Steve Morsa v. Facebook Inc

Filing 1

COMPLAINT Receipt No: 0973-13328713 - Fee: $400, filed by Plaintiff Steve Morsa. (Attachments: # 1 Civil Cover Sheet, # 2 Summons, # 3 Notice of Interested Parties, # 4 Report on the Filing of an Action Regarding a Patent)(Attorney Stephen M Lobbin added to party Steve Morsa(pty:pla))(Lobbin, Stephen)

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Patrick J. Conroy (pro hac vice pending)
[e-mail]
Jeffrey R. Bragalone (pro hac vice pending)
Justin B. Kimble (pro hac vice pending)
Daniel F. Olejko (pro hac vice pending)
T. William Kennedy, Jr. (pro hac vice pending)
Bragalone Conroy PC
2200 Ross Avenue, Suite 4500W
Dallas, TX 75201
Tel: [phone]
Fax: [phone]

Matt DelGiorno (pro hac vice pending)
[e-mail]
8 DelGiorno IP Law, PLLC
906 Granger Drive
9 Allen, TX 75013
Tel: [phone]
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Stephen M. Lobbin (SBN 181195)
[e-mail]
Edward F. O’Connor (SBN 123398)
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The Eclipse Group LLP
13 2020 Main Street, Suite 600
Irvine, California 92614
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Fax: [phone]
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Attorneys for Plaintiff Steve Morsa

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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SOUTHERN DIVISION

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Steve Morsa, an individual,

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Plaintiff,

8:14-CV-00161
Case No. _______________
COMPLAINT FOR PATENT
INFRINGEMENT

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v.

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Facebook, Inc., a Delaware
corporation,

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DEMAND FOR JURY TRIAL

Defendant.

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COMPLAINT FOR PATENT INFRINGEMENT

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Plaintiff Steve Morsa (“Plaintiff” or “Morsa”) hereby alleges for his Original

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Complaint of patent infringement against Defendant Facebook, Inc. (“Defendant” or

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“Facebook”), as follows:
JURISDICTION AND VENUE

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1.

This action arises under the Patent Laws of the United States, 35 U.S.C.

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§ 1, et seq., including 35 U.S.C. §§ 271, 281, 283, 284, and 285. This Court has

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subject matter jurisdiction under 28 U.S.C. §§ 1331 and 1338(a).

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2.

As further detailed herein, this Court has personal jurisdiction over

Facebook. Facebook is amenable to service of summons for this action.

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Furthermore, personal jurisdiction over Facebook in this action comports with due

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process. Facebook has conducted and regularly conducts business within the United

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States and this judicial district. Facebook has continuous and systematic contacts

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with California and this judicial district. Furthermore, Facebook has purposefully

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availed itself of the privileges of conducting business in the United States and this

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judicial district. Facebook has sought protection and benefit from the laws of the

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State of California by maintaining offices in California and this judicial district, by

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selling advertisements with the expectation and/or knowledge that they will be

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purchased by consumers in this judicial district, and/or by offering advertisements

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targeted at consumers in this judicial district, and/or by having partners and

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customers in this judicial district. In California and in this judicial district,

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Facebook regularly does or solicits business and engages in other persistent courses

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of conduct. Facebook derives substantial revenue from services provided to

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individuals in California and in this judicial district. Plaintiff’s causes of action

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arise directly from Facebook’s business contacts and other activities in this judicial

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district. For example, on information and belief, one of Facebook’s largest

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advertising partners and customers is Experian, which has its North American

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headquarters in Costa Mesa, California.

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COMPLAINT FOR PATENT INFRINGEMENT

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3.

Facebook offers for sale and/or sells advertisements in the United

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States and this judicial district. As part of its advertising services, Facebook makes

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and/or uses apparatuses, systems, and methods in California and in this judicial

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district that cause Facebook to commit the tort of patent infringement in this judicial

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district.

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4.

Venue is proper in this Court under 28 U.S.C. §§ 1391(b), (c), and (d),

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as well as 28 U.S.C. § 1400(b), in that Facebook is subject to personal jurisdiction in

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this judicial district, and therefore is deemed to reside in this judicial district for

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purposes of venue, and, upon information and belief, Facebook has committed acts

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within this judicial district giving rise to this action and does business in this judicial

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district, including but not limited to making sales in this judicial district, providing

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service and support to their respective customers in this judicial district, and/or

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operating an interactive website that is available to persons in this judicial district,

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which website advertises, markets, and/or offers for sale the advertisements and

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services at issue in this action and/or having business partners in this judicial district

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relevant to this lawsuit. For example, on information and belief, one of Facebook’s

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largest advertising partners and customers is Experian, which has its North

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American headquarters in Costa Mesa, California. Accordingly, pursuant to 28

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U.S.C. § 1391(c)(2), Facebook resides in Orange County, California, and venue is

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proper in this judicial district. Furthermore, Mr. Morsa and his evidence and

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sources of proof are present in this judicial district. Facebook has offices in this

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judicial district, employees in this judicial district, and sources of proof, witnesses,

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and evidence present in this judicial district relevant to this patent infringement

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lawsuit.
PARTIES

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5.

Plaintiff Morsa is an individual residing in Thousand Oaks, California.

Mr. Morsa has resided in this judicial district for over forty (40) years.

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COMPLAINT FOR PATENT INFRINGEMENT

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Upon information and belief, Defendant Facebook is a corporation

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organized under the laws the state of Delaware, with its principal place of business

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at 1601 Willow Road, Menlo Park, California 94025. Upon information and belief,

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Facebook also maintains offices at 2025 East Waterfront Drive, Los Angeles,

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California 90094. Facebook may be served via its registered agent, Corporation

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Service Company, 2710 Gateway Oaks Drive, Suite 150N, Sacramento, California

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95833.
ASSERTED PATENTS

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Mr. Morsa is the inventor and owner of United States Patent No.

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7,904,337 (“the ’337 patent”) and United States Patent No. 8,341,020 (“the ’020

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patent”), both entitled “Match Engine Marketing.” The ’337 patent issued on March

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8, 2011. The ’020 patent issued on December 25, 2012. A true and correct copy of

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the ’337 patent is attached as Exhibit A. A true and correct copy of the ’020 patent

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is attached as Exhibit B. Mr. Morsa has continuously owned the ’337 and ’020

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patents since they issued.
FACTUAL BACKGROUND

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On information and belief, Facebook operates online networking

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services through its web portal FACEBOOK.COM, mobile applications, social

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plug-ins, and other tools in the United States. Upon information and belief,

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Facebook was founded in 2004, but did not launch its internet advertising services,

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called “Facebook Ads”, until approximately November of 2007. Subsequently,

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Facebook offered other services that also infringe the asserted patents.

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In July of 2010, Mr. Morsa contacted Facebook, including Mark

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Zuckerberg, concerning his intellectual property rights, citing his intellectual

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property rights including his rights in U.S. Patent Application Serial No. 11/250,908

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(which became the ’337 patent), and advising Facebook that its advertising

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platforms are covered by Mr. Morsa’s intellectual property. In addition, Mr. Morsa

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COMPLAINT FOR PATENT INFRINGEMENT

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requested that Facebook cease and desist practicing his inventions. Mr. Morsa

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received no response to his communication to Facebook.
10.

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At other times relevant to this lawsuit, Mr. Morsa communicated with

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Facebook concerning his intellectual property rights, including identifying his start-

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up business and its intellectual property. Mr. Morsa received no response from

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Facebook.
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Facebook was also aware of Mr. Morsa’s intellectual property rights in

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other respects. For example, United States Patent No. 8,499,040 (“the ’040 patent”),

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which lists Facebook as the original and current assignee, titled “Sponsored-Stories-

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Unit Creation From Organic Activity Stream” refers to, and cites to, United States

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Patent Application No. 20060085408 A1, titled “Match Engine Marketing: System

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and Method For Influencing Positions on Product/service/benefit Result Lists

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Generated by a Computer Network Match Engine,” which lists Steve Morsa as the

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inventor and is the patent application for the ’337 patent asserted herein. Indeed,

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Facebook’s ‘040 patent cited Mr. Morsa’s reference 20060085408 A1 on May 3,

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2013, which is over two years after the ‘337 patent was formally issued by the

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United States Patent and Trademark Office. Moreover, another Facebook patent

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application, application number 12/193,702 similarly references United States

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Patent Application No. 20060085408 A1, titled “Match Engine Marketing: System

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and Method For Influencing Positions on Product/service/benefit Result Lists

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Generated by a Computer Network Match Engine,” which lists Steve Morsa as the

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inventor and is the patent application for the ’337 patent asserted herein. Notably,

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the 12/193,702 application lists Mark Zuckerberg as one of the inventors.1

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While the Original Complaint is not currently asserting claims against Facebook
27 for indirect infringement and willful infringement, Mr. Morsa specifically reserves
his rights to amend his pleadings consistent with the Federal Rules of Civil
28 Procedure and the Local Rules of the Central District of California.
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COMPLAINT FOR PATENT INFRINGEMENT

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COUNT 1

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INFRINGEMENT OF U.S. PATENT NO. 7,904,337 BY FACEBOOK

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Mr. Morsa incorporates paragraphs 1 through 11 as if set forth herein.

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13.

Facebook has been and is directly infringing under 35 U.S.C. § 271(a),

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either literally or under the doctrine of equivalents, the ’337 patent in the State of

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California, in this judicial district, and/or elsewhere in the United States by, making,

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using, selling, and/or importing, without license, infringing advertising platform(s),

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systems, and methods, including without limitation, the Facebook website and

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advertising platforms, including, but not limited to, Facebook Ads, Mobile Ads, and

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related advertising platforms, products, systems, and services related thereto.
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At the latest, Facebook has been on notice of its infringement of the

’337 patent since the filing of this complaint.
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As a result of Facebook’s infringement of the ’337 patent, Mr. Morsa

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has suffered monetary damages in an amount not yet determined, and will continue

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to suffer damages in the future unless Facebook’s infringing activities are enjoined

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by this Court.

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Unless a permanent injunction is issued enjoining Facebook and its

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agents, servants, employees, attorneys, representatives, affiliates, and all others

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acting on their behalf from infringing the ’337 patent, Mr. Morsa will be irreparably

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harmed.

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COUNT 2

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INFRINGEMENT OF U.S. PATENT NO. 8,341,020 BY FACEBOOK

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17.

Mr. Morsa incorporates paragraphs 1 through 16 as if set forth herein.

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18.

Facebook has been and is directly infringing under 35 U.S.C. § 271(a),

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either literally or under the doctrine of equivalents the ’020 patent in the State of

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California, in this judicial district, and/or elsewhere in the United States by making,

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using, and/or importing, without license, infringing advertising platform(s), systems,

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and methods, including without limitation, the Facebook website and advertising
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COMPLAINT FOR PATENT INFRINGEMENT

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platforms, including, but not limited to, Facebook Ads, Mobile Ads, and related

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advertising platforms, products, systems, and services related thereto.

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19.

At the latest, Facebook has been on notice of its infringement of the

’020 patent since the filing of this complaint.
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As a result of Facebook’s infringement of the ’020 patent, Mr. Morsa

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has suffered monetary damages in an amount not yet determined, and will continue

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to suffer damages in the future unless Facebook’s infringing activities are enjoined

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by this Court.

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21.

Unless a permanent injunction is issued enjoining Facebook and its

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agents, servants, employees, attorneys, representatives, affiliates, and all others

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acting on their behalf from infringing the ’020 patent, Mr. Morsa will be irreparably

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harmed.
PRAYER

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WHEREFORE, Mr. Morsa incorporates each of the allegations in paragraphs
1 through 21 above and respectfully requests that this Court enter:
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A judgment in favor of Mr. Morsa that Facebook has directly infringed

the ’337 and ’020 patents;
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A permanent injunction enjoining Facebook and its officers, directors,

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agents, servants, affiliates, employees, divisions, branches, subsidiaries, parents, and

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all others acting in concert or privity, with any of them, from infringing, directly

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and/or under the doctrine of equivalents; the ’337 and ’020 patents;

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A judgment and order requiring Facebook to pay Mr. Morsa his

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damages, costs (including all disbursements), expenses, attorneys’ fees, and

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prejudgment and post-judgment interest for Facebook’s infringement of the ’337

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and ’020 patents as provided under 35 U.S.C. § 284;

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COMPLAINT FOR PATENT INFRINGEMENT

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D.

Any and all other relief to which Mr. Morsa may be entitled and that

the Court deems just and equitable.
Respectfully submitted,

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Dated: February 4, 2014

THE ECLIPSE GROUP LLP

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By:

/s/ Stephen M. Lobbin
Attorneys for Plaintiff Steve Morsa

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COMPLAINT FOR PATENT INFRINGEMENT

DEMAND FOR JURY TRIAL

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Pursuant to Fed. R. Civ. P. 38(b)(1) and (c), and L.R. 38-1, Plaintiff hereby
demands trial by jury on all issues triable to a jury.

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Respectfully submitted,

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Dated: February 4, 2014

THE ECLIPSE GROUP LLP

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By:

/s/ Stephen M. Lobbin
Attorneys for Plaintiff Steve Morsa

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EXHIBIT A

EXHIBIT B