Steelhead Licensing LLC v. Motorola Mobility LLC, et al.

Filing 1

COMPLAINT FOR PATENT INFRINGEMENT - filed with Jury Demand against Google Inc., Motorola Mobility LLC - Magistrate Consent Notice to Pltf. ( Filing fee $ 350, receipt number 0311-1200434.) - filed by Steelhead Licensing LLC. (Attachments: # 1 Exhibit A, # 2 Civil Cover Sheet)(rwc)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
STEELHEAD LICENSING LLC,
Plaintiff,
C.A. No.________________
v.
TRIAL BY JURY DEMANDED
MOTOROLA MOBILITY LLC,
GOOGLE, INC.,
Defendants.
COMPLAINT FOR PATENT INFRINGEMENT
Plaintiff Steelhead Licensing LLC (“Steelhead”), by and through its undersigned counsel,
for its Complaint Motorola Mobility LLC (“Motorola”) and Google, Inc. (“Google”)
(collectively, “Defendants”), alleges as follows:
NATURE OF THE ACTION
1.

This is an action for patent infringement arising under the patent laws of the

United States, Title 35 of the United States Code (“U.S.C.”) to prevent and enjoin Defendants
from infringing and profiting, in an illegal and unauthorized manner and without authorization
and/or consent from Steelhead, from U.S. Patent No. 5,491,834 (the “‘834 Patent”), attached
hereto as Exhibit A) pursuant to 35 U.S.C. §271, and to recover damages, attorneys’ fees, and
costs.
THE PARTIES
2.

Plaintiff Steelhead is a Delaware limited liability company with its principal place

of business at 222 Delaware Avenue, P.O. Box 25130, Wilmington, DE 19899.
3.

Motorola is a Delaware company with its principal place of business at 600 North

U.S. Highway 45, Libertyville, Illinois 60048. Motorola can be served with process through its

agent The Corporation Trust Company, Corporation Trust Center, 1209 Orange Street,
Wilmington, Delaware 19801.
4.

Google is a Delaware corporation with its principal place of business at 1600

Amphitheatre Parkway, Mountainview, CA 94043. Google can be served with process through
its agent The Corporation Trust Company, Corporation Trust Center, 1209 Orange Street,
Wilmington, Delaware 19801.
5.

Motorola was acquired by Google in 2011.

6.

Defendants are in the business of making, using, selling, offering for sale and/or

importing mobile devices.
JURISDICTION AND VENUE
7.

This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C.

§§1331 and 1338(a) because the action arises under the patent laws of the United States, 35
U.S.C. §§1 et seq.
8.

This Court has personal jurisdiction over Defendants by virtue of its systematic

and continuous contacts with this jurisdiction, as well as because of the injury to Steelhead and
the cause of action Steelhead has raised, as alleged herein.
9.

Defendants are subject to this Court’s specific and general personal jurisdiction

pursuant to due process and/or the Delaware Long-Arm Statute, Del Code. Ann. Tit. 3, §3104,
due to at least their substantial business in this forum, including: (i) at least a portion of the
infringement alleged herein; and (ii) regularly doing or soliciting business, engaging in other
persistent courses of conduct, and/or deriving substantial revenue from goods and services
provided to individuals in Delaware.

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10.

Defendants have conducted and does conduct business within the state of

Delaware, directly or through intermediaries, resellers, agents, or offer for sale, sell, advertise
products in Delaware that infringe the ‘834 Patent.
11.

In addition to Defendants’ continuously and systematically conducting business in

Delaware,

the causes of action against Defendants are connected (but not limited) to

Defendants’ purposeful acts committed in the state of Delaware, including Defendants’ making,
using, importing, offering for sale, or selling products which include features that fall within the
scope of at least one claim of the ‘834 Patent.
12.

Venue lies in this District under 28 U.S.C. §§1391 and 1400(b) because, among

other reasons, Defendants are subject to personal jurisdiction in this District, and have committed
and continues to commit acts of patent infringement in this District. For example, Defendants
have used, sold, offered for sale, and/or imported infringing products in this District.
JOINDER
13.

Defendants are properly joined under 35 U.S.C. §299(a)(1) because a right to

relief is asserted against the parties jointly, severally, and in the alternative with respect to the
same transactions, occurrences, or series of transactions or occurrences relating to the making,
using, importing into the United States, offering for sale, and/or selling the same accused
products. Specifically, as alleged in detail below, Defendants are alleged to infringe the ‘834
Patent with respect to the same mobile devices including, but not limited to, Atrix™ HD and
Droid Razr.
14.

Defendants are properly joined under 35 U.S.C. §299(a)(2). Questions of fact

will arise that are common to both defendants, including for example, whether Defendants’
products have features that meet the features of one or more claims of the ‘834 Patent, and what

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reasonable royalty will be adequate to compensate the owner of the ‘834 Patent for its
infringement.
15.

Defendant Motorola is a wholly-owned subsidiary of Google.

By virtue of

Google’s ownership of Motorola, both offer the same mobile devices that infringe on the ‘834
Patent.
16.

Defendants use, make, sell, offer for sale and/or import mobile devices that, when

used, infringe on the ‘834 Patent.
17.

At least one right to relief is asserted against these parties jointly, severally, or in

the alternative with respect to or arising out of the same transaction, occurrence, or series of
transactions or occurrences relating to the making, using, importing into the United States,
offering for sale, or selling of the same accused product and/or process.
FACTUAL ALLEGATIONS
18.

On February 13, 1996, the United States Patent and Trademark Office

(“USPTO”) duly and legally issued the ‘834 Patent, entitled “Mobile Radio Handover Initiation
Determination” after a full and fair examination. Steelhead is presently the owner of the patent
and possesses all right, title and interest in and to the ‘834 Patent. Steelhead owns all rights of
recovery under the ‘834 Patent, including the exclusive right to recover for past infringement.
The ‘834 Patent is valid and enforceable.
19.

The ‘834 Patent contains eight independent claims and twelve dependent claims.

Defendants commercialize, inter alia, methods that perform all the steps recited in one or more
claim of the ‘834 Patent.

Defendants make, use, import, and sell or offer for sale

telecommunication products, including mobile devices, which encompass one or more of the
features recited and which perform all the steps comprised in the patented claims.

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20.

The invention claimed in the ‘834 Patent includes a process for determining the

manner in which handover is performed in a mobile radio network including a plurality of cells,
where each cell is associated with a base station supporting communication with a mobile
device.
21.

The patented process includes the steps of monitoring the quality of a signal as a

function of time respectively transmitted between candidate base stations and the mobile unit.
The process further includes producing an indication of either the rise or fall of the signal’s
quality as a function of time. Handover from a serving base station supporting communication
with the mobile unit to another base station is initiated based on the rise or fall in the signal’s
quality.
22.

For example, manufacturers of mobile telecommunications devices rely on the

patented process to handle service associated with their mobile devices. Specifically, Defendants
rely on the patented process to determine the manner in which communication service associated
with a mobile device is to be handed over from one cell to another.
23.

Defendants commercialize mobile devices which support both Universal Mobile

Telecommunications System (hereinafter, “UMTS”) and Long Term Evolution (hereinafter,
“LTE”) standards.

These products will be hereinafter identified as Defendants’ UMTS/LTE

Products.
24.

In addition, Defendants also commercialize mobile devices which support both

3G Code-Division Multiple Access (hereinafter, CDMA) and Long Term Evolution (hereinafter,
“LTE”) standards. These products will be hereinafter identified as Defendants’ CDMA/LTE
Products.

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25.

UMTS is a third-generation (3G) of mobile phone technology for radio systems.

It is an integrated solution for mobile voice and data capabilities with wide area coverage. It
allows users to send and/or receive text, voice, video, and multimedia files at theoretical transfer
rates of up to 2Mbps.
26.

3G CDMA (or CDMA2000) is a leading mobile phone technology. CDMA

technology operates by transmitting multiple digital signals simultaneously over the same carrier
frequency (i.e., the same channel), thus optimizing the use of available bandwidth. In CDMA
implementations, every user is allocated the entire spectrum all of the time, and connections are
uniquely identified using codes.
27.

LTE is a fourth-generation (4G) wireless broadband technology. LTE provides

high-speed communication and data transfer with increased bandwidth capacity. It derives from
the GSM/UMTS technologies and is faster than 3G. Unlike earlier mobile technologies, all
communication in LTE devices is handled as data.
28.

In mobile telephony, it is necessary to maintain an established user connection

even if the user is changing locations, or the radio access environment surrounding the user is
changing, while a connection is still active. “Handover” refers to the transfer of user connection
from one access point to another. For both Defendants’ CDMA/LTE Products and Defendants’
UMTS/LTE Products, Defendants rely on the patented process to determine mobile device
communication conditions for initiating a handover from one cell to another.
DEFENDANTS’ INFRINGEMENT
29.

Defendants practice patented mobile telecommunications methods with respect to

certain mobile telecommunications devices commercialized in this judicial district. Specifically,

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Defendants practice a method that determines the manner in which handover of service is
performed among cells in a mobile network with respect to certain mobile devices.
DEFENDANTS’ UMTS/LTE PRODUCTS
30.

Defendants’ UMTS/LTE Products include, but are not limited to, the Atrix™ HD

mobile phone.
31.

Each Defendants’ UMTS/LTE Product forms a mobile terminal that can be used

on a mobile radio network such as that provided by a telecommunications company or a carrier.
This network is formed by a plurality of cells.
32.

Each Defendants’ UMTS/LTE Product includes a processor and a memory device

with instructions stored therein.

Upon execution, these instructions perform a handover

determination method in which each of Defendants’ UMTS/LTE Products searches for a better
cell pursuant to the cell reselection process stated in the UMTS and LTE standards.
33.

Each Defendants’ UMTS/LTE Product complies with the UMTS and LTE

standards. As such, when communicating, it maintains an active list of base stations with which
the Defendants’ UMTS/LTE Product has sufficient signal strength to communicate. The active
list of base stations is used by each Defendants’ UMTS/LTE Product itself to initiate cell
reselection.
34.

Specifically, when Defendants’ UMTS/LTE Product is used in a mobile radio

network, it receives signals from base stations within range. In accordance with UMTS and LTE
standards, Defendants’ UMTS/LTE Products periodically measure the signals received from
base stations in the vicinity for handover determination purposes. Then, each Defendants’
UMTS/LTE Product generates an indication of the quality of the received signal. Each device

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produces a ranking of available base stations based on a set of measured criteria, including but
not limited to the quality of each received signal.
35.

Pursuant to the UMTS standard, Defendants’ UMTS/LTE Product initiates the

switch to a new cell (the handover of communication) based on how the new cell is ranked and
only if the new cell is ranked higher than the cell currently handling the communication for a
given period of time. If the ranking of a potential new cell falls, such drop is an indication of a
fall in the measured criteria (e.g., quality).
36.

Under the UMTS standard, when Defendants’ UMTS/LTE Product identifies a

better candidate cell, it sends a message to the base station currently servicing the
communication. Such message indicates that a switch should occur, such that communication is
handed over to the new base station. The message sent by each Defendants’ UMTS/LTE
Product initiates the handover of service from a current cell to a new, better cell.
37.

When Defendants’ UMTS/LTE Product operates under the LTE standard, the

devices periodically measure the signals received from base stations in the vicinity for cell
section and reselection purposes. Then, each Defendants’ UMTS/LTE Product selects a suitable
cell based on idle mode measurements and cell selection criteria, including quality of the signal.
When camped on a cell, Defendants’ UMTS/LTE Product will regularly search for better cells
according to the cell selection criteria. For example,if the ranking of the new cell rises above the
ranking of the serving cell during a particular time frame, then the characteristics of the potential
new cell may rise as a function of time. Conversely, if the ranking of the new cell falls below the
ranking of the serving cell during a particular time frame, then the characteristics of the potential
new cell may fall as a function of time. Thus, the behavior of the characteristics of the potential
new cell over the certain time interval produces an indication of the rise or fall of at least one

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measurement or criteria as a function of time. If a better cell is found, then that better cell is
selected which initiates the handover of Defendants’ UMTS/LTE Product from a current cell to
the better cell. The initiation of a handover is based on the fact that, for example, the new cell
did not fall below the quality of the serving cell during the time frame.
38.

The patented method recited in one or more claims of the ‘834 Patent is

performed when a cell reselection is made by any Defendants’ UMTS/LTE Product when it is
using either the UMTS or LTE standards to communicate.
DEFENDANTS’ CDMA/LTE PRODUCTS
39.

Defendants’ CDMA/LTE Products include, but are not limited to, the Droid Razr.

40.

Each Defendants’ CDMA/LTE Product forms a mobile unit that can be used on a

mobile radio network such as that provided by a telecommunications company or a carrier. This
network is formed by a plurality of cells.
41.

Each Defendants’ CDMA/LTE Product includes a processor and a memory

device with instructions stored therein. Upon execution, these instructions perform a handover
determination method in which each of Defendants’ CDMA/LTE Products searches for a better
cell pursuant to the cell reselection process stated in the CDMA and LTE standards. Under
CDMA standards, each Defendants’ CDMA/LTE Product sends out route update messages to the
serving base stations, when conditions dictate, to initiate a cell reselection to a better base station.
42.

Each Defendants’ CDMA/LTE Product complies with the 3G CDMA and LTE

standards. As such, when communicating, it maintains an active list of base stations with which
the Defendants’ CDMA/LTE Product has sufficient signal strength to communicate. The active
list of base stations is used by each Defendants’ CDMA/LTE Product itself to initiate cell
reselection.

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43.

Specifically, when Defendants’ CDMA/LTE Product is used in a mobile radio

network, it receives signals from base stations within range.

In accordance with CDMA

standards, each Defendants’ CDMA/LTE Product maintains a set of pilot channels transmitted
by each sector in the neighborhood of the serving sector in which the cell phone is used. The
strength of each pilot channel is a quality of a signal from each candidate base station that is
monitored by each Defendants’ CDMA/LTE Product as a function of time. The pilots are ranked
in order of signal strength. The action of the drop timer in connection with monitoring the
strength of the pilot channels evidence whether the strength or quality of each signal is rising or
falling as a function of time. Whenever conditions indicate, each Defendants’ CDMA/LTE
Product initiates a handover to a better cell by sending out a route update message. The initiation
of the handover is based on the fact that, for example, the signal strength of the pilot was not
disabled by the action of a drop timer.
44.

When using LTE standards to communicate, Defendants’ CDMA/LTE Products

periodically measure the signals received from base stations in the vicinity for cell section and
reselection purposes. Then, each Defendants’ CDMA/LTE Product selects a suitable cell based
on idle mode measurements and cell selection criteria, including but not limited to, quality of the
signal. When camped on a cell, the Defendants’ CDMA/LTE Product will regularly search for
better cells according to the cell selection criteria. For example, if the ranking of the new cell
rises above the ranking of the serving cell during a particular time frame, then the characteristics
of the potential new cell may rise as a function of time. Conversely, if the ranking of the new
cell falls below the ranking of the serving cell during a particular time frame, then the
characteristics of the potential new cell may fall as a function of time. Thus, the behavior of the
characteristics of the potential new cell over the certain time interval produces an indication of

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the rise or fall of at least one measurement or criteria as a function of time. If a better cell is
found, then that better cell is selected which initiates the handover of Defendants’ CDMA/LTE
Product from a current cell to the better cell. The initiation of a handover is based on the fact
that, for example, the new cell did not fall below the quality of the serving cell during the time
frame.
45.

The patented method recited in one or more claims of the ‘834 Patent is

performed when a cell reselection is made by any Defendants’ CDMA/LTE Product when it is
using either the 3G CDMA or LTE standards to communicate.
COUNT 1
DIRECT INFRINGEMENT OF THE ‘834 PATENT
46.

Plaintiff realleges and incorporates by reference the allegations set forth in

paragraphs 1-45.
47.

Defendants’ UMTS/LTE Products and Defendants’ CDMA/LTE Products shall

be collectively referred to hereinafter as Defendants’ Infringing Products.
48.

Taken together, either partially or entirely, the features included in the

Defendants’ Infringing Products including, but not limited to, Atrix™ HD and Droid Razr,
perform the process recited in one or more claims of the ‘834 Patent.
49.

Defendants directly infringe one or more claims of the ‘834 Patent by using

Defendants’ Infringing Products, which perform the process defined by one or more claims of
the ‘834 Patent. For example, without limitation, Defendants directly infringe at least claim 8 of
the ‘834 Patent by using Defendants’ Infringing Products, including use by Defendants’
employees and agents, use during product development and testing processes, and use when
servicing and/or repairing phones on behalf of customers.

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50.

By engaging in the conduct described herein, Defendants have injured Steelhead

and are thus liable for infringement of the ‘834 Patent, pursuant to 35 U.S.C. §271.
51.

Defendants have committed these acts of infringement without license or

authorization.
52.

To the extent that facts learned in discovery show that Defendants’ infringement

of the ‘834 Patent is or has been willful, Steelhead reserves the right to request such a finding at
the time of trial.
53.

As a result of Defendants’ infringement of the ‘834 Patent, Steelhead has suffered

monetary damages and is entitled to a monetary judgment in an amount adequate to compensate
for Defendants’ past infringement, together with interests and costs.
54.

Steelhead will continue to suffer damages in the future unless Defendants’

infringing activities are enjoined by this Court. As such, Steelhead is entitled to compensation
for any continuing or future infringement up until the date that Defendants are finally and
permanently enjoined from further infringement.
55.

Steelhead has also suffered and will continue to suffer severe and irreparable

harm unless this Court issues a permanent injunction prohibiting Defendants, their officers,
directors, agents, servants, employees, attorneys, affiliates, divisions, branches, parents, and
those persons in active concert or participation with any of them from directly or indirectly
infringing the ‘834 Patent.
DEMAND FOR JURY TRIAL
56.

Steelhead demands a trial by jury of any and all causes of action.
PRAYER FOR RELIEF

Steelhead respectfully prays for the following relief:

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1.

That Defendants be adjudged to have infringed the ‘834 Patent;

2.

That Defendants, their officers, directors, agents, servants, employees,

attorneys, affiliates, divisions, branches, parents, and those persons in active concert or
participation with any of them, be preliminarily and permanently restrained and enjoined
from directly and/or indirectly infringing the ‘834 Patent;
3.

An award of damages pursuant to 35 U.S.C. §284 sufficient to compensate

Steelhead for Defendants’ past infringement and any continuing and/or future
infringement up until the date that Defendants are finally and permanently enjoined from
further infringement, including compensatory damages;
4.

An assessment of pre-judgment and post-judgment interests and costs

against Defendants, together with an award of such interests and costs, in accordance
with 35 U.S.C. §284;
5.

That Defendants be directed to pay enhanced damages, including

Steelhead’s attorneys’ fees incurred in connection with this lawsuit pursuant to 35 U.S.C.
§285; and
6.

That Steelhead have such other and further relief as this Court may deem

just and proper.

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Dated: January 4, 2013

BAYARD, P.A.

OF COUNSEL:

/s/ Stephen B. Brauerman
Richard D. Kirk (#0922)
Stephen B. Brauerman (#4952)
Vanessa R. Tiradentes (#5398)
222 Delaware Avenue, Suite 900
P.O. Box 25130
Wilmington, DE 19899
[phone]
[e-mail]
[e-mail]
[e-mail]

Eugenio Torres-Oyola
FERRAIUOLI LLC
221 Plaza 5th Floor
221 Ponce de León Ave.
San Juan, Puerto Rico 00917
[phone]
[e-mail]

Attorneys for Plaintiff Steelhead Licensing LLC

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