Motorola Mobility, Inc. v. Microsoft Corporation

Filing 62

Defendant's MOTION to Change Venue Defendant's Motion to Transfer This Action to the Western District of Washington and Accompanying Memorandum of Law by Microsoft Corporation. Responses due by 6/6/2011 (Attachments: #1 Exhibit Exhibit A David Kaefer's Declaration, #2 Exhibit Exhibit 1 to David Kaefer's Declaration, #3 Exhibit Exhibit 2 to David Kaefer's Declaration, #4 Exhibit Exhibit 3 to David Kaefer's Declaration, #5 Exhibit Exhibit B Curtis Miner's Declaration, #6 Exhibit Exhibit 1 to Curtis Miner's Declaration, #7 Exhibit Exhibit 2 to Curtis Miner's Declaration, #8 Exhibit Exhibit 3 to Curtis Miner's Declaration, #9 Exhibit Exhibit 4 to Curtis Miner's Declaration, #10 Exhibit Exhibit 5 to Curtis Miner's Declaration, #11 Exhibit Exhibit 6 to Curtis Miner's Declaration, #12 Exhibit Exhibit 7 to Curtis Miner's Declaration, #13 Exhibit Exhibit 8 to Curtis Miner's Declaration, #14 Exhibit Exhibit 9 to Curtis Miner's Declaration, #15 Exhibit Exhibit 10 to Curtis Miner's Declaration, #16 Exhibit Exhibit 11 to Curtis Miner's Declaration, #17 Exhibit Exhibit 12 to Curtis Miner's Declaration, #18 Exhibit Exhibit 13 to Curtis Miner's Declaration, #19 Exhibit Exhibit 14 to Curtis Miner's Declaration, #20 Exhibit Exhibit 15 to Curtis Miner's Declaration, #21 Exhibit Exhibit 16 to Curtis Miner's Declaration, #22 Exhibit Group Exhibit C to Motion, #23 Exhibit Group Exhibit D to Motion)(Miner, Curtis)

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IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN

MOTOROLA MOBILITY, INC., and
GENERAL INSTRUMENT
CORPORATION,
Plaintiffs,
v.
MICROSOFT CORPORATION,
Defendant.

)
)
)
)
)
) Civil Action No. 10-cv-700
)
) JURY TRIAL DEMANDED
)
)
)
)

COMPLAINT FOR PATENT INFRINGEMENT
Plaintiffs, Motorola Mobility, Inc. (“Motorola Mobility”) and General Instrument
Corporation (“General Instrument”) (collectively or separately, “Plaintiffs”), for their complaint
against Defendant Microsoft Corporation (“Microsoft”), aver as follows:

NATURE OF THE ACTION
1.

This is an action brought by Plaintiffs against Microsoft for Microsoft’s

infringement of Plaintiffs’ patents.

In particular, Plaintiffs seek remedies for Microsoft’s

infringement of Plaintiffs’ U.S. Patents Nos. 6,980,596; 7,162,094; 5,319,712; 5,357,571;
6,686,931; and 5,311,516 (collectively, “the Asserted Patents”).

THE PARTIES
2.

Motorola Mobility is a corporation organized and existing under the laws of the

State of Delaware, having a principal place of business at 600 North U.S. Highway 45,
Libertyville, Illinois 60048. Motorola Mobility is a wholly-owned subsidiary of Motorola, Inc.

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Motorola Mobility is the assignee of all right, title and interest, including the right to sue for past
infringement, in and to the ’712; ’571; ’931; and ’516 Patents.
3.

Motorola Mobility and its affiliates (collectively, “Motorola”) are 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 and thereafter, Motorola has developed substantial proprietary
and leading technology relating to wireless communications and electronics. Among other
things, Motorola designs, manufactures, sells, and services wireless handsets with integrated
software and accessory products.
4.

General Instrument Corporation is a corporation organized and existing under the

laws of the State of Delaware, having a principal place of business at 101 Tournament Drive,
Horsham, Pennsylvania 19044. General Instrument is a wholly-owned subsidiary of Motorola
Mobility. General Instrument Corporation is the assignee of all right, title and interest, including
the right to sue for past infringement, in and to the ’596 and ’094 Patents.
5.

On information and belief, Microsoft is a corporation organized and existing

under the laws of the State of Washington having its principal place of business at One Microsoft
Way, Redmond, Washington 98052.
6.

On information and belief, Microsoft directly or indirectly through its subsidiaries

and affiliated companies, distributes, markets, sells and/or offers to sell throughout the United
States including in this District, and/or imports into the United States various models of the Xbox
360 video game console (“the Xbox 360”) and/or accessories.

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JURISDICTION AND VENUE
7.

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

United States, 35 U.S.C. §§ 101 et seq. This Court has subject matter jurisdiction over this
action pursuant to 28 U.S.C. §§ 1331 and 1338(a).
8.

Venue is proper in this Judicial District pursuant to 28 U.S.C. §§ 1391(b), (c), (d),

and 1400(b).
9.

Upon information and belief, this Court has personal jurisdiction over Microsoft

because Microsoft regularly conducts business in this District and has committed and continues
to commit acts of patent infringement in this District.

THE ASSERTED PATENTS
10.

United States Patent No. 6,980,596, titled “Macroblock Level Adaptive

Frame/Field Coding for Digital Video Content,” which issued on December 27, 2005, names
Limin Wang, Rajeev Gandhi, Krit Panusopone, and Ajay Luthra as inventors.

General

Instrument is the owner by assignment of all right, title and interest in and to the ’596 Patent,
including the right to sue and recover for past infringement thereof. A true and correct copy of
the ’596 Patent is attached as Exhibit A.
11.

United States Patent No. 7,162,094, titled “Frequency Coefficient Scanning Paths

For Coding Digital Video Content,” which issued on January 9, 2007, names Limin Wang,
David M. Baylon, Krit Panusopone, Rajeev Gandhi, Yue Yu, and Ajay Luthra as inventors.
General Instrument is the owner by assignment of all right, title and interest in and to the ’094
Patent, including the right to sue and recover for past infringement thereof. A true and correct
copy of the ’094 Patent is attached as Exhibit B.

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12.

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United States Patent No. 5,319,712, titled “Method and Apparatus for Providing

Cryptographic Protection of a Data Stream in a Communication System,” which issued on
June 7, 1994, names Louis D. Finkelstein, James J. Kosmach, and Jeffrey C. Smolinske as
inventors. Motorola Mobility is the owner by assignment of all right, title and interest in and to
the ’712 Patent, including the right to sue and recover for past infringement thereof. A true and
correct copy of the ’712 Patent is attached as Exhibit C.
13.

United States Patent No. 5,357,571, titled “Method For Point-To-Point

Communications Within Secure Communication Systems,” which issued on October 18, 1994,
names Dean E. Banwart as inventor. Motorola Mobility is the owner by assignment of all right,
title and interest in and to the ’571 Patent, including the right to sue and recover for past
infringement thereof. A true and correct copy of the ’571 Patent is attached as Exhibit D.
14.

United States Patent No. 6,686,931, titled “Graphical Password Methodology For

A Microprocessor Device Accepting Non-Alphanumeric User Input,” which issued on
February 3, 2004, names Eric O. Bodnar as the inventor. Motorola Mobility is the owner by
assignment of all right, title and interest in and to the ‘931 Patent, including the right to sue and
recover for past infringement thereof. A true and correct copy of the ’931 Patent is attached as
Exhibit E.
15.

United States Patent No. 5,311,516, titled “Paging System Using Message

Fragmentation to Redistribute Traffic,” which issued on May 10, 1994, names William J.
Kuznicki and David F. Willard as inventors. Motorola Mobility is the owner by assignment of
all right, title and interest in and to the ’516 Patent, including the right to sue and recover for past
infringement thereof. A true and correct copy of the ’516 Patent is attached as Exhibit F.

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CLAIM ONE
(Infringement of U.S. Patent No. 6,980,596)
16.

Plaintiffs incorporate by reference as if fully set forth herein the averments

contained within Paragraphs 1-15.
17.

On information and belief, Microsoft has infringed, induced infringement of,

and/or contributorily infringed, and continues to infringe, induce infringement of, and/or
contributorily infringe, one or more claims of the ’596 Patent, pursuant to 35 U.S.C. § 271(a), (b)
and/or (c), literally or under the doctrine of equivalents, in this Judicial District and elsewhere in
the United States, by their activities, including, but not limited to: (a) making, using, offering to
sell, selling and/or importing various models of the Xbox 360, including without limitation the
Xbox 360 Pro/Premium, Xbox 360 Elite, Xbox 360 Arcade, and Xbox 360 S; and/or (b) by
inducing others to practice the claimed methods.
18.

On information and belief, instructional materials produced by Microsoft

(available at, e.g., http://support.xbox.com/en-us/Pages/default.aspx) instruct customers how to
use these products in accordance with one or more of the asserted claims of the ’596 Patent.
19.

Microsoft’s infringing activities have caused and will continue to cause Plaintiffs

irreparable harm for which they have no adequate remedy at law, unless such infringing
activities are enjoined by this Court pursuant to 35 U.S.C. § 283.
20.

Plaintiffs have been and continue to be damaged by Microsoft’s infringement of

the ’596 Patent in an amount to be determined at trial.
21.

On information and belief, Microsoft’s infringement of the ’596 Patent is willful

and deliberate, and justifies an increase in damages of up to three times in accordance with
35 U.S.C. § 284.

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22.

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On information and belief, Microsoft’s infringement of the ’596 Patent is

exceptional and entitles Plaintiffs to an award of their attorneys’ fees and costs incurred in
prosecuting this action under 35 U.S.C. § 285.

CLAIM TWO
(Infringement of U.S. Patent No. 7,162,094)
23.

Plaintiffs incorporate by reference as if fully set forth herein the averments

contained within Paragraphs 1-15.
24.

On information and belief, Microsoft has infringed, induced infringement of,

and/or contributorily infringed, and continues to infringe, induce infringement of, and/or
contributorily infringe, one or more claims of the ’094 Patent, pursuant to 35 U.S.C. § 271(a), (b)
and/or (c), literally or under the doctrine of equivalents, in this Judicial District and elsewhere in
the United States, by their activities, including, but not limited to: (a) making, using, offering to
sell, selling and/or importing various models of the Xbox 360, including without limitation the
Xbox 360 Pro/Premium, Xbox 360 Elite, Xbox 360 Arcade, and Xbox 360 S; and/or (b) by
inducing others to use the claimed systems and/or to practice the claimed methods.
25.

On information and belief, instructional materials produced by Microsoft

(available at, e.g., http://support.xbox.com/en-us/Pages/default.aspx) instruct customers how to
use these products in accordance with one or more of the asserted claims of the ’094 Patent.
26.

Microsoft’s infringing activities have caused and will continue to cause Plaintiffs

irreparable harm for which they have no adequate remedy at law, unless such infringing
activities are enjoined by this Court pursuant to 35 U.S.C. § 283.
27.

Plaintiffs have been and continue to be damaged by Microsoft’s infringement of

the ’094 Patent in an amount to be determined at trial.

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28.

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On information and belief, Microsoft’s infringement of the ’094 Patent is willful

and deliberate, and justifies an increase in damages of up to three times in accordance with
35 U.S.C. § 284.
29.

On information and belief, Microsoft’s infringement of the ’094 Patent is

exceptional and entitles Plaintiffs to an award of their attorneys’ fees and costs incurred in
prosecuting this action under 35 U.S.C. § 285.

CLAIM THREE
(Infringement of U.S. Patent No. 5,319,712)
30.

Plaintiffs incorporate by reference as if fully set forth herein the averments

contained within Paragraphs 1-15.
31.

On information and belief, Microsoft has infringed, induced infringement of,

and/or contributorily infringed, and continues to infringe, induce infringement of, and/or
contributorily infringe, one or more claims of the ’712 Patent, pursuant to 35 U.S.C. § 271(a), (b)
and/or (c), literally or under the doctrine of equivalents, in this Judicial District and elsewhere in
the United States, by their activities, including, but not limited to: (a) making, using, offering to
sell, selling and/or importing various models of the Xbox 360, including without limitation:
(i) the Xbox 360 S; and (ii) in conjunction with the Xbox 360 Wireless Networking Adapter or
the Xbox 360 Wireless N Networking Adapter, the Xbox 360 Core, Xbox 360 Pro/Premium,
Xbox 360 Elite, and Xbox 360 Arcade; and/or (b) by inducing others to use the claimed systems
and/or to practice the claimed methods.
32.

On information and belief, instructional materials produced by Microsoft

(available at, e.g., http://support.xbox.com/en-us/Pages/default.aspx) instruct customers how to
use these products in accordance with one or more of the asserted claims of the ’712 Patent.

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33.

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Microsoft’s infringing activities have caused and will continue to cause Plaintiffs

irreparable harm for which they have no adequate remedy at law, unless such infringing
activities are enjoined by this Court pursuant to 35 U.S.C. § 283.
34.

Plaintiffs have been and continue to be damaged by Microsoft’s infringement of

the ’712 Patent in an amount to be determined at trial.
35.

On information and belief, Microsoft’s infringement of the ’712 Patent is willful

and deliberate, and justifies an increase in damages of up to three times in accordance with
35 U.S.C. § 284.
36.

On information and belief, Microsoft’s infringement of the ’712 Patent is

exceptional and entitles Plaintiffs to an award of their attorneys’ fees and costs incurred in
prosecuting this action under 35 U.S.C. § 285.

CLAIM FOUR
(Infringement of U.S. Patent No. 5,357,571)
37.

Plaintiffs incorporates by reference as if fully set forth herein the averments

contained within Paragraphs 1-15.
38.

On information and belief, Microsoft has infringed, induced infringement of,

and/or contributorily infringed, and continues to infringe, induce infringement of, and/or
contributorily infringe, one or more claims of the ’571 Patent, pursuant to 35 U.S.C. § 271(a), (b)
and/or (c), literally or under the doctrine of equivalents, in this Judicial District and elsewhere in
the United States, by their activities, including, but not limited to: (a) making, using, offering to
sell, selling and/or importing various models of the Xbox 360, including without limitation:
(i) the Xbox 360 S; and (ii) in conjunction with the Xbox 360 Wireless N Networking Adapter,
the Xbox 360 Core, Xbox 360 Pro/Premium, Xbox 360 Elite, and Xbox 360 Arcade; and (iii) in

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conjunction with the Xbox 360 Wireless Networking Adapter, the Xbox 360 Core, Xbox 360
Pro/Premium, Xbox 360 Elite, and Xbox 360 Arcade; and/or (b) by inducing others to practice
the claimed methods.
39.

On information and belief, instructional materials produced by Microsoft

(available at, e.g., http://support.xbox.com/en-us/Pages/default.aspx) instruct customers how to
use these products in accordance with one or more of the asserted claims of the ’571 Patent.
40.

Microsoft’s infringing activities have caused and will continue to cause Plaintiffs

irreparable harm for which they have no adequate remedy at law, unless such infringing
activities are enjoined by this Court pursuant to 35 U.S.C. § 283.
41.

Plaintiffs have been and continue to be damaged by Microsoft’s infringement of

the ’571 Patent in an amount to be determined at trial.
42.

On information and belief, Microsoft’s infringement of the ’571 Patent is willful

and deliberate, and justifies an increase in damages of up to three times in accordance with
35 U.S.C. § 284.
43.

On information and belief, Microsoft’s infringement of the ’571 Patent is

exceptional and entitles Plaintiffs to an award of their attorneys’ fees and costs incurred in
prosecuting this action under 35 U.S.C. § 285.

CLAIM FIVE
(Infringement of U.S. Patent No. 6,686,931)
44.

Plaintiffs incorporate by reference as if fully set forth herein the averments

contained within Paragraphs 1-15.
45.

On information and belief, Microsoft has infringed, induced infringement of,

and/or contributorily infringed, and continues to infringe, induce infringement of, and/or

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contributorily infringe, one or more claims of the ’931 Patent, pursuant to 35 U.S.C. § 271(a), (b)
and/or (c), literally or under the doctrine of equivalents, in this Judicial District and elsewhere in
the United States, by their activities, including, but not limited to: (a) making, using, offering to
sell, selling and/or importing various models of the Xbox 360, including without limitation the
Xbox 360 Core, Xbox 360 Pro/Premium, Xbox 360 Elite, Xbox 360 Arcade, and Xbox 360 S;
and/or (b) by inducing others to use the claimed systems and/or to practice the claimed methods.
46.

On information and belief, instructional materials produced by Microsoft

(available at, e.g., http://support.xbox.com/en-us/Pages/default.aspx) instruct customers how to
use these products in accordance with one or more of the asserted claims of the ’931 Patent.
47.

Microsoft’s infringing activities have caused and will continue to cause Plaintiffs

irreparable harm for which they have no adequate remedy at law, unless such infringing
activities are enjoined by this Court pursuant to 35 U.S.C. § 283.
48.

Plaintiffs have been and continue to be damaged by Microsoft’s infringement of

the ’931 Patent in an amount to be determined at trial.
49.

On information and belief, Microsoft’s infringement of the ’931 Patent is willful

and deliberate, and justifies an increase in damages of up to three times in accordance with
35 U.S.C. § 284.
50.

On information and belief, Microsoft’s infringement of the ’931 Patent is

exceptional and entitles Plaintiffs to an award of their attorneys’ fees and costs incurred in
prosecuting this action under 35 U.S.C. § 285.

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CLAIM SIX
(Infringement of U.S. Patent No. 5,311,516)
51.

Plaintiffs incorporate by reference as if fully set forth herein the averments

contained within Paragraphs 1-15.
52.

On information and belief, Microsoft has infringed, induced infringement of,

and/or contributorily infringed, and continues to infringe, induce infringement of, and/or
contributorily infringe, one or more claims of the ’516 Patent, pursuant to 35 U.S.C. § 271(a), (b)
and/or (c), literally or under the doctrine of equivalents, in this Judicial District and elsewhere in
the United States, by their activities, including, but not limited to: (a) making, using, offering to
sell, selling and/or importing various models of the Xbox 360, including without limitation:
(i) the Xbox 360 S; and (ii) in conjunction with the Xbox 360 Wireless Networking Adapter or
the Xbox 360 Wireless N Networking Adapter, the Xbox 360 Core, Xbox 360 Pro/Premium,
Xbox 360 Elite, and Xbox 360 Arcade; and/or (b) by inducing others to use the claimed systems
and/or to practice the claimed methods.
53.

On information and belief, instructional materials produced by Microsoft

(available at, e.g., http://support.xbox.com/en-us/Pages/default.aspx) instruct customers how to
use these products in accordance with one or more of the asserted claims of the ’516 Patent.
54.

Microsoft’s infringing activities have caused and will continue to cause Plaintiffs

irreparable harm for which they have no adequate remedy at law, unless such infringing
activities are enjoined by this Court pursuant to 35 U.S.C. § 283.
55.

Plaintiffs have been and continue to be damaged by Microsoft’s infringement of

the ’516 Patent in an amount to be determined at trial.

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56.

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On information and belief, Microsoft’s infringement of the ’516 Patent is willful

and deliberate, and justifies an increase in damages of up to three times in accordance with
35 U.S.C. § 284.
57.

On information and belief, Microsoft’s infringement of the ’516 Patent is

exceptional and entitles Plaintiffs to an award of their attorneys’ fees and costs incurred in
prosecuting this action under 35 U.S.C. § 285.

DEMAND FOR TRIAL BY JURY
Plaintiffs demand a trial by jury of all claims and all issues triable by jury in this action.

PRAYER FOR RELIEF
WHEREFORE, Plaintiffs respectfully request that the Court enter a judgment:
a.

Adjudging that Microsoft has infringed one or more claims of each of the

Asserted Patents;
b.

Permanently enjoining Microsoft and its directors, officers, employees,

attorneys, agents, and all persons in active concert or participation with any of the foregoing
from further acts of infringement, contributory infringement and inducement of infringement of
the Asserted Patents;
c.

Awarding Plaintiffs damages adequate to compensate them for

Microsoft’s infringement of the Asserted Patents including pre-judgment and post-judgment
interest at the maximum rate permitted by law;
d.

Adjudging that Microsoft’s infringement of each of the Asserted Patents is

willful and deliberate and, therefore, that Plaintiffs are entitled to treble damages as provided by
35 U.S.C. § 284;
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e.

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Adjudging that Microsoft’s infringement of the Asserted Patents is willful

and deliberate, and, therefore, that this is an exceptional case entitling Plaintiffs to an award of
their attorneys’ fees for bringing and prosecuting this action, together with interest, and costs of
the action, pursuant to 35 U.S.C. § 285; and
f.

Awarding to Plaintiffs such other and further relief as this Court deems

proper and just.

November 10, 2010

Of Counsel:
Jesse J. Jenner*
Steven Pepe*
Ropes & Gray LLP
1211 Avenue of the Americas
New York, New York 10036
Phone No. [phone]

Respectfully submitted,
/s/ Scott W. Hansen
Scott W. Hansen
[e-mail]
Lynn M. Stathas
[e-mail]
Rebecca F. Kennedy
[e-mail]
Reinhart Boerner Van Deuren S.C.
1000 North Water Street
Suite 1700
Milwaukee, WI 53202
Phone No. [phone]

Attorney for Plaintiffs,
MOTOROLA MOBILITY, INC., and
GENERAL INSTRUMENT
CORPORATION

Norman H. Beamer*
Mark D. Rowland*
Gabrielle E. Higgins*
Ropes & Gray LLP
1900 University Avenue, 6th Floor
East Palo Alto, CA 94303
Phone No. [phone]

* Pro hac vice to be filed

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