Case 3:21-cv-06059-TSH Document 1 Filed 08/05/21 Page 1 of 12
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`SHOOK, HARDY & BACON L.L.P.
`Jason M. Richardson
`555 Mission St., Ste. 2300
`San Francisco, CA 94105
`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)
`Lauren E. Douville (to be admitted pro hac vice)
`Mark D. Schafer (to be admitted pro hac vice)
`Maxwell C. McGraw (to be admitted pro hac vice)
`2555 Grand Blvd.
`Kansas City, MO 64108
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`Attorneys for Apple Inc.
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE NORTHERN DISTRICT OF CALIFORNIA
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`SAN JOSE DIVISION
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`APPLE INC.,
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`vs.
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`Plaintiff,
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`TRAXCELL TECHNOLOGIES, LLC,
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`Defendant.
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`Case No._[__________]____
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`APPLE’S COMPLAINT FOR
`DECLARATORY JUDGMENT OF NON-
`INFRINGEMENT OF U.S. PATENT NO.
`10,820,147
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`JURY TRIAL DEMANDED
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`Case 3:21-cv-06059-TSH Document 1 Filed 08/05/21 Page 2 of 12
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`Plaintiff Apple Inc. (“Apple”) files this Complaint for Declaratory Judgment of Non-
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`Infringement against Defendant Traxcell Technologies, LLC (“Traxcell” or “Defendant”) and in
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`support of its Complaint alleges as follows:
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`NATURE OF THE ACTION
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`1.
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`This is an action for a declaratory judgment of non-infringement arising under the
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`patent laws of the United States, Title 35 of the United States Code.
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`2.
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`Apple has pioneered the design and manufacture of industry-defining consumer
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`electronics for more than four decades. Apple’s commitment to innovation has led to some of the
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`most popular products on the market during that span, including, for example, the Macintosh PC,
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`iPod, MacBook, iPhone, iPad, Apple Watch, and AirPods. As a result of Apple’s dedication to
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`innovation, the U.S. Patent and Trademark Office has awarded Apple thousands of patents
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`protecting the technologies underlying its groundbreaking inventions.
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`3.
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`Defendant Traxcell, on the other hand, is a patent assertion entity formed for the sole
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`purpose of generating revenue by asserting patents against other companies’ products. Traxcell’s
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`prior actions and statements have created a substantial controversy of sufficient immediacy and
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`reality to warrant the issuance of a declaratory judgment of non-infringement as to whether Apple
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`products infringe U.S. Patent No. 10,820,147 (“the ‘147 patent” or “Asserted Patent”).
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`4.
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`On January 26, 2021, Traxcell filed a complaint for patent infringement against Apple
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`in the Western District of Texas. See Traxcell Techs., LLC v. Apple, Inc., Case No. 6:21-cv-00074
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`(Dkt. 1) (hereinafter “Texas Complaint”).
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`5.
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`In the Texas Complaint, Traxcell alleges that Apple products that support the Apple
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`Maps application platform infringe U.S. Patent No. 9,918,196 (“the ‘196 patent”) and U.S. Patent
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`No. 9,549,388 (“the ‘388 patent”). The Texas Complaint does not assert that Apple infringes the
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`‘147 patent.
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`6.
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`On June 24, 2021, Traxcell served Apple with its preliminary infringement
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`contentions related to the allegations in the Texas Complaint. See Ex. A. However, even though
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`Traxcell did not assert the ‘147 patent in the Texas Complaint or identify the ‘147 patent as an
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`asserted patent in the cover pleading for its contentions, Traxcell nonetheless included contentions
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`COMPLAINT FOR DECLARATORY JUDGMENT
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`Case 3:21-cv-06059-TSH Document 1 Filed 08/05/21 Page 3 of 12
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`and claim charts that mapped 19 claims from the ‘147 patent against Apple products. See Ex. B.
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`7.
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`Traxcell has not amended the Texas Complaint to assert the ‘147 patent as of the filing
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`of this action.
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`8.
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`On July 15, 2021, Traxcell directed communications to Apple in California, through
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`Apple’s counsel, that Traxcell intends to assert the ‘147 patent against Apple’s products consistent
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`with the claim charts it served Apple in connection with the allegations in the Texas Complaint. On
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`August 4, 2021, Traxcell sent Apple a draft complaint for the Western District of Texas asserting
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`that Apple infringes the ‘147 patent. Ex. C.
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`9.
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`Apple thus brings this action to obtain a declaratory judgment that Apple’s products
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`do not infringe the ‘147 patent, directly or indirectly, literally, or under the doctrine of equivalents.
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`10. This Court should not allow the threat of a future lawsuit and uncertainty surrounding
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`Traxcell’s allegations to harm and cause unpredictability to Apple’s business.
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`THE PARTIES
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`11. Plaintiff Apple is a California corporation having its principal place of business at
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`One Apple Park Way, Cupertino, California 95014. Apple has over 20,000 employees who work in
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`or near its headquarters in Cupertino, California.
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`12. On information and belief, Defendant Traxcell is a limited liability company
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`organized under the laws of the State of Texas, with a principal place of business at 103 Country
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`Club Drive, #508, Marshall, Texas 75672.
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`13. On information and belief, including Traxcell’s allegations in co-pending litigations
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`filed in Texas, Traxcell is the owner by assignment of the ‘147 patent.
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`JURISDICTION AND VENUE
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`14. This action arises under the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et
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`seq., and under the patent laws of the United States, Title 35 of the United States Code.
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`15. The Court has subject matter jurisdiction over the claims alleged in this action
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`pursuant to 28 U.S.C. §§ 1331, 1338(a), and 2201 because this action involves claims arising under
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`the patent laws of the United States, 35 U.S.C. § 1, et seq., and under the Federal Declaratory
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`Judgment Act, 28 U.S.C. §§ 2201 and 2202. Jurisdiction is also proper because Traxcell is a citizen
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`COMPLAINT FOR DECLARATORY JUDGMENT
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`Case 3:21-cv-06059-TSH Document 1 Filed 08/05/21 Page 4 of 12
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`of a different state than Apple, and the value of the controversy exceeds $75,000.
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`16. Traxcell is subject to personal jurisdiction in this Court at least because Traxcell
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`engaged in actions in this District that form the basis of Apple’s claims against Traxcell and that
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`have created a real, live, immediate and justiciable case or controversy between Traxcell and Apple.
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`17. Traxcell has purposefully directed and continues to direct acts to this District,
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`including acts specifically pertaining to the ‘147 patent. For instance, even though Traxcell did not
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`assert the ‘147 patent in its allegations in the Texas Complaint, Traxcell nevertheless served Apple
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`with contentions that mapped Apple products, such as Apple Maps running on Apple mobile devices
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`(the “Accused Apple Products”), that are developed, designed, marketed, and sold or offered for
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`sale in this District, against 19 claims in the ‘147 patent. Then, after serving these infringement
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`contentions, Traxcell’s counsel sent correspondence to Apple on August 4, 2021 informing Apple
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`that Traxcell intended to assert the ‘147 patent against Apple. Traxcell’s communication with Apple
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`included a draft complaint with allegations pertaining to Apple’s alleged infringement of the ‘147
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`patent.
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`18. Traxcell’s ongoing and amplified threats of enforcement against Apple in this District,
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`which have included numerous communications spanning more than a month such as its service of
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`claim charts, identification of the counsel it retained to assert the ‘147 patent and the venue in which
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`it plans to assert the ‘147 patent, and its service of the draft complaint it intends to file, all
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`demonstrate Traxcell’s conscious and purposeful contacts with this District. This District is also the
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`most convenient District for the present declaratory judgment claims because, among other things,
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`relevant witnesses and evidence concerning Apple’s products are located in this District.
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`19. Furthermore, on information and belief, Traxcell has directed other communications
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`to companies in this District related to enforcing the ‘147 patent. For example, on January 12, 2021,
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`Traxcell served a patent infringement complaint against Google LLC (“Google”) in the Western
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`District of Texas. See Traxcell Techs. LLC v. Google LLC, Case No. 6:21-cv-00023-ADA (W.D.
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`Tex.) (hereinafter “the Google Complaint”). In the Google Complaint, Traxcell asserted the same
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`two patents it asserted against Apple in the Texas Complaint—the ‘196 patent and the ‘388 patent.
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`Following the same pattern, Traxcell subsequently served infringement contentions on Google that
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`COMPLAINT FOR DECLARATORY JUDGMENT
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`mapped Google products against the ‘147 patent claims even though it had not asserted that patent
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`in the original Google Complaint. Just like with Apple, following those contentions, Traxcell sent
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`communications and a draft amended complaint to Google that included allegations of infringement
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`for the ‘147 patent.
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`20. On information and belief, Google is a Delaware corporation with a principal place
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`of business located in this District at 1600 Amphitheatre Parkway, Mountain View, California
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`94043. Thus, Traxcell has directed relevant and repeated communications regarding the threat of
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`litigation for the ‘147 patent to residents of this District other than Apple.
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`21. Additionally, Traxcell is subject to personal jurisdiction in this District because one
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`of the named inventors of the ‘147 patent, Stephen Palik, participated in prosecution activities from
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`his residence in Redondo Beach, California. His significant prosecution activities, including, on
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`information and belief, the conception and constructive reduction to practice of the ‘147 patent,
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`occurred in California. Stephen Palik and the co-inventor assigned all rights to the parent patent to
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`the ‘147 patent and all continuation applications for related patents, including the ‘147 patent, on
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`October 3, 2016. Therefore, at the time Stephen Palik participated in prosecution of the ‘147 patent
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`from California, he was operating in concert with (and for the benefit of) Traxcell who was assigned
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`the application as of October 3, 2016.
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`22. Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391(b) and 1391(c) because
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`a substantial part of the events giving rise to the claims alleged in this Complaint occurred in this
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`District and Defendants are subject to the Court’s personal jurisdiction with respect to this civil
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`action.
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`23. For these reasons and the reasons set forth below, a substantial controversy exists
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`between the parties which is of sufficient immediacy and reality to warrant declaratory relief.
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`INTRADISTRICT ASSIGNMENT
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`24. This is an intellectual property action subject to district-wide assignment pursuant to
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`Local Rules 3-2(c) and 3-5(b).
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`THE ASSERTED PATENT
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`25. On October 27, 2020, the United States Patent and Trademark Office (the “Patent
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`COMPLAINT FOR DECLARATORY JUDGMENT
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`Case 3:21-cv-06059-TSH Document 1 Filed 08/05/21 Page 6 of 12
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`Office”) issued the ‘147 patent, entitled “Mobile Wireless Device Providing Off-Line and On-Line
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`Geographic Navigation Information” to Mark Jefferson Reed and Stephen Michael Palik. A true
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`and correct copy of the ‘147 patent is attached as Exhibit D. On information and belief, Traxcell is
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`the owner by assignment of the ‘147 patent resulting from an October 2016 assignment of all future
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`patent applications from Messrs. Reed and Palik to Traxcell.
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`26. The ‘147 patent issued from U.S. Patent Application No. 16/788,498 (“the ‘498
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`Application”) filed on February 12, 2020.
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`27. On information and belief, as of the filing date of the ‘147 patent and through its
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`issuance, Stephen Palik was a resident of California. For instance, a February 11, 2020 Application
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`Data Sheet filed by Traxcell in connection with its prosecution of the ‘147 patent lists Mr. Palik’s
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`address in Redondo Beach, CA.
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`COUNT ONE
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`(Declaratory Judgment of Non-Infringement of U.S. Patent No. 10,820,147)
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`28. Apple repeats and realleges Paragraphs 1 through 27 of this Complaint.
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`29. Apple has not infringed and does not infringe any claims of the ‘147 patent either
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`directly, contributorily, or by inducement, literally or under the doctrine of equivalents, including
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`through its making, use, importation into the United States, sale, and/or offer for sale of any Apple
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`products.
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`30. Claim 1 of the ‘147 patent is directed to:
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` A
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` wireless communication system including:
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` a
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` first radio-frequency transceiver within a wireless mobile communications device
`and an associated first antenna to which the first radio-frequency transceiver is
`coupled, wherein the first radio-frequency transceiver is configured for radio-
`frequency communication with a wireless communication network;
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` a
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` first processor within the wireless mobile communications device couples to the
`at least one first radio-frequency transceiver programmed to receive information
`indicative of a location of the wireless mobile communications device and generate
`an indication of a location of the wireless mobile communications device with
`respect to geographic features according to mapping information stored within the
`wireless mobile communications device, and wherein the first processor determines
`user navigation information according to the location of the wireless mobile
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`COMPLAINT FOR DECLARATORY JUDGMENT
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`Case 3:21-cv-06059-TSH Document 1 Filed 08/05/21 Page 7 of 12
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`communications device with respect to the geographic features and a destination
`specified at the wireless mobile communications device, wherein the first processor
`further sends the user navigation information to the network as a number of
`segments, wherein at least one other processor outside the network updates the user
`navigation information in conformity with traffic congestion information accessible
`to the at least one other processor outside the network by computing a numerical
`value for the segments corresponding to the expected time to travel through the
`segments, updates the user navigation information in conformity with the numerical
`values for the segments, and sends the updated user navigation information to the
`wireless mobile communications device;
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`at least one second radio-frequency transceiver and an associated at least one
`second antenna of the wireless communication network to which the second radio-
`frequency transceiver is coupled; and
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` a
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` second processor coupled to the at least one second radio-frequency transceiver
`coupled to the at least one second radio-frequency transceiver programmed to
`acquire the information indicative of a location of the wireless mobile
`communications device, wherein the second processor selectively acquires the
`information indicative of a location of the wireless mobile communications device
`dependent on the setting of preference flags, wherein the second processor acquires
`the information indicative of a location of the wireless mobile communications
`device if the preference flags are set to a state that permits tracking of the wireless
`mobile communications device, and wherein the second processor does not acquire
`the information indicative of the location of the wireless mobile communications
`device if the preference flags are set to a state that prohibits tracking of the wireless
`mobile communications device. (Exhibit D, ‘147 Patent, at Claim 1).
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`31. The Accused Apple Products do not infringe claim 1 of the ‘147 patent because the
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`products do not include every limitation required by claim 1. As one example, claim 1, like each
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`claim in the ‘147 patent, requires at least one component (and sometimes more than one) to reside
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`in a “communication network” to perform certain steps. Specifically, claim 1 requires “at least one
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`second radio frequency transceiver and an associated at least one second antenna of the wireless
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`communications network . . . .” (Ex. D, ‘147 Patent at Claim 1). Apple cannot infringe these
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`limitations because the accused network components are owned and operate by third-party cellular
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`network operators.
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`32. Traxcell cannot and does not dispute this fact, and admits in its own preliminary
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`infringement contentions it served on Apple that cellular towers and base stations in the
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`communications network include the radio-frequency transceivers and antennas required by claim
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`1:
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`COMPLAINT FOR DECLARATORY JUDGMENT
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`Case 3:21-cv-06059-TSH Document 1 Filed 08/05/21 Page 8 of 12
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` A
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` communication network includes cell sites or towers (examples of different
`types of access points or towers, which provide radio communication to and from
`wireless communication devices (specifically one or more of the mobile wireless
`communications devices identified on Exhibit-B). Thus, the cell sites (base
`stations) include the radio frequency transceiver coupled with antenna in any
`communication network. Towers and base stations include radio-frequency
`transceivers designed and used for radio-frequency communication with at least
`one antenna. (See Ex. D, ’147 Claim Chart at 39 (emphasis added)).
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`33. Traxcell’s claim charts do not attribute the cell sites, base stations, towers,
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`transceivers, or antennas to Apple. This is because Apple does not design, develop, manufacture,
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`own or operate any such elements in a communication network.
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`34. Separately and additionally, other claims of the ‘147 patent suffer the same defect.
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`Claim 11 recites:
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`A method of providing navigation information within a wireless communications
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`network, the method comprising:
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`the wireless
`to
`at a wireless mobile communications device coupled
`communications network and having a first radio-frequency transceiver coupled to
`an associated first antenna, receiving information indicative of a location of the
`mobile wireless communications device;
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`within the wireless mobile communications device, a first processor within the
`wireless mobile communications device coupled to the first radio-frequency
`transceiver generating an indication of a location of the at least one wireless mobile
`communications device with respect to geographic features according to mapping
`information retrieved from a storage within the wireless mobile communications
`device;
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`the first processor determining user navigation information;
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`sending the user navigation information to the at least one other processor outside
`the network as a number of segments;
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`at a remote location within the at least one other processor outside the network,
`updating the user navigation information in conformity with traffic congestion
`information accessible to the remote location within the network by computing a
`numerical value for the segments corresponding to the expected time to travel
`through the segments, and wherein the updating is performed in conformity with
`the numerical values for the number of segments;
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`sending the updated user navigation information to the wireless mobile
`communications device;
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`the first processor displaying the user navigation information according to the
`8
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`COMPLAINT FOR DECLARATORY JUDGMENT
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`Case 3:21-cv-06059-TSH Document 1 Filed 08/05/21 Page 9 of 12
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`location of the wireless mobile communications device with respect to the
`geographic features and a destination specified by the wireless mobile
`communications device;
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`within the wireless communications network, a second processor coupled to at least
`one second radio-frequency transceiver coupled to an associated second antenna
`selectively acquiring the information indicative of a location of the wireless mobile
`communication device in dependence on a setting of preference flags, wherein the
`selectively acquiring the information indicative of a location of the wireless mobile
`communications device if the preference flags are set to a state that permits tracking
`of the user of the wireless mobile communications device, and wherein the
`selectively determining does not acquire the information indicative of a location of
`the wireless mobile communications device if the preference flags are set to a state
`that prohibits tracking of the wireless mobile communications device. (Exhibit D,
`‘147 Patent, at Claim 11).
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`35.
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` In particular, claim 11 requires: “within the wireless communication network, a
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`second processor coupled to at least one second radio-frequency transceiver coupled to an
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`associated second antenna selectively acquiring the information indicative of a location of the
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`wireless mobile communication device.” (Ex. D, ‘147 Patent at Claim 11 (emphasis added)).
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`Similar to claim 1, Apple cannot infringe this limitation because Apple does not design, develop,
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`manufacture, own or operate the cell sites, base stations, towers, transceivers, or antennas in the
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`accused wireless communication network.
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`36. Similarly, Claim 22 recites:
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`A wireless mobile communications device including:
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`a radio-frequency transceiver and an associated antenna to which the radio-
`frequency transceiver is coupled, wherein the radio-frequency transceiver is
`configured for radio-frequency communication with a wireless communications
`network; and
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`a first processor coupled to the at least one radio-frequency transceiver programmed
`to receive a location of the wireless mobile communications device and generate
`an indication of a location of the at least one wireless mobile communications
`device with respect to geographic features according to mapping information stored
`within the wireless mobile communications device, wherein the first processor
`determines whether or not the mapping information stored within the wireless
`mobile communications device is sufficient to display the navigation information
`to the user, responsive to the first processor determining that the mapping
`information is not sufficient, the first processor requesting additional mapping
`information from at least one other processor outside the wireless communications
`network and responsive to the first processor requesting additional mapping
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`COMPLAINT FOR DECLARATORY JUDGMENT
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`Case 3:21-cv-06059-TSH Document 1 Filed 08/05/21 Page 10 of 12
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`information from the at least one other processor outside the wireless
`communications network, receiving the additional mapping information from the
`at least one other processor outside the wireless communications network and
`updating
`the mapping
`information stored within
`the wireless mobile
`communications device, wherein the first processor determines and displays the
`navigation information to the user using the additional mapping information, the
`location of the wireless mobile communications device with respect to the
`geographic features and a destination specified by the user at the wireless mobile
`communications device, and wherein the first processor communicates to the
`mobile communications network a setting of preference flags, wherein the first
`processor further sends the user navigation information to the at least one other
`processor outside of the network, wherein the at least one other processor outside
`of the network updates the user navigation information in conformity with traffic
`congestion information accessible to the other processor coupled to the network
`and transmits the updated user navigation information to the mobile device,
`wherein the first processor further sends the user navigation information to the at
`least one other processor outside of the network as a number of segments, and
`wherein the at least one other processor outside of the network computes a
`numerical value for each segment corresponding to the expected time to travel
`through the segment and wherein the user navigation information is updated in
`conformity with the numerical values for the number of segments, wherein the
`mobile communications network selectively acquires information indicative of a
`location of the mobile communications device and communicates the information
`indicative of a location of the wireless mobile communications device to the
`wireless mobile communications device dependent on the setting of the preference
`flags, wherein if the preference flags are set to a state that permits tracking of the
`user of the wireless mobile communications device the at least one other processor
`outside the wireless communications network receives the location of the wireless
`mobile communications device, and wherein if the preference flags are set to a state
`that prohibits tracking of the wireless mobile communications device, the at least
`one other processor outside the wireless communications network does not receive
`the location of the wireless mobile communications device. (Exhibit D, ‘147 Patent,
`at Claim 22).
`
`37.
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` In particular, claim 22 requires: “the mobile communications network selectively
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`acquires information indicative of a location of the mobile communications device and
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`communicates the information indicative of a location of the wireless mobile communications
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`device to the wireless mobile communications device.” (Id. at Claim 22 (emphasis added)). Just as
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`in claims 1 and 11, Apple does not design, develop, manufacture, own, or operate any such elements
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`that would satisfy this limitation.
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`38. Accordingly, at least for the above reasons, the Accused Apple Products do not
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`infringe independent claims 1, 11, and 22 of the ‘147 patent and all dependent claims either literally
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`or under the doctrine of equivalents.
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`COMPLAINT FOR DECLARATORY JUDGMENT
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`Case 3:21-cv-06059-TSH Document 1 Filed 08/05/21 Page 11 of 12
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`39. Apple also does not induce infringement of the ‘147 patent, or otherwise indirectly
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`infringe the ‘147 patent, for at least the reasons stated above with respect to no underlying direct
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`infringement of the ‘147 patent, because Apple has not acted with specific intent necessary for
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`induced infringement, and because Apple does not own or operate components required by the
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`claims.
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`40. Apple also does not contributorily infringe claims 1, 11, and 22 of the ‘147 patent and
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`all dependent claims for at least the reasons stated above with respect to no underlying direct
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`infringement of the ‘147 patent, because Apple has not acted with specific intent necessary for
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`contributory infringement, and because Apple does not own or operate components required by the
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`claims.
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`41. As set forth above, there exists an actual controversy between Apple and Traxcell
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`with respect to alleged infringement of the ‘147 patent of sufficient immediacy and reality to warrant
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`the issuance of a declaratory judgment as to whether the asserted claims of the ‘147 patent are
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`infringed. Accordingly, Apple desires a judicial determination and declaration of the respective
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`rights and duties of the parties with respect to the ‘147 patent.
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`42. Apple is entitled to a judicial determination that Apple has not directly infringed,
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`induced others to infringe, or contributed to the infringement of the asserted claims of the ‘147
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`patent.
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`43. A judicial declaration is necessary and appropriate so that Apple may ascertain its
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`rights regarding the claims of the ‘147 patent.
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`PRAYER FOR RELIEF
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`WHEREFORE, Apple respectfully requests that judgment be entered:
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`A.
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`B.
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`Declaring that judgment be entered in favor of Apple and against Traxcell;
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`Declaring that Apple has not and does not infringe, either directly, contributorily, by
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`inducement, or willfully, any claim of the ‘147 patent by making, using, selling,
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`offering to sell, and/or importing the Accused Apple Products;
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`C.
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`Finding this to be an exceptional case under 35 U.S.C. § 285, and awarding Apple its
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`reasonable attorney’s fees;
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`Case 3:21-cv-06059-TSH Document 1 Filed 08/05/21 Page 12 of 12
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`D.
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`E.
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`Awarding Apple its costs associated with this case;
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`Awarding Apple any other remedy or relief to which Apple may be entitled and which
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`the Court deems just, proper, and equitable.
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`JURY DEMAND
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`Apple demands a trial by jury on all claims and issues so triable.
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`August 5, 2021
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`
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`Respectfully Submitted
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`SHOOK, HARDY & BACON L.L.P.
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`By: /s/ Jason M. Richardson
`Jason M. Richardson
`Attorney for Apple Inc.
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`COMPLAINT FOR DECLARATORY JUDGMENT
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