Mobile Telecommunications Technologies LLC v. Research in Motion Corporation

Filing 1

COMPLAINT WITH JURY DEMAND against Research in Motion Corporation filed by Mobile Telecommunications Technologies, LLC. Clerk to issue summons(es). In each Notice of Electronic Filing, the judge assignment is indicated, and a link to the Judges Copy Requirements is provided. The court reminds the filer that any required copy of this and future documents must be delivered to the judge, in the manner prescribed, within three business days of filing. (Filing fee $350; Receipt number 0539-4604830) Unless exempted, attorneys who are not admitted to practice in the Northern District of Texas should seek admission promptly. Forms, instructions, and exemption information may be found at www.txnd.uscourts.gov, or by clicking here: Attorney Information - Bar Membership (Attachments: # 1 Exhibit(s) A - US Patent No. 5,809,428, # 2 Exhibit(s) B - US Patent No. 5,754,976, # 3 Exhibit(s) C - US Patent No. 5,559,862, # 4 Exhibit(s) D - US Patent No. 5,894,506, # 5 Exhibit(s) E - US Patent No. 5,581,804, # 6 Cover Sheet) (Scardino, Daniel)

UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF TEXAS
DALLAS DIVISION
MOBILE TELECOMMUNICATIONS
TECHNOLOGIES, LLC,
Plaintiff,
v.
RESEARCH IN MOTION CORPORATION,
Defendant.

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§ CIVIL ACTION NO. 3:12-cv-01652
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§ JURY TRIAL REQUESTED
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ORIGINAL COMPLAINT
Plaintiff Mobile Telecommunications Technologies, LLC (“MTEL”) files this Complaint
against Defendant Research in Motion Corporation (“RIM”) for infringement of U.S. Patent Nos.
5,809,428 (the “’428 Patent”), 5,754,946 (the “’946 Patent”), 5,559,862 (the “’862 Patent),
5,894,506 (the “’506 Patent”) and 5,581,804 (the “’804 Patent”) pursuant to 35 U.S.C. § 271 and
alleges as follows.
THE PARTIES
1.

Plaintiff MTEL is a Delaware corporation with its principal place of business at

1720 Lakepointe Drive, Suite 100 Lewisville, TX 75057.
2.

MTEL is the holder of a portfolio of patents formerly held 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.

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4.

The paging operations are currently based out of Lewisville, Texas. And the

business is currently operating out of Lewisville, TX.
5.

Defendant RIM is a Delaware corporation with its principal place of business at

122 West John Carpenter Parkway, Suite 430, Irving, Texas 75038. RIM may be served with
process by serving its registered agent, C T Corporation System, 350 N. St. Paul St., Ste. 2900,
Dallas, Texas 75201-4234.
JURISDICTION AND VENUE
6.

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).
7.

This Court has personal jurisdiction over RIM under the laws of the State of

Texas, including the Texas long-arm statute, Tex. Civ. Prac. & Rem. Code § 17.042.
8.

Plaintiff incorporates all statements of jurisdiction in the preceding paragraphs.

The causes of action against RIM in this Complaint arise from or are connected with purposeful
acts committed by RIM in Texas. RIM 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 ’862 Patent, the ’506 Patent, and the ’804 Patent or knowingly contributes to
infringement of the ’428 Patent, the’946 Patent, the ’862 Patent, the ’506 Patent, and the ’804
Patent.

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THE PATENTS-IN-SUIT
9.

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
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
infringement of the ’428 Patent. The ’428 Patent is valid and enforceable.
10.

The ’428 Patent claims, inter alia, methods, systems, and devices for storing

undeliverable messages, such as e-mail and SMS messages.
11.

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 infringement of the ’946
Patent. The ’946 Patent is valid and enforceable.
12.

The ’946 Patent claims, inter alia, devices and networks that allow for the

retransmission of a received message that is incomplete or contains errors.
13.

On September 24, 1996, the USPTO duly and legally issued United States Patent

No. 5,559,862 titled “Mobile Paging Telephone Call Back System and Method,” after a full and
fair examination. A true and correct copy of the ’862 Patent is attached hereto as Exhibit C.
Plaintiff is the assignee of all right, title and interest in and to the ’862 Patent, including the

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exclusive right to recover for infringement of the ’862 Patent. The ’862 Patent is valid and
enforceable.
14.

The ’862 Patent claims, inter alia, methods and devices for determining and

adding the appropriate prefix to a received call back number.
15.

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 D. Plaintiff is the assignee of all
right, title and interest in and to the ’506 Patent, including the exclusive right to recover for
infringement of the ’506 Patent. The ’506 Patent is valid and enforceable.
16.

The ’506 Patent claims, inter alia, systems, methods, and devices for sending

canned messages.
17.

On December 3, 1996, the USPTO duly and legally issued United States Patent

No. 5,581,804 titled “Nationwide Communication System,” after a full and fair examination. A
true and correct copy of the ’804 Patent is attached hereto as Exhibit E. Plaintiff is the assignee
of all right, title and interest in and to the ’804 Patent, including the exclusive right to recover for
infringement of the ’804 Patent. The ’804 Patent is valid and enforceable.
18.

The ’804 Patent claims, inter alia, methods and systems which allow for rapid

communication of large messages and efficient use of system resources.
INFRINGEMENT OF THE PATENTS-IN-SUIT
19.

Plaintiff repeats and realleges the allegations set forth in Paragraphs 1-17 as if

those allegations have been fully set forth herein.

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20.

RIM, without authorization or license, has been and is now directly infringing

multiple claims of the ’428 Patent, the’946 Patent, the ’862 Patent, the ’506 Patent, and the ’804
(together, the “Patents-In-Suit”) Patent, in violation of 35 U.S.C. § 271(a).
21.

RIM’s customers are likewise direct infringers of the Patents-In-Suit when RIM’s

customers use RIM products and services.
Infringement of US Patent No. 5,809,428
22.

RIM directly infringes by making, using, selling, offering for sell, and/or

importing software and equipment that embody claims of the ’428 Patent including but not
limited to BlackBerry Enterprise Server (BES) software and Blackberry Infrastructure and
related software, equipment, and/or modules. BES and its related software, for example, are
network operations centers that embody the claims of the ’428 Patent. RIM also makes, uses,
sells, offers for sell, and/or imports mobile units, such as Blackberry Smartphones and Tablets,
that embody the claims of the ’428 Patent.
23.

On information and belief, the BES or Blackberry Infrastructure stores emails that

cannot be delivered to Blackberry Smartphones.
24.

On information and belief, Blackberry Smartphones send “acknowledgment”

response to the BES when messages, such as email or push applications are delivered to the
Blackberry Smartphone.
25.

On information and belief, the BES can send messages to a Blackberry

Smartphone that allow the BES to determine the location of the Blackberry Smartphone.
26.

RIM customers are direct infringers of the claims of the ’428 Patent.

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27.

RIM instructs and otherwise incourages its customers to infringe the claims of the

’428 Patent by providing manuals and similar instructions on the operation of Blackberry
Smartphones, Tablets, and BES.
Infringement of US Patent No. 5,754,946
28.

RIM directly infringes by making, using, selling, offering for sell, and/or

importing software and equipment that embody claims of the ’946 Patent, including but not
limited to mobile units, such as Blackberry Smartphones and Tablets.
29.

Blackberry Smartphone and Tablets have radio frequency receivers for receiving

messages from the BES.
30.

Blackberry Smartphones and Tablets have displays for showing messages to the

user of the device.
31.

Blackberry Smartphones have switches, such as the clickable trackpad or

trackball, that allow the user to make selections on menus.
32.

Blackberry Tablets have touchscreens and similar mechanisms that allow the user

to make selections on menus.
33.

Blackberry Smartphones and Tablets allow users to request that a message be

resent if the message is incomplete or corrupt.
34.

RIM customers are direct infringers of the claims of the ’946 Patent.

35.

RIM instructs and otherwise incourages its customers to infringe the claims of the

’946 Patent by providing manuals and similar instructions on the operation of Blackberry
Smartphones and Tablets. RIM instructs its customers on ways and methods of retrieving
incomplete or corrupt email, or other, messages.

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Infringement of US Patent No. 5,894,506
36.

RIM directly infringes by making, using, selling, offering for sell, and/or

importing software and equipment that embody claims of the ’506 Patent. RIM operates an
electronic messaging network that includes equipment and software, including but not limited to,
BlackBerry Enterprise Server (BES) software and related software, equipment, and/or modules,
BlackBerry Infrastucture software and related equipment, mobile units such as Blackberry
Smartphones and Tablets, that embody the claims of the ’506 Patent.
37.

Blackberry Smartphones and Tablets have templated messages such as meeting

requests within its calendar functions.
38.

The calendar allows users of Blackberry Smartphones and Tablets to request

meetings or appointments with others.
39.

The meeting request contains a template whereby the requester can fill in items

such as the date and time of the meeting.
40.

Some of the fields in the meeting request, such as date, can only be filled in with

pre-determined values. For example, the meeting requester cannot propose a meeting date of
February 31, 2013.
41.

When the requester sends the request to the desired attendee, the desired attendee

can only respond with a predetermined responses of, “Yes”, “No”, or “Maybe”.
42.

On information and belief, Blackberry Smartphones and Tablets are capable of

sending other templated messages that infringe the claims of the ’506 Patent.
43.

RIM customers are direct infringers of the claims of the ’506 Patent.

44.

RIM instructs and otherwise incourages its customers to infringe the claims of the

’506 Patent by providing manuals and similar instructions on the operation of Blackberry

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Smartphones and Tablets. RIM instructs its customers on how to use the calendar features of the
device and how to send and receive meeting requests.
Infringement of US Patent No. 5,581,804
45.

RIM directly infringes by making, using, selling, offering for sell, and/or

importing software and equipment that embody claims of the ’804 Patent. RIM operates an
electronic messaging network that includes equipment and software, including but not limited to,
BES software and related software, equipment, and/or modules, BlackBerry Infrastucture
software and related equipment, mobile units such as Blackberry Smartphones, that embody the
claims of the ’804 Patent.
46.

The BES or the Blackberry Infrastructure can send control signals to Blackberry

Smartphones that prevent the smartphone from sending registration signals to the BES or the
Blackberry Infrastructure.
47.

The BES or the Blackberry Infrastructure can send probe signals to Blackberry

Smartphones.
48.

Blackberry Smartphones send registration messages that show the location of the

smartphone. On information and belief, the receipt of these messages by the BES is logged by
the BES.
49.

On information and belief, Blackberry Smartphones send responses to probe

signals back to the BES or the Blackberry Infrastructure.
50.

On information and belief, the BES logs the messages sent to and received from

Blackberry Smartphones.

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DRAFT
51.

On information and belief, if the Blackberry Smartphone is not optimly

acknowledging the receipt of messages from the BES, the BES can send control signals to the
Smartphone to command the Smartphone to send registration signals.
52.

RIM customers are direct infringers of the claims of the ’804 Patent.

53.

RIM instructs and otherwise incourages its customers to infringe the claims of the

’804 Patent by providing manuals and similar instructions on the operation of BES and
Blackberry Smartphones. When provided to RIM’s customers, these devices operate in ways
that infringe the ’804 Patent and have no non-infringing uses.
Infringement of US Patent No. 5,559,862
54.

RIM directly infringes by making, using, selling, offering for sell, and/or

importing software and equipment that embody claims of the ’862 Patent, including but not
limited to mobile units, such as Blackberry Smartphones.
55.

RIM has knowledge of the ’862 Patent as of at least May 9, 2008, when RIM

received an Office Action from the United States Patent and Trademark Office in United States
Patent Application No. 11/754,552 which identified the ’862 Patent.
56.

United States Patent Application No. 11/754,552 became US Patent No.

7,489,950 and is currently assigned to RIM.
57.

On information and belief, RIM devices, such as Blackberry Smartphones,

practice the inventions as claimed in US Patent No. 7,489,950.
58.

Blackberry Smartphones can receive SMS, text, or email messages with call back

numbers.
59.

Blackberry Smartphone users can “click on” or otherwise access the call back

number from the SMS, text, or email message in order to place a call to the call back number.

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60.

On information and belief, Blackberry Smartphones can determine whether the

prefix to the call back number is incorrect or unusable and substitute a proper pre-fix.
61.

RIM customers are direct infringers of the claims of the ’862 Patent.

62.

RIM instructs and otherwise incourages its customers to infringe the claims of the

’862 Patent by providing manuals and similar instructions on the operation of Blackberry
Smartphones. RIM instructs its customers on how to use the use the call back features of the
Blackberry software.
63.

RIM, without authorization or license, has been and is now indirectly infringing

the Patents-in-Suit by knowingly and intentionally inducing its customers to infringe Patents-InSuit or contributing to its customers infringing the Patents-In-Suit in violation of 35 U.S.C. §
271(b) and/or 35 U.S.C. § 271(c).
64.

RIM has knowledge of the Patents-In-Suit at least at the time of the filing of this

65.

RIM has knowledge of the ’862 Patent as of at least May 9, 2008.

66.

RIM’s infringement has been and continues to be deliberate and willful. Unless

action.

the Defendant stops its infringement of the Patents-In-Suit will continue to be willfull.
67.

Plaintiff has no adequate remedy at law against RIM’s acts of infringement and

RIM’s infringement will continue unless enjoined by this Court.
68.

Plaintiff has suffered, and will continue to suffer, irreparable injury as a result of

RIM’s infringement.
69.

Plaintiff is in compliance with the requirements of 35 U.S.C. § 287.

70.

Plaintiff has been damaged by RIM’s infringement, and will continue to be

damaged until this Court enjoins RIM.

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PRAYER FOR RELIEF
WHEREFORE, Plaintiff prays for the following relief:
A.

That RIM 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 RIM, 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 RIM’s

infringement, pursuant to 35 U.S.C. § 284;
D.

That RIM 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 RIM 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
F.

That Plaintiff receive 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.

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Dated: May 29, 2012

Respectfully Submitted,
/s/ Daniel R. Scardino
Daniel Scardino
Texas State Bar No. 24033165
Chad Ennis
Texas State Bar No. 24045834
REED & SCARDINO LLP
301 Congress Avenue, Suite 1250
Austin, TX 78701
Tel. [phone]
Fax [phone]
[e-mail]
[e-mail]
ATTORNEYS FOR PLAINTIFF
MOBILE TELECOMMUNICATIONS
TECHNOLOGIES, LLC

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