Open Network Solutions Inc. v. Google Inc.

Filing 1

COMPLAINT filed with Jury Demand against Google Inc. - Magistrate Consent Notice to Pltf. ( Filing fee $ 400, receipt number 0311-1517173.) - filed by Open Network Solutions Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Civil Cover Sheet)(cla, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

OPEN NETWORK SOLUTIONS, INC.

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Plaintiff,
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v.
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GOOGLE INC.
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Defendant.
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Case No. TBD

JURY TRIAL DEMANDED

COMPLAINT
Plaintiff Open Network Solutions, Inc. (“ONS”) files this complaint for infringement of
U.S. Patent Nos. 6,745,259 (“the ’259 patent”) and 6,907,476 (“the ’476 patent”) under 35
U.S.C. § 271 against defendant Google Inc. (“Google”). Plaintiff seeks damages for Google’s
infringement.
Plaintiff alleges as follows:
PARTIES
1.

Plaintiff Open Network Solutions, Inc. is a Delaware company organized under the laws

of the State of Delaware. The address of the corporation’s registered office in the State of
Delaware is 2711 Centerville Road, Suite 400, Wilmington, DE 19808.
2.

Upon information and belief and after a reasonable opportunity for further discovery,

Defendant Google is a corporation organized and existing under the laws of the state of
Delaware, having a principal place of business at 1600 Amphitheatre Parkway, Mountain View,
CA 94043. Google can be served with process through its agent The Corporation Trust
Company, Corporation Trust Center, 1209 Orange Street, Wilmington, DE 19801.
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JURISDICTION AND VENUE
3.

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

States, 35 U.S.C. § 1 et seq., alleging infringement of the ’259 and ’476 patents. A copy of the
patents are attached hereto as Exhibits A and B and are incorporated herein by reference in their
entirety.
4.

The Court has exclusive subject matter jurisdiction over this action under 28 U.S.C.

§§ 1331 and 1338(a).
5.

This Court has personal jurisdiction over Google because Google has conducted business

in this District and upon information and belief has infringed, contributed to infringement of,
and/or actively induced others to infringe the ’259 and ’476 patents in this District as alleged in
this Complaint. Finally, Google is a registered entity in this District as described in paragraph 2.
6.

Venue is proper under 28 U.S.C. §§ 1391(b), 1391(c), and/or 1400(b).
PATENTS-IN-SUIT

7.

The ’259 patent entitled “Open network system for I/O operation including a common

gateway interface and an extended open network protocol with non-standard I/O devices
utilizing device and identifier for operation to be performed with device” was duly and legally
issued to inventor Richard Hiers Wagner on June 1, 2004. See Exhibit A.
8.

The ’476 patent entitled “Open network system and method for I/O operations with non-

standard I/O devices using an extended open network protocol” was duly and legally issued to
inventor Mr. Wagner on June 14, 2005. See Exhibit B.
9.

In the early 1990s, Mr. Wagner recognized that the Internet provided a network where

nontraditional devices could communicate and share information. While traditional computers
(e.g., a combination of a QWERTY keyboard and display screen) had well-known language

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protocols in place to facilitate the exchange of information on the Internet, there was a need for
the ability for nontraditional devices (e.g., those lacking both a QWERTY keyboard and display
screen) to communicate on the network as well.
10.

Mr. Wagner dedicated himself to inventing the language protocols necessary to open the

network to all manner of intelligent electronic devices.
11.

The idea was to define an architecture for pervasive peer-to-peer network connectivity of

intelligent appliances, wireless devices, and PCs of all form factors that would be easy to use and
flexible for connectivity to ad hoc or unmanaged networks whether in the home, a small
business, public spaces, or attached to the Internet.
12.

Mr. Wagner’s envisioned architecture is designed to support zero-configuration,

“invisible” networking, and automatic discovery for a breadth of device categories. This means a
device can dynamically join a network, obtain an IP address, convey its capabilities, and learn
about the presence and capabilities of other devices.
13.

Mr. Wagner’s inventions are described in the ’259 and ’476 patents (among other

patents).
14.

All right, title and interest to these patents was initially assigned to the company

Datascape, Inc.
15.

The ’259 and ’476 patents, and the patent family from which they are members, are

battle-tested; they have been asserted against over 40 companies in patent infringement actions
resulting in millions of dollars in settlements.
16.

In addition, Mr. Wagner’s patents have been cited by the United States Patent Office

against other applications over 1000 times and have held up against hundreds of pieces of prior

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art. Additionally, both the ’259 patent and ’476 patents have survived reexamination proceedings
from the United States Patent Office.
17.

On April 15, 2014, Datascape assigned the ’259 and ’476 patents to ONS, a wholly

owned subsidiary of WiLAN, Inc. (“WiLAN”).
18.

WiLAN and its wholly owned subsidiaries partner with individual inventors and small

companies with limited resources and help them contend against large, unauthorized infringers
such as Google.
INFRINGING GOODS/SERVICES
19.

It has recently come to ONS’s attention that Defendant Google infringes the ’259 and

’476 patents.
20.

Google manufactures, sells, offers for sale, and/or uses devices such as the Nexus 5, the

Nexus 7 (the “Nexus devices”), and the Chromecast.
21.

These devices fall within the scope of the ’259 and ’476 patents.

22.

For example, claim 1 of the ’259 patent provides:
A system for supporting communication between processing systems and non-standard
I/O devices over an open network comprising:
a server that processes extended open network statements, said server being
communicatively coupled to an open network;
a first non-standard I/O device communicatively coupled to said open network;
and a client program executing within said first non-standard I/O device for processing
extended open network statements so that said first non-standard I/O device may
communicate with said server.

23.

Similarly, claim 14 of the ’476 patent provides:
14. A method for processing extended open network protocol statements so a nonstandard I/O device may communicate with a processing system over an open network
comprising:

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receiving extended open network protocol statements over an open network;
and processing said received extended open network protocol statements to control an
operation associated with a non-standard I/O device.
24.

The “Nexus devices” and the Chromecast are non-standard I/O devices.

25.

Generally, these devices communicate with open networks through the use of extended

open network protocol statements. These devices also utilize client programs for such
communications.
26.

Given this, they fall within the scope of the claims of the ’259 and ’476 patents.

27.

Upon information and belief, Google had knowledge of the patents-in-suit no later than

on or about May 1, 2014, by virtue of a letter sent by ONS counsel to Google.
COUNT I
GOOGLE’S PATENT INFRINGEMENT
UNDER 35 U.S.C. § 271 OF THE ’259 PATENT
28.

ONS incorporates by reference the allegations of paragraphs 1–27.

29.

The ’259 patent was duly and legally issued by the United States Patent and Trademark

Office on June 1, 2004, after full and fair examination. A reexamination certificate issued on
February 18, 2014.
30.

Plaintiff is the assignee of all rights, title, and interest in and to the ’259 patent and

possesses all rights of recovery under the ’259 patent.
31.

Google has directly infringed the ’259 patent at a minimum by making, using, offering to

sell, and selling within the United States products and services that practice the inventions of the
’259 patent, namely non-standard products that access content over the Internet, and these
products/services have no substantial non-infringing uses.

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32.

Google has contributorily infringed the ’259 patent and induced infringement of the ’259

patent after the filing of the complaint.
33.

Google was aware of the ’259 patent at a minimum on or about May 1, 2014.

34.

Despite knowledge of the patent and its infringement, Google continues to manufacture,

make, offer for sale, and sell goods that violate the patent.
35.

In addition and upon belief, Google encourages its customers to operate the products in

an infringing manner.
36.

Google has caused and will continue to cause ONS damage by virtue of its continuing

infringement.
37.

ONS is entitled to recover from Google the damages sustained by ONS as a result of

Google’s acts in an amount subject to proof at trial.
38.

Upon information and belief and after an opportunity for further discovery, Google’s

infringement of the ’259 patent is willful and deliberate at a minimum starting from on or about
May 1, 2014.
COUNT II
GOOGLE’S PATENT INFRINGEMENT
UNDER 35 U.S.C. § 271 OF THE ’476 PATENT
39.

ONS incorporates by reference the allegations of paragraphs 1–38.

40.

The ’476 patent was duly and legally issued by the United States Patent and Trademark

Office on June 14, 2005 after full and fair examination. The ’476 patent also survived
reexamination proceedings from the United States Patent Office which ended in April 2014.
41.

Plaintiff is the assignee of all rights, title, and interest in and to the ’476 patent and

possesses all rights of recovery under the ’476 patent.

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42.

Google has directly infringed the ’476 patent at a minimum by making, using, offering to

sell, and selling within the United States products and services that practice the inventions of the
’259 patent, namely non-standard products that access content over the Internet, and these
products/services have no substantial non-infringing uses.
43.

Google has contributorily infringed the ’476 patent and induced infringement of the ’476

patent after the filing of the complaint.
44.

Google was aware of the ’476 patent at a minimum from on or about May 1, 2014.

45.

Despite knowledge of the patent and its infringement Google continues to manufacture,

make, offer for sale, and sell goods that violate the patent.
46.

In addition and upon belief, Google encourages its customers to operate the products in

an infringing manner.
47.

Google has caused and will continue to cause ONS damage by virtue of its continuing

infringement.
48.

ONS is entitled to recover from Google the damages sustained by ONS as a result of

Google’s acts in an amount subject to proof at trial.
49.

Upon information and belief and after an opportunity for further discovery, Google’s

infringement of the ’476 patent is willful and deliberate at a minimum starting from on or about
May 1, 2014.

PRAYER FOR RELIEF
WHEREFORE, Open Network Solutions, Inc. respectfully requests that the Court enter a
judgment as follows:

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A.

A judgment that Google has directly infringed the ’259 and ’476 patents,
contributorily infringed the ’259 and ’476 patents, induced infringement of the
’259 and ’476 patents, and willfully infringed the ’259 and ’476 patents;

B.

A judgment and order requiring Google to pay Plaintiff damages under 35 U.S.C.
§ 284, including supplemental damages for any continuing post-verdict
infringement up until entry of the final judgment, with an accounting, as needed,
and treble damages for willful infringement as provided by 35 U.S.C. § 284;

C.

A judgment and order requiring Google to pay Plaintiff pre-judgment and postjudgment interest on the damages awarded;

D.

A judgment and order requiring Google to pay Plaintiff the costs of this action
(including all disbursements) and attorney’s fees as provided by 35 U.S.C. § 285;
and

E.

Such other and further relief as the Court deems just and equitable.
DEMAND FOR JURY TRIAL

Plaintiff hereby requests that all issues be determined by jury.
Dated: May 16, 2014
Of Counsel:
Paul A. Lesko (admission forthcoming)
Sarah S. Burns (admission forthcoming)
SIMMONS BROWDER GIANARIS
ANGELIDES & BARNERD LLC
One Court Street
Alton, IL 62002
[phone]
[e-mail]
[e-mail]

/s/ David W. deBruin
David W. deBruin (#4846)
THE DEBRUIN FIRM LLC
405 N. King Street I Suite 440
Wilmington, DE 19801
[phone]
[e-mail]
Attorneys for Plaintiff

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