Case 1:24-cv-00344-UNA Document 1 Filed 03/15/24 Page 1 of 28 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Assurant, Inc.,
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`Plaintiff,
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`v.
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`Intellectual Ventures I LLC, Intellectual
`Ventures II LLC, and Callahan Cellular
`L.L.C.,
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`Defendants.
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`C.A. No. ________
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`JURY TRIAL DEMANDED
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`COMPLAINT FOR DECLARATORY JUDGMENT
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`Plaintiff Assurant, Inc. (“Assurant”) brings this Complaint for Declaratory Judgment
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`against Defendants Intellectual Ventures I LLC, Intellectual Ventures II LLC, and Callahan
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`Cellular L.L.C. (collectively, “IV”) based on IV’s unjustified and unfounded allegations that
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`Assurant’s operations directly and/or indirectly infringe certain patents purportedly held by IV.
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`Assurant alleges as follows:
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`NATURE OF THE ACTION
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`1.
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`This is an action under the patent laws of the United States, Title 35, United States
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`Code, seeking a declaratory judgment against IV based on its accusations that Assurant infringes
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`certain of its patents, including U.S. Patent Nos. 10,567,391 (“the ’391 Patent”), 8,332,844 (“the
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`’844 Patent”), 7,314,167 (“the ’167 Patent”), 7,949,785 (“the ’785 Patent”), and 7,712,080 (“the
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`’080 Patent”) (collectively, the “DJ Patents”), as set forth in Counts I-V, below.
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`2.
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`On information and belief, Callahan Cellular L.L.C. is the assignee of the ’391
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`Patent.
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`3.
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`On information and belief, Callahan Cellular L.L.C. possesses all rights, including
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`enforcement, in the ’391 Patent.
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`4.
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`On information and belief, Intellectual Ventures II LLC is the assignee of the ’844
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`Patent and the ’167 Patent.
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`5.
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`On information and belief, Intellectual Ventures II LLC possess all rights, including
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`enforcement, in the ’844 Patent and the ’167 Patent.
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`6.
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`On information and belief, Intellectual Ventures I LLC is the assignee of the ’785
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`Patent and the ’080 Patent.
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`7.
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`On information and belief, Intellectual Ventures I LLC possess all rights, including
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`enforcement, in the ’785 Patent and the ’080 Patent.
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`THE PARTIES
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`8.
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`On information and belief, Defendant Intellectual Ventures I LLC (“IV I”) is a
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`Delaware limited liability company, with its principal place of business located at 3150 139th
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`Avenue SE, Bellevue, Washington 98005.
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`9.
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`On information and belief, Defendant Intellectual Ventures II LLC (“IV II”) is a
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`Delaware limited liability company, with its principal place of business located at 3150 139th
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`Avenue SE, Bellevue, Washington 98005.
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`10.
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`On information and belief, Defendant Callahan Cellular L.L.C. (“Callahan”) is a
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`Delaware limited liability company, with its principal place of business located at 2711 Centerville
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`Road, Suite 400 Wilmington, Delaware 19808.
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`11.
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`On information and belief, IV I, IV II, and Callahan have conspired to monetize the
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`DJ patents, including but not limited to licensing the DJ Patents and/or engaging in litigation
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`related to the DJ Patents.
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`12.
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`On information and belief, IV I, IV II, and Callahan are owned and/or operated by
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`a common entity, or are otherwise under common control.
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`13.
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`On information and belief, Callahan has assigned hundreds of patents to IV I, IV
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`II, and related entities.
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`14.
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`On information and belief, many of the patents assigned by Callahan to IV I, IV II,
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`or related entities have been subsequently asserted in litigation by IV I, IV II, and/or related
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`entities.
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`15.
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`By way of example, Callahan assigned U.S. Patent Nos. 7,016,963, 9,092,546 and
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`9,686,378 to IV II on September 18, 2018.
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`16.
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`As part of the assignment, the same individual (Tracy Lemke) signed on behalf of
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`both Callahan (as an Authorized Person) and IV II (as the Assistant Company Secretary).
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`17.
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`Subsequently, IV II asserted each patent against VMware Inc. in the Western
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`District of Texas. See Case Nos. 6-20-cv-00220, -00457.
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`18.
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`19.
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`As another example, Callahan assigned U.S. RE 42,153 to IV II on May 6, 2016.
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`As part of the assignment, Tracy Lemke signed on behalf of Callahan as an
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`Authorized Person.
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`20.
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`As alleged above, Tracy Lemke was the Assistant Company Secretary of IV II at
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`the time of the assignment.
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`21.
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`Subsequently, IV II asserted U.S. RE 42,153 against Arista Networks, Inc. and
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`Hewlett Packard Enterprise Company in the Western District of Texas. See Case Nos. 6-20-cv-
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`00749, 6-21-cv-00226.
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`22.
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`As another example, Callahan assigned U.S. Patent No. 7,199,715 to IV II on
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`August 4, 2016.
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`23.
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`As part of the assignment, the same individual (Tracy Lemke) signed on behalf of
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`both Callahan and IV II as an Authorized Person of both parties.
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`24.
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`Subsequently, IV II asserted U.S. Patent No. 7,199,715 against FedEx Corporation
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`in the Eastern District of Texas. See Case No. 2-16-cv-00980.
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`25.
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`As another example, Callahan assigned U.S. Patent No. 6,782,370 to IV II on Feb.
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`15, 2016.
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`26.
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`As part of the assignment, Tracy Lemke signed on behalf of Callahan as an
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`Authorized Person.
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`27.
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`As alleged above, Tracy Lemke was the Assistant Company Secretary of IV II at
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`the time of the assignment.
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`28.
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`Subsequently, IV II asserted U.S. Patent No. 6,782,370 against J Crew Group, Inc.
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`and FTD Companies, Inc. in the Eastern District of Texas. See Case Nos. 6-16-cv-00195, -00196.
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`29.
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`Assurant is a domestic corporation organized under the laws of the state of
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`Delaware, with its principal place of business located at 260 Interstate N Cir SE, Atlanta, GA
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`30339.
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`30.
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`Assurant is a leading global provider of comprehensive risk management solutions
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`for the auto, lifestyle, and housing protection sectors. Assurant also helps businesses manage the
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`risk of property damage, liability, and financial loss, theft, and natural disasters.
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`JURISDICTION AND VENUE
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`31.
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`Assurant repeats the allegations in the preceding paragraphs as if fully set forth
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`herein.
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`32.
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`This Declaratory Judgment Complaint includes counts for declaratory relief under
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`the patent laws of the United States, 35 U.S.C. §§ 1, et seq.
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`33.
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`Pursuant to the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202, Assurant
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`seeks a declaration from the Court that Assurant does not infringe the DJ Patents, described in the
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`following paragraphs.
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`34.
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`This Court has subject matter jurisdiction over the claims alleged in this action
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`under 28 U.S.C. §§ 1331, 1338, 2201, and 2202 because this Court has exclusive jurisdiction over
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`declaratory judgment claims arising under the patent laws of the United States pursuant to 28
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`U.S.C. §§ 1331, 1338, 2201, and 2202.
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`35.
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`This Court can provide the declaratory relief sought in this Declaratory Judgment
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`Complaint because an actual case and controversy exists between the parties within the scope of
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`this Court’s jurisdiction pursuant to 28 U.S.C. § 2201.
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`36.
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`An actual case and controversy exists because IV has accused Assurant of
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`infringing the DJ Patents and indicated its intention to take the steps necessary to protect its
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`intellectual property rights. As discussed below, Assurant does not infringe and has not infringed
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`the DJ Patents; and therefore, Assurant has the right to engage in the complained-of activity, to the
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`extent it even conducts the complained-of activity at all, much less in the United States.
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`37.
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`IV’s actions have created a real, immediate, and justiciable dispute between
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`Assurant and IV as to whether Assurant’s operations infringe the DJ Patents.
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`38.
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`IV’s actions include threatening emails that Assurant is purportedly required to
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`license the DJ Patents, specific allegations that Assurant infringes each of the DJ Patents,
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`representations that IV intends to pursue future litigation against companies who do not license its
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`patent portfolio, IV’s warning that “if you plan to take a license, you do so sooner than later,” and
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`the history of litigation by IV against other entities it claims are in similar positions as Assurant.
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`39.
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`On Wednesday, January 3, 2024, Steve Joroff contacted Assurant on behalf of IV
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`to “initiate a dialogue concerning intellectual property and licensing matters with Assurant.” A
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`reproduction of that January 3, 2024, email from Mr. Joroff is depicted below. As the Vice
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`President of Licensing at IV, all of Mr. Joroff’s communications to Assurant were on behalf of IV,
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`and he was authorized to make those statements on IV’s behalf.
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`40. Mr. Joroff, on behalf of IV, indicated an intent to “cover an overview of IV’s
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`expansive patent portfolio and its relevance to Assurant’s operations” in order to “determine the
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`direction of patent license discussion.” Mr. Joroff acknowledged that IV’s business is in “patent
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`aggregation, licensing, and sales.”
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`41. Mr. Joroff, on behalf of IV, specifically alleged that IV’s “patents cover some of
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`the technology integral to Assurant’s daily operations, including cloud computing, networking,
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`security, storage, digital payments, and utilization of open-source software, among others.” He
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`also claimed that future interaction was “imminent.”
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`42.
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`Indeed, on January 12, 2024, Mr. Joroff, on behalf of IV, sent a second email to
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`address the “pressing need for a patent license agreement with Assurant.” Mr. Joroff’s January 12,
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`2024, email is depicted below.
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`43. Mr. Joroff, on behalf of IV, stated that IV “must address the pressing need for a
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`patent license agreement with Assurant” and that IV’s proposed license was “not an offer that can
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`be refused; rather, it is a crucial step to ensure compliance with IV’s patent portfolio.”
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`44.
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`Subsequently, IV sent Assurant a “Banking Tech Presentation” which identified
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`software platforms allegedly used by Assurant, as well as specific claims of the DJ Patents that IV
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`believes relate to and/or cover those platforms:
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`• The Docker platform, which IV believes practices at least Claim 7 of the ’844 Patent;
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`• The Kubernetes platform, which IV believes practices at least Claim 30 of the ’785 Patent;
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`• The Zelle® platform, which IV believes practices at least Claim 43 of the ’167 Patent; and
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`• The 3DSecure2 platform, which IV believes practices at least Claim 18 of the ’391 Patent.
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`45.
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`On February 12, 2024 IV sent a presentation titled “IIF [(“Invention Investment
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`Funds”)] Licensing Opportunity: Assurant” which alleged that the “IIF portfolio [has been]
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`repeatedly validated in litigation” and indicated that “IIF has filed 160+ cases to date.”
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`46.
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`The presentation further alleged that IV’s “financial services” litigation campaign
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`(which it considers Assurant to be a part of) is “active” and that IV’s “litigation tends to be in
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`multiple waves.”
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`47.
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`As part of the presentation, IV further identified “Assurant’s Example use of OSS
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`Applications” including use of “Apache Hadoop.”
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`48.
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`In the same presentation, IV further identified the ’080 Patent as allegedly infringed
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`by Assurant’s purported use of Apache Hadoop.
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`49.
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`On March 13, 2024, IV further circulated a draft license agreement with allegedly
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`preferential terms. At that time, Mr. Joroff, on behalf of IV, stated that “The availability of an
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`MFN [(“Most-Favored Nations clause”)] to financial services licensees will not be indefinite so I
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`recommend that if you plan to take a license, you do so sooner than later.”
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`50.
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`IV has a history of aggressive litigation against other parties similarly situated to
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`Assurant, including asserting the DJ Patents in patent litigation.
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`51.
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`IV filed suit in the Eastern District of Texas on November 15, 2023, and alleged
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`that JP Morgan Chase & Co.’s use of the Docker platform, the Zelle® platform, the Kubernetes
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`platform infringes, inter alia, the ’844, ’167, and ’785 Patents. See Intellectual Ventures I LLC, et
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`al. v. JP Morgan Chase & Co., No. 2:23-cv-523-JRG (E.D. Tex. Nov. 15, 2023), D.I. 1.
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`52.
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`IV also in November 2023 alleged that Comerica Incorporated’s use of the Docker
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`platform and the Kubernetes platform infringes the ’844 and ’785 Patents. See Intellectual
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`Ventures I LLC, et al. v. Comerica Incorporated, No. 2:23-cv-00524-JRG (E.D. Tex. Nov. 15,
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`2023), D.I. 1.
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`53.
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`IV also in November 2023 alleged that Liberty Mutual Holding Company Inc. and
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`its affiliates’ use of the Docker platform and the Kubernetes platform infringes the ’844 and ’785
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`Patents. See Intellectual Ventures I LLC, et al. v. Liberty Mutual Holding Company Inc. et al., No.
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`2:23-cv-00525-JRG (E.D. Tex. Nov. 15, 2023), D.I. 1.
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`54.
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`This currently pending litigation demonstrates IV’s pattern of practice: first
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`asserting its patent rights via offers to “negotiate” licensing agreements and second, when it does
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`not reach a license resolution, running to the Eastern District of Texas to sue its “prospective
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`licensees.”
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`55.
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`For example, in its complaint against Comerica Incorporated, IV included a notice
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`letter as an exhibit which was sent the day before the complaint was filed. See Intellectual Ventures
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`I LLC, et al. v. Comerica Incorporated, No. 2:23-cv-00524-JRG (E.D. Tex. Nov. 15, 2023), D.I.
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`1, Ex. 5. Within the notice letter, IV emphasized that it “does not authorize Comerica or
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`Comerica’s customers or partners to practice any of these patents without a license.” Id. Further,
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`IV stated that it was “willing to offer a license to Comerica and remains open to business
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`discussions with Comerica to negotiate such a license, either to the specifically referenced patents,
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`or to all or a subset of the IV patent rights.” Id.
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`56.
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`IV included nearly identical notice letters in its complaints against JP Morgan
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`Chase & Co. and Liberty Mutual Holding Company Inc. See Intellectual Ventures I LLC, et al. v.
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`JP Morgan Chase & Co., No. 2:23-cv-523-JRG (E.D. Tex. Nov. 15, 2023), D.I. 1, Ex. 7;
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`Intellectual Ventures I LLC, et al. v. Liberty Mutual Holding Company Inc. et al., No. 2:23-cv-
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`00525-JRG (E.D. Tex. Nov. 15, 2023), D.I. 1, Ex. 5.
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`57.
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`On information and belief, before those letters each of those defendants received
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`similar correspondence from Mr. Joroff and/or another individual tasked with “licensing” IV’s
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`patent portfolio.
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`58.
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`IV also sent Assurant an “Intellectual Ventures Financial Services Licensing
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`Program” document, which indicated that IV (1) developed “pricing tiers” for a proposed license
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`with Assurant that were based on “potential damages in litigation scenarios,” (2) was “engaging
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`with all financial services and insurance companies operating in the United States," and
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`(3) “initiated patent litigations against JPMC, Liberty Mutual, and Comerica, with further actions
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`planned.” (emphasis added).
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`59.
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`Therefore, there is an actual case or controversy as to whether Assurant infringes
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`the DJ patents considering that IV (1) specifically alleged there was a “pressing need” for Assurant
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`to take a license as a “crucial step to ensure compliance with IV’s patent portfolio,” which was
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`“not an offer that can be refused”; (2) identified accused technology, IV patents, and corresponding
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`claims in IV’s “Banking Tech Presentation”; (3) referenced future litigation planned against
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`companies who did not take a license in IV’s “Intellectual Ventures Financial Services Licensing
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`Program Document”; and (4) has a historically aggressive litigation strategy, viewed in
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`conjunction with January 2024 statements from Mr. Joroff where IV targeted Assurant, along with
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`“all companies within the financial services sector,” presumably in connection with a second wave
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`of lawsuits following the first wave against Liberty Mutual, Comerica, and JP Morgan Chase.
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`60.
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`Taken together, IV has demonstrated a pattern of initiating litigation against
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`companies who refuse to license the DJ patents. These facts show a substantial controversy
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`between parties with adverse legal interests of sufficient immediacy and reality to warrant issuance
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`of a declaratory judgment. Accordingly, this Court has declaratory judgment jurisdiction to hear
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`this case.
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`61.
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`On Friday, March 15, 2024, prior to filing the instant complaint, Assurant informed
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`Intellectual Ventures that it (1) does not believe it infringes the DJ Patents, and (2) does not intend
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`to take a license to the DJ Patents.
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`62.
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`This Court has personal jurisdiction over Intellectual Ventures I LLC under the
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`laws of this State and consistent with the underlying due process principles of the United States
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`Constitution. Intellectual Ventures I LLC is subject to general personal jurisdiction in Delaware
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`because it was formed under the laws of the State of Delaware.
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`63.
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`Intellectual Ventures I LLC has also purposefully availed itself of this forum by
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`bringing prior actions seeking to enforce its patent rights in Delaware. See e.g., Intellectual
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`Ventures I LLC v. Ubiquiti Inc., No. 1:23-cv-00865 (D. Del. Aug. 8, 2023), D.I. 1. On information
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`and belief, Intellectual Ventures I LLC has entered into licensing agreements for the use of its
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`patents in Delaware, and it has sent other cease and desist letters into the forum to other entities
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`regarding these patents in Delaware.
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`64.
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`This Court has personal jurisdiction over Intellectual Ventures II LLC under the
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`laws of this State and consistent with the underlying due process principles of the United States
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`Constitution. Intellectual Ventures II LLC is subject to general personal jurisdiction in Delaware
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`because it was formed under the laws of the State of Delaware.
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`65.
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`Intellectual Ventures II LLC has also purposefully availed itself of this forum by
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`bringing prior actions seeking to enforce its patent rights in Delaware. See e.g., Intellectual
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`Ventures I LLC v. Ubiquiti Inc., No. 1:23-cv-00865 (D. Del. Aug. 8, 2023), D.I. 1. On information
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`and belief, Intellectual Ventures II LLC has entered into licensing agreements for the use of its
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`patents in Delaware, and it has sent other cease and desist letters into the forum to other entities
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`regarding these patents in Delaware.
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`66.
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`This Court has personal jurisdiction over Callahan Cellular L.L.C. under the laws
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`of this State and consistent with the underlying due process principles of the United States
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`Constitution. Callahan Cellular L.L.C. is subject to general personal jurisdiction in Delaware
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`because it was formed under the laws of the State of Delaware.
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`67.
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`Intellectual Ventures I LLC, Intellectual Ventures II LLC, and Callahan Cellular
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`L.L.C. each reside in Delaware under 28 U.S.C. 1391(c)(2) as each was formed under the laws of
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`the State of Delaware and is subject to personal jurisdiction in this district.
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`68.
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`Venue is proper in this judicial district under 28 U.S.C. § 1391(b)(1) because all
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`three defendants, Intellectual Ventures I LLC, Intellectual Ventures II LLC, and Callahan Cellular
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`L.L.C., were organized under the laws of the State of Delaware and reside in this district and are
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`residents of the State in which the district is located.
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`69.
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`In addition, and alternatively, venue is proper in this judicial district under
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`28 U.S.C. § 1391(b)(2) because a substantial part of the events giving rise to this claim occurred
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`in this district.
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`70.
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`Alternatively, venue is proper under 28 U.S.C. § 1391(b)(3) because Intellectual
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`Ventures I LLC, Intellectual Ventures II LLC, and Callahan Cellular L.L.C. are incorporated in
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`this district and are therefore subject to personal jurisdiction in this district with respect to this
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`action.
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`THE DECLARATORY JUDGMENT PATENTS
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`71.
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`The ’391 Patent is titled “Graduated Authentication in an Identity Management
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`System” The ’391 Patent was issued on February 18, 2020, with Dick C. Hardt as its only named
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`inventor. On information and belief, the ’391 Patent is current assigned to Callahan Cellular L.L.C.
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`A true and correct copy of the ’391 Patent is attached hereto as Exhibit 1.
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`72.
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`The ’844 Patent is titled “Root Image Caching and Indexing for Block-Level
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`Distributed Application Management.” The ’844 Patent was issued on December 11, 2012, with
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`Pradip Kulkarni, Mukul Kumar, Adhir Potdar, Richard Au, and Tung Nguyen as named inventors.
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`The ’844 Patent is currently assigned to Intellectual Ventures II LLC. A true and correct copy of
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`the ’844 Patent is attached hereto as Exhibit 2.
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`73.
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`The ’167 Patent is titled “Method and Apparatus for Providing Secure
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`Identification, Verification and Authorization.” The ’167 Patent was issued on January 1, 2008,
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`with Han Kiliccote as its only named inventor. The ’167 Patent is currently assigned to Intellectual
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`Ventures II LLC. A true and correct copy of the ’167 Patent is attached hereto as Exhibit 3.
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`74.
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`The ’785 Patent is titled “Secure Virtual Community Network System.” The ’785
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`Patent was issued on May 24, 2011, with Hasan S. Alkhatib, Fouad A. Tobagi, and Farid F.
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`Elwailly as its named inventors. The ’785 Patent is current assigned to Intellectual Ventures I LLC.
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`A true and correct copy of the ’785 Patent is attached hereto as Exhibit 4.
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`75.
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`The ’080 Patent is titled “Systems and methods for parallel distributed
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`programming.” The ’080 Patent was issued on May 4, 2010, with “Lei Pan, Lubomir R. Bic, and
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`Michael B. Dillencourt as its named inventors. On information and belief, the ’080 Patent is
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`currently assigned to Intellectual Ventures I LLC, as alleged by IV in Intellectual Ventures I LLC,
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`et al. v. JP Morgan Chase & Co., No. 2:23-cv-523-JRG (E.D. Tex. Nov. 15, 2023), D.I. 1 ¶¶ 33-
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`34. A true and correct copy of the ’080 Patent is attached hereto as Exhibit 5.
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`COUNT I: DECLARATORY JUDGMENT FOR NON-INFRINGEMENT
`OF THE ’391 PATENT
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`76.
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`Assurant repeats the allegations in the preceding paragraphs as if fully set forth
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`herein.
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`77.
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`IV has indicated that, absent license, it intends to enforce its intellectual property
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`rights against Assurant. According to IV, there is a “pressing need” for Assurant to take a license
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`as a “crucial step to ensure compliance with IV’s patent portfolio,” including the ’391 Patent.
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`78.
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`IV has alleged that certain third-party software branded as “3DSecure2” (“the ’391
`
`Accused System”) infringes one or more claim of the ’391 Patent.
`
`79.
`
`As a result, there is an actual, justiciable, substantial, and immediate controversy
`
`between Assurant and IV regarding whether Assurant has infringed and/or continues to infringe
`
`the ’391 Patent.
`
`80.
`
`Assurant does not make, use, offer to sell, or sell any product and/or system within
`
`the United States (including but not limited to the ’391 Accused System), or import into the United
`
`States any product and/or system (including but not limited to the ’391 Accused System) in a
`
`manner which infringes the ’391 Patent.
`
`81.
`
`By way of example, each independent claim of the ’391 Patent requires, inter alia,
`
`that the accused system or method receive information about “a first type of transaction” and “a
`
`second type of transaction” wherein “the second type of transaction is different from the first
`
`type of transaction.”
`
`82.
`
`On information and belief, and based by the representations made on
`
`3dsecure2.com/frictionless-flow, the ’391 Accused System (1) “allows issues to approve a
`
`transaction without the need to interact with the cardholder” and (2) “will only require additional
`
`authentication if the risk is high.”
`
`83.
`
`On information and belief, and based on the representations made on
`
`3dsecure2.com/frictionless-flow, the ’391 Accused System provides for multiple authentication
`
`methods related to a single transaction, not for authentication of two different transactions.
`
`14
`
`

`

`Case 1:24-cv-00344-UNA Document 1 Filed 03/15/24 Page 15 of 28 PageID #: 15
`
`
`
`84.
`
`In light of this representation, and on information and belief, the ’391 Accused
`
`System does not include information about “a first type of transaction” and “a second type of
`
`transaction” wherein “the second type of transaction is different from the first type of transaction.”
`
`as recited by each independent claim of the ’391 Patent.
`
`85.
`
`As such, Assurant does not directly infringe the ’391 Patent, either literally or under
`
`the doctrine of equivalents.
`
`86.
`
`Likewise, at least because there is no direct infringement, Assurant does not induce
`
`infringement of the ’391 Patent or otherwise contribute to infringement of the ’391 Patent.
`
`87.
`
`Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
`
`Assurant seeks a declaration that it (including but not limited to through its use of the ’391 Accused
`
`System) does not infringe the ’391 Patent.
`
`COUNT II: DECLARATORY JUDGMENT FOR NON-INFRINGEMENT
`OF THE ’844 PATENT
`
`88.
`
`Assurant repeats the allegations in the preceding paragraphs as if fully set forth
`
`herein.
`
`89.
`
`IV has indicated that, absent license, it intends to enforce its intellectual property
`
`rights against Assurant. According to IV, there is a “pressing need” for Assurant to take a license
`
`as a “crucial step to ensure compliance with IV’s patent portfolio,” including the ’844 Patent.
`
`90.
`
`IV has alleged that certain third-party software branded as “Docker” (“the ’844
`
`Accused System”) infringes one or more claim of the ’844 Patent.
`
`91.
`
`As a result, there is an actual, justiciable, substantial, and immediate controversy
`
`between Assurant and IV regarding whether Assurant has infringed and/or continues to infringe
`
`the ’844 Patent.
`
`15
`
`

`

`Case 1:24-cv-00344-UNA Document 1 Filed 03/15/24 Page 16 of 28 PageID #: 16
`
`
`
`92.
`
`Assurant does not make, use, offer to sell, or sell any product and/or system within
`
`the United States (including but not limited to the ’844 Accused System), or import into the United
`
`States any product and/or system (including but not limited to the ’844 Accused System) in a
`
`manner which infringes the ’844 Patent.
`
`93.
`
`Each independent claim of the ’844 Patent requires, inter alia, that the claimed “leaf
`
`image” contain “only additional data blocks not previously contained in said root image and
`
`changes made ... to the blocks of said root image.”
`
`94.
`
`Assurant does not infringe the ’844 Patent at least because the ’844 Accused System
`
`does not include the claimed leaf image limitation.
`
`95.
`
`The ’844 Accused System includes an architecture with (1) “images” which are
`
`“read-only template[s] with instructions for creating a Docker container” and (2) “containers”
`
`which are “runnable instance[s] of an image” where each container “is defined by its image.” See
`
`https://docs.docker.com/get-started/overview/#docker-architecture (last accessed Mar. 15, 2024).
`
`96.
`
`“The major difference between a container and an image is the top writable layer.”
`
`See https://docs.docker.com/storage/storagedriver/ (last accessed Mar. 15, 2024).
`
`97.
`
`On information and belief, a Docker container includes both (1) image layers and
`
`(2) a container layer, as depicted in the diagram below, which shows a container based on an
`
`ubuntu:15.04 image. See https://docs.docker.com/storage/storagedriver/ (last accessed Mar. 15,
`
`2024).
`
`16
`
`

`

`Case 1:24-cv-00344-UNA Document 1 Filed 03/15/24 Page 17 of 28 PageID #: 17
`
`
`
`
`
`98.
`
`As depicted above, Docker represents that Docker containers include both
`
`(1) image layers and (2) a container layer.
`
`99.
`
`In light of this representation, and on information and belief, Docker containers do
`
`not include “only additional data blocks not previously contained in said root image and changes
`
`made ... to the blocks of said root image” as recited by each independent claim of the ’844 Patent.
`
`100. The ’844 Accused System does not include a “leaf image” as claimed by the ’844
`
`Patent.
`
`101. As such, Assurant does not directly infringe the ’844 Patent, either literally or under
`
`the doctrine of equivalents.
`
`102. Likewise, at least because there is no direct infringement, Assurant does not induce
`
`infringement of the ’844 Patent or otherwise contribute to infringement of the ’844 Patent.
`
`17
`
`

`

`Case 1:24-cv-00344-UNA Document 1 Filed 03/15/24 Page 18 of 28 PageID #: 18
`
`
`
`103. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
`
`Assurant seeks a declaration that it (including but not limited to through its use of the ’844 Accused
`
`System) does not infringe the ’844 Patent.
`
`COUNT III: DECLARATORY JUDGMENT FOR NON-INFRINGEMENT
`OF THE ’167 PATENT
`
`104. Assurant repeats the allegations in the preceding paragraphs as if fully set forth
`
`herein.
`
`105.
`
`IV has indicated that, absent license, it intends to enforce its intellectual property
`
`rights against Assurant. According to IV, there is a “pressing need” for Assurant to take a license
`
`as a “crucial step to ensure compliance with IV’s patent portfolio,” including the ’167 Patent.
`
`106.
`
`IV has alleged that certain third-party software branded as “Zelle®” (“the ’167
`
`Accused System”) infringes one or more claim of the ’167 Patent.
`
`107. As a result, there is an actual, justiciable, substantial, and immediate controversy
`
`between Assurant and IV regarding whether Assurant has infringed and/or continues to infringe
`
`the ’167 Patent.
`
`108. Assurant does not make, use, offer to sell, or sell any product and/or system within
`
`the United States (including but not limited to the ’167 Accused System), or import into the United
`
`States any product and/or system (including but not limited to the ’167 Accused System) in a
`
`manner which infringes the ’167 Patent.
`
`109. Specifically, Assurant does not make, use, offer to sell, or sell the ’167 Accused
`
`System within the United States or import the ’167 Accused System into the United States in any
`
`capacity.
`
`110. As such, Assurant does not directly infringe the ’167 Patent, either literally or under
`
`the doctrine of equivalents.
`
`18
`
`

`

`Case 1:24-cv-00344-UNA Document 1 Filed 03/15/24 Page 19 of 28 PageID #: 19
`
`
`
`111. Likewise, at least because there is no direct infringement, Assurant does not induce
`
`infringement of the ’167 Patent or otherwise contribute to infringement of the ’167 Patent.
`
`112. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
`
`Assurant seeks a declaration that it (including but not limited to through its use of the ’167 Accused
`
`System) does not infringe the ’167 Patent.
`
`COUNT IV: DECLARATORY JUDGMENT FOR NON-INFRINGEMENT
`OF THE ’785 PATENT
`
`113. Assurant repeats the allegations in the preceding paragraphs as if fully set forth
`
`herein.
`
`114.
`
`IV has indicated that, absent license, it intends to enforce its intellectual property
`
`rights against Assurant. According to IV, there is a “pressing need” for Assurant to take a license
`
`as a “crucial step to ensure compliance with IV’s patent portfolio,” including the ’785 Patent.
`
`115.
`
`IV has alleged that certain third-party software branded as “Kubernetes” (“the ’785
`
`Accused System”) infringes one or more claim of the ’785 Patent.
`
`116. As a result, there is an actual, justiciable, substantial, and immediate controversy
`
`between Assurant and IV regarding whether Assurant has infringed and/or continues to infringe
`
`the ’785 Patent.
`
`117. Assurant does not make, use, offer to sell, or sell any product and/or system within
`
`the United States (including but not limited to the ’785 Accused System), or import into the United
`
`Stat