Case 6:20-cv-06263-FPG Document 1 Filed 04/23/20 Page 1 of 15
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF NEW YORK
`
`
`
`Xerox Corporation,
`
` Plaintiff,
`
`
`
`Monument Peak Ventures, LLC,
`
` Defendant.
`
`
`
`
`-vs-
`
`
`
`Civil Action No. 6:20-cv-6263
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`Plaintiff Xerox Corporation (“Xerox”), for its Complaint against Defendant Monument
`
`Peak Ventures LLC (“MPV”), alleges as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`Xerox files this lawsuit because MPV accuses it of infringing patents that Xerox
`
`does not, in fact, infringe.
`
`2.
`
`MPV is one of a vast array of patent assertion entities associated with Dominion
`
`Harbor Enterprises, LLC. MPV does not exist to invent new ideas, make products or provide
`
`services to consumers. It exists to acquire and then assert patents against companies who actually
`
`have done the hard work in researching, developing and bringing products and services to market.
`
`3.
`
` In 2017, MPV bought the patents that are the subject of this suit from another non-
`
`practicing entity (Intellectual Ventures) who had obtained them from the Eastman Kodak
`
`Company (“Kodak”). As their origin would suggest, these Kodak patents relate to camera
`
`technology. MPV is now trying to stretch the scope of these camera related patents to cover
`
`Xerox’s printer devices. Needless to say, office printers are not cameras, and the patents at issue
`
`are not relevant to Xerox’s business.
`
`

`

`Case 6:20-cv-06263-FPG Document 1 Filed 04/23/20 Page 2 of 15
`
`4.
`
`MPV, however, has a business model predicated on buying patents on the cheap
`
`and asserting them against a wide array of targets to obtain nuisance value settlements, taking
`
`whatever positions necessary to claim infringement (no matter how implausible) and threatening
`
`litigation (and its attendant expense) if a party does not accede to its licensing demands. This is
`
`what MPV has done here. It has asserted patents without any connection to Xerox’s business,
`
`pushed a licensing agenda unconnected to the fundamental question of whether Xerox needs a
`
`license, and threatened litigation if Xerox does not pay.
`
`5.
`
`MPV’s claims of infringement are completely unfounded, and as a result, Xerox
`
`seeks a declaration from this Court that it does not infringe United States Patents Nos.: 5,923,908
`
`(the “’908 patent”); 6,157,436 (the “’436 patent”); 6,215,559 (the “’559 patent”); 6,396,599 (the
`
`“’599 patent”); 6,873,336 (the “’336 patent”); 7,006,890 (the “’890 patent”); 7,092,966 (the “’966
`
`patent”); and 7,684,090 (the “’090 patent”) (collectively, the “Patents-in-Suit”).1 This case is
`
`authorized by and arises under the Declaratory Judgment Act, 28 U.S. C. § 2201 et seq. and the
`
`patent laws of the United States, 35 U.S.C. § 1 et seq.
`
`THE PARTIES
`
`6.
`
`Xerox is a corporation and existing under the laws of New York. Xerox’s largest
`
`base of employees is in and around Rochester, New York, including its lead engineering, design
`
`and manufacturing campus in Webster, New York. Founded in 1906 in Rochester, New York,
`
`Xerox has been one of the most innovative companies in the U.S. for more than a century. In
`
`addition to pioneering now-everyday concepts in personal computing, such as the graphical user
`
`interface and the mouse, Xerox also developed the very first plain paper photocopier. Xerox
`
`maintains its reputation for human-centered innovation to this day: In 2019, it was recognized in
`
`
`1 Copies of the Patents-in-Suit are attached as Exhibits A–H to this complaint.
`
` 2
`
`

`

`Case 6:20-cv-06263-FPG Document 1 Filed 04/23/20 Page 3 of 15
`
`Fortune Magazine’s “World’s Most Admired Companies” and in 2018, it was named a “2018
`
`Thomson Reuters Top 100 Global Technology Leader.”
`
`7.
`
`MPV is a company organized and existing under the laws of Texas, with a principal
`
`place of business at 200 Crescent Court, Suite 1550, Dallas, Texas 75201-2095. As explained
`
`above, MPV is no innovator: it is an opportunistic non-practicing entity that seeks to turn twice
`
`purchased patents into profit for its owners. In recent years, it has filed a number of lawsuits,
`
`seeking to monetize its patents.2 Significantly, not one of these lawsuits has been decided on the
`
`merits in favor of MPV.
`
`8.
`
`MPV claims to be the owner by assignment of the right, title and interest in the
`
`Patents-in-Suit.
`
`JURISDICTION AND VENUE
`
`9.
`
`This action arises under the Declaratory Judgment Act, 28 U.S.C. §§ 2201-2202,
`
`and under the patent laws of the United States, 35 U.S.C. §§ 1 et seq.
`
`10.
`
`This Court has subject matter jurisdiction over this action under 28 U.S.C. §§ 1331,
`
`1338(a) and 2201(a).
`
`11.
`
`As described in more detail below, an immediate, real, and justiciable controversy
`
`exists between Xerox and MPV as to whether Xerox is infringing or has infringed the Patents-in-
`
`Suit.
`
`
`2 See Monument Peak Ventures, LLC v. Hitachi, Ltd., No. 2:20-cv-00098 (E.D. Tex.); Monument
`Peak Ventures, LLC v. Toshiba, No. 8:19-cv-02181 (C.D. Cal.); Monument Peak Ventures, LLC
`v. Sakar International, Inc., No. 1:19-cv-01890 (S.D.N.Y.); Monument Peak Ventures, LLC v.
`HMD Global Oy, No. 2:18-cv-00521 (E.D. Tex.); Monument Peak Ventures, LLC v. Bosch
`Security Systems, Inc., No. 1:18-cv-01335 (D. Del.); Monument Peak Ventures, LLC v. GE
`Healthcare, Ltd., No. 3:18-cv-01158 (S.D. Cal.); Monument Peak Ventures v. Hasselblad, Inc.,
`No. 1:18-cv-00732 (D. Del.); Monument Peak Ventures v. GoPro, Inc., No. 1:18-cv-00416 (D.
`Del.); Monument Peak Ventures, LLC v. SZ DJI Tech. Co., Ltd., No. 2:18-cv-02210 (C.D. Cal.);
`Monument Peak Ventures, LLC v. Hasselblad, Inc., No. 2:18-cv-02214 (C.D. Cal.).
`
` 3
`
`

`

`Case 6:20-cv-06263-FPG Document 1 Filed 04/23/20 Page 4 of 15
`
`12. MPV is subject to personal jurisdiction in this district by virtue of the extensive
`
`enforcement activities it has conducted in and purposefully directed to the State of New York,
`
`including in this District.
`
`13. MPV first approached Xerox’s New York based Intellectual Property Law
`
`Department about the Patents-in-Suit on April 2, 2019. It emailed Xerox’s Chief IP Counsel and
`
`Associate General Counsel who is located in New York. That email asserted that “[i]n examining
`
`the Kodak portfolio it has become evident to us that Xerox would benefit from a license to this
`
`portfolio.” Over the course of the next year, MPV aggressively escalated its rhetoric with respect
`
`to Xerox. It sent more than 40 communications to Xerox personnel in New York, including those
`
`located within this District, in an attempt to persuade Xerox to license the Patents-in-Suit.
`
`14. MPV also met via web conference with Xerox personnel in New York, including
`
`personnel located in this District. On June 26, 2019, November 14, 2019, and February 11, 2020,
`
`MPV scheduled and led three web conferences with Xerox personnel in Webster, New York as
`
`part of its efforts to convince Xerox to license the Patents-in-Suit. On information and belief,
`
`MPV knew that it was interacting with Xerox’s New York operations and was purposeful in
`
`directing its licensing efforts to the State of New York and this District.
`
`15. MPV, in fact, has had prior dealings with Xerox. As early as April 7, 2016, Xerox
`
`and MPV signed a Confidential Disclosure Agreement regarding a different set of patents. In that
`
`agreement, MPV did not object to jurisdiction in New York but rather agreed that “[t]his
`
`Agreement shall be construed in accordance with the laws of the State of New York, without regard
`
`to its choice of law provisions. All disputes arising out of or in connection with this Agreement
`
`shall be adjudicated in, and the parties consent to the jurisdiction of, the state and federal courts of
`
`the State of New York.”
`
` 4
`
`

`

`Case 6:20-cv-06263-FPG Document 1 Filed 04/23/20 Page 5 of 15
`
`16.
`
`Venue is proper in this Court pursuant to 28 U.S.C. § 1391(b)-(c).
`
`17. MPV’s enforcement activities have created an actual and substantial controversy
`
`regarding whether Xerox infringes the Patents-in-Suit that is of sufficient immediacy and reality
`
`to warrant the issuance of a declaratory judgment. MPV, for example, accused Xerox of infringing
`
`the Patents-in-Suit and provided Xerox with a set of claim charts—which it labeled “examples of
`
`use”— that purport to map features of Xerox’s products to a claim from each of the Patents-in-
`
`Suit.
`
`18. MPV repeated its allegations of infringement throughout its correspondence and on
`
`the web conferences. In return, Xerox demonstrated to MPV that it did not require a license to the
`
`Patents-in-Suit. By February 2020, MPV was clear that Xerox faced a decision—take a license or
`
`face litigation. MPV wrote to Xerox on February 5, 2020, threatening, “[w]e will need to get this
`
`call set up ASAP in order to avoid escalating this matter for litigation.” And, on April 16, 2020,
`
`it again wrote to Xerox, stating, “[a]t this point we really need to have a call in the next week to
`
`either move the licensing discussions forward or to pivot to litigation.” There is an actual, ripe
`
`and judiciable controversy regarding the infringement of the Patents-in-Suit.
`
`BACKGROUND ON THE PATENTS-IN-SUIT
`
`19. MPV acquired the Patents-in-Suit from another patent assertion entity called
`
`Intellectual Ventures in 2017 who, in turn, had acquired the patents from their original assignee,
`
`Kodak.
`
`20.
`
`21.
`
`Kodak is a camera company, and the Patents-in-Suit reflect that fact.
`
`For example, the ’908 patent is entitled, “Camera With Touch Sensitive Control”
`
`(emphasis added). Claim 11, which MPV asserts Xerox infringes, claims:
`
`A camera comprising:
`
`(a) a touch sensitive screen;
`
` 5
`
`

`

`Case 6:20-cv-06263-FPG Document 1 Filed 04/23/20 Page 6 of 15
`
`(b) a camera control which controls at least one function of the
`camera; and
`
`(c) a processor connected to the touch sensitive screen and the
`camera control, to display a camera control icon at different user
`selectable positions or sizes on the screen, so that touching the icon
`controls the corresponding camera function.
`
`(emphases added).
`
`22.
`
`On the left, below, is a figure that the ’908 patent describes as “a camera with a
`
`user interface of the present invention.” On the right is one of the Xerox multi-function devices
`
`that MPV has attempted to claim infringes the ’908 patent, taken from one of the so-called
`
`“examples of use” MPV provided Xerox.
`
`
`
`
`
`23.
`
`24.
`
`To state the obvious, the device on the right is not a camera.
`
`Not only is the ’908 patent clearly not infringed by Xerox, that patent expired on
`
`
`
`March 16, 2018. Indeed, fully half of the patents that MPV has accused Xerox of infringing—the
`
`’908, ’436, ’559, and ’599 patents—have already expired. Yet neither Kodak nor Intellectual
`
`Ventures ever accused Xerox of infringing these patents, or any of the other Patents-in-Suit.
`
` 6
`
`

`

`Case 6:20-cv-06263-FPG Document 1 Filed 04/23/20 Page 7 of 15
`
`25.
`
`Xerox in fact did not have notice of infringement of the Patents-in-Suit before MPV
`
`approached it in April 2019. The ’436, ’559 and ’599 patents had all expired before that point.
`
`Because both induced and contributory infringement require not only knowledge of the patent but
`
`also knowledge of patent infringement, MPV cannot advance any indirect infringement allegation
`
`as to these patents. And, because Xerox does not itself perform the methods in those
`
`patents, Xerox could not have directly infringed the method claims found in those patents.
`
`26.
`
`In addition, and upon information and belief, while Kodak sold products that
`
`practiced one or more claims of the Patents-in-Suit, neither Kodak nor MPV marked such products
`
`with the patent numbers of the Patents-in-Suit. As a result, no damages are available for any such
`
`infringement that took place before MPV approached Xerox in April 2019—adding another reason
`
`why MPV has no basis to recover damages.
`
`27.
`
`Despite these massive flaws in its infringement case, MPV sought to extract
`
`substantial licensing fees from Xerox.
`
`COUNT I
`
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’908 PATENT
`
`28.
`
`Xerox restates and incorporates by reference the allegations in the preceding
`
`paragraphs in this Complaint as if fully set forth herein.
`
`29. MPV asserts that Xerox’s AltaLink and VersaLink multifunction printers infringe
`
`one or more claims of the ’908 patent.
`
`30.
`
`Xerox, however, has not infringed and does not infringe any claim of the ’908
`
`patent, either directly or indirectly, literally or under the doctrine of equivalents.
`
`31.
`
`By way of example, claim 11 of the ’908 patent requires a “camera” with multiple
`
`components including “(b) a camera control which controls at least one function of the camera.”
`
`But neither the AltaLink nor the VersaLink printers are cameras, much less ones with “a camera
`
` 7
`
`

`

`Case 6:20-cv-06263-FPG Document 1 Filed 04/23/20 Page 8 of 15
`
`control which controls at least one function of the camera.” Both are multifunction printers,
`
`weighing hundreds of pounds, unlike the handheld cameras described in the ’908 patent. Nor do
`
`the AltaLink and VersaLink multifunction printers include a shutter, which the “camera” claimed
`
`in the ’908 patent does.
`
`32. MPV’s litigious history, the specific infringement allegations by MPV against
`
`Xerox, and Xerox’s denial of infringement have created an actual, substantial, immediate, and real
`
`controversy between the parties as to the non-infringement of the ’908 patent. A valid and
`
`justiciable controversy has arisen and exists between MPV and Xerox within the meaning of 28
`
`U.S.C. § 2201.
`
`33.
`
`Therefore, Xerox seeks a declaration that it does not infringe the ’908 patent.
`
`COUNT II
`
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’436 PATENT
`
`34.
`
`Xerox restates and incorporates by reference the allegations in the preceding
`
`paragraphs in this Complaint as if fully set forth herein.
`
`35. MPV asserts that Xerox’s FreeFlow Core product infringes one or more claims of
`
`the ’436 patent.
`
`36.
`
`Xerox, however, has not infringed and does not infringe any claim of the ’436
`
`patent, either directly or indirectly, literally or under the doctrine of equivalents.
`
`37.
`
`By way of example, claim 25 of the ’436 patent requires “a computer readable
`
`storage medium” that has “a computer program stored thereon for performing” a series of steps
`
`including “dividing an order received from the image order input source into multiple suborders
`
`for respective image printers, including generating a sub-order header having a unique order
`
`identification and an indication of the number of copies of the image to be printed by the
`
` 8
`
`

`

`Case 6:20-cv-06263-FPG Document 1 Filed 04/23/20 Page 9 of 15
`
`corresponding printer.” Xerox’s FreeFlow Core software does not divide an order into multiple
`
`suborders—including generating the required sub-order headings—as required by the claim.
`
`38. MPV’s litigious history, the infringement allegations by MPV against Xerox, and
`
`Xerox’s denial of infringement have created a substantial, immediate, and real controversy
`
`between the parties as to the non-infringement of the ’436 patent. A valid and justiciable
`
`controversy has arisen and exists between MPV and Xerox within the meaning of 28 U.S.C. §
`
`2201.
`
`39.
`
`Therefore, Xerox seeks a declaration that it does not infringe the ’436 patent.
`
`COUNT III
`
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’559 PATENT
`
`40.
`
`Xerox restates and incorporates by reference the allegations in the preceding
`
`paragraphs in this Complaint as if fully set forth herein.
`
`41. MPV asserts that Xerox’s FreeFlow Core product infringes one or more claims of
`
`the ’559 patent.
`
`42.
`
`Xerox, however, has not infringed and does not infringe any claim of the ’559
`
`patent, either directly or indirectly, literally or under the doctrine of equivalents.
`
`43.
`
`By way of example, claim 1 of the ’559 patent is a method claim requiring steps
`
`that Xerox does not perform, such as “communicating the image signals from the image queues to
`
`respective image renderers which render the image signals into the different formats associated
`
`with each image queue.” Xerox also does not infringe the claimed methods indirectly, at least
`
`because it had no notice of the ’559 patent prior to the patent’s expiration.
`
`44. MPV’s litigious history, the infringement allegations by MPV against Xerox, and
`
`Xerox’s denial of infringement have created a substantial, immediate, and real controversy
`
`between the parties as to the non-infringement of the ’559 patent. A valid and justiciable
`
` 9
`
`

`

`Case 6:20-cv-06263-FPG Document 1 Filed 04/23/20 Page 10 of 15
`
`controversy has arisen and exists between MPV and Xerox within the meaning of 28 U.S.C. §
`
`2201.
`
`45.
`
`Therefore, Xerox seeks a declaration that it does not infringe the ’559 patent.
`
`COUNT IV
`
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’599 PATENT
`
`46.
`
`Xerox restates and incorporates by reference the allegations in the preceding
`
`paragraphs in this Complaint as if fully set forth herein.
`
`47. MPV asserts that Xerox’s DocuMate Series Scanners infringe one or more claims
`
`of the ’599 patent.
`
`48.
`
`Xerox, however, has not infringed and does not infringe any claim of the ’599
`
`patent, either directly or indirectly, literally or under the doctrine of equivalents.
`
`49.
`
`By way of example, claim 1 of the ’599 patent requires “modifying that portion of
`
`said image having said at least one predetermined colorimetric parameter to a selected second
`
`predetermined colorimetric parameter so as to produce a modified digital image.” The ’599 patent
`
`states that it relates to “a photographic color imaging system that selectively adjusts the skin tone
`
`of individuals in images in accordance with customer preferences.” It further explains “[a] set of
`
`colorimetric parameters for an object, based on measured colorimetric parameters, can quantify
`
`the color of the object as it appears to the average observer under a specific set of viewing
`
`conditions.” Put simply, the ’599 patent transforms one color into another selected color. But
`
`Xerox’s DocuMate Series Scanners do not have a “second predetermined colorimetric parameter”
`
`(i.e., another color) that can be “selected,” such that a predetermined first color is transformed into
`
`it.
`
`50. MPV’s litigious history, the infringement allegations by MPV against Xerox, and
`
`Xerox’s denial of infringement have created a substantial, immediate, and real controversy
`
` 10
`
`

`

`Case 6:20-cv-06263-FPG Document 1 Filed 04/23/20 Page 11 of 15
`
`between the parties as to the non-infringement of the ’599 patent. A valid and justiciable
`
`controversy has arisen and exists between MPV and Xerox within the meaning of 28 U.S.C. §
`
`2201.
`
`51.
`
`Therefore, Xerox seeks a declaration that it does not infringe the ’599 patent.
`
`COUNT V
`
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’336 PATENT
`
`52.
`
`Xerox restates and incorporates by reference the allegations in the preceding
`
`paragraphs in this Complaint as if fully set forth herein.
`
`53. MPV asserts that Xerox’s FreeFlow Core product infringes one or more claims of
`
`the ’336 patent.
`
`54.
`
`Xerox, however, has not infringed and does not infringe any claim of the ’336
`
`patent, either directly or indirectly, literally or under the doctrine of equivalents.
`
`55.
`
`By way of example, claim 1 of the ’336 patent requires “placing said images in a
`
`product in accordance with the predetermined criteria.” Xerox’s FreeFlow Core software product
`
`does not perform this step: it does not place images in a product.
`
`56. MPV’s litigious history, the infringement allegations by MPV against Xerox, and
`
`Xerox’s denial of infringement have created a substantial, immediate, and real controversy
`
`between the parties as to the non-infringement of the ’336 patent. A valid and justiciable
`
`controversy has arisen and exists between MPV and Xerox within the meaning of 28 U.S.C. §
`
`2201.
`
`57.
`
`Therefore, Xerox seeks a declaration that it does not infringe the ’336 patent.
`
` 11
`
`

`

`Case 6:20-cv-06263-FPG Document 1 Filed 04/23/20 Page 12 of 15
`
`COUNT VI
`
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’890 PATENT
`
`58.
`
`Xerox restates and incorporates by reference the allegations in the preceding
`
`paragraphs in this Complaint as if fully set forth herein.
`
`59. MPV asserts that Xerox’s FreeFlow Core product infringes one or more claims of
`
`the ’890 patent.
`
`60.
`
`Xerox, however, has not infringed and does not infringe any claim of the ’890
`
`patent, either directly or indirectly, literally or under the doctrine of equivalents.
`
`61.
`
`By way of example, claim 5 of the’890 patent requires a “controller” that
`
`“automatically adjust[s] the operational status of at least one of said plurality of devices in response
`
`to said monitoring.” Xerox’s FreeFlow Core product does not adjust the operational status of a
`
`device. It cannot, for example, pause or power-off another device.
`
`62. MPV’s litigious history, the infringement allegations by MPV against Xerox, and
`
`Xerox’s denial of infringement have created a substantial, immediate, and real controversy
`
`between the parties as to the non-infringement of the ’890 patent. A valid and justiciable
`
`controversy has arisen and exists between MPV and Xerox within the meaning of 28 U.S.C. §
`
`2201.
`
`63.
`
`Therefore, Xerox seeks a declaration that it does not infringe the ’890 patent.
`
`COUNT VII
`
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’966 PATENT
`
`64.
`
`Xerox restates and incorporates by reference the allegations in the preceding
`
`paragraphs in this Complaint as if fully set forth herein.
`
`65. MPV asserts that Xerox’s FreeFlow Variable Information Suite product infringes
`
`one or more claims of the ’966 patent.
`
` 12
`
`

`

`Case 6:20-cv-06263-FPG Document 1 Filed 04/23/20 Page 13 of 15
`
`66.
`
`Xerox, however, has not infringed and does not infringe any claim of the ’966
`
`patent, either directly or indirectly, literally or under the doctrine of equivalents.
`
`67.
`
`By way of example, claim 1 of the ’966 patent requires “automatically searching a
`
`database of image content using said at least one designated image parameter and providing at
`
`least one image content candidate for placement in said at least one digital container.” Xerox’s
`
`FreeFlow Variable Information Suite product does not automatically search a “database of image
`
`content” in order to provide at least one image content candidate for use as a variable graphic.
`
`Indeed, Xerox’s FreeFlow Variable Information Suite does not even have a database that contains
`
`image content.
`
`68. MPV’s litigious history, the infringement allegations by MPV against Xerox, and
`
`Xerox’s denial of infringement have created a substantial, immediate, and real controversy
`
`between the parties as to the non-infringement of the ’966 patent. A valid and justiciable
`
`controversy has arisen and exists between MPV and Xerox within the meaning of 28 U.S.C. §
`
`2201.
`
`69.
`
`Therefore, Xerox seeks a declaration that it does not infringe the ’966 patent.
`
`COUNT VIII
`
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’090 PATENT
`
`70.
`
`Xerox restates and incorporates by reference the allegations in the preceding
`
`paragraphs in this Complaint as if fully set forth herein.
`
`71. MPV asserts that Xerox’s D95A/D110/D125 Copier/Printers infringe one or more
`
`claims of the ’090 patent.
`
`72.
`
`Xerox, however, has not infringed and does not infringe any claim of the ’090
`
`patent, either directly or indirectly, literally or under the doctrine of equivalents.
`
` 13
`
`

`

`Case 6:20-cv-06263-FPG Document 1 Filed 04/23/20 Page 14 of 15
`
`73.
`
`By way of example, claim 1 of the’090 patent requires a “printer processor adapted
`
`to transmit signals to the display device controller influencing what is presented on the image
`
`display.” Yet, in Xerox’s D95A/D110/D125 Copier/Printers, there is no separate “printer
`
`processor” and “display device controller” as required by the claim.
`
`74. MPV’s litigious history, the infringement allegations by MPV against Xerox, and
`
`Xerox’s denial of infringement have created a substantial, immediate, and real controversy
`
`between the parties as to the non-infringement of the ’090 patent. A valid and justiciable
`
`controversy has arisen and exists between MPV and Xerox within the meaning of 28 U.S.C. §
`
`2201.
`
`75.
`
`Therefore, Xerox seeks a declaration that it does not infringe the ’090 patent.
`
`JURY DEMAND
`
`Xerox demands a trial by jury on all issues so triable.
`
`
`
`
`
` 14
`
`

`

`Case 6:20-cv-06263-FPG Document 1 Filed 04/23/20 Page 15 of 15
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Xerox respectfully requests the following relief:
`
`Judgment that Xerox has not and does not infringe any claim of the Patents-in-Suit;
`
`Judgment entered in favor of Xerox and against MPV on Xerox’s claim;
`
`A finding that this is an exceptional case under 35 U.S.C. § 285;
`
`An award of Xerox’s costs and attorneys’ fees in connection with this action; and
`
`Such further and additional relief as the Court deems just and proper.
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`
`
`Dated: April 23, 2020
`
`
`
`
`
`Of Counsel:
`
`Daralyn J. Durie
`Ryan M. Kent
`Raghav R. Krishnapriyan
`Catherine Y. Kim
`DURIE TANGRI LLP
`217 Leidesdorff Street
`San Francisco, California 94111
`(415) 362-6666
`
`
`
`
`
`
`BARCLAY DAMON LLP
`
`
`By: /s/ Douglas J. Nash
`Douglas J. Nash
`Thomas Hoehner
`
`
`Office and Post Office Address
`Barclay Damon Tower
`125 East Jefferson Street
`Syracuse, New York 13202
`(315) 425-2885
`E-Mail: dnash@barclaydamon.com
`
`Attorneys for Plaintiff
`Xerox Corporation
`
` 15
`
`