Beacon Navigation GmbH v. Mazda Motor Corporation et al

Filing 1

COMPLAINT filed with Jury Demand against Mazda Motor Corporation, Mazda Motor of America Inc. - Magistrate Consent Notice to Pltf. ( Filing fee $ 350, receipt number 0311-957057.) - filed by Beacon Navigation GmbH. (Attachments: # 1 Exhibits A-C, # 2 Civil Cover Sheet)(dab)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

BEACON NAVIGATION GMBH,
Plaintiff,
Civil Action No.
v.
MAZDA MOTOR CORPORATION AND
MAZDA MOTOR OF AMERICA, INC.,

JURY TRIAL DEMANDED

Defendants.

COMPLAINT
Plaintiff Beacon Navigation GmbH (“Beacon” or “Plaintiff”), for its Complaint against
Defendants Mazda Motor Corporation (“Mazda Motor Corporation”) and Mazda Motor of
America, Inc. (“Mazda Motor of America”) state and allege as follows:
THE PARTIES
1.

Plaintiff Beacon is a Swiss company with limited liability with a principal place

of business in Switzerland.
2.

Upon information and belief, Defendant Mazda Motor Corporation is a Japanese

corporation with its principal place of business at 3-1 Shinchi, Fuchu-cho, Aki-gun, Hiroshima
730-8670 Japan.
3.

Upon information and belief, Defendant Mazda Motor of America, Inc. is a

California corporation with its principal place of business at 7755 Irvine Center Dr., Irvine, CA
92623.
JURISDICTION AND VENUE
4.

This action arises under the patent laws of the United States, 35 U.S.C. § 1 et seq.,

including 35 U.S.C. § 271. This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§
1331 and 1338(a).
5.

Venue is proper in this District pursuant to 28 U.S.C. §§ 1391(b), 1391(c),

1391(d) and/or 1400(b) because (1) a substantial part of the events giving rise to Beacon’s claims
occurred in the District of Delaware, (2) because each of the Defendants is either resident in or
otherwise subject to personal jurisdiction in the District of Delaware, or is an alien, or (3) each of
the Defendants has committed acts of infringement in and has a regular and established place of
business in the District of Delaware.
BACKGROUND
6.

Beacon owns all right, title and interest in U.S. Patent No. 6,360,167 (the “’167

patent”); U.S. Patent No. 6,163,269 (the “’269 patent”); and U.S. Patent No. 5,878,368 (the
“’368 patent”) (collectively, the “patents-in-suit”).
7.

The ’167 patent, entitled “Vehicle Navigation System With Location-Based

Multi-Media Annotation,” was duly and legally issued by the United States Patent and
Trademark Office on March 19, 2002, after full and fair examination. A copy of the ’167 patent
is attached hereto as Exhibit A.
8.

The ’269 patent, entitled “Navigation System With Anti-Alias Map Display,” was

duly and legally issued by the United States Patent and Trademark Office on December 19,
2000, after full and fair examination. A copy of the ’269 patent is attached hereto as Exhibit B.
9.

The ’368 patent, entitled “Navigation System with User Definable Cost Values,”

was duly and legally issued by the United States Patent and Trademark Office on March 2, 1999,
after full and fair examination. A copy of the ’368 patent is attached hereto as Exhibit C.
10.

Mazda Motor Corporation and Mazda Motor of America manufacture, sell and

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distribute vehicles with navigation systems, including but not limited to the Mazda CX-9.
COUNT I
INFRINGEMENT OF THE ’167 PATENT
11.

Beacon incorporates each of the preceding paragraphs 1-10 as if fully set forth

12.

Mazda Motor Corporation and Mazda Motor of America have been and are

herein.

infringing literally and/or under the doctrine of equivalents, directly, contributorily, or by
inducement, at least claims 1 and 32 of the ’167 patent.
13.

Mazda Motor Corporation and Mazda Motor of America directly infringe, in

violation of 35 U.S.C. § 271(a), by making, using, selling, offering for sale, and/or importing in
or into the United States, without authority, products that practice the ’167 patent, including but
not limited to the Mazda CX-9.
14.

Upon information and belief, Mazda Motor Corporation and Mazda Motor of

America had knowledge of the ’167 patent based on a letter sent to each of them on September
28, 2011.
15.

Upon information and belief, Mazda Motor Corporation and Mazda Motor of

America have contributed to direct infringement of the ’167 patent by others (e.g., consumers),
in violation of 35 U.S.C. § 271(b), because the GPS navigation systems in their products,
including but not limited to the Mazda CX-9, are specially adapted for an infringing use of the
’167 patent, embody a material part of the inventions claimed in the ’167 patent, and are not
staple articles of commerce suitable for substantial non-infringing use.
16.

Upon information and belief, Mazda Motor Corporation and Mazda Motor of

America actively induce others (e.g., consumers) to directly infringe the ’167 patent, in violation

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of 35 U.S.C. § 271(c), by providing products with GPS navigation systems, including but not
limited to the Mazda CX-9, along with instructions, user manuals, or technical assistance
actively directing, encouraging, or assisting infringement of the ’167 patent, and/or by providing
a system where one of the core and common features leads to third party infringement of the
’167 patent.
17.

Upon information and belief, Mazda Motor Corporation and Mazda Motor of

America had knowledge of the ’167 patent based on a letter sent to each of them on September
28, 2011 but have engaged in infringing conduct nonetheless. Mazda Motor Corporation and
Mazda Motor of America’s infringement is willful.
18.

Beacon has no adequate remedy at law against these acts of patent infringement.

Unless Mazda Motor Corporation and Mazda Motor of America are permanently enjoined from
further infringement of the ’167 patent, Beacon will suffer irreparable harm.
19.

As a direct and proximate result of the acts of patent infringement by Mazda

Motor Corporation and Mazda Motor of America, Beacon has been damaged in an amount not
presently known.
20.

Beacon has incurred and will incur attorneys’ fees, costs, and expenses in the

prosecution of this action. The circumstances of this dispute create an exceptional case within
the meaning of 35 U.S.C. § 285, and Beacon is entitled to recover its reasonable and necessary
fees and expenses.
COUNT II
INFRINGEMENT OF THE ’269 PATENT
21.

Beacon incorporates each of the preceding paragraphs 1-10 as if fully set forth

herein.

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22.

Mazda Motor Corporation and Mazda Motor of America have been and are

infringing literally and/or under the doctrine of equivalents, directly, contributorily, or by
inducement, at least claims 1, 7, and 11 of the ’269 patent.
23.

Mazda Motor Corporation and Mazda Motor of America directly infringe, in

violation of 35 U.S.C. § 271(a), by making, using, selling, offering for sale, and/or importing in
or into the United States, without authority, products that practice the ’269 patent, including but
not limited to the Mazda CX-9.
24.

Upon information and belief, Mazda Motor Corporation and Mazda Motor of

America had knowledge of the ’269 patent based on a letter sent to each of them on September
28, 2011.
25.

Upon information and belief, Mazda Motor Corporation and Mazda Motor of

America have contributed to direct infringement of the ’269 patent by others (e.g., consumers),
in violation of 35 U.S.C. § 271(b), because the GPS navigation systems in their products,
including but not limited to the Mazda CX-9, are specially adapted for an infringing use of the
’269 patent, embody a material part of the inventions claimed in the ’269 patent, and are not
staple articles of commerce suitable for substantial non-infringing use.
26.

Upon information and belief, Mazda Motor Corporation and Mazda Motor of

America actively induce others (e.g., consumers) to directly infringe the ’269 patent, in violation
of 35 U.S.C. § 271(c), by providing products with GPS navigation systems, including but not
limited to the Mazda CX-9, along with instructions, user manuals, or technical assistance
actively directing, encouraging, or assisting infringement of the ’269 patent, and/or by providing
a system where one of the core and common features leads to third party infringement of the
’269 patent.

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27.

Upon information and belief, Mazda Motor Corporation and Mazda Motor of

America had knowledge of the ’269 patent based on a letter sent to each of them on September
28, 2011 but have engaged in infringing conduct nonetheless. Mazda Motor Corporation and
Mazda Motor of America’s infringement is willful.
28.

Beacon has no adequate remedy at law against these acts of patent infringement.

Unless Mazda Motor Corporation and Mazda Motor of America are permanently enjoined from
further infringement of the ’269 patent, Beacon will suffer irreparable harm.
29.

As a direct and proximate result of the acts of patent infringement by Mazda

Motor Corporation and Mazda Motor of America, Beacon has been damaged in an amount not
presently known.
30.

Beacon has incurred and will incur attorneys’ fees, costs, and expenses in the

prosecution of this action. The circumstances of this dispute create an exceptional case within
the meaning of 35 U.S.C. § 285, and Beacon is entitled to recover its reasonable and necessary
fees and expenses.
COUNT III
INFRINGEMENT OF THE ’368 PATENT
31.

Beacon incorporates each of the preceding paragraphs 1-10 as if fully set forth

32.

Mazda Motor Corporation and Mazda Motor of America have been and are

herein.

infringing literally and/or under the doctrine of equivalents, directly, contributorily, or by
inducement, at least claims 1 and 15 of the ’368 patent.
33.

Mazda Motor Corporation and Mazda Motor of America directly infringe, in

violation of 35 U.S.C. § 271(a), by making, using, selling, offering for sale, and/or importing in

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or into the United States, without authority, products that practice the ’368 patent, including but
not limited to the Mazda CX-9.
34.

Upon information and belief, Mazda Motor Corporation and Mazda Motor of

America had knowledge of the ’368 patent based on a letter sent to each of them on September
28, 2011.
35.

Upon information and belief, Mazda Motor Corporation and Mazda Motor of

America have contributed to direct infringement of the ’368 patent by others (e.g., consumers),
in violation of 35 U.S.C. § 271(b), because the GPS navigation systems in their products,
including but not limited to the Mazda CX-9, are specially adapted for an infringing use of the
’368 patent, embody a material part of the inventions claimed in the ’368 patent, and are not
staple articles of commerce suitable for substantial non-infringing use.
36.

Upon information and belief, Mazda Motor Corporation and Mazda Motor of

America actively induce others (e.g., consumers) to directly infringe the ’368 patent, in violation
of 35 U.S.C. § 271(c), by providing products with GPS navigation systems, including but not
limited to the Mazda CX-9, along with instructions, user manuals, or technical assistance
actively directing, encouraging, or assisting infringement of the ’368 patent, and/or by providing
a system where one of the core and common features leads to third party infringement of the
’368 patent.
37.

Upon information and belief, Mazda Motor Corporation and Mazda Motor of

America had knowledge of the ’368 patent based on a letter sent to each of them on September
28, 2011 but have engaged in infringing conduct nonetheless. Mazda Motor Corporation and
Mazda Motor of America’s infringement is willful.
38.

Beacon has no adequate remedy at law against these acts of patent infringement.

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Unless Mazda Motor Corporation and Mazda Motor of America are permanently enjoined from
further infringement of the ’368 patent, Beacon will suffer irreparable harm.
39.

As a direct and proximate result of the acts of patent infringement by Mazda

Motor Corporation and Mazda Motor of America, Beacon has been damaged in an amount not
presently known.
40.

Beacon has incurred and will incur attorneys’ fees, costs, and expenses in the

prosecution of this action. The circumstances of this dispute create an exceptional case within
the meaning of 35 U.S.C. § 285, and Beacon is entitled to recover its reasonable and necessary
fees and expenses.
PRAYER FOR RELIEF
Beacon requests that judgment be entered in its favor and against Mazda Motor
Corporation and Mazda Motor of America, and that the Court award the following relief to
Beacon:
(a)

damages in an amount adequate to compensate Beacon for infringement of the
patents-in-suit, and in no event less than a reasonable royalty;

(b)

increased damages in an amount three times the damages found by the jury or
assessed by the Court for the willful infringement of the patents-in-suit pursuant
to 35 U.S.C. § 284;

(c)

expenses, costs, and reasonable attorneys’ fees pursuant to 35 U.S.C. § 285;

(d)

a preliminary and, thereafter, a permanent injunction against Mazda Motor
Corporation and Mazda Motor of America, their officers, agents, servants,
employees, attorneys, and all other persons in active concert or participation with
any of them who receive actual notice thereof;

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(e)

prejudgment and post-judgment interest on all damages; and

(f)

such other relief as the Court deems just and proper.
JURY DEMAND

In accordance with Federal Rules of Civil Procedure 38 and 39, Beacon asserts its rights
under the Seventh Amendment to the United States Constitution and demands a trial by jury on
all issues triable by a jury.
Dated: October 11, 2011

Respectfully submitted,
YOUNG CONAWAY STARGATT
& TAYLOR, LLP
/s/ Elena C. Norman
Elena C. Norman (No. 4780)
Monté T. Squire (No. 4764)
James L. Higgins (No. 5021)
1000 West Street, 17th Floor
Wilmington, DE 19801
Telephone: [phone]
[e-mail]

Of Counsel
Robert E. Freitas
Kevin C. Jones
Michael C. Ting
FREITAS TSENG BAIK & KAUFMAN LLP
100 Marine Parkway, Suite 200
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]

Attorneys for Plaintiff
BEACON NAVIGATION GMBH

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