Tallgrass Prairie Management, LLC v. Microsoft Corporation et al
Filing
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COMPLAINT for Patent Infringement against Apple Inc., Checkpoint Software Technologies, Inc., Microsoft Corporation, Symantec Corporation, WinMagic (USA), Inc. ( Filing fee $ 350 receipt number 0540-3224887.), filed by Tallgrass Prairie Management, LLC. (Attachments: # 1 Exhibit A - U.S. Patent No. 5,436,972, # 2 Exhibit B - U.S. Patent No. 6,141,423, # 3 Exhibit C - U.S. Patent No. 6,216,229, # 4 Civil Cover Sheet)(Davis, William)
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
TALLGRASS PRAIRIE MANAGEMENT,
LLC
Plaintiff,
v.
MICROSOFT CORPORATION; APPLE,
INC.; SYMANTEC CORPORATION;
WINMAGIC (USA), INC.; CHECKPOINT
SOFTWARE TECHNOLOGIES, INC.
Defendants.
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CIVIL ACTION NO. 2:11-cv-411
JURY TRIAL DEMANDED
PLAINTIFF’S ORIGINAL COMPLAINT
Plaintiff Tallgrass Prairie Management, LLC (“Plaintiff”) by and through its undersigned
counsel, file this Original Complaint against Microsoft Corporation; Apple, Inc.; Symantec
Corporation; WinMagic (USA), Inc.; and CheckPoint Software Technologies, Inc. as follows:
NATURE OF THE ACTION
1.
This is a patent infringement action to stop Defendants’ infringement of
Plaintiff’s United States Patent Nos. 5,436,972 entitled “Method for Preventing Inadvertent
Betrayal by a Trustee of Escrowed Digital Secrets” (the “’972 patent”; a copy of which is
attached as Exhibit A), 6,141,423 entitled “Method for Preventing Inadvertent Betrayal by a
Trustee of Escrowed Digital Secrets” (the “’423 patent”; a copy of which is attached as Exhibit
B), and 6,216,229 entitled “Method for Preventing Inadvertent Betrayal by a Trustee of
Escrowed Digital Secrets” (the “’229 patent” and collectively with the ‘972 patent and the ‘423
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patent as the “patents-in-suit”; a copy of which is attached as Exhibit C). Plaintiff is the assignee
of the patents-in-suit. Plaintiff seeks injunctive relief and monetary damages.
PARTIES
2.
Plaintiff Tallgrass Prairie Management, LLC is a limited liability company
organized and existing under the laws of Texas with its principal place of business at 104 East
Houston Street, Suite #170, Marshall, Texas 75670. Plaintiff is the assignee of all title and
interest of the patents-in-suit. Plaintiff possesses the entire right to sue for infringement and
recover past damages.
3.
Upon information and belief, Defendant Microsoft Corporation (“Microsoft”) is a
corporation organized and existing under the laws of the state of Delaware, with its principal
place of business located at One Microsoft Way, Redmond, Washington 98052.
4.
Upon information and belief, Defendant Apple Inc. (“Apple”) is a corporation
organized and existing under the laws of the state of California, with its principal place of
business located at 1 Infinite Loop, Cupertino, CA 95014.
5.
Upon information and belief, Defendant Symantec Corporation (“Symantec”) is a
corporation organized and existing under the laws of the state of Delaware, with its principal
place of business located at 350 Ellis Street, Mountain View, CA 94043.
6.
Upon information and belief, Defendant WinMagic (USA), Inc. (“WinMagic”) is
a corporation organized and existing under the laws of the State of Delaware, with its principal
place of business located at 2711 Centerville Road, Suite 300, Wilmington, DE 19808.
7.
Upon information and belief, Defendant Checkpoint Software Technologies, Inc.
(“CheckPoint”) is a corporation organized and existing under the laws of the State of Delaware,
with its principal place of business located at 800 Bridge Parkway, Redwood City, CA 94065
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JURISDICTION AND VENUE
8.
This action arises under the Patent Laws of the United States, 35 U.S.C. § 1 et
seq., including 35 U.S.C. §§ 271, 281, 283, 284, and 285. This Court has subject matter
jurisdiction over this case for patent infringement under 28 U.S.C. §§ 13331 and 1338(a).
9.
The Court has personal jurisdiction over each Defendant because each Defendant
has minimum contacts within the State of Texas, and the Eastern District of Texas; each
Defendant has purposefully availed itself of the privileges of conducting business in the State of
Texas and in the Eastern District of Texas; each Defendant has sought protection and benefit
from the laws of the State of Texas; each Defendant regularly conducts business within the State
of Texas and within the Eastern District of Texas; and Plaintiff’s cause of action arise directly
from Defendants’ business contacts and other activities in the State of Texas and in the Eastern
District of Texas.
10.
More specifically, each Defendant, directly and/or through intermediaries, ships,
distributes, offers for sale, sells, and/or advertises (including the provision of an interactive web
page) its products and services in the United States, the State of Texas, and the Eastern District
of Texas. Upon information and belief, Each Defendant has committed patent infringement in
the State of Texas and in the Eastern District of Texas, has contributed to patent infringement in
the State of Texas and in the Eastern District of Texas and/or has induced others to commit
patent infringement in the State of Texas and in the Eastern District of Texas. Each Defendant
solicits customers in the State of Texas and in the Eastern District of Texas. Each Defendant has
many paying customers who are residents of the State of Texas and the Eastern District of Texas
and who each use respective Defendant’s products and services in the State of Texas and in the
Eastern District of Texas.
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11.
Venue is proper in the Eastern District of Texas pursuant to 28 U.S.C. §§ 1391
and 1400(b).
COUNT I – PATENT INFRINGEMENT
12.
United States Patent No. 5,436,972 entitled “Method for Preventing Inadvertent
Betrayal by a Trustee of Escrowed Digital Secrets” was duly and legally issued by the United
States Patent and Trademark Office on July 25, 1995 after full and fair examination. Plaintiff is
the assignee of all rights, title, and interest in and to the ‘972 patent and possesses all rights of
recovery under the ‘972 patent including the right to sue for infringement and recover past
damages.
13.
Microsoft has infringed and continues to infringe one or more claims of the ‘972
patent by making, using, providing, offering to sell, and selling (directly or through
intermediaries), in this district and elsewhere in the United States, software that includes digital
data structures for storing identifying information and encrypted digital secrets that allows
trustees to access the encrypted digital secrets upon verification of the identifying information.
Upon information and belief, Microsoft has also contributed to the infringement of one or more
claims of the ‘972 patent and/or actively induced others to infringe one or more claims of the
‘972 patent, in this district and elsewhere in the United States.
14.
Apple has infringed and continues to infringe one or more claims of the ‘972
patent by making, using, providing, offering to sell, and selling (directly or through
intermediaries), in this district and elsewhere in the United States, software that includes digital
data structures for storing identifying information and encrypted digital secrets that allows
trustees to access the encrypted digital secrets upon verification of the identifying information.
Upon information and belief, Apple has also contributed to the infringement of one or more
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claims of the ‘972 patent and/or actively induced others to infringe one or more claims of the
‘972 patent, in this district and elsewhere in the United States.
15.
Symantec has infringed and continues to infringe one or more claims of the ‘972
patent by making, using, providing, offering to sell, and selling (directly or through
intermediaries), in this district and elsewhere in the United States, software that includes digital
data structures for storing identifying information and encrypted digital secrets that allows
trustees to access the encrypted digital secrets upon verification of the identifying information.
Upon information and belief, Symantec has also contributed to the infringement of one or more
claims of the ‘972 patent and/or actively induced others to infringe one or more claims of the
‘972 patent, in this district and elsewhere in the United States.
16.
WinMagic has infringed and continues to infringe one or more claims of the ‘972
patent by making, using, providing, offering to sell, and selling (directly or through
intermediaries), in this district and elsewhere in the United States, software that includes digital
data structures for storing identifying information and encrypted digital secrets that allows
trustees to access the encrypted digital secrets upon verification of the identifying information.
Upon information and belief, WinMagic has also contributed to the infringement of one or more
claims of the ‘972 patent and/or actively induced others to infringe one or more claims of the
‘972 patent, in this district and elsewhere in the United States.
17.
CheckPoint has infringed and continues to infringe one or more claims of the ‘972
patent by making, using, providing, offering to sell, and selling (directly or through
intermediaries), in this district and elsewhere in the United States, software that includes digital
data structures for storing identifying information and encrypted digital secrets that allows
trustees to access the encrypted digital secrets upon verification of the identifying information.
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Upon information and belief, CheckPoint has also contributed to the infringement of one or more
claims of the ‘972 patent and/or actively induced others to infringe one or more claims of the
‘972 patent, in this district and elsewhere in the United States.
18.
Each Defendant’s aforesaid activities have been without authority and/or license
from Plaintiff.
19.
Plaintiff is entitled to recover from the Defendants the damages sustained by
Plaintiff as a result of Defendants’ wrongful acts of infringing the ‘972 patent in an amount
subject to proof at trial, which, by law, cannot be less than a reasonable royalty, together with
interest and costs as fixed by this Court under 3 U.S.C. § 284.
20.
Defendants’ infringement of Plaintiff’s exclusive rights under the ‘972 patent will
continue to damage Plaintiff, causing irreparable harm for which there is no adequate remedy at
law, unless enjoined by this Court.
COUNT II – PATENT INFRINGEMENT
21.
United States Patent No. 6,141,423 entitled “Method for Preventing
Inadvertent Betrayal by a Trustee of Escrowed Digital Secrets” was duly and legally issued by
the United States Patent and Trademark Office on October 31, 2000 after full and fair
examination. Plaintiff is the assignee of all rights, title, and interest in and to the ‘423 patent and
possesses all rights of recovery under the ‘423 patent including the right to sue for infringement
and recover past damages.
22.
Microsoft has infringed and continues to infringe one or more claims of the ‘423
patent by making, using, providing, offering to sell, and selling (directly or through
intermediaries), in this district and elsewhere in the United States, software that includes digital
data structures for storing identifying information and encrypted digital secrets that allows
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trustees to access the encrypted digital secrets upon verification of the identifying information.
Upon information and belief, Microsoft has also contributed to the infringement of one or more
claims of the ‘423 patent and/or actively induced others to infringe one or more claims of the
‘423 patent, in this district and elsewhere in the United States.
23.
Apple has infringed and continues to infringe one or more claims of the ‘423
patent by making, using, providing, offering to sell, and selling (directly or through
intermediaries), in this district and elsewhere in the United States, software that includes digital
data structures for storing identifying information and encrypted digital secrets that allows
trustees to access the encrypted digital secrets upon verification of the identifying information.
Upon information and belief, Apple has also contributed to the infringement of one or more
claims of the ‘423 patent and/or actively induced others to infringe one or more claims of the
‘423 patent, in this district and elsewhere in the United States.
24.
Symantec has infringed and continues to infringe one or more claims of the ‘423
patent by making, using, providing, offering to sell, and selling (directly or through
intermediaries), in this district and elsewhere in the United States, software that includes digital
data structures for storing identifying information and encrypted digital secrets that allows
trustees to access the encrypted digital secrets upon verification of the identifying information.
Upon information and belief, Symantec has also contributed to the infringement of one or more
claims of the ‘423 patent and/or actively induced others to infringe one or more claims of the
‘423 patent, in this district and elsewhere in the United States.
25.
WinMagic has infringed and continues to infringe one or more claims of the ‘423
patent by making, using, providing, offering to sell, and selling (directly or through
intermediaries), in this district and elsewhere in the United States, software that includes digital
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data structures for storing identifying information and encrypted digital secrets that allows
trustees to access the encrypted digital secrets upon verification of the identifying information.
Upon information and belief, WinMagic has also contributed to the infringement of one or more
claims of the ‘423 patent and/or actively induced others to infringe one or more claims of the
‘423 patent, in this district and elsewhere in the United States.
26.
CheckPoint has infringed and continues to infringe one or more claims of the ‘423
patent by making, using, providing, offering to sell, and selling (directly or through
intermediaries), in this district and elsewhere in the United States, software that includes digital
data structures for storing identifying information and encrypted digital secrets that allows
trustees to access the encrypted digital secrets upon verification of the identifying information.
Upon information and belief, CheckPoint has also contributed to the infringement of one or more
claims of the ‘423 patent and/or actively induced others to infringe one or more claims of the
‘423 patent, in this district and elsewhere in the United States.
27.
Each Defendant’s aforesaid activities have been without authority and/or license
from Plaintiff.
28.
Plaintiff is entitled to recover from the Defendants the damages sustained by
Plaintiff as a result of Defendants’ wrongful acts of infringing the ‘423 patent in an amount
subject to proof at trial, which, by law, cannot be less than a reasonable royalty, together with
interest and costs as fixed by this Court under 3 U.S.C. § 284.
29.
Defendants’ infringement of Plaintiff’s exclusive rights under the ‘423 patent will
continue to damage Plaintiff, causing irreparable harm for which there is no adequate remedy at
law, unless enjoined by this Court.
COUNT III – PATENT INFRINGEMENT
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30.
United States Patent No. 6,216,229 entitled “Method for Preventing
Inadvertent Betrayal by a Trustee of Escrowed Digital Secrets” was duly and legally issued by
the United States Patent and Trademark Office on April 10, 2001 after full and fair examination.
Plaintiff is the assignee of all rights, title, and interest in and to the ‘229 patent and possesses all
rights of recovery under the ‘229 patent including the right to sue for infringement and recover
past damages.
31.
Microsoft has infringed and continues to infringe one or more claims of the ‘229
patent by making, using, providing, offering to sell, and selling (directly or through
intermediaries), in this district and elsewhere in the United States, software that includes digital
data structures for storing identifying information and encrypted digital secrets that allows
trustees to access the encrypted digital secrets upon verification of the identifying information.
Upon information and belief, Microsoft has also contributed to the infringement of one or more
claims of the ‘229 patent and/or actively induced others to infringe one or more claims of the
‘229 patent, in this district and elsewhere in the United States.
32.
Apple has infringed and continues to infringe one or more claims of the ‘229
patent by making, using, providing, offering to sell, and selling (directly or through
intermediaries), in this district and elsewhere in the United States, software that includes digital
data structures for storing identifying information and encrypted digital secrets that allows
trustees to access the encrypted digital secrets upon verification of the identifying information.
Upon information and belief, Apple has also contributed to the infringement of one or more
claims of the ‘229 patent and/or actively induced others to infringe one or more claims of the
‘229 patent, in this district and elsewhere in the United States.
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33.
Symantec has infringed and continues to infringe one or more claims of the ‘229
patent by making, using, providing, offering to sell, and selling (directly or through
intermediaries), in this district and elsewhere in the United States, software that includes digital
data structures for storing identifying information and encrypted digital secrets that allows
trustees to access the encrypted digital secrets upon verification of the identifying information.
Upon information and belief, Symantec has also contributed to the infringement of one or more
claims of the ‘229 patent and/or actively induced others to infringe one or more claims of the
‘229 patent, in this district and elsewhere in the United States.
34.
WinMagic has infringed and continues to infringe one or more claims of the ‘229
patent by making, using, providing, offering to sell, and selling (directly or through
intermediaries), in this district and elsewhere in the United States, software that includes digital
data structures for storing identifying information and encrypted digital secrets that allows
trustees to access the encrypted digital secrets upon verification of the identifying information.
Upon information and belief, WinMagic has also contributed to the infringement of one or more
claims of the ‘229 patent and/or actively induced others to infringe one or more claims of the
‘229 patent, in this district and elsewhere in the United States.
35.
CheckPoint has infringed and continues to infringe one or more claims of the ‘229
patent by making, using, providing, offering to sell, and selling (directly or through
intermediaries), in this district and elsewhere in the United States, software that includes digital
data structures for storing identifying information and encrypted digital secrets that allows
trustees to access the encrypted digital secrets upon verification of the identifying information.
Upon information and belief, CheckPoint has also contributed to the infringement of one or more
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claims of the ‘229 patent and/or actively induced others to infringe one or more claims of the
‘229 patent, in this district and elsewhere in the United States.
36.
Each Defendant’s aforesaid activities have been without authority and/or license
from Plaintiff.
37.
Plaintiff is entitled to recover from the Defendants the damages sustained by
Plaintiff as a result of Defendants’ wrongful acts of infringing the ‘229 patent in an amount
subject to proof at trial, which, by law, cannot be less than a reasonable royalty, together with
interest and costs as fixed by this Court under 3 U.S.C. § 284.
38.
Defendants’ infringement of Plaintiff’s exclusive rights under the ‘229 patent will
continue to damage Plaintiff, causing irreparable harm for which there is no adequate remedy at
law, unless enjoined by this Court.
JURY DEMAND
39.
Plaintiff hereby requests a trial by jury pursuant to Rule 38 of the Federal Rules of
Civil Procedure.
PRAYER FOR RELEIF
Plaintiff respectfully requests that the Court find in its favor and against
Defendants, and that the Court grant Plaintiff the following relief:
A.
An adjudication that one or more claims of the ‘972 patent has been infringed,
either literally and/or under the doctrine of equivalents, by one or more
Defendants and/or by others to whose infringement Defendants have contributed
and/or by others whose infringement has been induced by Defendants;
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B.
An adjudication that one or more claims of the ‘423 patent has been infringed,
either literally and/or under the doctrine of equivalents, by one or more
Defendants and/or by others to whose infringement Defendants have contributed
and/or by others whose infringement has been induced by Defendants;
C.
An adjudication the claim of the ‘229 patent has been infringed, either literally
and/or under the doctrine of equivalents, by one or more Defendants and/or by
others to whose infringement Defendants have contributed and/or by others whose
infringement has been induced by Defendants;
D.
An award to Plaintiff of damages adequate to compensate Plaintiff for the
Defendants’ acts of infringement together with pre-judgment and post-judgment
interest;
E.
That one or more of the Defendants’ acts of infringement be found to be willful
from the time that Defendants became aware of the infringing nature of their
actions, which is the time of filing of Plaintiff’s Original Complaint at the latest,
and that the Court award treble damages for the period of such willful
infringement pursuant to 35 U.S.C. § 284;
F.
A grant of permanent injunction pursuant to 35 U.S.C. § 283, enjoining the
Defendants from further acts of (1) infringement, (2) contributory infringement,
and (3) actively inducing infringement with respect to the claims of the ‘972
patent;
G.
A grant of permanent injunction pursuant to 35 U.S.C. § 283, enjoining the
Defendants from further acts of (1) infringement, (2) contributory infringement,
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and (3) actively inducing infringement with respect to the claims of the ‘423
patent;
H.
A grant of permanent injunction pursuant to 35 U.S.C. § 283, enjoining the
Defendants from further acts of (1) infringement, (2) contributory infringement,
and (3) actively inducing infringement with respect to the claims of the ‘229
patent;
I.
That this Court declare this to be an exceptional case and award Plaintiff
reasonable attorneys’ fees and costs in accordance with 35 U.S.C. § 285; and
J.
Any further relief that this Court deem just and proper.
Dated: September 14, 2011
Respectfully Submitted,
TALLGRASS PRAIRIE MANAGEMENT,
LLC
By: /s/ William E. Davis, III
William E. Davis, III
Texas State Bar No. 24047416
The Davis Firm, PC
111 West Tyler Street
Longview, Texas 75601
Telephone: (903) 230-9090
Facsimile: (903) 230-9661
Email: bdavis@bdavisfirm.com
ATTORNEY FOR PLAINTIFF
TALLGRASS PRAIRIE MANAGEMENT,
LLC
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