Beacon Navigation GmbH v. Fuji Heavy Industries Ltd. et al

Filing 1

COMPLAINT filed with Jury Demand against Fuji Heavy Industries Ltd., Fuji Heavy Industries U.S.A. Inc., Subaru of America Inc. - Magistrate Consent Notice to Pltf. ( Filing fee $ 350, receipt number 0311-957275.) - filed by Beacon Navigation GmbH. (Attachments: # 1 Exhibit A-D, # 2 Civil Cover Sheet)(lid)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

BEACON NAVIGATION GMBH,
Plaintiff,
Civil Action No.
v.
FUJI HEAVY INDUSTRIES LTD.; FUJI
HEAVY INDUSTRIES U.S.A., INC.; AND
SUBARU OF AMERICA, INC.,

JURY TRIAL DEMANDED

Defendants.

COMPLAINT
Plaintiff Beacon Navigation GmbH (“Beacon” or “Plaintiff”), for its Complaint against
Defendants Fuji Heavy Industries Ltd., (“Fuji”), Fuji Heavy Industries U.S.A., Inc. (“Fuji Heavy
Industries”), and Subaru of America, Inc. (“Subaru”) 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 Fuji is a Japanese corporation with its

principal place of business at 1-7-2 Nishishinjuku, Shinjuku-ku, Tokyo 160-8316 Japan.
3.

Upon information and belief, Defendant Fuji Heavy Industries is a New Jersey

corporation with its principal place of business at Subaru Plaza, 2235 Route 70 West, Cherry
Hill, NJ 08002.
4.

Upon information and belief, Defendant Subaru is a New Jersey corporation with

its principal place of business at Subaru Plaza, 2235 Route 70 West, Cherry Hill, NJ 08002.

JURISDICTION AND VENUE
5.

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).
6.

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
7.

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

patent”); U.S. Patent No. 5,819,201 (the “’201 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”).
8.

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.
9.

The ’201 patent, entitled “Navigation System with Vehicle Service Information,”

was duly and legally issued by the United States Patent and Trademark Office on October 6,
1998, after full and fair examination. A copy of the ’201 patent is attached hereto as Exhibit B.
10.

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,

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2000, after full and fair examination. A copy of the ’269 patent is attached hereto as Exhibit C.
11.

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 D.
12.

Fuji, Fuji Heavy Industries, and Subaru manufacture, sell and distribute vehicles

with navigation systems, including but not limited to the Subaru Impreza.
COUNT I
INFRINGEMENT OF THE ’167 PATENT
13.

Beacon incorporates each of the preceding paragraphs 1-12 as if fully set forth

14.

Fuji, Fuji Heavy Industries, and Subaru have been and are infringing literally

herein.

and/or under the doctrine of equivalents, directly, contributorily, or by inducement, at least
claims 1 and 32 of the ’167 patent.
15.

Fuji, Fuji Heavy Industries, and Subaru 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
Subaru Impreza.
16.

Upon information and belief, Fuji, Fuji Heavy Industries, and Subaru had

knowledge of the ’167 patent based on a letter sent to each of them on September 28, 2011.
17.

Upon information and belief, Fuji, Fuji Heavy Industries, and Subaru 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 Subaru Impreza, are specially adapted for an infringing use of the ’167 patent,

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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.
18.

Upon information and belief, Fuji, Fuji Heavy Industries, and Subaru actively

induce others (e.g., consumers) to directly infringe the ’167 patent, in violation of 35 U.S.C. §
271(c), by providing products with GPS navigation systems, including but not limited to the
Subaru Impreza, 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.
19.

Upon information and belief, Fuji, Fuji Heavy Industries, and Subaru 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. Fuji, Fuji Heavy Industries, and Subaru’s
infringement is willful.
20.

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

Unless Fuji, Fuji Heavy Industries, and Subaru are permanently enjoined from further
infringement of the ’167 patent, Beacon will suffer irreparable harm.
21.

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

Heavy Industries, and Subaru, Beacon has been damaged in an amount not presently known.
22.

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 ’201 PATENT

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23.

Beacon incorporates each of the preceding paragraphs 1-12 as if fully set forth

24.

Fuji, Fuji Heavy Industries, and Subaru have been and are infringing literally

herein.

and/or under the doctrine of equivalents, directly, contributorily, or by inducement, at least
claims 1, 12, and 18 of the ’201 patent.
25.

Fuji, Fuji Heavy Industries, and Subaru 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 ’201 patent, including but not limited to the
Subaru Impreza.
26.

Upon information and belief, Fuji, Fuji Heavy Industries, and Subaru had

knowledge of the ’201 patent based on a letter sent to each of them on September 28, 2011.
27.

Upon information and belief, Fuji, Fuji Heavy Industries, and Subaru have

contributed to direct infringement of the ’201 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 Subaru Impreza, are specially adapted for an infringing use of the ’201 patent,
embody a material part of the inventions claimed in the ’201 patent, and are not staple articles of
commerce suitable for substantial non-infringing use.
28.

Upon information and belief, Fuji, Fuji Heavy Industries, and Subaru actively

induce others (e.g., consumers) to directly infringe the ’201 patent, in violation of 35 U.S.C. §
271(c), by providing products with GPS navigation systems, including but not limited to the
Subaru Impreza, along with instructions, user manuals, or technical assistance actively directing,
encouraging, or assisting infringement of the ’201 patent, and/or by providing a system where
one of the core and common features leads to third party infringement of the ’201 patent.

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29.

Upon information and belief, Fuji, Fuji Heavy Industries, and Subaru had

knowledge of the ’201 patent based on a letter sent to each of them on September 28, 2011 but
have engaged in infringing conduct nonetheless. Fuji, Fuji Heavy Industries, and Subaru’s
infringement is willful.
30.

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

Unless Fuji, Fuji Heavy Industries, and Subaru are permanently enjoined from further
infringement of the ’201 patent, Beacon will suffer irreparable harm.
31.

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

Heavy Industries, and Subaru, Beacon has been damaged in an amount not presently known.
32.

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 ’269 PATENT
33.

Beacon incorporates each of the preceding paragraphs 1-12 as if fully set forth

34.

Fuji, Fuji Heavy Industries, and Subaru have been and are infringing literally

herein.

and/or under the doctrine of equivalents, directly, contributorily, or by inducement, at least
claims 1, 7, and 11 of the ’269 patent.
35.

Fuji, Fuji Heavy Industries, and Subaru 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

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Subaru Impreza.
36.

Upon information and belief, Fuji, Fuji Heavy Industries, and Subaru had

knowledge of the ’269 patent based on a letter sent to each of them on September 28, 2011.
37.

Upon information and belief, Fuji, Fuji Heavy Industries, and Subaru 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 Subaru Impreza, 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.
38.

Upon information and belief, Fuji, Fuji Heavy Industries, and Subaru 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
Subaru Impreza, 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.
39.

Upon information and belief, Fuji, Fuji Heavy Industries, and Subaru 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. Fuji, Fuji Heavy Industries, and Subaru’s
infringement is willful.
40.

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

Unless Fuji, Fuji Heavy Industries, and Subaru are permanently enjoined from further
infringement of the ’269 patent, Beacon will suffer irreparable harm.
41.

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

7

Heavy Industries, and Subaru, Beacon has been damaged in an amount not presently known.
42.

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 ’368 PATENT
43.

Beacon incorporates each of the preceding paragraphs 1-12 as if fully set forth

44.

Fuji, Fuji Heavy Industries, and Subaru have been and are infringing literally

herein.

and/or under the doctrine of equivalents, directly, contributorily, or by inducement, at least
claims 1 and 15 of the ’368 patent.
45.

Fuji, Fuji Heavy Industries, and Subaru 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 ’368 patent, including but not limited to the
Subaru Impreza.
46.

Upon information and belief, Fuji, Fuji Heavy Industries, and Subaru had

knowledge of the ’368 patent based on a letter sent to each of them on September 28, 2011.
47.

Upon information and belief, Fuji, Fuji Heavy Industries, and Subaru 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 Subaru Impreza, 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

8

commerce suitable for substantial non-infringing use.
48.

Upon information and belief, Fuji, Fuji Heavy Industries, and Subaru 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
Subaru Impreza, 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.
49.

Upon information and belief, Fuji, Fuji Heavy Industries, and Subaru 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. Fuji, Fuji Heavy Industries, and Subaru’s
infringement is willful.
50.

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

Unless Fuji, Fuji Heavy Industries, and Subaru are permanently enjoined from further
infringement of the ’368 patent, Beacon will suffer irreparable harm.
51.

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

Heavy Industries, and Subaru, Beacon has been damaged in an amount not presently known.
52.

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 Fuji, Fuji Heavy
Industries, and Subaru, and that the Court award the following relief to Beacon:

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(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 Fuji, Fuji Heavy
Industries, and Subaru, their officers, agents, servants, employees, attorneys, and
all other persons in active concert or participation with any of them who receive
actual notice thereof;

(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.

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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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