being implemented within the handheld
`instant messaging terminals”; “displaying conversation histories for active
`conversations terminated by a loss of a network connection”; and “automatically
`searching for wireless, Internet protocol network beacons after the conversation
`histories are displayed.”
`24. For example, as shown above, claim 20 recites “a data entry device” and
`“a display” as separate components with additional ascribed limitations. Apple’s
`iPhones do not have a separate “data entry device” as they contain only a display.
`Namely, Apple’s iPhones have a software keyboard as part of the display having
`distinct keyboard layouts for Emoji symbols and textual characters.
`25.
`In view of the foregoing, there is an actual, justiciable, substantial, and
`immediate controversy between Apple and Zipit regarding whether Apple infringes
`any claim of the ’870 patent.
`26. Apple is entitled to judgment declaring that it does not infringe the ’870
`patent. Apple has no adequate remedy at law.
`
`
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT
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`Case 3:20-cv-04448 Document 1 Filed 07/03/20 Page 8 of 11
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`SECOND CLAIM FOR RELIEF
`(Declaratory Judgment That Apple Does Not Infringe The ’837 Patent)
`27. Apple repeats and realleges each and every allegation contained in
`paragraphs 1 through 26 of this Complaint as if fully set forth herein.
`28.
`In view of the facts and allegations set forth above, there is an actual,
`justiciable, substantial, and immediate controversy between Apple, on the one hand,
`and Zipit, on the other, regarding whether Apple infringes any claim of the ’837
`patent.
`29. Apple does not infringe, and has not infringed, any claim of the ’837
`patent. For example, the ’837 patent has two independent claims (i.e., claims 1 and
`11) and Zipit previously identified claim 11 as allegedly infringed in the Former Zipit
`Litigation. Claim 11 is reproduced below:
`
`11. A method for managing wireless network access and instant
`messaging through a wireless access point with a handheld instant
`messaging terminal comprising:
`
`generating textual characters and graphical symbols in response to
`manipulation of keys on a data entry device of a handheld instant
`messaging terminal;
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`displaying the generated textual characters and graphical symbols on a
`display of the handheld instant messaging terminal;
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`generating data messages with the generated textual characters and
`graphical symbols in accordance with at least one instant messaging
`protocol that is compatible with an instant messaging service;
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`wirelessly transmitting the generated data messages to a wireless
`network access point through an Internet protocol communications
`module and wireless transceiver in the handheld instant messaging
`terminal; and
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT
`CASE NO. 3:20-CV-4448
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`Case 3:20-cv-04448 Document 1 Filed 07/03/20 Page 9 of 11
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`controlling a conversation session in accordance with the at least one
`instant messaging protocol being implemented with a control module
`located within the handheld instant messaging terminal.
`
`30. Claim 1 recites similar limitations. Apple does not infringe any claims
`of the ’837 patent at least because no Apple product or service meets or embodies at
`least the following limitations as used in the claimed inventions: “generating textual
`characters and graphical symbols in response to manipulation of keys on a data entry
`device of a handheld instant messaging terminal”; “displaying the generated textual
`characters and graphical symbols on a display of the handheld instant messaging
`terminal”; “generating data messages with the generated textual characters and
`graphical symbols in accordance with at least one instant messaging protocol that is
`compatible with an instant messaging service”; “wirelessly transmitting the generated
`data messages to a wireless network access point through an Internet protocol
`communications module and wireless transceiver in the handheld instant messaging
`terminal”; and “controlling a conversation session in accordance with the at least one
`instant messaging protocol being implemented with a control module located within
`the handheld instant messaging terminal.” For example, as shown above, claim 11
`recites “a data entry device” and “a display” as separate components with additional
`ascribed limitations. Apple’s iPhones do not have a separate “data entry device” as
`they contain only a display. Namely, Apple’s iPhones have a software keyboard as
`part of the display having distinct keyboard layouts for Emoji symbols and textual
`characters.
`31.
`In view of the foregoing, there is an actual, justiciable, substantial, and
`immediate controversy between Apple and Zipit regarding whether Apple infringes
`any claim of the ’837 patent.
`32. Apple is entitled to judgment declaring that it does not infringe the ’837
`patent. Apple has no adequate remedy at law.
`
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT
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`Case 3:20-cv-04448 Document 1 Filed 07/03/20 Page 10 of 11
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`B.
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`C.
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`D.
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`E.
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`Dated: July 3, 2020
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`
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`PRAYER FOR RELIEF
`Apple respectfully requests the following relief:
`A.
`That the Court enter a judgment declaring that Apple has not infringed
`and does not infringe any valid and enforceable claim of the ’870 patent
`asserted by Zipit to be infringed by Apple;
`That the Court enter a judgment declaring that Apple has not infringed
`and does not infringe any valid and enforceable claim of the ’837 patent
`asserted by Zipit to be infringed by Apple;
`That the Court declare that this case is exceptional under 35 U.S.C. §
`285 and award Apple its attorneys’ fees, costs, and expenses incurred in
`this action;
`That the Court award Apple any and all other relief to which Apple may
`show itself to be entitled; and
`That the Court award Apple any other relief as the Court may deem just,
`equitable, and proper.
`JURY DEMAND
`Apple hereby demands a jury trial on all issues and claims so triable.
`
`
`
`Respectfully submitted,
`
`By: /s/ Katherine D. Prescott
` Katherine D. Prescott, SBN 215496
`prescott@fr.com
`FISH & RICHARDSON P.C.
`500 Arguello Street, Suite 500
`Redwood City, CA 94063
`Phone: 650-839-5180 / Fax: 650-839-5071
`
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`Case 3:20-cv-04448 Document 1 Filed 07/03/20 Page 11 of 11
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`Indranil Mukerji, (pro hac vice application to be
`filed), mukerji@fr.com
`FISH & RICHARDSON P.C.
`1000 Maine Ave. SW, Suite 1000
`Washington, D.C. 20024
`Phone: (202) 783-5070
`Fax: (202) 783-2331
`
`Benjamin K. Thompson, (pro hac vice application
`to be filed), bthompson@fr.com
`Lawrence R. Jarvis, (pro hac vice application to be
`filed), jarvis@fr.com
`FISH & RICHARDSON P.C.
`1180 Peachtree Street, NE, 21st Floor
`Atlanta, GA 30309
`Phone: 404-582-5005
`Fax: 404-582-5002
`
`Attorneys for Plaintiff APPLE INC.
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