Motorola Mobility, Inc. v. Apple, Inc.
Filing
361
MOTION to Amend/Correct (84 in 1:12-cv-20271-RNS) Scheduling Order,,, MEMORANDUM OF LAW AND MOTION TO AMEND THE PROCEDURAL SCHEDULE by Apple Inc.. Responses due by 10/29/2012 (Attachments: # 1 Text of Proposed Order, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Exhibit 3, # 5 Exhibit 4, # 6 Exhibit 5, # 7 Exhibit 6, # 8 Exhibit 7, # 9 Exhibit 8, # 10 Exhibit 9, # 11 Exhibit 10, # 12 Exhibit 11)Associated Cases: 1:12-cv-20271-RNS, 1:10-cv-23580-RNS(Pace, Christopher)
EXHIBIT 11
Counselufor Comglainants
Charles K. Verhoeven
Quinn Emanuel Urquhart & Sullivan LLP
50 California Street, 22“dFloor
San Francisco, CA 94111
Phone No. (415) 875-6600
David A. Nelson
Quinn Emanuel Urquhart & Sullivan LLP
500 West Madison Street, Suite 2450
Chicago, IL 60661
Phone No. (312) 705-7400
Edward J. DeFranco
Paul F. Brinkrnan
Alexander Rudis
S. Alex Lasher
Quinn Emanuel Urquhart & Sullivan LLP Quinn Emanuel Urquhart & Sullivan LLP
51 Madison Avenue, 22”“ Floor
1299 Pennsylvania Ave. NW, Suite 825
New York, NY 10010
Washington, D.C. 20004
Phone No. (212) 849-7000
Phone No. (202) 538-8000
TABLE OF CONTENTS
Page
INTRODUCTION ........................................................................................... .. l
PARTIES ......................................................................................................... .. 3
A.
Complainants ....................................................................................... .. 3
B.
The Respondent ................................................................................... .. 5
ACCUSED PRODUCTS AT ISSUE .............................................................. .. 5
THE ASSERTED PATENTS AND NON—TECHNlCALDESCRIPTION OF
THE ASSERTED PATENTS ......................................................................... .. 6
A.
The ‘S80Patent .................................................................................... .. 6
1.
2.
Foreign Counterparts to the ‘S80 Patent .................................. .. 7
3.
Non-Technical Description of the ‘S80Patent ..........................7
4.
B.
Identification of the '580 Patent and Ownership ..................... .. 6
Prior Litigation Involving the ‘S80 Patent ............................... .. 7
The ‘O47Patent .................................................................................... .. 8
1.
2.
Foreign Counterparts to the ‘O47Patent ............................... .....9
3.
Non-Technical Description of the ‘O47Patent ..................... .....9
4.
C.
Identification of the ‘O47Patent and Ownership ..................... .. 8
Prior Litigation Involving the ‘O47Patent ............................ .....9
The ‘O02Patent .................................................................................... .. 9
1.
2.
Foreign Counterparts to the ‘O02Patent .......... ........................l0
3.
Non~Teehnieal Description of the ‘O02Patent ...................... .. 10
4.
D.
Identification of the ‘O02Patent and Ownership ..................... .. 9
Prior Litigation Involving the ‘O02Patent ....... ........................1l
The '673 Patent .................................................................................. .. ll
i
1.
2.
Foreign Counterparts to the '673 Patent ................................ .. 12
3.
Non-Technical Description of the ‘673Patent ...................... .. 12
4.
E.
Identification of the ’673 Patent and Ownership ................... .. 11
Prior Litigation Involving the '673 Patent ............................. .. 12
The ‘37OPatent .................................................................................. .. 13
1.
2.
Foreign Counterpalts to the '370 Patent ................................ .. 13
3.
Non-Technical Description of the '370 Patent ...................... .. 14
4.
F.
Identification of the ‘370 Patent and Ownership ................... .. 13
Prior Litigation Involving the '370 Patent ............................. .. 14
The ‘O64Patent .................................................................................. .. 14
I.
2.
Foreign Counterparts to the ‘O64Patent ................................ .. 15
3.
Non-Technicai Description of the ‘O64Patent ...................... .. 15
4.
G.
Identification of the ‘O64Patent and Ownership ................... .. 14
Prior Litigation Invoiving the ‘O64Patent ............................. .. 16
The '983 Patent .................................................................................. .. 16
1.
Identification of the ’983 Patent and Ownership ................... .. 16
2.
Foreign Counterparts to the '983 Patent ................................ .. 17
3.
‘Non-Technical Description of the ‘983 Patent ...................... .. 17
4.
Prior Litigation Involving the ’983 Patent ............................. .. 17
V.
UNLAWFUL AND UNFAIR ACTS OF RESPONDENT ~ PATENT
INFRINGEMENT ......................................................................................... .. 17
VI.
SPECIFIC INSTANCES OF UNFAIR IMPORTAT ION AND SALE ........ ..20
VII
CLASSIFICATION OF THE INFRINGING PRODUCTS UNDER TI-IE
I-IARMONIZED TARIFF SCHEDULE ....................................................... ..21
VIII
THE DOMESTIC INDUSTRY RELATING TO THE ASSERTED PATENTS
....................................................................................................................... .. 22
ii
A.
Technical Prong ....................................................................... ,.
B.
Economic Prong ...................................................................... ..
1.
Investments Relating to Engineering and Research and
Development ................................................................ ..
2.
Investments Relating to Testing .................................. ..
3.
Investments Relating to Repair and Service ................ ..
RELIEF REQUESTED ........................................................................ ..
iii
'
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,
=iM’
EXHIBIT AND APPENDIX LIST
Exhibit 1
Certified Copy of United States?Patent No. 5,883,580
Certified Copy of United States Patent No. 5,922,047
Certified Copy of United States Patent No. 6,425,002
Copy of United States Patent No. 6,493,673 _
Certified Copy of United States Patent No. 6,983,370
Certified Copy of United States Patent No. 7,007,064
Exhibit 2
Exhibit 3
Exhibit 4
Exhibit 5
Exhibit 6
Exhibit 7
Exhibit 8
Certified Copy of the Assignment to Motorola Inc. of United States Patent
i Exhibit 9
7
Certified Copy of the Assignment to Motorola Inc. of United States Patent
No. 5,922,047
Exhibit l0
Exhibit l2
f
ohiiiiihii Copy bf United S'ta'[€S:P"2tt€11t 7,383,983
NO.
No. 5,883,580
"Exhibit 11
H7
I
W__
Certified Copy of the Assignment to Motorola Inc. of United States Patent
No. 6,425,002
Copy of the Assignment to Motorola lnc. of the Parent of United States
Patent No. 6,493,673 and All Divisions, Extensions, Continuations, or
Reissues Ihereof
V
pp
Exhibit l7
Certified Copy of the Assignment to Motorola Inc. of United States Patent
No. 6,983,370
Certified Copy of the Assignment to Motorola lno. of United States Patent
No. 7,007,064
Certified Copy of the Assignment to Motorola lnc. of United States Patent
No. 7,383,983
Certified Copy of the Assignment to Motorola Mobility, Inc.
I Certificate of Conversion from Motorola Mobility, lnc. to Motorola
Mobility LLC
Motorola's Form l0~Q for the Period Ended March 31, 2012
Exhibit 18
Exhibit l9
l Motorola's 2011 Annual Report
"Making History: Developing the Portable Cellular System," available at
http:l/vwvwmotorola.com/staticfiles/Business/Corporate/U S
‘ EN/history/feature-cell-phonedevelopment.htrnl
l "Motorola Tirneline," available at
http://www.motorola.com/statiofiles/Business/Corporate/US
EN/history/timelinehtml
Apple Facility Information, available at
http://www.apple.com/retai 1/storelistl
,
Foreign Counterparts to the Assorted Patents
Claim Chart for Representative Independent Claim of United States Patent
Exhibit l3
Exhibit l4
Exhibit l5
Exhibit l6
Exhibit 20
Y
Exhibit21
l Exhibit 22
§Exhibit 23
I
j Exhibit 24
t
, Exhibit 2s
l
l
p
No. 5,883,580
_
7
y
p
Claim Chart for Representative Independent Claim of United States Patent
No. 5,922,047
_
p
Claim Chart for Representative Independent Claim of United States Patent
No.
6,425,002
p
iv
p
_
E
_
t Exhibit 26
xhibit 27
Exhibit 28
Exhibit 29
Exhibit 30
Exhibit 3l
Exhibit 32
Exhibit 33
Exhibit 34
Exhibit 35
Exhibit
Exhibit
Exhibit
Exhibit
Exhibit
Exhibit
Exhibit
36
37
38
39
40
41
42
Exhibit 43
Exhibit 44
Exhibit 45
Exhibit 46
Exhibit 47
Exhibit 48
Exhibit 49
Exhibit 50
Exhibit SI
Exhibit 52
Exhibit 53
l
Exhibit 54
Exhibit 55
Exhibit 56
Claim Chart for Representative Independent Claim of United States Patent
No. 6,493,673
Claim Chart for Representative Independent Claim of United States Patent
No. 6,983,370
Claim Chart for Representative lndependent Claim of United States Patent
No. 7,007,064
Claim Chart for Representative Independent Claim of United States Patent
No. 7,383,983
Domestic Industry Claim Chart for Representative Claim of United States
Patent No. 5,883,580
Domestic Industry Claim Chart for Representative Claim of United States
Patent No. 5,922,047
Domestic Industry Claim Chart for Representative Claim of United States
Patent No. 6,493,673
Domestic Industry Claim Chart for Representative Claim of United States
Patent No. 6,983,370
Domestic Industry Claim Chart for Representative Claim of United States
Patent No. 7,007,064
Domestic Industry Claim Chart for Representative Claim of United States
Patent No. 7,383,983
iPhone 4S Technical Specifications from Apple website
f
"iPhone: Locating the serial number" from Apple website
"iOS 5 Features That Go Further" from Apple website
iPhone User Guide For iOS 5.1 Software
July 12, 2010 Letter From Apple To7Edward J. Markey
"iOS 5: Understanding Location Services“ from Apple website V
Nusca, Andrew, "Say command: How speech recognition will change the
world," from http://w_ww.smartplanet.com
W
"Reminders —The best way to do to-dos" from Apple website
iCloud homepage from Apple Website
f
iPhone 4S teardown from www.ifixit.com
iPhone 4S "Features" from Apple website
Apple Local and Push Programming Guide
V
Apple tChess Application
McGrath, Jack, "Apples A5 Chip" from Www.technobuffalo.com
"Troubleshooting Push Notifications" from Apple website
iPhone 4s "Build In Apps" tram Apple website
‘
Siegler,Il\i/IG,"Facebool<‘siPhone App Finally Gets Push Notifications,
Contact Syncing" from http;//teehci"uncli.com
Neder, Mary’Ann, "eI3ay's iPhone App Updated with Push Notification,
PayPal Purchases" from http://appmodocom
7 __
"UIApplication Class Reference" from Apple Website
OS X Mountain Lion Features from Apple website
iCloud "Peat_ures"from Apple website
V
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‘ ~-..,-3.1: 5 i,
Exhibit 57
Exhibit 58
Exhibit 59
Exhibit 60
Exhibit 6l
Exhibit
Exhibit
Exhibit
Exhibit
Exhibit
Exhibit
Exhibit
Exhibit
Exhibit
Exhibit
Exhibit
at Ti;
\ pi
, 32 ,; - -_~'»
5
3-*1;
'
"iCloud: Mail" from Apple website
1 ’~F’1?'35 , A>‘T
t ~~E ‘Ye ea
W
"A Look at Apple's iCloud" from wwwtnvtimespom
iPhone 4S "Take your mail with you everywhere" from Apple website
Apple xiigiisi 719,2011 Eiibr
_
"Frequently asked questions about the Mobilelvle transition and iCloud"
from Apple website
62
63
64
65
66
67
68
69
70
71
72
iPad User Guido For ios
5.1 SOfWVa1‘€
AA
iPad Technical Specifications from Apple website p
"iOS: Syncing with iTunes" from Apple website
"iTunes: Tips foripodcast fans" from Apple website
"iPod —Your new car and your iPod get along so well"
iBooks Description from Apple website
Motorola Mobile Phones Product List
DROID RAZR Technical Specifications from Motorola Website
"View DevicemID" from Motorola website
‘ Exhibit 73
Exhibit 74
i Exhibit 75
EExhibit 76
_Exhibit 77
Exhibit 78
Exhibit 79
Exhibit 80
Exhibit 81
Exhibit 82
Exhibit 83
Exhibit 84
l Exhibit ss
Exhibit 86
Exhibit 87
Exhibit as
Exhibit 89
Exhibit 90
Exhibit 91
Exhibit 92
Exhibit 93
Exhibit 94
Exhibit 95
Exhibit 96
Exhibit 97
Eiibibii 98
»; Y
l
l
l
i
l
A
Motorola "Smart Actions" description from Motorola website
Motorola "Smart Actions" description from Motorola website
"How to Best Use The Motorola Smart Actions App" from
www.gottabemobile.com f
"Obtaining User Location" from the Android Developers website
DROID RAZR User Guide
DROID RAZR Teardown from www.ifixit.com
Motorola Xoom Wifi User Guide
"Gmail ~ Android Apps on Google Play" from https:/play.google.com
"How do actions sync in IMAP" from Google website
"Conversations" from Google website
"Using Gmail" front Google website
_
"Gmail for mobile" from Google Website
“Motorola Driod Razr 16GB" from www.cnet.corn
"Archiving vs. Deleting" from Google website
DROID RAZR Fact Sheet from Motorola website
f
"Reading on your Android device" from Google Play Help website
"Using multiple devices“ from Google Play Help website
"Google Books for your phone" from Google website
Certificate of Formation for Motorola Mobility LLC
FAQs re: Battery Life from Motorola website
Apple Inc. Form IOQKfor the Period Ended Septenfiber 24, 2Oll
Declaration of Jon Tap
iPhone 4S homepage from Apple website
"Ask Siri To"Get’Things Done“ from Apple website
"Siri Frequently Asked Questions"ifrom Apple Website
"How Apple‘siSiri Really Works" from wwyiizdneticoni
Representative Property List Rendered as XML’
"Property List Programming Guide“ froin Apple webiste
vi
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Exhibit 100 I "Android’4.’1Hits Motorola Xoom Tablet" pféss release
Exhibit 101
"70 Things iii Try with Google's Aii¢1i<>id.1 Voice Search"
4
Exhibit 102 Screenshot of communications
vii
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Confidential Confidential Declaration of Thomas V. Miller
Exhibit A
Confidential Domestic Industry Claim Chart for Representative Claim of United States
Exhibit B
1Patent No. 6,425,002
Confidenti al Motorola Blur Architecture Document
DD
Exhibit C
1'~’
Confidenti
Exhibit D al
Confidenti al
Exhibit E
Motorola Blur Design Specification
1
Motorola Blur Design Specification
viii
Appendix l
Appendix 2
Appendix 3 L
Appendix 4
Appendix 5
Appendix 6
Appendix 72
Appendix 8
Appendix,9
7‘ ppendix
A
10
Appendix ll
Appendix 12
Appendix 13
Appendix 14
Ceitified File History of United States Patent No. 5,883,580
Certified File History of United States Patent No. 5,922,047
Cenified File History of United States Patent No. 6,425,002
File Hietory 6f United States Patent N6. 6,493,673
Cenified File History 6f United States Patent No. 6,983,370
Certified File History of United States Patent No. 7,007,064
Certified File History of United States Patent No. 7,383,983
Technical References Cited in U.S, Patent N0. 5,883,’58’0
Technical References Cited in U.S. Patent N0. 5,922,047
Technical References Cited in U.S. Patent No. 6,425,002
Technical References Cited in U.S. Patent No. 6,493,673
Technical References Cited in U.S. Patent No. 6,983,370
Technical References Cited in U.S. Patent No. 7,007,064
Technical References Cited in U.S. Patent No. 7,383,983
ix
I.
INTRODUCTION
l.
Motorola Mobility LLC (f/k/a Motorola Mobility, Inc.) ("Mobility"), Motorola
Mobility Ireland ("Mobility Ireland"), and Motorola Mobility International Limited ("Mobility
International") (collectively, "Complainants") respectfully request that the United States
International Trade Commission ("Commission") institute an investigation into violations of
Section 337 of the Tariff Act of I930, as amended, 19 U.S.C. § 1337 ("Section 337")‘
2.
Apple Inc. ("Apple" or "Respondent") has engaged in unfair acts in violation of
Section 337 through unlawful and unauthorized importation and/or sale for importation into the
United States, and/or the sale within the United States after importation, of certain wireless
communications devices, portable music and data processing devices, computers, and
components thereof (hereinafter collectively "Accused Products"). The Accused Products
infringe one or more claims of United States Patent Nos. 5,883,580 ("the '580 Patent"),
5,922,047 ("the ‘O47Patent"), 6,425,002 ("the '002 Patent"), 6,493,673 ("the ’673 Patent"),
6,983,370 ("the '370 Patent"), 7,007,064 ("the ‘O64Patent"), and 7,383,983 ("the '983 Patent")
(collectively the "Assorted Patents”) through their importation, sale for importation, use after
importation, and sale after importation. See Exhs. 23-29.
3.
In particular, the Accused Products infringe at least claims 1, 2, 3, l0, ll, 13, and
l5 of the ‘S80Patent, claims l7 and l8 of the ‘O47Patent, claims l, 5, 6, and ll of the ‘002
Patent, claims 1, 9, l0, ll, and 50 of the ’673 Patent, claims 50, 51, 52, and 54 of the '370
Patent, claims 1, 2, 5, 6, 7, 9, 10, ll, l2, and 13 ofthe ‘064 Patent, and claims 1, 2, 3, 4, 9, 12,
I As discussed below, on July 31, 2010, Motorola, Inc. assigned the Asserted Patents to
Motorola Mobility, Inc., which later became Motorola Mobility LLC. Motorola, Inc. also has
transferred the relevant mobile devices business to Mobility. Prior to July 31, 2010, Motorola,
Inc. owned the Assorted Patents and the relevant mobile device business. As a result, where
appropriate this Complaint will refer to the past and present business activities of Mobility and
Motorola, Inc.
l
13, l4, 25, 26, 31, 33, 34, 35, 37, 39, and 40 of the ’983 Patent (collectively the "Asserted
Claims").
4.
Mobility owns by assignment the right, title and interest in and to the Asserted
Patents. See Exhs. 8-I4 (assignments of each Asserted Patent from the named inventors to
Motorola, lnc.); Exh. 15 (assignment of Asserted Patents from Motorola, Inc. to Motorola
Mobility, Inc.); Exh. 89 (certificate of formation of Motorola Mobility LLC); Exh. 16
(certificate of conversion from Motorola Mobility, Inc. to Motorola Mobility LLC). Pursuant to
a Form I0 tiled with the Securities and Exchange Commission on July l, 2010, Motorola, Inc.
transferred its mobile devices and home business units to Motorola Mobility, Inc. and assigned
the Asserted Patents to Motorola Mobility, Inc. Motorola Mobility, Inc. was created as a
subsidiary of Motorola, Inc., and on July 31, 2010, Motorola, Inc. assigned the Asserted Patents
to Motorola Mobility, Inc. Motorola Mobility, Inc. was spun-off from Motorola, Inc. on
January 4, 20ll with a distribution of Motorola Mobility Holdings, Inc. stock to all Motorola,
Inc. stockholders ofrecord as of December 21, 2010. Motorola Mobility Holdings, Inc. was the
holding company for Motorola Mobility, Inc. Motorola, Inc. thereafter changed its name to
Motorola Solutions, Inc. On May 22, 2012, Google Inc. acquired Motorola Mobility Holdings,
Inc. with Motorola Mobility Holdings, Inc. becoming a wholly owned subsidiary of Google Inc.
Motorola Mobility Holdings, Inc. thereafter changed its name to Motorola Mobility Holdings
LLC, and Motorola Mobility, Inc. thereafter changed its name to Motorola Mobility LLC.
5.
Mobility Ireland and Mobility International have an exclusive license to the
Asserted Patents. Mobility has retained the right to enforce the Asserted Patents.
2
6.
Motorola, Inc’s and Mobility's historic and current operations in the United
States qualify as a domestic industry relating to the Asserted Patents and articles protected by
the Assezted Patents, within the meaning of 19 U.S.C. § 1337(a)(2) & (3).
7.
Mobility conducts research and development to develop new technology related
to wireless handsets with integrated software and accessory products, and designs,
manufactures, sells and services wireless handsets with integrated software and accessory
products.
8.
Motorola, Inc. and now Mobility design, develop, market, sell and service in the
United States products that practice one or more claims of the Asserted Patents. Research and
development of intellectual property relating to mobile devices by Motorola, Inc. resulted in
each of the Assorted Patents.
9.
Complainants seek relief from the Commission in the form of a permanent
exclusion order prohibiting entry into the United States of the Accused Products that infringe
one or more claims of the Assorted Patents. Complainants fLlI‘[l’l€I' a cease and desist order
seek
prohibiting Respondent, its subsidiaries, related companies and agents from engaging in the
importation, sale for importation, marketing and/or advertising, distribution, offering for sale,
sale, sale after importation or other transfers within the United States after importation of the
Accused Products that infringe one or more claims of the Asserted Patents.
II.
PARTIES
A.
Complainants
10.
Mobility is a corporation organized and existing under the laws of the State of
Delaware and having a principal place of business at 600 North US Highway 45, Libertyville,
Illinois 60048. The Foirn l()~Qof Motorola Mobility Holdings, Inc. (now Motorola Mobility
J
*1
Holdings LLC), the parent corporation and holding company of Mobility, for the period ended
March 31, 2012, and its 2011 Annual Report are attached as Exhibits 17 and l8, respectively.
11.
Mobility Ireland is an unlimited liability company organized and existing under
the laws of Ireland with a place of business at Clarendon House, 2 Church Street, P.O. Box
HM666, Hamilton HMCX, Bermuda.
12.
Mobility International is a company organized and existing under the laws of
Bermuda limited by shares with a place of business at Clarendon House, 2 Church Street,
Hamilton HMI l, Bermuda.
13.
In furtherance of Motorola, Inc.'s transfer of its mobile devices and home
business to Mobility, Motorola, Inc. assigned all its right, title, and interest in the Assorted
Patents to Motorola Mobility, Inc. on July 31, 2010. Motorola Mobility, Inc. thereafter changed
its name to Motorola Mobility LLC. Mobility continues to operate the mobile devices and
home business units and own the Asserted Patents.
14.
As a result of long-term domestic activities, Mobility maintains Motorola, Inc/s
legacy as a leading innovator in the communications and electronics industry. From the
introduction of its first commercially successful car radio in 1930 to the inception of the World's
first commercial portable cellular phone in 1983, Motorola, Inc. and now Mobility have
developed substantial proprietary and leading technology relating to wireless communications
and electronics. See Exh. 19 (excerpt from Mobility/‘swebsite). Motorola, Inc. was also the
first to bring push-to-talk over cellular to market. More recently, Motorola, Inc. demonstrated
the world's first WiMAX 802.l6e mobile handoff and the industry’s first over-the-air data
sessions in the 700 MHZ spectrum using the Long Term Evolution standard, which is the next
evolution of mobile broadband. See Exh. 20 (excerpt from Mobility‘s website)
4
15.
Among other things, Mobility designs, manufactures, sells, and services wireless
handsets with integrated software and accessory products. The net revenues of the Mobile
Devices segment of Mobility represented 73% of Motorola Mobility Holdings, Inc.'s
consolidated net revenues of approximately $13.1 billion in 2011. See Exh. 18.
l6.
Motorola, Inc. and now Mobility have commercialized and continue to actively
commercialize the patented technologies.
17.
Mobility has made significant financial investments into domestic research and
development in its Mobile Devices segment. Mobility continues to believe that a strong
domestic commitment to research and development is required to drive long-term growth of the
companies. Thousands of Mobility domestic employees are dedicated to engineering and
science operations and corresponding supporting activities for wireless communication devices.
B.
The Respondent
18.
Respondent Apple Inc. is a corporation organized under the laws of California
and has its principal place of business at l Infinite Loop, Cupertino, California 95014.
19.
Respondent imports and/or sells for importation into the United States, and/or
sells within the United States after importation certain Wireless communications devices,
portable music and data processing devices, computers, and components thereof that infringe
the Asserted Patents without the authorization of Mobility. Respondent has facilities around the
World, including retail stores in the United States to directly sell the Accused Products to end
users. See Exh. 21.
III.
ACCUSED PRODUCTS AT ISSUE
20.
Respondent designs, imports, sells for importation into the United States, and/or
sells within the United States after importation, certain Wireless communication devices,
portable music and data processing devices, computers, and components thereof.
5
21.
The accused Apple iOS devices include, but are not limited to, the Apple iPod
Touch, the Apple iPhone 3GS, the Apple iPhone 4, the Apple iPhone 4S, the Apple iPad 2, and
the new Apple iPad (aka the iPad 3). These devices utilize various Wireless technologies that,
for example, create location-based reminders, operate multimedia applications, and manage
various messages and content.
22.
The accused Apple Mac OS devices include, but are not limited to, the Mac Pro,
iMac, Mac mini, MacBook Pro, and MacBook Air, which utilize wireless communication
technologies to manage various messages and content.
23.
Each of the Accused Products meets each and every limitation of at least one
claim of one or more of the Asserted Patents. The Accused Products include, but are not
limited to, all versions of the above-referenced products, as well as certain software and services
that are distributed as components of these devices. These products, however, are merely
illustrative of the types and classes of infringing products that Respondent manufactures and
imports into the United States, sells for importation into the United States, and/or sells within
the United States after importation in violation of Section 337.
IV.
THE ASSERTED PATENTS AND NON~TECHNICAL DESCRIPTION OF THE
ASSERTED PATENTS
A.
The '580 Patent
1.
24.
Identification of the ‘S80Patent and Ownership
Mobility owns by assignment the right, title and interest in United States Patent
No. 5,883,580, titled "Geographic-Temporal Significant Messaging,“ which issued on March
16, 1999, naming Alain Charles Louis Briancon and Terence Edward Sumner as inventors. A
certified copy of the ‘S80Patent is attached as Exhibit l; a certified copy of the recorded
assignment from the named inventors to Motorola, Inc. is attached as Exhibit 8. A certified
6
copy of the July 31, 20l0 assignment of the '580 Patent from Motorola, Inc. to Mobility is
attached as Exhibit 15. A copyof the June 22, 2012 Certificate of Conversion from Motorola
Mobility, Inc. to Motorola Mobility LLC is attached as Exhibit I6, and Complainants will
submit a certified copy once it is recorded at the United States Patent and Trademark Office.
25.
Pursuant to Commission Rule 210.12, a certified copy and three additional
copies of the prosecution history of the '580 Patent, as well as four copies of the ‘S80Patent and
each technical reference mentioned in the prosecution history of the ‘S80Patent, are submitted
concurrently herewith as Appendices I and 8, respectively.
2.
26.
Foreign Counterparts to the ‘S80Patent
Pursuant to Commission Rule 210. l2(a)(9)(v), Exhibit 22 identifies the foreign
patents or patent applications corresponding to the ‘S80Patent that have been issued,
abandoned, rejected, or remain pending.
3.
27.
Non-Technical Description of the ‘S80Patentz
The '580 Patent generally relates to messaging devices that process messages
logically for a user in the context of space and time. The patent discloses, inter alia, a method
and apparatus for receiving messages having a relevancy status (e.g., a location identifier) and
processing the messages when the relevancy status changes.
4.
28.
Prior Litigation Involving the '580 Patent
The ’58OPatent has not been the subject of previous litigation in any domestic
court or agency. In addition, there has been no foreign court or agency litigation involving the
'580 Patent.
2 The non-technical descriptions ofthe inventions claimed in the Asserted Patents as set forth in
this Complaint are not intended to construe either the specification or the claims of the Assorted
Patents.
7
29.
The '58OPatent, however, is the subject of a complaint filed concurrently
herewith by Mobility against Apple in the United States District Court for the District of
Delaware that alleges infringement of, among others, the ‘S80Patent.
B.
The ‘O47Patent
1.
30.
Identification of the ‘O47Patent and Ownership
Mobility owns by assignment the right, title and interest in United States Patent
No. 5,922,047, titled "Apparatus, Method And System For Multimedia Control And
Communication," which issued on July 13, 1999, naming Douglas J. Newlin and Timothy M.
Burke as inventors. A certified copy of the ‘047 Patent is attached as Exhibit 2; a certified copy
of the recorded assignment from the named inventors to Motorola, Inc. is attached as Exhibit 9.
A certified copy of the July 31, 2010 assignment of the '04? Patent from Motorola, Inc. to
Mobility is attached as Exhibit 15. A copy of the June 22, 2012 Certificate of Conversion from
Motorola Mobility, Inc. to Motorola Mobility LLC is attached as Exhibit 16, and Complainants
will submit a certified copy once it is recorded at the United States Patent and Trademark
Office.
31.
Pursuant to Cormnission Rule 210.12, a certified copy and three additional
copies of the prosecution history of the ‘O47Patent, as well as four copies of the '047 Patent and
each technical reference mentioned in the prosecution history of the ‘O47Patent, are submitted
concurrently herewith as Appendices 2 and 9, respectively.3
3 Complainants were unable to gather the publications mentioned in the prosecution
history of the ‘O47Patent, but will locate these publications and submit them once received by
Complainants.
8
2.
32.
Foreign Counterparts to the ‘O47Patent
Pursuant to Commission Rule 2lO.12(a)(9)(v), Exhibit 22 identifies the foreign
patents or patent applications corresponding to the ‘O47Patent that have been issued,
abandoned, rejected, or remain pending.
3.
33.
Non-Technical Description of the '04? Patent‘
The ‘O47Patent generally relates to communications and control systems for
multimedia. In particular, the ‘O47Patent discloses, inter alia, an apparatus and method for
providing control functions over multiple and diverse media applications, preferably operating
at more than one designated node or location.
4.
34.
Prior Litigation Involving the ‘O47Patent
The ‘O47Patent has not been the subject of previous litigation in any domestic
court or agency. In addition, there has been no foreign court or agency litigation involving the
‘O47Patent or any of its counterparts.
35.
The ‘O47Patent, however, is the subject of a complaint filed concurrently
herewith by Mobility against Apple in the United States District Court for the District of
Delaware that alleges infringement of, among others, the ‘O47Patent.
C.
The ‘O02Patent
1.
36.
Identification of the ‘OO2
Patent and Ownership
Mobility owns by assignment the right, title and interest in United States Patent
No. 6,425,002, titled "Apparatus and Method for Handling Dispatching Messages for Various
Applications of a Communication Device," which issued on July 23, 2002, naming Rodd Bryan
Zurcher, David Frank Baum, and James Van Peursern as inventors. A certified copy of the ‘O02
4 The non-technical descriptions of the inventions claimed in the Asserted Patents as set forth in
this Complaint are not intended to construe either the specification or the claims of the Assorted
Patents.
9
Patent is attached as Exhibit 3; a certified copy of the recorded assignment from the named
inventors to Motorola, Inc. is attached as Exhibit l0. A certified copy of the July 31, 2010
assignment of the '002 Patent from Motorola, Inc. to Mobility is attached as Exhibit 15. A copy
of the June 22, 2012 Certificate of Conversion from Motorola Mobility, lnc. to Motorola
Mobility LLC is attached as Exhibit l6, and Complainants will submit a certified copy once it is
recorded at the United States Patent and Trademark Office.
37.
Pursuant to Commission Rule 210.12, a certified copy and three additional
copies of the prosecution history of the ’002 Patent, as well as four copies of the ‘O02Patent and
each technical reference mentioned in the prosecution history of the '002 Patent, are submitted
concurrently herewith as Appendices 3 and 10, respectively.
2.
38.
Foreign Counterparts to the ‘O02Patent
Pursuant to Commission Rule 2lO.l2(a)(9)(v), Exhibit 22 identifies the foreign
patents or patent applications corresponding to the ’002 Patent that have been issued,
abandoned, rejected, or remain pending.
3.
39.
Non-Technical Description of the '002 Patents
The ‘O02Patent generally relates to communications devices that ensure
applications installed therein only receive messages that are of interest. The patent discloses,
inter alia, a message manager program for accepting and dispatching messages, application
program(s) for handling and presenting messages, and message client pr0gram(s) that receive
messages from the message manager program and provides them to the application program.
,___.,_._._._._.....,..........._..___.____._._.__.__.._
5The non~technical descriptions of the inventions claimed in the Asserted Patents as set forth in
this Complaint are not intended to construe either the specification or the claims of the Asserted
Patents.
10
4.
40.
Prior Litigation Involving the ‘O02Patent
The ‘O02Patent has not been the subject of previous litigation in any domestic
court or agency. In addition, there has been no foreign court or agency litigation involving the
‘O02Patent or any of its counterparts.
41.
The ’002Patent, however, is the subject of a complaint filed concurrently
herewith by Mobility against Apple in the United States District Court for the District of
Delaware that alleges infringement of, among others, the ‘O02Patent.
D.
The ‘673 Patent
1.
42.
Identification of the ‘673Patent and Ownership
Mobility owns by assignment the right, title and interest in United States Patent
No. 6,493,673, titled "Markup Language For Interactive Services And Methods Thereof," which
issued on December 10, 2002, naming David Ladd and Gregory Johnson as inventors. A copy
of the '673 Patent is attached as Exhibit 4. Complainants have ordered a certified copy, which
Complainants will submit upon receipt. A copy of the recorded assignment from the named
inventors to Motorola, Inc. with respect to the parent of the '673 Patent and all divisions,
extensions, continuations, and/or reissues thereof is attached as Exhibit 11. Complainants have
ordered a certified copy, which Complainants will submit upon receipt. A certified copy of the
July 31, 2010 assignment of the '673 Patent from Motorola, Inc. to Mobility is attached as
Exhibit 15. A copy of the June 22, 2012 Certificate of Conversion from Motorola Mobility, Inc.
to Motorola Mobility LLC is attached as Exhibit 16, and Complainants will submit a certified
copy once it is recorded at the United States Patent and Trademark Office.
43.
Pursuant to Commission Rule 210.12, four copies of the prosecution history of
the ’673 Patent, as well as four copies of the '673 Patent and each technical reference mentioned
in the prosecution history of the '673 Patent, are submitted concurrently herewith as Appendices
ll
4 and ll, respectively.6 Complainants have ordered a certified copy of the prosecution history
of the '673 Patent and will submit upon receipt.
2.
44.
Foreign Counterparts to the '673 Patent
Pursuant to Commission Rule 210.l2(a)(9)(v), Exhibit 22 identifies the foreign
patents or patent applications corresponding to the '673 Patent that have been issued,
abandoned, rejected, or remain pending.
3.
45.
Non-Technical Description of the ‘673 Patent7
The '673 Patent generally relates to communications devices that are capable of
providing interactive services. The patent discloses, inter alia, providing prompt element
including an announcement to be read to a user, and an input element that allows an audible
user input to be converted into a text string.
4.
46.
Prior Litigation Involving the '673 Patent
The '673 Patent has not been the subject of previous litigation in any domestic
court or agency. In addition, there has been no foreign court or agency litigation involving the
'673 Patent or any of its counterparts.
47.
The ’6’73Patent, however, is the subject of a complaint filed concurrently
herewith by Mobility against Apple in the United States District Court for the District of
Delaware that alleges infringement of, among others, the '673 Patent.
6 After a diligent search, Complainants have been unable to locate one technical
reference: “Nava Air Federal Credit Union Call 24 Voice Response Brochure, May 1994."
7The non-technical descriptions of the inventions claimed in the Asserted Patents as set forth in
this Complaint are not intended to construe either the specification or the claims of the Assorted
Patents.
12
E.
The ‘$70Patent
1.
48.
Identification of the '370 Patent and Ownership
Mobility owns by assignment the right, title and interest in United States Patent
No. 6,983,370, titled "System For Providing Continuity Between Messaging Clients And
Method Therefor," which issued on January 3, 2006, naming Eric Thomas Eaton, David Jeffery
Hayes, and Von Alan Mock as inventors. A certified copy of the '370 Patent is attached as
Exhibit 5; a certified copy of the recorded assignment from the named inventors to Motorola,
Inc. is attached as Exhibit 12. A certified copy of the July 31, 2010 assignment of the ‘I570
Patent from Motorola, Inc. to Mobility is attached as Exhibit 15. A copy of the June 22, 2012
Certificate of Conversion from Motorola Mobility, Inc. to Motorola Mobility LLC is attached as
Exhibit 16, and Complainants will submit a certified copy once it is recorded at the United
States Patent and Trademark Office.
49.
Pursuant to Commission Rule 210.12, a certified copy and three additional
copies of the prosecution history of the '370 Patent, as well as four copies of the '370 Patent and
each technical reference mentioned in the prosecution history of the '370 Patent, are submitted
concurrently herewith as Appendices 5 and 12, respectively.
2.
50.
Foreign Counterparts to the ‘370Patent
Pursuant to Commission Rule 2l0.l2(a)(9)(v), Exhibit 22 identifies the foreign
patents or patent applications corresponding to the '370 Patent that have been issued,
abandoned, rejected, or remain pending.
13
3.
5 l.
Non-Technical Description of the '37!)Patents
The ’370 Patent generally relates to communication systems incorporating
capabilities to provide continuity between messaging clients. More specifically, the '370 Patent
relates to the ability to sync the messaging capabilities of multiple devices.
4.
52.
Prior Litigation Involving the ‘370Patent
On or about November 10, 20l0, Mobility filed a Complaint in the United States
District Court for the Southern District of Florida based on, inter alia, the alleged infringement
of the '370 Patent by Microsoft Corporation in a case captioned Motorola Mobility Inc. v.
Microsoft Corporation, Case No. 10-CV-24063-PAM (S.D. Fla). That case was later
transferred to the United States District Court for the Western District of Washington on or
about August 25, 201 1, see Motorola Mobility, Inc. v. Microsoft Corp. , Case No. 2:1 l-CV
01408-JLR (W.D. Wash), and is still pending before that Court. The '3'70Patent has not been
the subject of any other previous litigation in any domestic court or agency. In addition, there
has been no foreign court or agency litigation involving the '370 Patent or any of its
counterparts.
53.
The '370 Patent, however, is the subject of a complaint tiled concurrently
herewith by Mobility against Apple in the United States District Court for the District of
Delaware that alleges infringement of, among others, the '370 Patent.
F.
The ‘O64Patent
1.
54.
Identification of the '064 Patent and Ownership
Mobility owns by assignment the right, title and interest in United States Patent
No. 7,007,064, titled "Method And Apparatus For Obtaining And Managing Wirelessly
SThe non-technical descriptions of the inventions claimed in the Asserted Patents as set forth in
this Complaint are not intended to construe either the specification or the claims of the Asserted
Patents.
l4
Communicated Content," which issued on February 28, 2006, naming Randi W. Faris as
inventor. A certified copy of the ‘O64Patent is attached as Exhibit 6; a certified copy of the
recorded assignment from the named inventors to Motorola, Inc. is attached as Exhibit 13. A
certified copy of the July 31, 2010 assignment of the ‘O64Patent from Motorola, Inc. to
Mobility is attached as Exhibit 15. A copy of the June 22, 2012 Certificate of Conversion from
Motorola Mobility, Inc. to Motorola Mobility LLC is attached as Exhibit 16, and Complainants
will submit a certified copy once it is recorded at the United States Patent and Trademark
Office.
55.
Pursuant to Commission Rule 210.12, a certified copy and three additional
copies of the prosecution history of the ‘O64Patent, as well as four copies of the ‘O64Patent and
each technical reference mentioned in the prosecution history of the ‘O64Patent, are submitted
concurrently herewith as Appendices 6 and 13, respectively.
2.
56.
Foreign Counterparts to the ‘O64Patent
Pursuant to Commission Rule 2lO.l2(a)(9)(v), Exhibit 22 identifies the foreign
patents or patent applications corresponding to the ‘O64Patent that have been issued,
abandoned, rejected, or remain pending.
3.
57.
Non-Technical Description of the ‘O64Patent9
The ‘O64Patent generally relates to Wireless communications systems for
providing content to wireless communication devices. In particular, the ‘O64Patent discloses,
inter alia, an apparatus and method for obtaining and managing wirelessly communicated
content.
9 The non-technical descriptions of the inventions claimed in the Assorted Patents as set forth in
this Complaint are not intended to construe either the specification or the claims of the Asserted
Patents.
l5
4.
58.
Prior Litigation Involving the ‘O64Patent
The ‘O64Patent has not been the subject of previous litigation in any domestic
court or agency. In addition, there has been no foreign court or agency litigation involving the
‘O64Patent or any of its counterparts.
59.
The 'O64Patent, however, is the subject ofa complaint filed concurrently
herewith by Mobility against Apple in the United States District Court for the District of
Delaware that alleges infringement of, among others, the ‘O64Patent.
G.
The '983 Patent
1.
60.
Identification of the '983 Patent and Ownership
Mobility owns by assignment the right, title and interest in United States Patent
No. 7,383,983, titled "System And Method For Managing Content Between Devices In Various
Domains," which issued on June l0, 2008, naming Michael T. Gaumond, Richard Mark
Clayton, Parvathy Bhaskaran, and Lee Callaway as inventors. A certified copy of the '983
Patent is attached as Exhibit 7; a certified copy of the recorded assignment from the named
inventors to Motorola, Inc. is attached as Exhibit l4. A certified copy of the July 3 l, 2010
assignment of the '983 Patent from Motorola, Inc. to Mobility is attached as Exhibit 15. A copy
of the June 22, 2012 Certificate of Conversion from Motorola Mobility, Inc. to Motorola
Mobility LLC is attached as Exhibit l6, and Complainants will submit a certified copy once it is
recorded at the United States Patent and Trademark Ofiice.
61.
Pursuant to Commission Rule 210.12, a certified copy and three additional
copies of the prosecution history of the '983 Patent, as well as four copies of the '983 Patent and
each technical reference mentioned in the prosecution history of the '983 Patent, are submitted
concurrently herewith as Appendices 7 and 14, respectively.
l6
2.
62.
Foreign Counterparts to the '983 Patent
Pursuant to Commission Rule 2l0.l2(a)(9)(v), Exhibit 22 identifies the foreign
patents or patent applications corresponding to the '983 Patent that have been issued,
abandoned, rejected, or remain pending.
3.
63.
Non-Technical Description of the '983 Patent“)
The '983 Patent generally relates to managing content between devices in various
domains and, more particularly, to a system and method for pausing content in one device and
resuming playback of the content in another device that may be in a different domain.
4.
64.
Prior Litigation Involving the '983 Patent
The '983 Patent has not been the subject of previous litigation in any domestic
court or agency. In addition, there has been no foreign court or agency litigation involving the
‘983 Patent or any of its counterparts.
65.
The '983 Patent, however, is the subject of a complaint filed concurrently
herewith by Mobility against Apple in the United States District Court for the District of
Delaware that alleges infringement of, among others, the '983 Patent.
V.
UNLAWFUL AND UNFAIR ACTS OF RESPONDENT - PATENT
INFRINGEMENT
66.
Respondent unlawfully sells for importation, imports, and/or sells within the
United States after importation the Accused Products, thereby infringing at least claims l, 2, 3,
10, ll, 13, and 15 ofthe ‘S80Patent, claims 17 and l8 ofthe ‘O47Patent, claims 1, 5, 6, and ll
of the ‘O02Patent, claims l, 9, 10, ll, and 50 of the ’673 Patent, claims 50, 51, 52, and 54 of the
’3'70Patent, claims 1, 2, 5, 6, 7, 9, 10, ll, 12, and 13 ofthe ‘O64Patent, and claims 1, 2, 3, 4, 9,
_,________._..____............____._..__.__...._._.‘
X0
The non-technical descriptions of the inventions claimed in the Asserted Patents as set
forth in this Complaint are not intended to construe either the specification or the claims of the
Asserted Patents.
6
l7
12, 13, 14, 25, 26, 31, 33, 34, 35, 37, 39, and 40 of the ‘983 Patent (collectively the "Asserted
Claims").
67.
Respondent has directly infringed and continues to directly infringe at least the
Asserted Claims of the Assorted Patents by, inter alia, its importation, sale for importation,
and/or its sale in the United States after importation of the Accused Products. Respondent also
directly infringes the Asserted Claims of the Asserted Patents by having its employees or agents
operate, test, and/or demonstrate the Accused Products in the United States, and through those
activities infringes the Asserted Claims of the Asserted Patents.
68.
Respondent indirectly infringes at least claims 1, 2, 3, 10, ll, l3, and 15 of the
'580 Patent, claims 50, 51, 52, and 54 ofthe '370 Patent, and claims 1, 2, 3, 4, 9, 12, 13, 14, 25,
26, 31, 33, 34, 35, 37, 39, and 40 of the ’983 Patent by inducing and/or contributing to
infringement of the asserted claims of these patents. For example, Respondent induces
infringement and/or contributorily infringes when consumers and/or Respondent's employees
operate the Accused Products in the United States.
69.
Upon information and belief, Respondent induces infringement because: (i)
Respondent has knowledge of the ‘S80Patent and the '983 Patent, at least through discussions
with Mobility in 2010 and has knowledge of the ’370Patent at least through its monitoring of
Motorola Mobility, Inc. v. Microsoft Corp, Case No. 2:11-CV-01408-JLR (W.D. Wash.); (ii)
Respondent intends to induce direct infringement of at least the ‘S80Patent, the ’370 Patent, and
the '983 Patent; (iii) Respondent actively induces direct infringement by knowingly aiding and
abetting that infringement; and/or (iv) Respondent has actual or constructive knowledge that its
actions would induce infringement. For example, Respondent induces infringement by, among
other things, providing and selling the Accused Products, creating and distributing user manuals
18
and marketing materials, and by other acts and communications that instruct users how to
operate the Accused Products and otherwise cause others to use the Accused Products, and
thereby practice the claimed inventions of at least the '580 Patent, the ’370 Patent, and the ‘983
Patent.
70.
Upon information and belief, Respondent further contributes to infringement of
at least the ‘S80Patent, the ‘370 Patent, and the ’983 Patent because there is a lack of substantial
non-infringing uses for the Accused Products. Upon information and belief, Respondent knows
the Accused Products are especially made or especially adapted for use in the infringement of at
least the '580 Patent, the '370 Patent, and the ‘983 Patent and that the infringing portions of these
products are not staple articles or conmiodities of commerce suitable for substantial n0n—
infringing use.
71.
The Accused Products that infringe the '580 Patent include at least the Apple
iPhone 4 and the Apple iPhone 4S. Exhibit 23 is a claim chart that compares representative
asserted independent claims l and 10 of the '580 Patent to these Accused Products. Documents
referenced in this claim chart are attached as Exhibits 36~45and 93.
72.
The Accused Products that infringe the ‘O47Patent include at least the Apple
iPhone 3GS, the Apple iPhone 4, the Apple iPhone 4S, the Apple iPad 2, and the Apple iPad 3.
Exhibit 24 is a claim chart that compares representative asserted independent claim l7 of the
‘O47Patent to these Accused Products. Documents referenced in this claim chart are attached as
Exhibits 36, 39, and 46.
73.
The Accused Products that infringe the ‘O02Patent include at least the Apple
iPhone SGS, the Apple iPhone 4, the Apple iPhone 4S, the Apple iPad 2, and the Apple iPad 3.
Exhibit 25 is a claim chart that compares representative asserted independent claims l and ll of
l9
the ‘O02Patent to these Accused Products. Documents referenced in this claim chart are
attached as Exhibits 36, 39, 45, 47-54, and 93.
74.
'
The Accused Products that infringe the ‘673 Patent include at least Apple iPhone
4S. Exhibit 26 is a claim chart that compares representative asserted independent claims 1 and
50 of the ‘673 Patent to these Accused Products. Documents referenced in this claim chart are
attached as Exhibits 36 and 93-98.
75.
The Accused Products that infringe the '370 Patent include at least the Apple
iPhone 4, the Apple iPhone 4S, the Apple iPad 2, the Apple iPad 3, the Mac Pro, the iMac, the
Mac mini, the MacBool
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