ContentGuard Holdings, Inc. v. Google, Inc.

Filing 1

COMPLAINT FOR PATENT INFRINGEMENT against Google, Inc. ( Filing fee $ 400 receipt number 0540-4510268.), filed by ContentGuard Holdings, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K, # 12 Civil Cover Sheet)(Baxter, Samuel)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
ContentGuard Holdings, Inc.,
Plaintiff,
-against-

Civil Action No. 2:14-cv-61

Google, Inc.
JURY TRIAL DEMANDED
Defendant.

COMPLAINT FOR PATENT INFRINGEMENT
ContentGuard Holdings, Inc. (“ContentGuard”), by and through its undersigned
attorneys, based upon personal knowledge with respect to its own actions and on information and
belief as to other matters, for its complaint avers as follows:
THE PARTIES
A.

ContentGuard

1.

ContentGuard is a leading innovator, developer, and licensor of digital rights

management (“DRM”) and related digital content distribution products and technologies.
ContentGuard is a corporation organized under the laws of the state of Texas with its principal
place of business at 6900 N. Dallas Parkway, Suite 850, Plano, Texas, 75024.
2.

ContentGuard’s long history of innovation in the DRM space began in the 1990s

at Xerox Corporation’s legendary Palo Alto Research Center (“Xerox PARC”). Years before
Google’s popular search engine was designed, Xerox PARC’s brilliant scientists envisioned a

future in which people would rely on the Internet to supply the broadest array of digital content
the world had ever seen. At that time, however, no one had yet invented an effective means to
prevent piracy of digital content, which could be readily copied and distributed by personal
computers.

Many believed that the problem was essentially unsolvable—and that, as a

consequence, the distribution of movies, videos, music, books, “apps,” and other digital content
over the Internet would be blocked by copyright owners and others with a vested interest in
protecting such content.
3.

A well-known commentator—John Perry Barlow—summarized the “digitized

property” challenge as follows: “If our property can be infinitely reproduced and instantaneously
distributed all over the planet without cost, without our knowledge, without its even leaving our
possession, how can we protect it? How are we going to get paid for the work we do with our
minds? And, if we can’t get paid, what will assure the continued creation and distribution of
such work? Since we don’t have a solution to what is a profoundly new kind of challenge, and
are apparently unable to delay the galloping digitization of everything not obstinately physical,
we are sailing into the future on a sinking ship.”
4.

While they fully understood the “profoundly new kind of challenge” posed by the

arrival of the Internet, Xerox PARC’s scientists had a different vision of the future, firmly
believing that a solution to what Barlow called the “immense, unsolved conundrum . . . of
digitized property” could in fact be found. Xerox PARC’s scientists thus began to explore DRM
solutions that would not only prevent piracy, but would also enable musicians, authors,
photographers, publishers, and producers to share, track, and control their content. Through a
series of revolutionary inventions in the 1990s, Xerox PARC’s scientists laid the technological

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foundation for what would ultimately become the prevailing paradigm for distributing digital
content over the Internet.
5.

In 2000, Xerox Corporation partnered with Microsoft Corporation to form a new

company, ContentGuard, to pursue the DRM business. Xerox contributed key personnel, as well
as all of its then-existing and future DRM-related inventions and technologies to ContentGuard.
In the press release announcing the formation of ContentGuard, Steve Ballmer, Microsoft’s thenPresident and Chief Executive Officer, hailed ContentGuard’s innovations in the DRM space,
noting that “the secure and safe delivery of digital media is of primary importance to not only
everyone in the business of content distribution, but consumers of this information as well.” The
joint Xerox and Microsoft press release announcing the formation of ContentGuard, and an
advertisement produced at the time, are attached hereto as Exhibits A and B.
6.

Staffed by a team of scientists and technology veterans from Xerox and

Microsoft, ContentGuard continued its path of innovation, developing both hardware and
software solutions to solve the vexing problem of digital piracy. ContentGuard has invested
more than $100 million to develop these DRM solutions and bring them to market.
7.

ContentGuard expanded its commitment to research and innovation by

developing end-to-end DRM systems and products embodying ContentGuard’s inventions, an
effort that continues today. ContentGuard also provided DRM research expertise to various
industry players that wished to have the freedom to custom-build and operate their own DRM
systems. In addition to its extensive collaboration with Microsoft, ContentGuard also partnered
with companies such as Hewlett-Packard, Adobe, TimeWarner, and Accenture to assist them in
developing DRM solutions.

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8.

To further accelerate the evolution of the marketplace for digital content,

ContentGuard also led the way in enabling industry groups to better understand DRM system
requirements and to develop appropriate DRM specifications and industry standards that would
allow for DRM interoperability between content providers, including distributors, and device
manufacturers.

Among other things, recognizing the need for standardized mechanisms to

facilitate trusted interoperability between DRM systems, ContentGuard engineers developed a
standards-based rights description language called eXtensible Rights Markup Language
(“XrML”). XrML, which is deployed in Microsoft DRM products, advanced the state of the art
of rights expression languages by introducing features such as improved identification
capabilities of the digital resource, user, and issuer.
9.

ContentGuard’s important contributions to the DRM field have been widely

recognized. The New York Times hailed ContentGuard as a “pioneer in th[e] field of digitalrights management.”

The Los Angeles Times similarly noted that ContentGuard held “the

technological building blocks necessary to make the digital delivery of music, movies and other
files secure.” Another market commentator remarked that ContentGuard “has almost singlehandedly driven DRM interoperability.”
10.

To this day, ContentGuard continues to innovate and invest in researching new

and innovative DRM technologies and products that enable the distribution of rich multimedia
content on smartphones, tablets, e-readers, laptop computers, smart televisions, set top boxes,
and other electronic devices manufactured and sold worldwide.

Among other things,

ContentGuard recently released an “app” under its own name that allows users to share
documents, PDFs, and photos securely and privately. To determine the areas of research and

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development investment, ContentGuard leverages the expertise of its engineers and product
development team.
11.

ContentGuard’s DRM innovations remain immensely relevant—and immensely

valuable—today. The availability of rich multimedia content is a key driver of the enormous
success experienced by manufacturers of devices such as smartphones, tablets, e-readers, smart
televisions, or set top boxes, whose commercial value is largely driven by the capability of such
devices to download, play, and display digital content. Without effective DRM protection, many
owners of digital content would not allow their content to be available on those devices. As the
president of the World Wide Web Consortium remarked in pointed language “Reject DRM and
you risk walling off parts of the web.”
12.

Virtually every smartphone, tablet, and e-reader produced and sold around the

world relies on ContentGuard’s DRM technology. ContentGuard’s new content-sharing “app”
and related products that are currently under development similarly rely on ContentGuard’s
foundational DRM technology. Without that technology, many companies that invest billions of
dollars to produce movies, videos, books, music, and “apps” would be unwilling to distribute
such digital content over the Internet.
B.

The Defendant

13.

Defendant Google, Inc. (“Google”) is a corporation organized under the laws of

the State of Delaware and registered to do business in the State of Texas, with a principal place
of business at 1600 Amphitheatre Parkway, Mountain View, California, CA 94043. Google is
doing business and infringing ContentGuard’s DRM patents in the Eastern District of Texas and
elsewhere in the United States.
14.

Google develops and distributes an open-source operating system known as

Android (“Android OS”).

Various companies, among them Amazon.com, Inc., HTC
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Corporation, Huawei Technologies Co., Samsung Electronics America, Inc., and Google’s own
wholly-owned subsidiary Motorola Mobility LLC (“Motorola”) make modifications to Google’s
open-source Android OS and thereafter incorporate it in devices that are sold throughout the
United States.
15.

In addition to developing and distributing the open-source Android OS, Google

maintains GooglePlay, a digital platform for the distribution of movies, videos, music, books,
“apps,” and other digital content for the Android ecosystem.
16.

Finally, Google makes, uses, offers to sell, and/or sells devices, including server

and client devices, incorporating the Android OS and Google Play. Google-made Android
devices include those marketed under the trademark “Nexus.”
JURISDICTION AND VENUE
17.

This is a civil action arising in part under laws of the United States relating to

patents (35 U.S.C. §§ 271, 281, 283, 284, and 285). This court has federal jurisdiction of such
federal question claims pursuant to 28 U.S.C. §§ 1331 and 1338(a).
18.

Personal jurisdiction is proper in the State of Texas and in this judicial district.

Among other things, Google conducts business, sells infringing products, and is engaged in
activities that lead to infringement of ContentGuard’s DRM patents in the State of Texas and in
this judicial district. Google’s wholly-owned subsidiary Motorola has a significant business
presence in the State of Texas.
19.

Venue is proper under 28 U.S.C. §§ 1391(b) and 1400(b).
THE PATENTS IN SUIT

20.

On November 8, 2005, the USPTO duly and legally issued United States Patent

No. 6,963,859 (“the ’859 Patent”) entitled “Content rendering repository.” ContentGuard holds

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all right, title and interest to the ’859 Patent. A true and correct copy of the ’859 Patent is
attached as Exhibit C.
21.

On April 21, 2009, the USPTO duly and legally issued United States Patent No.

7,523,072 (“the ’072 Patent”) entitled “System for controlling the distribution and use of digital
works.” ContentGuard holds all right, title and interest to the ’072 Patent. A true and correct
copy of the ’072 Patent is attached as Exhibit D.
22.

On August 10, 2010, the USPTO duly and legally issued United States Patent No.

7,774,280 (“the ’280 Patent”) entitled “System and method for managing transfer of rights using
shared state variables.” ContentGuard holds all right, title and interest to the ’280 Patent. A true
and correct copy of the ’280 Patent is attached as Exhibit E.
23.

On August 16, 2011, the USPTO duly and legally issued United States Patent No.

8,001,053 (“the ’053 Patent”) entitled “System and method for rights offering and granting using
shared state variables.” ContentGuard holds all right, title and interest to the ’053 Patent. A true
and correct copy of the ’053 Patent is attached as Exhibit F.
24.

On September 11, 2007, the USPTO duly and legally issued United States Patent

No. 7,269,576 (“the ’576 Patent”) entitled “Content rendering apparatus.” ContentGuard holds
all right, title and interest to the ’576 Patent. A true and correct copy of the ’576 Patent is
attached as Exhibit G.
25.

On February 5, 2013, the USPTO duly and legally issued United States Patent No.

8,370,956 (“the ’956 Patent”) entitled “System and method for rendering digital content in
accordance with usage rights information.” ContentGuard holds all right, title and interest to the
’956 Patent. A true and correct copy of the ’956 Patent is attached as Exhibit H.

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26.

On March 5, 2013, the USPTO duly and legally issued United States Patent No.

8,393,007 (“the ’007 Patent”) entitled “System and method for distributing digital content to be
rendered in accordance with usage rights information.” ContentGuard holds all right, title and
interest to the ’007 Patent. A true and correct copy of the ’007 Patent is attached as Exhibit I.
27.

On May 29, 2007, the USPTO duly and legally issued United States Patent No.

7,225,160 (“the ’160 Patent”) entitled “Digital works having usage rights and method for
creating the same.” ContentGuard holds all right, title and interest to the ’160 Patent. A true and
correct copy of the ’160 Patent is attached as Exhibit J.
28.

On November 12, 2013, the USPTO duly and legally issued United States Patent

No. 8,583,556 (“the ’556 Patent”) entitled “Method of providing a digital asset for distribution.”
ContentGuard holds all right, title and interest to the ’556 Patent. A true and correct copy of the
’556 Patent is attached as Exhibit K.
29.

The ’859, ’072, ’280, ’053, ’576, ’956, ’007, ’160, and ’556 patents are referred to

herein as the “DRM Patents.”
CONTENTGUARD’S EFFORTS TO LICENSE GOOGLE’S USE OF ITS DRM
TECHNOLOGIES
30.

Throughout its history, ContentGuard has prided itself in being an innovator and

leader in the DRM field. ContentGuard’s revolutionary DRM technologies are embodied in its
extensive portfolio of DRM patents and patent applications, which was developed during the past
two decades and now comprises over 300 issued patents and 160 pending applications.
31.

Following its early partnerships with companies such as Hewlett-Packard, Adobe,

Microsoft, Technicolor, and TimeWarner, ContentGuard successfully licensed its DRM
technologies for use in smartphones and tablets to companies around the world, including Casio,
Fujitsu, Hitachi, LG Electronics, NEC, Nokia, Panasonic, Pantech, Sanyo, Sharp, Sony, Toshiba,

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and others.

These companies embraced ContentGuard’s DRM technologies and agreed to

license use of those technologies for substantial royalties.
32.

ContentGuard’s numerous patent license agreements were executed without

ContentGuard having to take legal action, or even threaten litigation, to protect its intellectual
property rights.
33.

ContentGuard has made numerous attempts to negotiate a license agreement with

Google’s wholly-owned subsidiary Motorola and, more recently, with Google itself. Despite
ContentGuard’s good-faith efforts, Google has refused to pay for its use of ContentGuard’s
DRM technologies.
GOOGLE’S ATTEMPT TO AVOID THIS COURT’S JURISDICTION
34.

On December 18, 2013, ContentGuard filed a complaint for patent infringement

in this Court (the “December 2013 Complaint”) asserting infringement of the DRM Patents by,
among other things, Amazon.com, Inc. (“Amazon”), Google’s wholly-owned subsidiary
Motorola, and Huawei Device USA, Inc. (“Huawei”). Amazon, Motorola, and Huawei each
manufacture devices that run customized versions of Google’s Android OS. The December 2013
Complaint also named Apple Inc. and BlackBerry Corporation, which manufacture and sell
devices that run operating systems that compete with the Android OS.
35.

On January 17, 2014, ContentGuard filed an amended complaint in this Court (the

“January 2014 Amended Complaint”). In addition to reasserting its claims against Amazon.com,
Inc., Motorola, and Huawei, ContentGuard also asserted that HTC Corporation (“HTC”) and
Samsung Electronics America, Inc. (“Samsung”), among other defendants, infringe the DRM
Patents. HTC and Samsung each manufacture devices that run customized versions of Google’s
Android OS.

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36.

On January 31, 2014, instead of seeking to intervene in the multi-defendant action

that was already pending in this Court, Google filed a complaint in the U.S. District Court for the
Northern District of California (the “N.D. Cal. Action”).

In its Complaint (the “Google

Complaint”), Google admits that it was seeking relief pursuant to the Declaratory Judgment Act
“because . . . ContentGuard . . . [had] recently filed a lawsuit in the Eastern District of Texas . . .
claiming that several mobile device manufacturers, some of which are Google’s customers,
infringe some or all of [the DRM Patents].” Google Compl. ¶ 1. Google further admitted that
the N.D. Cal. Action was anticipatory in nature, purportedly because “it is only a matter of time
before Google . . . will be accused in a ContentGuard suit involving the [DRM Patents].” Id. ¶
19.
37.

In the N.D. Cal. Action, Google seeks a declaration that “no version of Google

Play Books, Google Play Music, and/or Google Play Movies provided by Google directly or
indirectly infringes the [DRM Patents].” Google Compl. ¶ 22.
COUNT 1: INFRINGEMENT OF THE ’859 PATENT
38.

Paragraphs 1 through 37 are incorporated by reference as if fully stated herein.

39.

Google has been and is now directly infringing and/or indirectly infringing the

’859 Patent by way of inducement and/or contributory infringement, literally and/or under the
doctrine of equivalents, in this District, and elsewhere, in violation of 35 U.S.C. § 271, including
by making, using, selling, and/or offering for sale in the United States or importing into the
United States products covered by at least one claim of the ’859 Patent. Google has notice of the
’859 Patent. Google actively induces content providers, device makers, and/or end users of
devices made by Google and/or others to infringe the ’859 Patent by, among other things, (a)
providing access to content and “apps” that use the ContentGuard DRM solutions claimed in the

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’859 Patent, (b) providing instructions for using such content and “apps”; (c) providing
advertisings for using such content and “apps”; and (d) providing hardware and software
components required by the claims of the ’859 Patent.1 Google engages in the foregoing
activities because it specifically intends end users and device makers to use content and “apps”
that deploy, and content providers to distribute content and “apps” that are protected by, the
ContentGuard DRM solutions claimed in the ’859 Patent. Google thereby specifically intends
end users, device makers, and content providers to infringe the ’859 Patent. Google derives
revenue from both its own and the third-party infringers’ infringing activities. Google also
contributorily infringes the ’859 Patent because there is no substantial non-infringing use of
content and “apps” on devices that render them, including Google’s own Nexus devices.
COUNT 2: INFRINGEMENT OF THE ’072 PATENT
40.

Paragraphs 1 through 37 are incorporated by reference as if fully stated herein.

41.

Google has been and is now directly infringing and/or indirectly infringing the

’072 Patent by way of inducement and/or contributory infringement, literally and/or under the
doctrine of equivalents, in this District, and elsewhere, in violation of 35 U.S.C. § 271, including
by making, using, selling, and/or offering for sale in the United States or importing into the
United States products covered by at least one claim of the ’072 Patent. Google has notice of the
’072 Patent. Google actively induces content providers, device makers, and/or end users of

1

See, e.g., https://play.google.com/store/movies?hl=en;
https://play.google.com/store/apps/details?id=com.google.android.videos;
https://play.google.com/about/music/unlock/;
https://play.google.com/store/apps/details?id=com.google.android.apps.books;
http://www.google.com/nexus/5/.;
http://static.googleusercontent.com/media/www.google.com/en/us/help/hc/pdfs/mobile/Android
UsersGuide-40-en.pdf;
https://play.google.com/store/books/details/Google_Inc_Nexus_7_Guidebook?id=gKmQD47Ov
CYC&hl=en.
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devices made by Google and/or others to infringe the ’072 Patent by, among other things, (a)
providing access to content and “apps” that use the ContentGuard DRM solutions claimed in the
’072 Patent, (b) providing instructions for using such content and “apps”; (c) providing
advertisings for using such content and “apps”; and (d) providing hardware and software
components required by the claims of the ’072 Patent.2 Google engages in the foregoing
activities because it specifically intends end users and device makers to use content and “apps”
that deploy, and content providers to distribute content and “apps” that are protected by, the
ContentGuard DRM solutions claimed in the ’072 Patent. Google thereby specifically intends
end users, device makers, and content providers to infringe the ’072 Patent. Google derives
revenue from both its own and the third-party infringers’ infringing activities. Google also
contributorily infringes the ’072 Patent because there is no substantial non-infringing use of
content and “apps” on devices that render them, including Google’s own Nexus devices.
COUNT 3: INFRINGEMENT OF THE ’280 PATENT
42.

Paragraphs 1 through 37 are incorporated by reference as if fully stated herein.

43.

Google has been and is now directly infringing and/or indirectly infringing the

’280 Patent by way of inducement and/or contributory infringement, literally and/or under the
doctrine of equivalents, in this District, and elsewhere, in violation of 35 U.S.C. § 271, including
by making, using, selling, and/or offering for sale in the United States or importing into the

2

See, e.g., https://play.google.com/store/movies?hl=en;
https://play.google.com/store/apps/details?id=com.google.android.videos;
https://play.google.com/about/music/unlock/;
https://play.google.com/store/apps/details?id=com.google.android.apps.books;
http://www.google.com/nexus/5/.;
http://static.googleusercontent.com/media/www.google.com/en/us/help/hc/pdfs/mobile/Android
UsersGuide-40-en.pdf;
https://play.google.com/store/books/details/Google_Inc_Nexus_7_Guidebook?id=gKmQD47Ov
CYC&hl=en.
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United States products covered by at least one claim of the ’280 Patent. Google has notice of the
’280 Patent. Google actively induces content providers, device makers, and/or end users of
devices made by Google and/or others to infringe the ’280 Patent by, among other things, (a)
providing access to content and “apps” that use the ContentGuard DRM solutions claimed in the
’280 Patent, (b) providing instructions for using such content and “apps”; (c) providing
advertisings for using such content and “apps”; and (d) providing hardware and software
components required by the claims of the ’280 Patent.3 Google engages in the foregoing
activities because it specifically intends end users and device makers to use content and “apps”
that deploy, and content providers to distribute content and “apps” that are protected by, the
ContentGuard DRM solutions claimed in the ’280 Patent. Google thereby specifically intends
end users, device makers, and content providers to infringe the ’280 Patent. Google derives
revenue from both its own and the third-party infringers’ infringing activities. Google also
contributorily infringes the ’280 Patent because there is no substantial non-infringing use of
content and “apps” on devices that render them, including Google’s own Nexus devices.
COUNT 4: INFRINGEMENT OF THE ’053 PATENT
44.

Paragraphs 1 through 37 are incorporated by reference as if fully stated herein.

45.

Google has been and is now directly infringing and/or indirectly infringing the

’053 Patent by way of inducement and/or contributory infringement, literally and/or under the

3

See, e.g., https://play.google.com/store/movies?hl=en;
https://play.google.com/store/apps/details?id=com.google.android.videos;
https://play.google.com/about/music/unlock/;
https://play.google.com/store/apps/details?id=com.google.android.apps.books;
http://www.google.com/nexus/5/.;
http://static.googleusercontent.com/media/www.google.com/en/us/help/hc/pdfs/mobile/Android
UsersGuide-40-en.pdf;
https://play.google.com/store/books/details/Google_Inc_Nexus_7_Guidebook?id=gKmQD47Ov
CYC&hl=en.
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doctrine of equivalents, in this District, and elsewhere, in violation of 35 U.S.C. § 271, including
by making, using, selling, and/or offering for sale in the United States or importing into the
United States products covered by at least one claim of the ’053 Patent. Google has notice of the
’053 Patent. Google actively induces content providers, device makers, and/or end users of
devices made by Google and/or others to infringe the ’053 Patent by, among other things, (a)
providing access to content and “apps” that use the ContentGuard DRM solutions claimed in the
’053 Patent, (b) providing instructions for using such content and “apps”; (c) providing
advertisings for using such content and “apps”; and (d) providing hardware and software
components required by the claims of the ’053 Patent.4 Google engages in the foregoing
activities because it specifically intends end users and device makers to use content and “apps”
that deploy, and content providers to distribute content and “apps” that are protected by, the
ContentGuard DRM solutions claimed in the ’053 Patent. Google thereby specifically intends
end users, device makers, and content providers to infringe the ’053 Patent. Google derives
revenue from both its own and the third-party infringers’ infringing activities. Google also
contributorily infringes the ’053 Patent because there is no substantial non-infringing use of
content and “apps” on devices that render them, including Google’s own Nexus devices.

4

See, e.g., https://play.google.com/store/movies?hl=en;
https://play.google.com/store/apps/details?id=com.google.android.videos;
https://play.google.com/about/music/unlock/;
https://play.google.com/store/apps/details?id=com.google.android.apps.books;
http://www.google.com/nexus/5/.;
http://static.googleusercontent.com/media/www.google.com/en/us/help/hc/pdfs/mobile/Android
UsersGuide-40-en.pdf;
https://play.google.com/store/books/details/Google_Inc_Nexus_7_Guidebook?id=gKmQD47Ov
CYC&hl=en.
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COUNT 5: INFRINGEMENT OF THE ’576 PATENT
46.

Paragraphs 1 through 37 are incorporated by reference as if fully stated herein.

47.

Google has been and is now directly infringing and/or indirectly infringing the

’576 Patent by way of inducement and/or contributory infringement, literally and/or under the
doctrine of equivalents, in this District, and elsewhere, in violation of 35 U.S.C. § 271, including
by making, using, selling, and/or offering for sale in the United States or importing into the
United States products covered by at least one claim of the ’576 Patent. Google has notice of the
’576 Patent. Google actively induces content providers, device makers, and/or end users of
devices made by Google and/or others to infringe the ’576 Patent by, among other things, (a)
providing access to content and “apps” that use the ContentGuard DRM solutions claimed in the
’576 Patent, (b) providing instructions for using such content and “apps”; (c) providing
advertisings for using such content and “apps”; and (d) providing hardware and software
components required by the claims of the ’576 Patent.5 Google engages in the foregoing
activities because it specifically intends end users and device makers to use content and “apps”
that deploy, and content providers to distribute content and “apps” that are protected by, the
ContentGuard DRM solutions claimed in the ’576 Patent. Google thereby specifically intends
end users, device makers, and content providers to infringe the ’576 Patent. Google derives
revenue from both its own and the third-party infringers’ infringing activities. Google also

5

See, e.g., https://play.google.com/store/movies?hl=en;
https://play.google.com/store/apps/details?id=com.google.android.videos;
https://play.google.com/about/music/unlock/;
https://play.google.com/store/apps/details?id=com.google.android.apps.books;
http://www.google.com/nexus/5/.;
http://static.googleusercontent.com/media/www.google.com/en/us/help/hc/pdfs/mobile/Android
UsersGuide-40-en.pdf;
https://play.google.com/store/books/details/Google_Inc_Nexus_7_Guidebook?id=gKmQD47Ov
CYC&hl=en.
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contributorily infringes the ’576 Patent because there is no substantial non-infringing use of
content and “apps” on devices that render them, including Google’s own Nexus devices.
COUNT 6: INFRINGEMENT OF THE ’956 PATENT
48.

Paragraphs 1 through 37 are incorporated by reference as if fully stated herein.

49.

Google has been and is now directly infringing and/or indirectly infringing the

’956 Patent by way of inducement and/or contributory infringement, literally and/or under the
doctrine of equivalents, in this District, and elsewhere, in violation of 35 U.S.C. § 271, including
by making, using, selling, and/or offering for sale in the United States or importing into the
United States products covered by at least one claim of the ’956 Patent. Google has notice of the
’956 Patent. Google actively induces content providers, device makers, and/or end users of
devices made by Google and/or others to infringe the ’956 Patent by, among other things, (a)
providing access to content and “apps” that use the ContentGuard DRM solutions claimed in the
’956 Patent, (b) providing instructions for using such content and “apps”; (c) providing
advertisings for using such content and “apps”; and (d) providing hardware and software
components required by the claims of the ’956 Patent.6 Google engages in the foregoing
activities because it specifically intends end users and device makers to use content and “apps”
that deploy, and content providers to distribute content and “apps” that are protected by, the
ContentGuard DRM solutions claimed in the ’956 Patent. Google thereby specifically intends

6

See, e.g., https://play.google.com/store/movies?hl=en;
https://play.google.com/store/apps/details?id=com.google.android.videos;
https://play.google.com/about/music/unlock/;
https://play.google.com/store/apps/details?id=com.google.android.apps.books;
http://www.google.com/nexus/5/.;
http://static.googleusercontent.com/media/www.google.com/en/us/help/hc/pdfs/mobile/Android
UsersGuide-40-en.pdf;
https://play.google.com/store/books/details/Google_Inc_Nexus_7_Guidebook?id=gKmQD47Ov
CYC&hl=en.
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end users, device makers, and content providers to infringe the ’956 Patent. Google derives
revenue from both its own and the third-party infringers’ infringing activities. Google also
contributorily infringes the ’956 Patent because there is no substantial non-infringing use of
content and “apps” on devices that render them, including Google’s own Nexus devices.
COUNT 7: INFRINGEMENT OF THE ’007 PATENT
50.

Paragraphs 1 through 37 are incorporated by reference as if fully stated herein.

51.

Google has been and is now directly infringing and/or indirectly infringing the

’007 Patent by way of inducement and/or contributory infringement, literally and/or under the
doctrine of equivalents, in this District, and elsewhere, in violation of 35 U.S.C. § 271, including
by making, using, selling, and/or offering for sale in the United States or importing into the
United States products covered by at least one claim of the ’007 Patent. Google has notice of the
’007 Patent. Google actively induces content providers, device makers, and/or end users of
devices made by Google and/or others to infringe the ’007 Patent by, among other things, (a)
providing access to content and “apps” that use the ContentGuard DRM solutions claimed in the
’007 Patent, (b) providing instructions for using such content and “apps”; (c) providing
advertisings for using such content and “apps”; and (d) providing hardware and software
components required by the claims of the ’007 Patent.7 Google engages in the foregoing
activities because it specifically intends end users and device makers to use content and “apps”

7

See, e.g., https://play.google.com/store/movies?hl=en;
https://play.google.com/store/apps/details?id=com.google.android.videos;
https://play.google.com/about/music/unlock/;
https://play.google.com/store/apps/details?id=com.google.android.apps.books;
http://www.google.com/nexus/5/.;
http://static.googleusercontent.com/media/www.google.com/en/us/help/hc/pdfs/mobile/Android
UsersGuide-40-en.pdf;
https://play.google.com/store/books/details/Google_Inc_Nexus_7_Guidebook?id=gKmQD47Ov
CYC&hl=en.
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that deploy, and content providers to distribute content and “apps” that are protected by, the
ContentGuard DRM solutions claimed in the ’007 Patent. Google thereby specifically intends
end users, device makers, and content providers to infringe the ’007 Patent. Google derives
revenue from both its own and the third-party infringers’ infringing activities. Google also
contributorily infringes the ’007 Patent because there is no substantial non-infringing use of
content and “apps” on devices that render them, including Google’s own Nexus devices.
COUNT 8: INFRINGEMENT OF THE ’160 PATENT
52.

Paragraphs 1 through 37 are incorporated by reference as if fully stated herein.

53.

Google has been and is now directly infringing and/or indirectly infringing the

’160 Patent by way of inducement and/or contributory infringement, literally and/or under the
doctrine of equivalents, in this District, and elsewhere, in violation of 35 U.S.C. § 271, including
by making, using, selling, and/or offering for sale in the United States or importing into the
United States products covered by at least one claim of the ’160 Patent. Google has notice of the
’160 Patent. Google actively induces content providers, device makers, and/or end users of
devices made by Google and/or others to infringe the ’160 Patent by, among other things, (a)
providing access to content and “apps” that use the ContentGuard DRM solutions claimed in the
’160 Patent, (b) providing instructions for using such content and “apps”; (c) providing
advertisings for using such content and “apps”; and (d) providing hardware and software
components required by the claims of the ’160 Patent.8 Google engages in the foregoing

8

See, e.g., https://play.google.com/store/movies?hl=en;
https://play.google.com/store/apps/details?id=com.google.android.videos;
https://play.google.com/about/music/unlock/;
https://play.google.com/store/apps/details?id=com.google.android.apps.books;
http://www.google.com/nexus/5/.;
http://static.googleusercontent.com/media/www.google.com/en/us/help/hc/pdfs/mobile/Android
UsersGuide-40-en.pdf;
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activities because it specifically intends end users and device makers to use content and “apps”
that deploy, and content providers to distribute content and “apps” that are protected by, the
ContentGuard DRM solutions claimed in the ’160 Patent. Google thereby specifically intends
end users, device makers, and content providers to infringe the ’160 Patent. Google derives
revenue from both its own and the third-party infringers’ infringing activities. Google also
contributorily infringes the ’160 Patent because there is no substantial non-infringing use of
content and “apps” on devices that render them, including Google’s own Nexus devices.
COUNT 9: INFRINGEMENT OF THE ’556 PATENT
54.

Paragraphs 1 through 37 are incorporated by reference as if fully stated herein.

55.

Google has been and is now directly infringing and/or indirectly infringing the

’556 Patent by way of inducement and/or contributory infringement, literally and/or under the
doctrine of equivalents, in this District, and elsewhere, in violation of 35 U.S.C. § 271, including
by making, using, selling, and/or offering for sale in the United States or importing into the
United States products covered by at least one claim of the ’556 Patent. Google has notice of the
’556 Patent. Google actively induces content providers, device makers, and/or end users of
devices made by Google and/or others to infringe the ’556 Patent by, among other things, (a)
providing access to content and “apps” that use the ContentGuard DRM solutions claimed in the
’556 Patent, (b) providing instructions for using such content and “apps”; (c) providing
advertisings for using such content and “apps”; and (d) providing hardware and software
components required by the claims of the ’556 Patent.9 Google engages in the foregoing

https://play.google.com/store/books/details/Google_Inc_Nexus_7_Guidebook?id=gKmQD47Ov
CYC&hl=en.
9
See, e.g., https://play.google.com/store/movies?hl=en;
https://play.google.com/store/apps/details?id=com.google.android.videos;
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activities because it specifically intends end users and device makers to use content and “apps”
that deploy, and content providers to distribute content and “apps” that are protected by, the
ContentGuard DRM solutions claimed in the ’556 Patent. Google thereby specifically intends
end users, device makers, and content providers to infringe the ’556 Patent. Google derives
revenue from both its own and the third-party infringers’ infringing activities. Google also
contributorily infringes the ’556 Patent because there is no substantial non-infringing use of
content and “apps” on devices that render them, including Google’s own Nexus devices.
WILLFUL INFRINGEMENT
56.

Paragraph 33 is incorporated by reference as if fully set forth herein. Google’s

infringement occurred with knowledge of and/or objective recklessness and thus has been and
continues to be willful and deliberate. Google’s willful and deliberate infringement entitles
ContentGuard to enhanced damages under 35 U.S.C. § 285.
IRREPARABLE HARM TO CONTENTGUARD
57.

ContentGuard has been irreparably harmed by Google’s acts of infringement, and

will continue to be harmed unless and until Google’s acts of infringement are enjoined by this
Court. ContentGuard has no adequate remedy at law to redress Google’s continuing acts of
infringement. The hardships that would be imposed upon Google by an injunction are less than
those faced by ContentGuard should an injunction not issue. Furthermore, the public interest
would be served by issuance of an injunction. As a result of Google’s acts of infringement,

https://play.google.com/about/music/unlock/;
https://play.google.com/store/apps/details?id=com.google.android.apps.books;
http://www.google.com/nexus/5/.;
http://static.googleusercontent.com/media/www.google.com/en/us/help/hc/pdfs/mobile/Android
UsersGuide-40-en.pdf;
https://play.google.com/store/books/details/Google_Inc_Nexus_7_Guidebook?id=gKmQD47Ov
CYC&hl=en.
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ContentGuard has suffered and will continue to suffer damages in an amount to be proved at
trial.
PRAYER FOR RELIEF
WHEREFORE, ContentGuard prays for the following relief:
58.

A judgment that Google directly and/or indirectly infringes the ’859, ’072, ’280,

’053, ’576, ’956, ’007, ’160, and ’556 patents;
59.

A permanent injunction preventing Google and its respective officers, directors,

agents, servants, employees, attorneys, licensees, successors, and assigns, and those in active
concert or participation with any of them, from engaging in infringing activities with respect to
the ’859, ’072, ’280, ’053, ’576, ’956, ’007, ’160, and ’556 patents;
60.

A judgment that Google’s infringement has been willful;

61.

A ruling that this case is exceptional under 35 U.S.C. § 285;

62.

A judgment and order requiring Google to pay ContentGuard damages under 35

U.S.C. § 284, including supplemental damages for any continuing post-verdict infringement up
until entry of judgment, with an accounting, as needed, as well as treble damages for willful
infringement under 35 U.S.C. § 285;
63.

A judgment and order requiring Google to pay ContentGuard’s costs of this action

(including all disbursements);
64.

A judgment and order requiring Google to pay pre-judgment and post-judgment

interest on damages awarded;
65.

A judgment and order requiring that in the event a permanent injunction

preventing future infringement is not granted, that Google pay ContentGuard a compulsory
ongoing licensing fees; and

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66.

Such other and further relief as the Court may deem just and proper.

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Dated: February 5, 2014

Respectfully submitted,

/s/ Sam Baxter
Samuel F. Baxter
Texas State Bar No. 01938000
[e-mail]
MCKOOL SMITH, P.C.
104 East Houston, Suite 300
Marshall, Texas 75670
Telephone: [phone]
Facsimile: [phone]
Holly E. Engelmann
[e-mail]
Seth R. Hasenour
[e-mail]
MCKOOL SMITH P.C.
300 Crescent Court, Suite 1500
Dallas, Texas 75201
Telephone: [phone]
Facsimile: [phone]

Robert A. Cote
[e-mail]
Radu A. Lelutiu
[e-mail]
Shahar Harel
[e-mail]
David R. Dehoney
[e-mail]
Angela M. Vorpahl
[e-mail]
MCKOOL SMITH P.C.
One Bryant Park, 47th Floor
New York, New York 10036
Telephone: [phone]
Facsimile: [phone]

ATTORNEYS FOR CONTENTGUARD
HOLDINGS, INC.

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