Mobile Telecommunications Technologies, LLC v. Apple, Inc.
Filing
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COMPLAINT against Apple, Inc. ( Filing fee $ 350 receipt number 0540-4074656.), filed by Mobile Telecommunications Technologies, LLC. (Attachments: # 1 Civil Cover Sheet)(Scardino, Daniel)
UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
MOBILE TELECOMMUNICATIONS
TECHNOLOGIES, LLC,
Plaintiff,
v.
APPLE, INC.
Defendant.
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Civil Action No. _______________
JURY TRIAL REQUESTED
PLAINTIFF MOBILE TELECOMMUNICATIONS
TECHNOLOGIES, LLC’S ORIGINAL COMPLAINT
Plaintiff Mobile Telecommunications Technologies, LLC (“MTEL” or “Plaintiff”) files
this complaint against Apple, Inc. (“Apple”) for infringement of U.S. Patent Nos. 5,809,428 (the
“’428 Patent”), 5,754,946 (the “’946 Patent”), 5,894,506 (the “’506 Patent”), 5,590,403 (the
“’403 Patent”), 5,659,891 (the “’891 Patent”), 5,915,210 (the ’210 Patent”) and 5,786,748 (the
“’748 Patent”) pursuant to 35 U.S.C. § 271 and alleges as follows.
1.
THE PARTIES
Plaintiff MTEL is a Delaware corporation with its principal place of business at
1720 Lakepointe Drive, Suite 100 Lewisville, TX 75057.
2.
MTEL owns and controls a portfolio of patents developed by Mobile
Telecommunication Technologies Corp. (“MTEL Corp.”) and its related entities, such as
Destineer and SkyTel Communications.
3.
MTEL Corp. was a pioneer in wireless communications and is credited with
launching the world’s first two-way wireless paging service, dubbed SkyTel 2-Way.
4.
Apple is a corporation incorporated under the laws of the state of California with
its principal place of business is at 1 Infinite Loop, M/S 38-3TX, Cupertino, California 95014.
PLAINTIFF MOBILE TELECOMMUNICATIONS
TECHNOLOGIES, LLC’S ORIGINAL COMPLAINT
Apple may be served with process by serving C T Corp. System, 350 N. St. Paul St., Ste. 2900,
Dallas, Texas 75201-4234.
5.
JURISDICTION AND VENUE
This is an action for patent infringement under the Patent Laws of the United
States, Title 35 of the United States Code. The Court has subject matter jurisdiction over this
action pursuant to 28 U.S.C. §§ 1331 and 1338(a). Venue lies in this judicial district pursuant to
28 U.S.C. §§ 1391 and 1400(b).
6.
This Court has personal jurisdiction over Apple under the laws of the State of
Texas, including the Texas long-arm statute, TEX. CIV. PRAC. & REM. CODE § 17.042.
7.
Plaintiff incorporates all statements of jurisdiction in the preceding paragraphs. In
addition to continuous and systematically doing business in Texas, including announcing plans
to build a multi-million dollar campus in Texas and establishing and promoting sales at its at
least eighteen stores throughout Texas including the Eastern District of Texas, the causes of
action against Apple in this Complaint arise from or are connected with purposeful acts
committed by Apple in Texas. Apple has conducted and continues to conduct business within
the State of Texas, directly or through intermediaries or agents, or offers for sale, sells, or
advertises (including through the provision of interactive web pages) products or services, or
uses or induces others to use products or services in Texas that infringe the ’428 Patent, the ’946
Patent, the ’506 Patent, the ’403 Patent, the ’891 Patent, the ’210 Patent, and the ’748 Patent or
knowingly contributes to infringement of the ’428 Patent, the ’946 Patent, the ’506 Patent, the
’403 Patent, the ’891 Patent, the ’210 Patent, and the ’748 Patent.
8.
THE PATENTS-IN-SUIT
On September 15, 1998, the United States Patent and Trademark (“USPTO”) duly
and legally issued United States Patent No. 5,809,428, titled “Method and Device for Processing
PLAINTIFF MOBILE TELECOMMUNICATIONS
TECHNOLOGIES, LLC’S ORIGINAL COMPLAINT
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Undelivered Data Messages in a Two-Way Wireless Communications System,” after a full and
fair examination. A true and correct copy of the ’428 Patent is attached hereto as Exhibit A.
Plaintiff is the assignee of all right, title and interest in and to the ’428 Patent and possesses the
exclusive right of recovery under the ’428 Patent, including the exclusive right to recover for
past and future infringement of the ’428 Patent. The ’428 Patent is valid and enforceable.
9.
The ’428 Patent discloses and claims, inter alia, methods, systems, and devices
for storing undeliverable messages, such as e-mail and SMS messages.
10.
On May 19, 1998, the USPTO duly and legally issued United States Patent No.
5,754,946 titled “Nationwide Communication System,” after a full and fair examination. A true
and correct copy of the ’946 Patent is attached hereto as Exhibit B. Plaintiff is the assignee of all
right, title and interest in and to the ’946 Patent and possesses the exclusive right of recovery
under the ’946 Patent, including the exclusive right to recover for past and future infringement of
the ’946 Patent. The ’946 Patent is valid and enforceable.
11.
The ’946 Patent discloses and claims, inter alia, devices and networks that
provide for the transmission of unreceived portions of a message.
12.
On April 13, 1999, the USPTO duly and legally issued United States Patent No.
5,894,506 titled “Method and Apparatus for Generating and Communicating Messages Between
Subscribers to an Electronic Messaging Network,” after a full and fair examination. A true and
correct copy of the ’506 Patent is attached hereto as Exhibit C. Plaintiff is the assignee of all
right, title and interest in and to the ’506 Patent, including the exclusive right to recover for past
and future infringement of the ’506 Patent. The ’506 Patent is valid and enforceable.
13.
The ’506 Patent discloses and claims, inter alia, an electronic messaging network
comprising an network operations center and message terminals, including memory for storing
PLAINTIFF MOBILE TELECOMMUNICATIONS
TECHNOLOGIES, LLC’S ORIGINAL COMPLAINT
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corresponding files of canned messages and associated message codes, which improves message
compression and conserves communications link capacity.
14.
On December 31, 1996, the USPTO duly and legally issued United States Patent
No. 5,590,403, titled “Method and System for Efficiently Providing Two Way Communication
Between a Central Network and Mobile Unit,” after a full and fair examination. A true and
correct copy of the ’403 Patent is attached hereto as Exhibit D. MTEL is the assignee of all
right, title and interest in and to the ’403 Patent and possesses the exclusive right of recovery
under the ’403 Patent, including the exclusive right to recover for past and future infringement of
the ’403 Patent. The ’403 Patent is valid and enforceable.
15.
The ’403 Patent discloses and claims, inter alia, a two-way communications
system for communication between a system network and a mobile unit.
16.
On August 19, 1997, the USPTO duly and legally issued United States Patent No.
5,659,891, titled “Multicarrier Techniques in Bandlimited Channels,” after a full and fair
examination. A true and correct copy of the ’891 Patent is attached hereto as Exhibit E. MTEL
is the assignee of all right, title and interest in and to the ’891 Patent and possesses the exclusive
right of recovery under the ’891 Patent, including the exclusive right to recover for past and
future infringement of the ’891 Patent. The ’891 Patent is valid and enforceable.
17.
The ’891 Patent discloses and claims, inter alia, using co-located transmitters to
achieve higher transmission capacity for two-way digital communications.
18.
On June 22, 1999, the USPTO duly and legally issued United States Patent No.
5,915,210, titled “Method and System for Providing Multicarrier Simulcast Transmission,” after
a full and fair examination. A true and correct copy of the ’210 Patent is attached hereto as
Exhibit F. MTEL is the assignee of all right, title and interest in and to the ’210 Patent and
PLAINTIFF MOBILE TELECOMMUNICATIONS
TECHNOLOGIES, LLC’S ORIGINAL COMPLAINT
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possesses the exclusive right of recovery under the ’210 Patent, including the exclusive right to
recover for past and future infringement of the ’210 Patent. The ’210 Patent is valid and
enforceable.
19.
The ’210 Patent discloses and claims, inter alia, a multi-carrier simulcast
transmission system for transmitting in a desired frequency band.
20.
On July 28, 1998, the USPTO duly and legally issued United States Patent No.
5,786,748, titled “Method and Apparatus for Giving Notification of Express Mail Delivery,”
after a full and fair examination. A true and correct copy of the ’748 Patent is attached hereto as
Exhibit G. MTEL is the assignee of all right, title and interest in and to the ’748 Patent and
possesses the exclusive right of recovery under the ’748 Patent, including the exclusive right to
recover for past and future infringement of the ’748 Patent. The ’748 Patent is valid and
enforceable.
21.
The ’748 Patent discloses and claims, inter alia, methods and apparatuses for
informing customers of the status of delivery of ordered goods.
22.
INFRINGEMENT OF THE PATENTS-IN-SUIT
Plaintiff reincorporates Paragraphs 1 through 21 as though fully restated herein.
23.
Apple, without authorization or license, has been and is now directly and/or
indirectly infringing multiple claims of the ’428 Patent, the ’946 Patent, the ’506 Patent, the ’403
Patent, the ’891 Patent, the ’210 and the ’748 Patent (together, the “Patents-in-Suit”), in violation
of 35 U.S.C. § 271 as stated below. Apple’s infringement has been and will continue to be
willful at least since its knowledge of the Patents-in-Suit.
24.
Apple’s customers are likewise direct infringers of the Patents-in-Suit when
Apple’s customers use Apple’s products and services.
PLAINTIFF MOBILE TELECOMMUNICATIONS
TECHNOLOGIES, LLC’S ORIGINAL COMPLAINT
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25.
INFRINGEMENT OF U.S. PATENT NO. 5,809,428
Apple has directly infringed and will continue to directly infringe claims of the
’428 Patent by making, using, selling, offering for sell, and/or importing in the United States
mobile devices using iOS and networks that provide Apple’s iMessage communication service
and other messaging services, including MMS text messaging services, XMPP-based messaging
services and email services such as Google gmail, Yahoo mail, AOL, Microsoft Exchange,
Hotmail and Apple’s iCloud and other email and messaging solutions and apps provided by or
through Apple or its App Store (collectively “Messaging Services”). The networks include one
or more Messaging Service network operations centers provided by or through Apple.
26.
End users with mobile units enabled by Messaging Service applications use the
Apple Messaging Service operations center embodied by the claims of the ’428 Patent. Such use
by the end users is direct patent infringement of the claims of the ’428 Patent. Apple has and
will continue to contribute to and induce the infringement of others of claims of the ’428 Patent
based on this direct infringement by instructing and otherwise encouraging infringement by end
users and providing Messaging Service software and mobile devices specially enabled for
utilizing the Messaging Service communication service. The Messaging Service software and
mobile devices have features that have substantially no non-infringing uses other than to operate
as claimed in the ’428 Patent. Apple encourages the end users to use the Messaging Service
operations center and intends the end users use infringing systems as contemplated by the claims
of the ’428 Patent.
27.
Apple directly infringes and will continue to directly infringe claims of the ’428
Patent by making, using, selling, offering for sell, and/or importing in the United States wireless
mobile units compatible with Messaging Services that embody at one or more claim of the ’428
Patent and/or practice the methods of the ’428 Patent. Infringing mobile units with compatible
PLAINTIFF MOBILE TELECOMMUNICATIONS
TECHNOLOGIES, LLC’S ORIGINAL COMPLAINT
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Messaging Services include without limitation Apple-branded mobile phones, tablets and
computers (e.g., all versions of Apple’s iPhone, iPad, iPod Touch).
28.
End users use infringing mobile units enabled by Messaging Services, and such
mobile units embody claims of the ’428 Patent and/or practice the methods of the ’428 Patent.
Such use by the end users is direct patent infringement of the ’428 Patent. Apple has and will
continue to contribute to and induce the infringement of end users by instructing and otherwise
encouraging infringement and by providing infringing mobile units and compatible Messaging
Services preinstalled and for installation after activation on Apple-branded mobile phones,
tablets and computers. The Messaging Services and mobile devices have features relevant to the
end user’s direct infringement that have no substantially non-infringing uses other than to
operate and perform as claimed in the ’428 Patent. The Apple-branded mobile devices are
specially enabled for utilizing the Messaging Services. Apple encourages end users to use the
Messaging Services and intends the end users use its Apple-branded mobile units enabled with at
least one Messaging Service application as contemplated by the claims of the ’428 Patent.
29.
Apple has had knowledge of the ’428 Patent since at least the filing of this action
or its service.
30.
INFRINGEMENT OF U.S. PATENT NO. 5,754,946
Apple has directly infringed and will continue to directly infringe by making,
using, selling, offering for sell, and/or importing in the United States mobile devices using iOS
that embody claims and/or practice the methods of the ’946 Patent, including but not limited to
all versions of Apple’s iPhone, iPad and iPod Touch, and compatible Messaging Services.
31.
End users with mobile devices utilizing iOS and Messaging Services on Apple’s
mobile units, such as all versions of Apple’s iPhone, iPad, and iPod Touch, are direct infringers
of the claims of the ’946 Patent by using mobile units that infringe the claims of the ’946 Patent.
PLAINTIFF MOBILE TELECOMMUNICATIONS
TECHNOLOGIES, LLC’S ORIGINAL COMPLAINT
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Apple has and will continue to contribute to and induce the infringement of end users by
instructing and otherwise encouraging infringement by end users by providing manuals and
similar instructions on the operation of its mobile units and compatible Messaging Services.
Apple instructs end users on ways and methods of retrieving portions of email and other
messages. The messaging features utilized by the mobile units to infringe the ’946 Patent have
no substantial non-infringing uses other than to operate as claimed in the ’946 Patent. Apple
intends the end users to use the infringing mobile devices as contemplated by the ’946 Patent.
32.
Apple has had knowledge of the ’946 Patent since at least the filing of this action
or its service.
33.
INFRINGEMENT OF U.S. PATENT NO. 5,894,506
Apple has directly infringed and will continue to directly infringe by making,
using, selling, offering for sell, and/or importing in the United States Apple devices that embody
claims or practice the methods of the ’506 Patent. Apple makes, uses, sells, offers for sale and
imports electronic messaging networks, including but not limited to iCloud, and mobile units
such as iPhones, iPods and iPads (collectively, “Templated Message Services and Equipment”)
that embody the claims or practice the methods of the ’506 Patent. Upon information and belief,
Apple’s Templated Message Services and Equipment have or transmit templated messages such
as meeting requests within calendar functions and are capable of sending other templated
messages that infringe the claims of the ’506 Patent.
34.
End users of Apple’s Templated Message Services and Equipment are direct
infringers of the claims of the ’506 Patent. Apple has and will continue to contribute to and
induce the infringement of others of claims of the ’506 Patent by instructing and otherwise
encouraging infringement of end users by providing manuals and similar instructions on the
operation of the Templated Message Services and Equipment. By example, Apple instructs end
PLAINTIFF MOBILE TELECOMMUNICATIONS
TECHNOLOGIES, LLC’S ORIGINAL COMPLAINT
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users on how to use the calendar features of the device and how to send and receive meeting
requests. The material infringing features of Templated Message Services and Equipment have
no substantial non-infringing uses other than to operate as claimed in the ’506 Patent.
35.
Apple has had knowledge of the ’506 Patent since at least the filing of this action
or its service.
INFRINGEMENT OF U.S. PATENT NO. 5,590,403, 5,659,891 AND 5,915,210
36.
Apple has directly infringed and will continue to directly infringe by making,
using, selling, offering for sell, and/or importing in the United States devices, namely the Apple
AirPort Express, AirPort Extreme, and Time Capsule (collectively “Dual Transmission
Devices”), that embody the claims or practice the methods of the ’403 Patent, the ’891 Patent
and the ’210 Patent. Apple’s accused products implement and use the Wi-Fi standard IEEE
802.11n. Apple has infringed and will continue to infringe the ’403 Patent, the ’891 Patent and
the ’210 Patent because of the “simultaneous dual-band 802.11n” feature advertised as part of
the accused Dual Transmission Devices, among others.
37.
End users of Dual Transmission Devices are direct infringers of the claims of the
’403 Patent, the ’891 Patent and the ’210 Patent. Apple has and will continue to contribute to
and induce the infringement of others, including its customers, by supplying a material
component (e.g., the Dual Transmission Devices) with no substantial non-infringing use, or
providing aid, instruction or otherwise causing acts that would constitute direct infringement by
its customers by, for instance, providing instruction manuals.
38.
Apple has had knowledge of the ’403 Patent, the ’891 Patent and the ’210 Patent
since at least the time of the filing of this action or its service.
PLAINTIFF MOBILE TELECOMMUNICATIONS
TECHNOLOGIES, LLC’S ORIGINAL COMPLAINT
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39.
INFRINGEMENT OF U.S. PATENT NO. 5,786,748
Apple has directly infringed and will continue to directly infringe by making,
using, selling, offering for sell, and/or importing in the United States a delivery notification
service that practices the methods of the ’748 Patent. Apple provides a tracking and notification
service to customers who purchase Apple products directly from Apple. Apple sometimes refers
to this service as a shipping notification. The shipping notification sends updates (including
changes in estimated delivery dates/times) regarding the status of express mail shipments to a
customer’s email address or mobile number.
40.
Apple has had knowledge of the ’748 Patent since at least the filing of this action
or its service.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff prays for the following relief:
A.
That Apple be adjudged to have infringed the Patents-in-Suit, directly and
indirectly, by way of inducement and/or contributory infringement, literally and/or under the
doctrine of equivalents;
B.
That Apple, its officers, agents, servants, employees, attorneys, and those persons
in active concert or participation with any of them, be preliminarily and permanently restrained
and enjoined from directly or indirectly infringing the Patents-in-Suit;
C.
That Plaintiff be awarded damages sufficient to compensate Plaintiff for Apple’s
infringement, pursuant to 35 U.S.C. § 284;
D.
That Apple be directed to pay Plaintiff pre-judgment and post-judgment interest
and costs for Plaintiff bringing this lawsuit, in accordance with 35 U.S.C. § 284;
E.
That Apple be directed to pay enhanced damages, including Plaintiff’s attorneys’
fees incurred in connection with this lawsuit pursuant to 35 U.S.C. § 285; and
PLAINTIFF MOBILE TELECOMMUNICATIONS
TECHNOLOGIES, LLC’S ORIGINAL COMPLAINT
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F.
That Plaintiff receives such other and further relief as this Court may deem just
and proper.
DEMAND FOR JURY TRIAL
Plaintiff respectfully demands a trial by jury of any and all issues triable of right before a
jury.
Dated: April 2, 2013
Respectfully Submitted,
/s/ Daniel Scardino
Daniel R. Scardino
Texas State Bar No. 24033165
John L. Hendricks
Texas State Bar No. 00785954
Steven P. Tepera
Texas State Bar No. 24053510
REED & SCARDINO LLP
301 Congress Avenue, Suite 1250
Austin, TX 78701
Tel. (512) 474-2449
Fax (512) 474-2622
dscardino@reedscardino.com
jhendricks@reedscardino.com
stepera@reedscardino.com
ATTORNEYS FOR PLAINTIFF
MOBILE TELECOMMUNICATIONS
TECHNOLOGIES, LLC
PLAINTIFF MOBILE TELECOMMUNICATIONS
TECHNOLOGIES, LLC’S ORIGINAL COMPLAINT
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