e.Digital Corporation v. Apple Inc.

Filing 1

COMPLAINT with Jury Demand against Apple Inc. ( Filing fee $ 350 receipt number 0974-5762467.), filed by e.Digital Corporation. (Attachments: # 1 Civil Cover Sheet, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E)The new case number is 3:13-cv-00785-MMA-BLM. Judge Michael M. Anello and Magistrate Judge Barbara Lynn Major are assigned to the case. (Chalk, Pamela)(notified CA of related cases on cover sheet)(cxl) (cap).

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ANTON HANDAL (Bar No. 113812)
[e-mail]
PAMELA C. CHALK (Bar No. 216411)
[e-mail]
GABRIEL HEDRICK (Bar No. 220649)
[e-mail]
HANDAL & ASSOCIATES
1200 Third Avenue, Suite 1321
San Diego, California 92101
Tel: [phone]
Fax: [phone]
Attorneys for Plaintiff
e.Digital Corporation

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UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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Plaintiff,

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Case No. '13CV0785 MMA BLM

e.Digital Corporation,

COMPLAINT FOR PATENT
INFRINGEMENT

v.

DEMAND FOR JURY TRIAL

Apple Inc.,
Defendant.

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Plaintiff e.Digital Corporation (“e.Digital” or “Plaintiff”), by and through its

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undersigned counsel, complains and alleges against Defendant Apple Inc. (“Apple”

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or “Defendant”) as follows:

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NATURE OF THE ACTION
1.

This is a civil action for infringement of a patent arising under the

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laws of the United States relating to patents, 35 U.S.C. § 101, et seq., including,

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without limitation, § 281. Plaintiff e.Digital seeks a preliminary and permanent

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injunction and monetary damages for the infringement of its U.S. Patent Nos.

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5,842,170; 5,742,737; and 5,491,774.

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HANDAL & ASSOCIATES
1200 THIRD AVE
SUITE 1321
SAN DIEGO, CA 92101
TEL: [phone]
FAX: [phone]

JURISDICTION AND VENUE
2.

This court has subject matter jurisdiction over this case for patent
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COMPLAINT

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infringement under 28 U.S.C. §§ 1331 and 1338(a) and pursuant to the patent laws

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of the United States of America, 35 U.S.C. § 101, et seq.

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3.

Venue properly lies within the Southern District of California

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pursuant to the provisions of 28 U.S.C. §§ 1391(b), (c), and (d) and 1400(b). On

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information and belief, Defendant conducts substantial business directly and/or

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through third parties or agents in this judicial district by selling and/or offering to

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sell the infringing products and/or by conducting other business in this judicial

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district. Furthermore, Plaintiff e.Digital is headquartered and has its principal

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place of business in this district, engages in business in this district, and has been

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harmed by Defendant’s conduct, business transactions and sales in this district.
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This Court has personal jurisdiction over Defendant because, on

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information and belief, Defendant transacts continuous and systematic business

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within the State of California and the Southern District of California. In addition,

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this Court has personal jurisdiction over the Defendant because, on information

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and belief, this lawsuit arises out of Defendant’s infringing activities, including,

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without limitation, the making, using, selling and/or offering to sell infringing

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products in the State of California and the Southern District of California. Finally,

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this Court has personal jurisdiction over Defendant because, on information and

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belief, Defendant has made, used, sold and/or offered for sale its infringing

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products and placed such infringing products in the stream of interstate commerce

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with the expectation that such infringing products would be made, used, sold

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and/or offered for sale within the State of California and the Southern District of

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California.
PARTIES

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5.

Plaintiff e.Digital is a Delaware corporation with its headquarters and

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principal place of business at 16870 West Bernardo Drive, Suite 120, San Diego,

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California 92127.

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HANDAL & ASSOCIATES
1200 THIRD AVE
SUITE 1321
SAN DIEGO, CA 92101
TEL: [phone]
FAX: [phone]

6.

Upon information and belief, Defendant Apple Inc. is a corporation
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COMPLAINT

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registered and lawfully existing under the laws of the State of California, with an

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office and principal place of business located at 1 Infinite Loop, Cupertino, CA

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95014.
THE ASSERTED PATENTS

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On November 24, 1998, United States Patent No. 5,842,170 (“the

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’170 patent”) entitled “Method For Editing In Hand Held Recorder,” was duly and

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legally issued by the United States Patent and Trademark Office. The named

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inventors are Norbert P. Daberko, Richard K. Davis, and Richard D. Bridgewater.

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e.Digital is the assignee and owner of the entire right, title and interest in and to the

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’170 patent and has the right to bring this suit for damages and other relief. A true

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and correct copy of the ’170 patent is attached hereto as Exhibit A.

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On April 21, 1998, United States Patent No. 5,742,737 (“the ’737

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patent”) entitled “Method For Recording Voice Messages On Flash Memory In A

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Hand Held Recorder,” was duly and legally issued by the United States Patent and

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Trademark Office. The named inventors are Norbert P. Daberko, Richard K.

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Davis, and Richard D. Bridgewater. e.Digital is the assignee and owner of the

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entire right, title and interest in and to the ’737 patent and has the right to bring this

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suit for damages and other relief. A true and correct copy of the ’737 patent is

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attached hereto as Exhibit B.

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9.

On October 17, 2012, the United States Patent and Trademark Office

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issued a Reexamination Certificate for the ’737 patent, canceling Claim 5 and

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adding new Claim 13, which is substantially identical to former claim 5. A true

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and correct copy of the Reexamination Certificate is attached hereto as Exhibit C.

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10.

On February 13, 1996, United States Patent No. 5,491,774 (“the ‘774

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patent”) entitled “Handheld Record And Playback Device With Flash Memory,”

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was duly and legally issued by the United States Patent and Trademark Office.

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The named inventors are Elwood G. Norris, Norbert P. Daberko, and Steven T.

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Brightbill. e.Digital is the assignee and owner of the entire right, title and interest

HANDAL & ASSOCIATES
1200 THIRD AVE
SUITE 1321
SAN DIEGO, CA 92101
TEL: [phone]
FAX: [phone]

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COMPLAINT

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in and to the ’774 patent and has the right to bring this suit for damages and other

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relief. A true and correct copy of the ’774 patent is attached hereto as Exhibit D.

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On August 14, 2012, the United States Patent and Trademark Office

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issued a Reexamination Certificate for the ’774 patent. A true and correct copy of

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the Reexamination Certificate is attached hereto as Exhibit E.

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COUNT ONE

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INFRINGEMENT OF THE ’170 PATENT BY DEFENDANT

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Plaintiff re-alleges and incorporates by reference each of the

allegations set forth in paragraphs 1 through 11 above.
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Upon information and belief, Defendant, without authority, (a) has

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directly infringed and continues to directly infringe the ’170 patent by making,

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using, offering to sell, or selling within the United States, or importing into the

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United States, products that practice one ore more claims of the ’170 patent in

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violation of 35 U.S.C. § 271(a); (b) has induced and continues to induce

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infringement of one or more claims of the ’170 patent in violation of 35 U.S.C. §

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271(b); and (c) has contributed and continue to contribute to the infringement of

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one ore more claims of the ’170 patent in violation of 35 U.S.C. § 271(c).

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14.

The accused products for purposes of the ’170 patent include but are

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not limited to the Apple iPhone, iPhone 3G, iPhone 3GS, iPhone 4, iPhone 4S, and

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iPhone 5 mobile devices; the Apple iPad series of tablets (excluding the first

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generation); the Apple iPad Mini series of tablets; the Apple iPod Touch series of

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devices (excluding the first generation); the MacBook Pro series of computers; the

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MacBook Air series of computers.

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15.

The accused products, alone or in combination with other products,

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practice each of the limitations of independent claims 1 and 7 and dependent

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claims 2 through 4, 8 through 9, and 11 through 12 of the ’170 patent.

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HANDAL & ASSOCIATES
1200 THIRD AVE
SUITE 1321
SAN DIEGO, CA 92101
TEL: [phone]
FAX: [phone]

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Upon information and belief, Defendant, without authority, has

actively induced infringement and continue to actively induce infringement of the
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COMPLAINT

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’170 patent in violation of 35 U.S.C. § 271(b) by causing others to directly infringe

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the claims of the ’170 patent and/or by intentionally instructing others how to use

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the accused products in a manner that infringes the claims of the ’170 patent. On

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information and belief, Defendant has induced and continues to induce

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infringement by instructing customers to operate the products in an infringing

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manner and/or when Defendant test or otherwise operate the accused products in

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the United States.

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Upon information and belief, Defendant, without authority, has

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contributed and continues to contribute to the infringement of the ’170 patent in

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violation of 35 U.S.C. § 271(c) by importing into the United States, selling and/or

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offering to sell within the United States accused products that (1) embody and

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constitute a material part of the invention of the ’170 patent, (2) Defendant knows

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to be especially adapted for use in infringing the ’170 patent, and (3) are not staple

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articles of commerce suitable for substantial non-infringing use with respect to the

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’170 patent.

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Based on information and belief, Plaintiff alleges that Defendant sells,

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ships, or otherwise delivers the accused products with all the features required to

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infringe the asserted claims of the ’170 patent. On information and belief, these

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products are designed to practice the infringing features.

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Defendant had knowledge of infringement of the ’170 patent since at

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least the filing of this complaint and perhaps as early as 2010 by virtue of the

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Plaintiff’s filing of complaints against others within Defendant’s industry. On

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information and belief, Defendant has continued to sell products that practice the

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’170 patent after acquiring knowledge of infringement.

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Plaintiff alleges upon information and belief, that the infringement by

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Defendant has been and is willful. Plaintiff has been irreparably harmed by these

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acts of infringement and has no adequate remedy at law. Upon information and

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belief, infringement of the ’170 patent is ongoing and will continue unless

HANDAL & ASSOCIATES
1200 THIRD AVE
SUITE 1321
SAN DIEGO, CA 92101
TEL: [phone]
FAX: [phone]

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COMPLAINT

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Defendant is enjoined from further infringement by the court.

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COUNT TWO

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INFRINGEMENT OF THE ’737 PATENT BY DEFENDANT

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Plaintiff re-alleges and incorporates by reference each of the

allegations set forth in paragraphs 1 through 11 above.
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Upon information and belief, Defendant, without authority, (a) has

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directly infringed and continues to directly infringe the ’737 patent by making,

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using, offering to sell, or selling within the United States, or importing into the

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United States, products that practice one ore more claims of the ’737 patent in

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violation of 35 U.S.C. § 271(a); (b) has induced and continues to induce

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infringement of one or more claims of the ’737 patent in violation of 35 U.S.C. §

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271(b); and (c) has contributed and continues to contribute to the infringement of

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one ore more claims of the ’737 patent in violation of 35 U.S.C. § 271(c).

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The accused products for purposes of the ‘737 patent include but are

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not limited to the Apple iPhone, iPhone 3G, iPhone 3GS, iPhone 4, iPhone 4S, and

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iPhone 5 mobile devices; the Apple iPad series of tablets (excluding the first

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generation); the Apple iPad Mini series of tablets; the Apple iPod Nano series of

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devices (excluding the first generation); the Apple iPod Touch series of devices

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(excluding the first generation); the MacBook Pro series of computers; and the

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MacBook Air series of computers.

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The accused products, alone or in combination with other products,

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practice each of the limitations of independent claim 1 and dependent claim 3 of

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the ‘737 patent; and independent claim 4 of the ‘737 patent.

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The MacBook accused products, with a slot for a flash memory

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module, alone or in combination with other product also infringe each and every

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element of independent claims 9 and 13 and dependent claims 6 and 7 of the ‘737

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patent.

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HANDAL & ASSOCIATES
1200 THIRD AVE
SUITE 1321
SAN DIEGO, CA 92101
TEL: [phone]
FAX: [phone]

26.

Upon information and belief, Defendant, without authority, has
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COMPLAINT

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actively induced infringement and continues to actively induce infringement of the

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’737 patent in violation of 35 U.S.C. § 271(b) by causing others to directly infringe

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the claims of the ’737 patent and/or by intentionally instructing others how to use

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the accused products in a manner that infringes the claims of the ’737 patent. On

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information and belief, Defendant has induced and continues to induce

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infringement by instructing customers to operate the products in an infringing

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manner and/or when Defendant tests or otherwise operates the accused products in

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the United States.

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Upon information and belief, Defendant, without authority, has

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contributed to and continues to contribute to the infringement of the ’737 patent in

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violation of 35 U.S.C. § 271(c) by importing into the United States, selling and/or

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offering to sell within the United States accused products that (1) constitute a

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material part of the invention of the ’737 patent, (2) Defendant knows to be

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especially adapted for use in infringing the ’737 patent, and (3) are not staple

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articles of commerce suitable for substantial noninfringing use with respect to the

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’737 patent.

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Based on information and belief, Plaintiff alleges that Defendant sells,

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ships, or otherwise delivers the accused products with all the features required to

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infringe the asserted claims of the ’737 patent. On information and belief, these

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products are designed to practice the infringing features.

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29.

Defendant had knowledge of infringement of the ’737 patent since at

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least the filing of this complaint and perhaps as early as 2010 by virtue of the

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Plaintiff’s filing of complaints against others within Defendant’s industry. On

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information and belief, Defendant has continued to sell products that practice the

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’737 patent after acquiring knowledge of infringement.

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HANDAL & ASSOCIATES
1200 THIRD AVE
SUITE 1321
SAN DIEGO, CA 92101
TEL: [phone]
FAX: [phone]

30.

Upon information and belief, the infringement by Defendant has been

and is willful.
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Plaintiff has been irreparably harmed by these acts of infringement
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COMPLAINT

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and has no adequate remedy at law. Upon information and belief, infringement of

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the ’737 patent is ongoing and will continue unless Defendant is enjoined from

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further infringement by the court.

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COUNT THREE

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INFRINGEMENT OF THE ’774 PATENT BY DEFENDANT

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32.

Plaintiff re-alleges and incorporates by reference each of the

allegations set forth in paragraphs 1 through 11 above.
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Upon information and belief, Defendant, without authority, (a) has

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directly infringed and continue to directly infringe the ’774 patent by making,

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using, offering to sell, or selling within the United States, or importing into the

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United States, products that practice one ore more claims of the ’774 patent in

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violation of 35 U.S.C. § 271(a); (b) has induced and continues to induce

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infringement of one or more claims of the ’774 patent in violation of 35 U.S.C. §

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271(b); and (c) has contributed and continues to contribute to the infringement of

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one ore more claims of the ’774 patent in violation of 35 U.S.C. § 271(c).

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34.

The accused products for purposes of the ’774 patent include but are

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not limited to certain MacBook Pro series, and the MacBook Air series computers

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that are capable of use with removable flash memory device.

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35.

The accused products, alone or in combination with other products,

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practice each of the limitations of independent claims 33 and 34, and dependent

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claims 2, 6,10, 15 through 17, 23 through 26, and 28 through 31 of the ’774 patent.

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36.

Upon information and belief, Defendant, without authority, has

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actively induced infringement and continues to actively induce infringement of the

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’774 patent in violation of 35 U.S.C. § 271(b) by causing others to directly infringe

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the claims of the ’774 patent and/or by intentionally instructing others how to use

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the accused products in a manner that infringes the claims of the ’774 patent. On

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information and belief, Defendant has induced and continues to induce

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infringement by instructing customers to operate the products in an infringing

HANDAL & ASSOCIATES
1200 THIRD AVE
SUITE 1321
SAN DIEGO, CA 92101
TEL: [phone]
FAX: [phone]

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COMPLAINT

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manner and/or when Defendant tests or otherwise operates the accused products in

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the United States.

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Upon information and belief, Defendant, without authority, has

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contributed to and continues to contribute to the infringement of the ’774 patent in

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violation of 35 U.S.C. § 271(c) by importing into the United States, selling and/or

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offering to sell within the United States accused products that (1) constitute a

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material part of the invention of the ’774 patent, (2) Defendant knows to be

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especially adapted for use in infringing the ’774 patent, and (3) are not staple

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articles of commerce suitable for substantial noninfringing use with respect to the

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’774 patent.
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Based on information and belief, Plaintiff alleges that Defendant sells,

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ships, or otherwise delivers the accused products with all the features required to

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infringe the asserted claims of the ’774 patent. On information and belief, these

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products are designed to practice the infringing features.

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39.

Defendant had knowledge of infringement of the ’774 patent since at

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least the filing of this complaint and perhaps as early as 2010 by virtue of the

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Plaintiff’s filing of complaints against others within Defendant’s industry. On

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information and belief, Defendant has continued to sell products that practice the

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’774 patent after acquiring knowledge of infringement.

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Upon information and belief, the infringement by Defendant has been

and is willful.
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Plaintiff has been irreparably harmed by these acts of infringement

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and has no adequate remedy at law. Upon information and belief, infringement of

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the ’774 patent is ongoing and will continue unless Defendant is enjoined from

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further infringement by the court.
PRAYER FOR RELIEF

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WHEREFORE, Plaintiff prays for relief and judgment as follows:

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1.

HANDAL & ASSOCIATES
1200 THIRD AVE
SUITE 1321
SAN DIEGO, CA 92101
TEL: [phone]
FAX: [phone]

That Defendant be declared to have infringed the Patents-in-Suit;
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COMPLAINT

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2.

That Defendant’s infringement of the Patents-in-Suit has been

deliberate and willful;
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Preliminarily and permanently enjoining the Defendant’s officers,

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agents, servants, employees, and attorneys, and those persons in active concert or

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participation with them, from infringement of the Patents-in-Suit, including nut not

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limited to any making, using, offering for sale, selling, or importing of unlicensed

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infringing products within and without the United States;

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4.

Compensation for all damages caused by Defendant’s infringement of

the Patents-in-Suit to be determined at trial;
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Enhancing Plaintiff’s damages up to three (3) times their amount

pursuant to 35 U.S.C. § 284;
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Granting Plaintiff pre-and post-judgment interest on its damages,

together with all costs and expenses; and,
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Awarding such other relief as this Court may deem just and proper.

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HANDAL & ASSOCIATES
Dated: April 1, 2013

By: /s/ Pamela C. Chalk
Anton N. Handal
Gabriel G. Hedrick
Pamela C. Chalk
Attorneys for Plaintiff
e.Digital Corporation

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HANDAL & ASSOCIATES
1200 THIRD AVE
SUITE 1321
SAN DIEGO, CA 92101
TEL: [phone]
FAX: [phone]

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COMPLAINT

DEMAND FOR JURY TRIAL

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Plaintiff hereby demands a trial by jury on all claims.

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HANDAL & ASSOCIATES
Dated: April 1, 2013

By: /s/ Pamela C. Chalk
Anton N. Handal
Gabriel G. Hedrick
Pamela C. Chalk
Attorneys for Plaintiff
e.Digital Corporation

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HANDAL & ASSOCIATES
1200 THIRD AVE
SUITE 1321
SAN DIEGO, CA 92101
TEL: [phone]
FAX: [phone]

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COMPLAINT