Google, Inc. v. Eolas Technologies Inc. et al

Filing 1

COMPLAINT against Eolas Technologies Incorporated. The Regents of the University of California. Filed byGoogle, Inc.(Filing fee $400.00, receipt number 0971-8262256.). (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K, # 12 Exhibit L, # 13 Civil Cover Sheet)(Mitro, Keith) (Filed on 12/30/2013) Modified on 12/31/2013 (ha, COURT STAFF). Modified on 1/3/2014 (jlmS, COURT STAFF).

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PARKER C. ANKRUM (261608)
[e-mail]
REBECCA UNRUH (267881)
[e-mail]
KEITH J. MITRO (287108)
[e-mail]
KASOWITZ, BENSON, TORRES & FRIEDMAN LLP
333 Twin Dolphin Drive, Suite 200
Redwood Shores, CA 94065
[phone] Telephone
[phone] Fax
Of Counsel:
JEFFREY J. TONEY (pro hac vice to be filed)
[e-mail]
JONATHAN K. WALDROP (pro hac vice to be filed)
[e-mail]
DARCY L. JONES (pro hac vice to be filed)
[e-mail]
KASOWITZ, BENSON, TORRES & FRIEDMAN LLP
1349 West Peachtree Street, N.W., Suite 1500
Atlanta, GA 30309
[phone] Telephone
[phone] Fax
Attorneys for Plaintiff GOOGLE INC.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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GOOGLE INC.,

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Case No.

Plaintiff,
v.

COMPLAINT FOR
DECLARATORY JUDGMENT OF
NON-INFRINGEMENTOF U.S.
PATENT NOS. 8,082,293 AND 8,086,662

EOLAS TECHNOLOGIES
INCORPORATED; and THE REGENTS OF
THE UNIVERSITY OF CALIFORNIA,

DEMAND FOR JURY TRIAL
Defendants.

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Plaintiff Google Inc. (“Google”) seeks a declaratory judgment of non-infringement, both

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direct and indirect, of United States Patent Nos. 8,082,293 (the “’293 patent”) and 8,086,662

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(the “’662 patent”) as follows:

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-1COMPLAINT FOR DECLARATORY JUDGMENT OF
NON-INFRINGEMENT OF U.S. PATENT NOS. 8,082,293 AND 8,086,662

I.

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1.

NATURE OF THE ACTION

Google brings this action seeking a declaratory judgment of non-infringement

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that arises under the patent laws of the United States, Title 35 of the United States Code.

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Google brings this action against The Regents of the University of California (“Regents”), the

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owner by assignment of the ’293 patent (attached as Ex. A), and the ’662 patent (attached as Ex.

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B), and against Eolas Technologies, Inc. (“ETI”), which is the Regents’ exclusive licensee under

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the ’293 and ’662 patents (collectively, the “Asserted Patents”) and acts as the Regents’ agent

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for purposes of commercializing and enforcing the Asserted Patents. Google requests this relief

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because Defendants ETI and Regents (collectively, “Eolas”) continue to allege that Google

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infringes patents issuing from applications that are continuations of U.S. Patent Application No.

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08/324,443 (the “’443 Application”), including the Asserted Patents.

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2.

Specifically, in a letter dated December 19, 2013 but only received by Google on

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December 23, 2013 (the “December 23 letter,” attached as Ex. C), Eolas accuses Google of

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infringing the Asserted Patents by making, using, selling, offering for sale, and/or importing into

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the United States:

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including . . . content accessible via www.google.com . . . (ii) software, including, without

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limitation, browser software and software that allows content to be interactively presented . . .

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including, without limitation, Chrome for Windows and Chrome for the Mac and/or

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(iii) computer equipment . . . that stores, serves, and/or runs any of the foregoing” (the “Accused

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Systems”). A true and correct copy of the December 23 letter is attached hereto. (See id.) The

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December 23 letter also includes related allegations of inducement, indirect, and contributory

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infringement.

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3.

“(i) web pages and content to be interactively presented in browsers,

The Asserted Patents are siblings to each other – that is, both issued from

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continuation applications that claim priority to the single ’443 Application identified above, and

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both claim essentially the same subject matter – and are also siblings to two other patents that

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Eolas previously asserted against Google in litigation filed in 2009 – litigation in which every

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asserted claim of the previously asserted patents was struck down as invalid, a verdict affirmed

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on appeal. A justiciable controversy therefore exists between these parties concerning the scope

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-2COMPLAINT FOR DECLARATORY JUDGMENT OF
NON-INFRINGEMENT OF U.S. PATENT NOS. 8,082,293 AND 8,086,662

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of these Asserted Patents and Eolas’s allegations of infringement sufficient to support the relief

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sought by Google.
II.

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4.

THE PARTIES

Plaintiff Google Inc. (“Google”) is a corporation organized and existing under

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the laws of the state of Delaware, with its principal place of business at 1600 Amphitheatre

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Parkway, Mountain View, California, 94043. Google’s mission is to organize the world’s

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information and make it universally accessible and useful. As part of that mission, Google

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produces Chrome, an open source browser built for the modern web.

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5.

On information and belief, ETI is a corporation organized and existing under the

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laws of the state of Texas. ETI’s principal place of business is located at 313 East Charnwood

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Street, Tyler, Texas 75701.

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On information and belief, Defendant Regents is a California corporation. On

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information and belief, Regents’ principal place of business is located at 1111 Franklin Street,

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Oakland, CA 94607. Regents is listed as the owner by assignment of the ’443 Application and

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both of the Asserted Patents. (See Exs. D & E.)
III.

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7.

JURISDICTION

This action arises under the Declaratory Judgment Act, 28 U.S.C. § 2201, and

under the patent laws of the United States, 35 U.S.C. §§ 1-390.
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This Court has subject matter jurisdiction over this action under 28 U.S.C. §§

1331, 1338(a), and 2201(a).
9.

This Court has general and personal jurisdiction over Defendant Regents, which

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is domiciled in the State of California, oversees the University of California system, and

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maintains substantial operations within the boundaries of the Northern District of California,

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including being headquartered in Oakland.

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Moreover, Defendant Regents has maintained continuous and systematic contacts with the State

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of California and taken specific actions in this state and in the Northern District of California

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relevant to this matter, including (i) identifying the address of its registered agent of service at

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1111 Franklin St. fl. 8th, Oakland, CA 94607-5201; (ii) retaining California attorney Charles J.

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(See http://regents.universityofcalifornia.edu/.)

-3COMPLAINT FOR DECLARATORY JUDGMENT OF
NON-INFRINGEMENT OF U.S. PATENT NOS. 8,082,293 AND 8,086,662

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Kulas of San Francisco, California to oversee the assignment of the Asserted Patents from the

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inventors (who were at the time all California residents) to Regents, (iii) retaining California

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attorney Charles E. Krueger of Walnut Creek, California to file and prosecute the ’443

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Application and the various continuation applications that ultimately issued as the Asserted

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Patents and their sibling patents, and in the supplemental examinations and reexaminations of

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those patents; (iv) initiating or participating as plaintiff in patent litigation actions against a

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variety of California entities, including Adobe Systems, Inc., Apple Inc., eBay Inc., Google, Sun

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Microsystems Inc., Facebook, Inc., The Walt Disney Company, Yahoo! Inc., and YouTube,

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LLC, involving the Asserted Patents and/or related patents; and (v) on information and belief,

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entering into settlement/licensing agreements with a variety of California entities that allow

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such entities to continue activities alleged by Regents to infringe the Asserted Patents and/or

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related patents. On information and belief, Regents’ licensing and enforcement efforts directed

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towards California residents have generated substantial payments from entities headquartered in

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California.

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10.

This Court has personal jurisdiction over Defendant ETI.

ETI was first

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incorporated in California in 1994, then merged into a Delaware corporation before becoming a

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Texas Corporation. (See Ex. F.) ETI maintained continuous and systematic contacts with the

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State of California since its inception, including (i) communications and business agreements

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with Regents, a resident of the State of California, in which ETI assisted the Regents to

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commercialize this patent family owned by the Regents; (ii) ETI acquired licenses to the

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Asserted Patents and related patents from the Regents for the purpose of asserting such patents

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in litigation; (iii) initiating patent litigation actions against a variety of California entities

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involving the Asserted Patents and/or related patents, including Adobe Systems Inc.; Apple Inc.;

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eBay Inc.; Facebook, Google; Sun Microsystems Inc.; The Walt Disney Company, Yahoo! Inc.;

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and YouTube, LLC; (iv) entering into settlement/licensing agreements with California entities

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including Adobe Systems Inc., Apple Inc.; eBay Inc.; and Sun Microsystems Inc., that allow

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such entities to continue activities alleged by ETI to infringe the Asserted Patents and/or related

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patents; (v) directing communications to Google in California (and, upon information and

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-4COMPLAINT FOR DECLARATORY JUDGMENT OF
NON-INFRINGEMENT OF U.S. PATENT NOS. 8,082,293 AND 8,086,662

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belief, other California entities) alleging infringement of the Asserted Patents and/or related

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patents; (vi) availing itself of the Northern District of California by seeking judicial relief in a

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case against Microsoft, Case no. 99-mc-00212-CRB; and (vii) at one time incorporating in the

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State of California and identifying the address of its registered agent for service at 2710

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Gateway Oaks Dr. Ste. 150N, Sacramento, CA 95833-3502. (See Ex. F.)
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On information and belief, ETI’s business relationship with Regents, and its

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associated licensing and enforcement efforts directed towards California residents, have

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generated substantial revenues. For example, the 2009 Second Amended License Agreement

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between ETI and Regents reflected the ongoing licensing and royalty arrangement between the

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parties. (See Ex. G.)1 Further, in the prior litigation commenced in 2009, Regents joined that

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lawsuit as plaintiff in light of its ownership interest in the patents asserted in that 2009 litigation

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and expressly to “support its licenses.” (See Ex. H.)
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Venue is proper in this District under 28 U.S.C. §§ 1391(b & c) because a

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substantial part of the events giving rise to Google’s claim occurred in this district, and because

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Regents and ETI are subject to general and/or personal jurisdiction here.
13.

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is infringing or has infringed the Asserted Patents.
IV.

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14.

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INTRADISTRICT ASSIGNMENT

For purposes of intradistrict assignment under Civil Local Rules 3-2(c) and

3-5(b), this Intellectual Property Action will be assigned on a district-wide basis.
V.

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A justiciable controversy exists between Google and Eolas as to whether Google

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The ’443 Patent Application And Patents
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FACTUAL BACKGROUND

The ’443 Application was filed on October 17, 1994. This application was

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generally drawn to interactive distributed internet applications. The patent application named

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Michael David Doyle, a former researcher at the University of California, as an inventor. He

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assigned all rights, title and interest in the ’443 Application to the Regents.

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Ex. G is marked “Highly Confidential – Attorney’s Eyes Only,” but was entered into the
public trial record during the trial that resulted in the verdict of invalidity.
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NON-INFRINGEMENT OF U.S. PATENT NOS. 8,082,293 AND 8,086,662

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Four patents relevant to this matter issued from the original ’443 Application.

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The previously-asserted ’906 patent issued on November 17, 1998. Its claims were drawn

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generally to a method of running applications on a distributed hypermedia computer network –

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that is, the patent claims a method of allowing users to interact with online video, music or

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audio clips, internet search features, and maps and embedded applications in a browser. The

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previously-asserted ’985 patent issued on October 6, 2009, as a result of a series of continuation

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applications that claimed priority to the parent ’443 Application. Its claims were also drawn to

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methods of running applications on a distributed hypermedia computer network. As set forth

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more fully below, after a jury trial, every asserted claim of both the ’906 and ’985 patents were

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found to be invalid. The U.S. Court of Appeals for the Federal Circuit affirmed on July 22,

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2013.
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The Asserted Patents, like their sibling ’906 and ’985 patents, also issued on

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continuation applications claiming priority to the ’443 Application. Also like their siblings, the

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claims of the Asserted Patents are drawn to methods of running applications on a distributed

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hypermedia computer network. Further, during prosecution of the Asserted Patents, the Patent

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Office rejected all pending claims in the applications for both the ’293 and ’662 Asserted

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Patents under the doctrine of double patenting. The Examiner thus concluded that the pending

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claims of the Asserted Patents were not patentably distinct from the claims of the’293 and ’662

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patents. (See PTO Office Actions rejecting for double-patenting, attached as Exs. I (’293

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patent) & J (’662 patent).) Eolas did not traverse the Examiner’s conclusions; rather, Eolas

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tacitly acknowledged that the pending claims were not patentably distinct from the claims of the

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’906 or ’985 patents by instead filing a terminal disclaimer to overcome the rejections. (See

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Terminal disclaimers, attached as Exs. K (’293 patent) & L (’662 patent).)

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B.

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ETI Was Established to Commercialize and Enforce the ’443 Application
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Mr. Doyle founded ETI in 1994, contemporaneously with the filing of the ’443

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Application. He formed ETI first as a California company expressly to “assist the University of

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California in commercializing” the inventions disclosed in the ’443 Application. (See Eolas

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website http://www.eolas.com/about_us.html.) ETI has represented the Regents’ interests in

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-6COMPLAINT FOR DECLARATORY JUDGMENT OF
NON-INFRINGEMENT OF U.S. PATENT NOS. 8,082,293 AND 8,086,662

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numerous litigations asserting the patents that issued from the ’443 Application.
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On information and belief, in 1999, Eolas sued Microsoft Corporation in the

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Northern District of Illinois alleging infringement of the ’906 patent. According to the Office of

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the President, Regents joined that lawsuit because it was an important lawsuit and the

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“University expected to be fully compensated for its patented technology.”

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http://www.ucop.edu/news/archives/2003/aug11art1qanda.htm.)

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belief, Microsoft later settled the litigation by licensing the ’906 patent from Eolas.
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(See

On further information and

In October 2009, Eolas filed a patent infringement suit in the Eastern District of

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Texas against multiple companies, including many based in California, alleging infringement of

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both the ’906 and ’985 patents. Prior to the conclusion of trial, several defendants, including

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California-based companies Adobe Systems, Inc., Apple Inc., eBay Inc., and Sun Microsystems

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Inc., settled with Eolas and were dismissed from the suit. On information and belief, those

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defendants entered into settlement agreements in which each was granted licenses for the ’906

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and ’985 patents.

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21.

Google and other defendants declined to settle and proceeded to trial. The jury

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returned with a verdict finding every asserted claim of the ’906 and ’985 patents to be invalid.

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The trial court entered final judgment on the jury’s verdict and, on July 22, 2013, the Federal

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Circuit affirmed the judgment in its entirety.
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In September 2012, Eolas filed patent infringement lawsuits against several more

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California-based companies, including Facebook, Inc. and The Walt Disney Company, this time

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alleging infringement of the Asserted Patents.
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On December 23, 2013, Google received Eolas’s December 23 cease-and-desist

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letter, accusing Google of infringing the Asserted Patents, thereby giving rise to these

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proceedings.

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C.

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A Justiciable Controversy Exists Regarding Google’s Alleged Infringement.
24.

As set forth above, Eolas accused Google of infringing the closely-related ’906

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and ’985 patents in Eolas’s 2009 lawsuit. Google was one of the defendants that successfully

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tried the asserted claims of the ’906 and ’985 patents to a verdict of invalidity.

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-7COMPLAINT FOR DECLARATORY JUDGMENT OF
NON-INFRINGEMENT OF U.S. PATENT NOS. 8,082,293 AND 8,086,662

25.

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Eolas sent its December 23 letter to accuse Google of infringing the ’293 and

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’662 Asserted Patents, giving rise to a justiciable controversy between the parties. Eolas’s

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accusations threaten Google’s research and development activity of the Accused Systems;

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threaten Google’s fundamental work to develop innovations to organize internet content to

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render it accessible and useful; and threaten Google’s business and relationships with its

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customers and partners. The December 23 letter was sent by Eolas’s litigation counsel to

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Google, copying Google’s prior litigation counsel. Eolas has filed suit against several other

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companies alleging infringement of the Asserted Patents.
26.

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For all these reasons, a justiciable controversy exists between Google and Eolas

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regarding the alleged infringement of any claim of the Asserted Patents.

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D.

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Google Does Not Infringe the Asserted Patents
27.

On information and belief, none of Google’s Accused Systems, nor any device or

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other computer equipment serving or running the foregoing, whether maintained by Google or

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other users, directly or indirectly infringes any claim of the Asserted Patents.

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28.

Further, on information and belief, no third party infringes any claim of the

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Asserted Patents, and Google has not caused, directed, requested, or facilitated any such

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infringement, much less with specific intent to do so. Google’s web pages and content, web

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browsing software (including Google’s Chrome browser), and related devices and equipment

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are not designed for use in any combination that infringes any claim of the Asserted Patents. To

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the contrary, each is a product with substantial uses that do not infringe any claim of these

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patents.

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FIRST COUNT

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(Declaration of Non-Infringement of the ’293 Patent)

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29.

Google restates and incorporates by reference the allegations in paragraphs 1

through 28 of this Complaint as if fully set forth herein.
30.

On information and belief, the Regents own the ’293 patent by assignment. On

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information and belief, the Regents granted to ETI an exclusive license to the ’293 patent and

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ETI serves as agent for purposes of commercializing and enforcing the ’293 patent.

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-8COMPLAINT FOR DECLARATORY JUDGMENT OF
NON-INFRINGEMENT OF U.S. PATENT NOS. 8,082,293 AND 8,086,662

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Accordingly, Eolas collectively owns all rights, title, and interest in the ’293 patent. A true and

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correct copy of the ’293 patent is attached hereto as Exhibit A.

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31.

In the December 23 letter, Eolas accuses Google of infringing the ’293 patent by

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making, using, selling, offering for sale, and/or importing into the United States the Accused

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Systems. The December 23 letter also includes related allegations of inducement, indirect, and

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contributory infringement.

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32.

A justiciable controversy therefore exists between Google and Eolas regarding

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whether the Accused Systems infringe the ’293 patent. A judicial declaration is necessary to

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determine the parties’ respective rights regarding the ’293 patent. Google seeks a judgment

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declaring that Google’s Accused Systems, including its Chrome web browser, do not directly or

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indirectly infringe any claim of the ’293 patent.

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SECOND COUNT

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(Declaration of Non-Infringement of the ’662 Patent)

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33.

Google restates and incorporates by reference the allegations in paragraphs 1

through 32 of this Complaint as if fully set forth herein.
34.

On information and belief, the Regents own the ’662 patent by assignment. On

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information and belief, the Regents granted to ETI an exclusive license to the ’662 patent and

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ETI serves as agent for purposes of commercializing and enforcing the ’662 patent.

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Accordingly, Eolas collectively owns all rights, title, and interest in the ’662 patent. A true and

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correct copy of the ’662 patent is attached hereto as Exhibit B.

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35.

In the December 23 letter, Eolas accuses Google of infringing the ’662 patent by

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making, using, selling, offering for sale, and/or importing into the United States the Accused

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Systems. The December 23 letter also includes related allegations of inducement, indirect, and

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contributory infringement.

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36.

A justiciable controversy therefore exists between Google and Eolas regarding

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whether the Accused Systems infringe the ’662 patent. A judicial declaration is necessary to

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determine the parties’ respective rights regarding the ’662 patent. Google seeks a judgment

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declaring that Google’s Accused Systems, including its Chrome web browser, do not directly or

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-9COMPLAINT FOR DECLARATORY JUDGMENT OF
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indirectly infringe any claim of the ’662 patent.
PRAYER FOR RELIEF

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WHEREFORE, Google prays for judgment and relief as follows:
A.

Declaring that Google’s Accused Systems do not infringe the ’293 or ’662

patents;
B.

Declaring that judgment be entered in favor of Google and against Eolas on each

of Google’s claims;

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C.

Finding that this an exceptional case under 35 U.S.C. § 285;

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D.

Awarding Google its costs and attorneys’ fees in connection with this action; and

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E.

Such further and additional relief as the Court deems just and proper.
JURY DEMAND

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Google demands a jury trial on all issues and claims so triable.
Dated: December 30, 2013

By: /s/ Keith J. Mitro
Keith J. Mitro

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Parker C. Ankrum
Cal. Bar. No. 261608
[e-mail]
Rebecca Unruh
Cal. Bar. No. 267881
[e-mail]
Keith J. Mitro
Cal. Bar No. 287108
[e-mail]
KASOWITZ, BENSON, TORRES & FRIEDMAN LLP
333 Twin Dolphin Drive, Suite 200
Redwood Shores, California 94065
Tel: [phone]; Fax: [phone]

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Attorneys for Plaintiff Google Inc.

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Of Counsel:

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Jeffrey J. Toney (pro hac vice to be filed)
[e-mail]
Jonathan K. Waldrop (pro hac vice to be filed)
[e-mail]
Darcy L. Jones (pro hac vice to be filed)
[e-mail]
KASOWITZ, BENSON, TORRES & FRIEDMAN LLP
1349 West Peachtree Street, N.W., Suite 1500
Atlanta, Georgia 30309
Tel: [phone]
Fax: [phone]

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- 11 COMPLAINT FOR DECLARATORY JUDGMENT OF
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