Case 6:20-cv-00366 Document 1 Filed 05/05/20 Page 1 of 11
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`
`
`
`
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`Civil Action No.: 6:20-cv-0366
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`Jury Trial Demanded
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`INFOGATION CORPORATION,
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`
`
`v.
`
`GOOGLE LLC,
`
`
`
`
`Plaintiff,
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`Defendant.
`
`
`COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff InfoGation Corporation ("Plaintiff" or "InfoGation"), for its Complaint with Jury
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`Demand for patent infringement against Defendant Google LLC ("Defendant" or "Google"),
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`alleges, based on its own knowledge as to itself and its own actions and based on information and
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`belief as to all other matters, as follows:
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`PARTIES
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`1.
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`InfoGation is a corporation organized and existing under the laws of Delaware, with
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`its principal place of business at 12250 El Camino Real, Suite 116, San Diego, California 92130.
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`2.
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`Google LLC is a corporation organized and existing under the laws of Delaware,
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`with its principal place of business located at 1600 Amphitheatre Parkway, Mountain View,
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`California 94043.
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`JURISDICTION AND VENUE
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`3.
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`This is an action for patent infringement under the Patent Laws of the United States,
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`35 U.S.C. § 101, et seq.
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`4.
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`This Court has subject matter jurisdiction of this action pursuant to 28 U.S.C.
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`§§ 1331 and 1338(a).
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`Case 6:20-cv-00366 Document 1 Filed 05/05/20 Page 2 of 11
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`5.
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`Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391 and 1400(b). Google
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`is registered to do business in Texas, and upon information and belief, Google has transacted
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`business in the Western District of Texas and has committed acts of direct and indirect
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`infringement in the Western District of Texas. Google has a regular and established place of
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`business in the Western District of Texas located at 500 W 2nd St, Austin, Texas 78701.
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`6.
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`This Court has personal jurisdiction over Google in this action because Google has
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`committed acts within the Western District of Texas giving rise to this action and has established
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`minimum contacts with this forum such that the exercise of jurisdiction over Google would not
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`offend traditional notions of fair play and substantial justice. Google has committed and continues
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`to commit acts of infringement in this District by, among other things, offering to sell and selling
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`products and/or services that infringe the asserted patent.
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`THE PATENT-IN-SUIT
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`7.
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`On September 18, 2001, the United States Patent and Trademark Office ("USPTO")
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`duly and legally issued U.S. Patent No. 6,292,743 ("the '743 Patent"), titled "Mobile Navigation
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`System," naming Qing Kent Pu and Hui Henry Li as inventors. A true and correct copy of the '743
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`Patent is attached hereto as Exhibit A.
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`8.
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`9.
`
`InfoGation is the owner of all right, title, and interest in the '743 Patent.
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`Each claim of the '743 Patent is valid and enforceable.
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`FACTUAL ALLEGATIONS
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`10.
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`InfoGation is a pioneer in the development of on-board and handheld vehicle
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`navigation solutions. InfoGation produces vehicle-based turn-by-turn driving directions with
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`accurate voice guidance, real-time travel content, and communications integration solutions for
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`the automotive, trucking, commercial fleet and consumer industries. In conjunction with
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`Microsoft and Clarion, InfoGation created the first in-car computing device, the AutoPC, which
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`Case 6:20-cv-00366 Document 1 Filed 05/05/20 Page 3 of 11
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`was powered by Microsoft's Windows CE for Automotive operating system. InfoGation also
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`licensed its software platform to the Hertz rental car company for Hertz Never Lost navigation
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`devices as well as the IntelliRoute navigation software to Rand McNally for its consumer,
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`recreational vehicle, and truck/fleet product lines.
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`11.
`
`The '743 Patent was developed by Dr. Qing Kent Pu, President, CEO, and Founder
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`of InfoGation, along with Dr. Hui Henry Li. The '743 Patent is directed to a mobile navigation
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`system wherein the client navigation computer wirelessly connects to a navigation server, receives
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`optimal route information from that navigation server that is formatted using a non-proprietary,
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`natural language description, reconstructs the optimal route from that non-proprietary, natural
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`language description using a mapping database coupled to the navigation computer, and displays
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`the optimal route on a display screen using that mapping database.
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`12.
`
`Certain Google products and services, including those that incorporate the
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`technology of the Google Maps API, infringe at least claim 21 of the '743 Patent.
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`13.
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`The Google Maps API provides an optimal route using real-time information from
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`a server of a navigation system. For example, the Google Maps API DirectionService object
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`"communicates with the Google Maps API Directions which receives direction requests and
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`returns an efficient path. Travel time is the primary factor which is optimized, but other factors
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`such as distance, number of turns and many more may be taken into account." Directions Service
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`|
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`Maps
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`JavaScript
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`API
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`|
`
`Google
`
`Developers,
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`available
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`at
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`https://developers.google.com/maps/documentation/javascript/directions (retrieved on May 4,
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`2020).
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`14.
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`The navigation system comprises a client (such as a mobile device) and said server
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`(hosted by Google) coupled to a computer network (such as a wireless network). Id.
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`15.
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`Using the technology of the Google Maps API requires establishing a wireless
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`connection between the server and the client. For example, a wireless connection is established
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`via the Internet or a cellular network with a client such as a mobile device.
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`16.
`
`The Google server receives start and end route designations from the client. For
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`example, the user of a mobile device specifies the origin and destination using the technology of
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`the Google Maps API, and Google receives this information at the server via the wireless
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`connection.
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`17.
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`Using the technology of the Google Maps API, Google calculates at the server the
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`optimal route based on real-time information at the server and said start and end route designations.
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`For example, the Google Maps API DirectionService object "communicates with the Google Maps
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`API Directions which receives direction requests and returns an efficient path. Travel time is the
`
`primary factor which is optimized, but other factors such as distance, number of turns and many
`
`more may be taken into account." Directions Service | Maps JavaScript API | Google Developers,
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`available at https://developers.google.com/maps/documentation/javascript/directions (retrieved
`
`on May 4, 2020). The technology of the Google Maps API enables users to "find the best way to
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`get from A to Z with comprehensive data and real-time traffic." Geo-location APIs | Google Maps
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`Platform | Google Cloud, available at https://cloud.google.com/maps-platform/ (retrieved on May
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`4, 2020).
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`18.
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`Using the technology of the Google Maps API, Google formats at the server the
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`optimal route into a non-proprietary, natural language description. For example, Google explains:
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`A DirectionsStep is the most atomic unit of a direction's route,
`containing a single step describing a specific, single instruction on
`the journey. E.g. "Turn left at W. 4th St." The step not only
`describes the instruction but also contains distance and duration
`information relating to how this step relates to the following step.
`For example, a step denoted as "Merge onto I-80 West" may
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`contain a duration of "37 miles" and "40 minutes," indicating that
`the next step is 37 miles/40 minutes from this step.
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`Directions Service
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`| Maps JavaScript API
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`| Google Developers, available at
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`https://developers.google.com/maps/documentation/javascript/directions (retrieved on May 4,
`
`2020). Thus, the route is formatted into a non-proprietary, natural language description (e.g.,
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`"Turn left at W. 4th St.").
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`19.
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` Using the technology of the Google Maps API, Google downloads from the server
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`said non-proprietary, natural language description to the client (e.g., a mobile device) so that the
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`client can reconstruct the optimal route using a local mapping database and display said optimal
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`route on a display system coupled to the client. For example, the mobile device using the
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`technology of the Google Maps API constructs a visual map using a local mapping database and
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`displays the route using the map on the mobile device screen.
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`20.
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`Google has had notice of the '743 Patent since no later than October 7, 2016, the
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`date on which Google filed a Complaint for Declaratory Judgment of Non-Infringement of the '743
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`Patent in the United States District Court for the Northern District of California (Case No. 3:16-
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`cv-05821-VC). That case was dismissed for lack of subject matter jurisdiction.
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`21.
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`Further, Google has been aware that the '743 Patent is not invalid since no later than
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`September 11, 2017. On that date, the USPTO Patent Trial and Appeal Board issued a decision
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`declining to institute an inter partes review of the '743 Patent, rejecting a petition filed by Google
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`and other petitioners.
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`22.
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`Certain terms in Claim 15 of the '743 Patent were construed in Case No. 16-cv-
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`01901-H-JLB, InfoGation Corp. v. ZTE Corporation, et al. and Case No. 16-cv-01902-HJLB,
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`InfoGation Corp. v. HTC Corporation, et. al., both filed in the United States District Court for the
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`Southern District of California ("the California Actions"). Specifically, the court in the California
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`Actions construed the terms "navigation server," "non-proprietary," "natural language," "mapping
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`database coupled to said navigation computer for reconstructing said optimal route from said non-
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`proprietary, natural language description," and "optimal routes/optimal route," all of which appear
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`in Claim 15. Certain of those terms appear in Claim 1 as well.
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`23.
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`The California Actions were resolved without a final judgment on the merits and
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`were never appealed to the Federal Circuit. The court's constructions in the California Actions are
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`therefore not binding on this Court, nor do they have any preclusion or other res judicata effects
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`as to any party to this action. InfoGation anticipates that the Court will construe the claims in this
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`action de novo, and InfoGation reserves all rights to seek constructions that are different from the
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`constructions entered in the California Actions, as well as constructions of terms that were not
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`construed in the California Actions,
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`GOOGLE'S INFRINGING ACTIVITY
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`24.
`
`Google infringes at least Claim 1 of the '743 Patent by making, using, selling, and/or
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`offering to sell the Google Maps API.
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`25.
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`The Google Maps API provides an optimal route using real-time information for a
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`navigation system. The Google Maps API directions service returns "an efficient path" in which
`
`"[t]ravel time is the primary factor which is optimized, but other factors such as distance, number
`
`of
`
`turns
`
`and many more may
`
`be
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`taken
`
`into
`
`account."
`
`
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`See
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`https://developers.google.com/maps/documentation/javascript/directions.
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`26.
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`The Google Maps API provides the optimal route for a navigation system that
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`comprises a client, such as a user's personal electronic device, and a server, such as "an external
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`server" to which the Google Maps API makes calls. See id. The server is coupled to a computer
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`network such as the Internet, a wireless local area network, or a cellular network such as a 4G or
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`5G network.
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`27.
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`Use of the Google Maps API requires establishing a wireless connection between
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`the client and the server, as the user's personal electronic device communicates with the external
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`server wirelessly.
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`28.
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`Use of the Google Maps API requires transmitting start and end route designations
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`from the client to the server. For example, the user's personal electronic device communicates the
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`device's present location (start route designation) and destination (end route designation) to the
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`external server.
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`29.
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`The external server accesses real-time information. For example, the Google Maps
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`API enables helps "users find the best way to get from A to Z with comprehensive data and real-
`
`time traffic." See https://cloud.google.com/maps-platform/.
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`30.
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`The external server calculates the optimal route based on the real-time information
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`and the start and end route designations. For example, the external server calculates the optimal
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`route based on real-time traffic conditions and the present location and destination.
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`31.
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`Use of the Google Maps API requires formatting the optimal route into a non-
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`proprietary, natural language description. The description prepared by use of the Google Maps
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`API is non-proprietary at least because the description is formatted using standardized messages
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`based on a published API. Further, the description is natural language at least because the
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`description comprises natural language phrases such as "Turn left at W. 4th St." See
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`https://developers.google.com/maps/documentation/javascript/directions. To the extent these
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`elements are not literally present, they are present under the doctrine of equivalents.
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`32.
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`Use of the Google Maps API requires downloading the non-proprietary, natural
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`language description to the client, i.e. by transmitting the description to the user's personal
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`electronic device.
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`33.
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`Use of the Google Maps API requires reconstructing the optimal route by the client
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`using a local mapping database and displaying the optimal route on a display system coupled to
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`the client. For example, the user's personal electronic device reconstructs the optimal route using
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`locally-stored mapping information for display on the device using a display system such as a
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`screen.
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`34.
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`Thus, use of the Google Maps API infringes at least Claim 1 of the '743 Patent.
`
`FIRST CLAIM FOR RELIEF
`(Infringement of U.S. Patent No. 6,292,743)
`
`35.
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`36.
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`InfoGation incorporates the foregoing paragraphs as if fully set forth herein.
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`Google has made, used, sold, offered for sale, and/or imported one or more products
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`or services incorporating the technology of the Google Maps API, and thereby directly infringed,
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`literally and/or under the doctrine of equivalents, one or more claims of the '743 Patent. Google's
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`infringement is ongoing.
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`37.
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`Google has indirectly infringed the '743 Patent by inducing others to directly
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`infringe the '743 Patent. For example, Google has induced developers and end-users to directly
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`infringe (literally and/or under the doctrine of equivalents) the '743 Patents by making, using,
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`selling, offering for sale, and/or importing one or more products or services incorporating the
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`technology of the Google Maps API. Google has taken active steps, directly and/or through
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`contractual relationships with others, with the specific intent to cause them to make, use, sell, offer
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`for sale, and/or import products or services incorporating the patented technology in a manner that
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`infringes one or more claims of the '743 Patent. Such steps by Google have included, among other
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`things, advising or directing customers and end-users to use the Google Maps API in an infringing
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`manner; advertising and promoting the use of the technology of the Google Maps API in an
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`infringing manner; and/or distributing instructions that guide users to use the Google Maps API in
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`an infringing manner. Google is performing these steps, which constitute induced infringement
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`with the knowledge of the '743 Patent and with the knowledge that the induced acts constitute
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`infringement. Google is aware that the normal and customary use of the Google Maps API would
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`infringe the '743 Patent. Google's inducement is ongoing.
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`38.
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`Google has also indirectly infringed by contributing to the infringement of the '743
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`Patent. Google has contributed to the direct infringement of the '743 Patent by developers and
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`end-users of products or services that incorporate the technology of the Google Maps API. The
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`Google Maps API has features that are specially designed to be used in an infringing way and that
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`have no substantial uses other than ones that infringe the '743 Patent. Google's contributory
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`infringement is ongoing.
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`39.
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`40.
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`Google has had knowledge of the '743 Patent since no later than October 7, 2016.
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`Google's actions are at least objectively reckless as to the risk of infringing a valid
`
`patent and this objective risk was either known or should have been known by Google.
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`41.
`
`Google's direct and indirect infringement of the '743 Patent is, has been, and
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`continues to be willful, intentional, deliberate, and/or in conscious disregard of InfoGation's rights
`
`under the '743 Patent.
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`42.
`
`InfoGation has been damaged as a result of the infringing conduct by Google
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`alleged above. Thus, Google is liable to InfoGation in an amount that adequately compensates it
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`for such infringements, which, by law, cannot be less than a reasonable royalty, together with
`
`interest and costs as fixed by this Court under 35 U.S.C. § 284.
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`43.
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`InfoGation will continue to suffer damages and irreparable harm unless Google is
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`restrained and enjoined by this Court, pursuant to 35 U.S.C. § 283, from further infringement of
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`the '743 Patent.
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`PRAYER FOR RELIEF
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`InfoGation requests that the Court find in its favor and against Google, and that the Court
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`grant InfoGation the following relief:
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`A.
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`Judgment that one or more claims of the '743 Patent has been infringed, either
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`literally and/or under the doctrine of equivalents, by Google;
`
`B.
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`A permanent injunction enjoining Google and its officers, directors, agents,
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`servants, affiliates, employees, divisions, branches, subsidiaries, parents, and all others acting in
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`concert therewith from infringement of the '743 Patent; or, in the alternative, an award of a
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`reasonable ongoing royalty for future infringement of the '743 Patent by such entities;
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`C.
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`Judgment that Google account for and pay to InfoGation all damages to and costs
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`incurred by InfoGation because of Google's infringing activities and other conduct complained of
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`herein, including an award of all increased damages to which InfoGation is entitled under 35
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`U.S.C. § 284;
`
`D.
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`That this Court declare this an exceptional case and award InfoGation its attorneys'
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`fees and costs in accordance with 35 U.S.C. § 285;
`
`E.
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`Pre-judgment and post-judgment interest on the damages caused to it by reason of
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`Google's infringing activities and other conduct complained of herein; and
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`F.
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`Such other and further relief as the Court may deem just and proper under the
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`circumstances.
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`Case 6:20-cv-00366 Document 1 Filed 05/05/20 Page 11 of 11
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`DEMAND FOR JURY TRIAL
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`InfoGation hereby requests a trial by jury pursuant to Rule 38 of the Federal Rules of
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`Civil Procedure.
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`Dated: May 5, 2020
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`Respectfully submitted,
`
`
`By: /s/ Michael C. Smith
`Michael C. Smith (SBN 18650410)
`Siebman, Forrest, Burg & Smith LLP
`113 East Austin Street
`Marshall, TX 75670
`michaelsmith@siebman.com
`Telephone: 903-938-8900
`Facsimile: 972-767-4620
`
`
`Robert R. Brunelli (Pending pro hac vice)
`
`rbrunelli@sheridanross.com
`Patricia Y. Ho (Pending pro hac vice)
`
`pho@sheridanross.com
`Matthew C. Holohan (Pending pro hac vice)
`
`mholohan@sheridanross.com
`SHERIDAN ROSS P.C.
`1560 Broadway, Suite 1200
`Denver, CO 80202
`Telephone: 303-863-9700
`Facsimile
`303-863-0223
`litigation@sheriddanross.com
`
`Attorneys for Plaintiff InfoGation Corporation
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