Google Inc. v. SourceProse Corporation

Filing 1

COMPLAINT for Declaratory Judgment ( Filing fee $ 350 receipt number 0542-3807516), filed by Google Inc.. (Attachments: # 1 Civil Cover Sheet, # 2 Exhibit Exhibit A, # 3 Exhibit Exhibit B)(Albright, Alan) Modified on 7/26/2011 to correct filer's name (os).

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
AUSTIN DIVISION
GOOGLE INC.
Plaintiff,
v.

Case No. 1:11-cv-00637

SOURCEPROSE, INC.
Defendant.

COMPLAINT FOR DECLARATORY JUDGMENT
Plaintiff Google Inc. ("Google") alleges as follows:
I.
1.

NATURE OF THE CASE

Plaintiff seeks a declaratory judgment that U.S. Patent Nos. 7,142,217 (“the ‘217

patent”) and 7,161,604 (“the ‘604 patent”) (collectively, the “Patents-In-Suit”) are invalid and
are not infringed by Google’s Google Maps Mobile. The relief is necessary because Defendant
SourceProse, Inc. (“SourceProse”) has sued five major mobile telephone carriers, claiming that
they infringe the Patents-In-Suit by selling “smart phone devices that are enabled to display and
synchronize map images . . . [and/or] automatically annotate a second map image when a first
map is annotated.” Many of the defendants sued by SourceProse are downstream customers of
Google.

SourceProse’s lawsuit has placed a cloud on Google Maps Mobile, has caused

customers to seek relief from Google, and has created a justiciable controversy between Google
and SourceProse.
II.
2.

THE PARTIES

Plaintiff Google Inc. is a Delaware corporation, with its principal place of

business located at 1600 Amphitheatre Parkway, Mountain View, CA 94943.
3.

On information and belief, Defendant SourceProse, Inc. is a Texas corporation

with its principal place of business in Travis County, Texas.
GOOGLE, INC.’S COMPLAINT FOR DECLARATORY JUDGMENT

III.
4.

JURISDICTION & VENUE

The Court has subject matter jurisdiction over this action under 28 U.S.C. §§

2201, 1331 and 1338(a) because this action arises under the patent laws, and seeks relief under
the Federal Declaratory Judgment Act, and on the ground that Google seeks a declaration of its
rights against threats of patent infringement litigation made by SourceProse concerning one of
Google’s products, Google Maps Mobile, in Civil Action 1:11-cv-00117-LY in the U.S. District
Court for the Western District of Texas, Austin Division (hereinafter the “Existing SourceProse
Action”).
5.

Venue is proper in this district pursuant to Title 28 U.S.C. §§ 1391 (b) and (c)

because SourceProse is a Texas corporation with its principal place of business in this district.
IV.
6.

THE PATENTS-IN-SUIT

The ‘217 patent issued to Sourceprose on November 28, 2006. On its face, the

‘217 patent identifies the inventors as John Willard Howard, Dan Martin Scott, and Darin Wayne
Higgins, all of Texas.
7.

The ‘604 patent issued to SourceProse on January 9, 2007. On its face, the ‘604

patent identifies the inventors as Dan Martin Scott, and Darin Wayne Higgins, all of Texas. A
certificate of correction issued April 3, 2007 inserts John Willard Howard of Texas as an
additional inventor for the ‘604 patent.
8.

Both the ‘217 and ‘604 patents arose from continuation applications to U.S. utility

patent application number 09/537,192, filed on March 29, 2000.
V.
9.

SOURCEPROSE’S SUIT AGAINST GOOGLE CUSTOMERS
Google’s mission is to organize the world’s information and make it universally

accessible and useful. To promote this mission, Google offers a variety of innovative tools and
services to customers, including Google Maps Mobile, which allows users to view maps on
mobile devices.

GOOGLE, INC.’S COMPLAINT FOR DECLARATORY JUDGMENT

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10.

SourceProse alleges to own the ‘217 patent, entitled “System and Method for

Synchronizing Raster and Vector Map Images.” A copy of the ‘217 patent is attached hereto as
Exhibit A.
11.

SourceProse alleges to own the ‘604 patent, entitled “System and Method for

Synchronizing Raster and Vector Map Images.” A copy of the ‘604 patent is attached hereto as
Exhibit B.
12.

On February 11, 2011, SourceProse sued five major mobile telephone carriers,

many of whom are Google’s downstream customers, in the Existing SourceProse Action.
13.

In the Existing SourceProse Action, SourceProse alleges infringement of the

Patents-In-Suit based on the named defendants’ selling of “smart phone devices that are enabled
to display and synchronize map images . . . [and/or] automatically annotate a second map image
when a first map is annotated.”
14.

More specifically, SourceProse alleges that phones manufactured by “Apple,

RIM, Google, HTC, LG, Motorola, Nokia, [Garmin-Asus], Palm, Samsung and others” infringe
the Patents-In-Suit.
15.

On information and belief, SourceProse has accused Google Maps Mobile of

infringing the Patents-in-Suit.
16.

SourceProse has never directly notified Google that it accuses Google Maps

Mobile of infringing the Patents-in-Suit.
17.

In fact, Google Maps Mobile does not infringe the Patents-in-Suit.

18.

Customers of Google have sought indemnity and defense from Google relating to

the Existing SourceProse Action.
19.

There is an actual and immediate controversy between Google and SourceProse

regarding whether Google’s Google Maps Mobile infringes the Patents-In-Suit, and whether the
Patents-In-Suit are valid, the resolution of which is necessary in order that Google may avoid
wrongful injury to the reputation of its goods in the marketplace and other direct injury suffered
from SourceProse’s wrongful allegations.
GOOGLE, INC.’S COMPLAINT FOR DECLARATORY JUDGMENT

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VI.
FIRST CLAIM FOR RELIEF
(Declaratory Judgment of Patent Invalidity – §§ 35 U.S. C. 101 et seq.)
20.

Plaintiff re-alleges and incorporates paragraphs 1 to 19 as if fully set forth herein.

21.

The ‘217 and ‘604 Patents are invalid for failure to comply with the requirements

of Title 35 of the United States Code, including, without limitation, one of more of §§ 101, 102,
103, and 112.
22.

The ‘217 and ‘604 Patents are invalid because, among other things, there is prior

art, not considered by the U.S. Patent and Trademark Office in issuing the patent, that anticipates
the claims.
23.

Plaintiff seeks and is entitled to a declaratory judgment that all claims in the ‘217

and ‘604 Patents are invalid.
VII. SECOND CLAIM FOR RELIEF
(Declaratory Judgment of Non-Infringement)
24.

Plaintiff re-alleges and incorporates paragraphs 1 to 23 as if fully set forth herein.

25.

Plaintiff provides Google Maps Mobile to customers.

26.

Defendant has asserted that customers who sell smart phones loaded with

Google’s Google Maps Mobile infringe the ‘217 and ‘604 Patents.
27.

Plaintiff seeks and is entitled to a declaratory judgment that Google Maps Mobile

does not infringe any valid claims of the ‘216 and ‘604 Patents.
VIII. REQUEST FOR RELIEF
WHEREFORE, Plaintiff Google, Inc. respectfully requests the Court to enter judgment in
their favor and against SourceProse as follows:
A.

For judgment that the ‘217 and ‘604 Patents, and each of the claims therein, are

invalid;
B.

For judgment that Google’s Google Maps Mobile does not infringe any valid

claims of the ‘217 and ’604 Patents;

GOOGLE, INC.’S COMPLAINT FOR DECLARATORY JUDGMENT

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C.

For a preliminary and permanent injunction precluding SourceProse, its officers,

directors, employees, agents and all other persons acting in concert or participation with them
from suing for infringement or otherwise asserting infringement of the ‘217 and ‘604 Patents
against customers of Google’s Google Maps Mobile;
D.

Find this case exceptional and award Google its costs and expenses, including

reasonable attorneys’ fees, in accordance with the provisions of 35 U.S.C. § 285 or otherwise;
and
E.

For such other and further relief as the Court deems just.

GOOGLE, INC.’S COMPLAINT FOR DECLARATORY JUDGMENT

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Dated: July 26, 2011

Respectfully submitted,

BRACEWELL & GIULIANI LLP
/s/Alan D. Albright
Alan D Albright
State Bar No. 00973650
[e-mail]
Michael Chibib
State Bar No. 00793497
[e-mail]
111 Congress Avenue, Suite 2300
Austin, Texas 78701
Tel: [phone]
Fax: [phone]
Christopher Schenck (pro hac vice pending)
[e-mail]
701 Fifth Avenue, Suite 6200
Seattle, Washington 98104
Tel: [phone]
Fax: [phone]
Counsel for Defendant Google, Inc.

GOOGLE, INC.’S COMPLAINT FOR DECLARATORY JUDGMENT

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