Beacon Navigation GmbH v. Mazda Motor Corporation et al
Filing
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COMPLAINT filed with Jury Demand against Mazda Motor Corporation, Mazda Motor of America Inc. - Magistrate Consent Notice to Pltf. ( Filing fee $ 350, receipt number 0311-957071.) - filed by Beacon Navigation GmbH. (Attachments: # 1 Exhibits A-D, # 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”) states and alleges 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. 6,374,180 (the “’180
patent”); U.S. Patent No. 6,178,380 (the “’380 patent”); U.S. Patent No. 6,029,111 (the “’111
patent”) and U.S. Patent No. 5,862,511 (the “’511 patent”) (collectively, the “patents-in-suit”).
7.
The ’180 patent, entitled “Points of Interest for a Navigation System,” was duly
and legally issued by the United States Patent and Trademark Office on April 16, 2002, after full
and fair examination. A copy of the ’180 patent is attached hereto as Exhibit A.
8.
The ’380 patent, entitled “Street Identification for a Map Zoom of a Navigation
System,” was duly and legally issued by the United States Patent and Trademark Office on
January 23, 2001, after full and fair examination. A copy of the ’380 patent is attached hereto as
Exhibit B.
9.
The ’111 patent, entitled “Vehicle Navigation System and Method Using GPS
Velocities,” was duly and legally issued by the United States Patent and Trademark Office on
February 22, 2000, after full and fair examination. A copy of the ’111 patent is attached hereto
as Exhibit C.
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10.
The ’511 patent, entitled “Vehicle Navigation System and Method,” was duly and
legally issued by the United States Patent and Trademark Office on January 19, 1999, after full
and fair examination. A copy of the ’511 patent is attached hereto as Exhibit D.
11.
Mazda Motor Corporation and Mazda Motor of America manufacture, sell and
distribute vehicles with navigation systems, including but not limited to the Mazda CX-9.
COUNT I
INFRINGEMENT OF THE ’180 PATENT
12.
Beacon incorporates each of the preceding paragraphs 1- 11 as if fully set forth
13.
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 claim 1 of the ’180 patent.
14.
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 ’180 patent, including but
not limited to the Mazda CX-9.
15.
Upon information and belief, Mazda Motor Corporation and Mazda Motor of
America had knowledge of the ’180 patent based on a letter sent to each of them on September
28, 2011.
16.
Upon information and belief, Mazda Motor Corporation and Mazda Motor of
America have contributed to direct infringement of the ’180 patent by others (e.g., consumers),
in violation of 35 U.S.C. § 271(b), because the GPS navigation systems in their products,
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including but not limited to the Mazda CX-9, are specially adapted for an infringing use of the
’180 patent, embody a material part of the inventions claimed in the ’180 patent, and are not
staple articles of commerce suitable for substantial non-infringing use.
17.
Upon information and belief, Mazda Motor Corporation and Mazda Motor of
America actively induce others (e.g., consumers) to directly infringe the ’180 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 ’180 patent, and/or by providing
a system where one of the core and common features leads to third party infringement of the
’180 patent.
18.
Upon information and belief, Mazda Motor Corporation and Mazda Motor of
America had knowledge of the ’180 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.
19.
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 ’180 patent, Beacon will suffer irreparable harm.
20.
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.
21.
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
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fees and expenses.
COUNT II
INFRINGEMENT OF THE ’380 PATENT
22.
Beacon incorporates each of the preceding paragraphs 1-11 as if fully set forth
23.
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, 18, 26, and 29 of the ’380 patent.
24.
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 ’380 patent, including but
not limited to the Mazda CX-9.
25.
Upon information and belief, Mazda Motor Corporation and Mazda Motor of
America had knowledge of the ’380 patent based on a letter sent to each of them on September
28, 2011.
26.
Upon information and belief, Mazda Motor Corporation and Mazda Motor of
America have contributed to direct infringement of the ’380 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
’380 patent, embody a material part of the inventions claimed in the ’380 patent, and are not
staple articles of commerce suitable for substantial non-infringing use.
27.
Upon information and belief, Mazda Motor Corporation and Mazda Motor of
America actively induce others (e.g., consumers) to directly infringe the ’380 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 ’380 patent, and/or by providing
a system where one of the core and common features leads to third party infringement of the
’380 patent.
28.
Upon information and belief, Mazda Motor Corporation and Mazda Motor of
America had knowledge of the ’380 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.
29.
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 ’380 patent, Beacon will suffer irreparable harm.
30.
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.
31.
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 ’111 PATENT
32.
Beacon incorporates each of the preceding paragraphs 1-11 as if fully set forth
herein.
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33.
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, 10, and 17 of the ’111 patent.
34.
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 ’111 patent, including but
not limited to the Mazda CX-9.
35.
Upon information and belief, Mazda Motor Corporation and Mazda Motor of
America had knowledge of the ’111 patent based on a letter sent to each of them on September
28, 2011.
36.
Upon information and belief, Mazda Motor Corporation and Mazda Motor of
America have contributed to direct infringement of the ’111 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
’111 patent, embody a material part of the inventions claimed in the ’111 patent, and are not
staple articles of commerce suitable for substantial non-infringing use.
37.
Upon information and belief, Mazda Motor Corporation and Mazda Motor of
America actively induce others (e.g., consumers) to directly infringe the ’111 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 ’111 patent, and/or by providing
a system where one of the core and common features leads to third party infringement of the
’111 patent.
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38.
Upon information and belief, Mazda Motor Corporation and Mazda Motor of
America had knowledge of the ’111 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.
39.
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 ’111 patent, Beacon will suffer irreparable harm.
40.
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.
41.
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 IV
INFRINGEMENT OF THE ’511 PATENT
42.
Beacon incorporates each of the preceding paragraphs 1-11 as if fully set forth
43.
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 3 of the ’511 patent.
44.
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 ’511 patent, including but
not limited to the Mazda CX-9.
45.
Upon information and belief, Mazda Motor Corporation and Mazda Motor of
America had knowledge of the ’511 patent based on a letter sent to each of them on September
28, 2011.
46.
Upon information and belief, Mazda Motor Corporation and Mazda Motor of
America have contributed to direct infringement of the ’511 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
’511 patent, embody a material part of the inventions claimed in the ’511 patent, and are not
staple articles of commerce suitable for substantial non-infringing use.
47.
Upon information and belief, Mazda Motor Corporation and Mazda Motor of
America actively induce others (e.g., consumers) to directly infringe the ’511 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 ’511 patent, and/or by providing
a system where one of the core and common features leads to third party infringement of the
’511 patent.
48.
Upon information and belief, Mazda Motor Corporation and Mazda Motor of
America had knowledge of the ’511 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.
49.
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 ’511 patent, Beacon will suffer irreparable harm.
50.
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.
51.
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: (302) 571-6600
enorman@ycst.com
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: (650) 593-6300
Facsimile: (650) 593-6301
Attorneys for Plaintiff
BEACON NAVIGATION GMBH
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