Case 8:15-cv-00378-CJC-DFM Document 1 Filed 03/09/15 Page 1 of 10 Page ID #:1
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`COOLEY LLP
`HEIDI L. KEEFE (178960)
`(hkeefe@cooley.com)
`MARK R. WEINSTEIN (193043)
`(mweinstein@cooley.com)
`PRIYA VISWANATH (238089)
`(pviswanath@cooley.com)
`LAM K. NGUYEN (265285)
`(lnguyen@cooley.com)
`3175 Hanover Street
`Palo Alto, CA 94304-1130
`Telephone: (650) 843-5000
`Facsimile:
`(650) 849-7400
`Attorneys for Plaintiffs
`HTC Corporation and HTC America, Inc.
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`HTC CORPORATION, HTC
`AMERICA, INC.,
`Plaintiffs,
`
`v.
`ACACIA RESEARCH
`CORPORATION, SAINT
`LAWRENCE COMMUNICATIONS
`LLC,
`
`Defendants.
`
`Case No.
`COMPLAINT FOR DECLARATORY
`JUDGMENT OF NON-INFRINGEMENT
`OF U.S. PATENT NOS. 6,795,805,
`6,807,524, 7,151,802, 7,260,521 AND
`7,191,123
`
`
`Plaintiffs HTC Corporation and HTC America, Inc. (collectively “HTC”)
`seek a declaration that they do not infringe U.S. Patent Nos. 6,795,805, 6,807,524,
`7,151,802, 7,260,521, and 7,191,123 (collectively “Patents-in-Suit”):
`NATURE OF THE ACTION
`1.
`This is an action for a declaratory judgment of non-infringement
`arising under the patent laws of the United States, Title 35 of the United States
`Code. The alleged owner of the Patents-in-Suit, defendant Acacia Research
`
`1.
`
`COMPLAINT FOR DECLARATOR JUDGMENT OF
`NON-INFRINGEMENT
`
`
`
`
`
`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`

`
`Case 8:15-cv-00378-CJC-DFM Document 1 Filed 03/09/15 Page 2 of 10 Page ID #:2
`
`
`Corporation (through its alter ego patent holding company, defendant Saint
`Lawrence Communications LLC), has placed HTC in reasonable apprehension of
`being sued for alleged infringement based on the sale, offer for sale and/or
`importation of HTC products. Although HTC does not infringe the Patents-in-Suit,
`Acacia’s lingering allegations against HTC create a cloud over HTC’s products and
`threaten its business and relationships with its customers and partners. A
`substantial controversy exists between Acacia and HTC, of sufficient immediacy
`and reality, to warrant a declaratory judgment under 28 U.S.C. § 2201.
`THE PARTIES
`2.
`Plaintiff HTC Corporation is a corporation organized under the laws of
`Taiwan with its corporate headquarters located at Xindian District, Zhongxing
`Road, Section 3, No. 88, New Taipei City 231, Taiwan, R.O.C.
`3.
`Plaintiff HTC America is a Washington corporation with offices at
`13920 SE Eastgate Way, Suite 200, Bellevue, WA 98005. HTC America is a
`wholly-owned, indirect subsidiary of HTC Corporation.
`4.
`On information and belief, defendant Acacia Research Corporation
`(“Acacia Research”) is a Delaware corporation headquartered at 520 Newport
`Center Drive, Newport Beach, CA 92660. Acacia Research also publically claims
`to have an office at 2400 Dallas Parkway, Suite 200, Plano, TX 75093.
`5.
`On information and belief, defendant Saint Lawrence Communications
`LLC (“St. Lawrence”) is a Texas limited liability company with an address at 2400
`Dallas Parkway, Suite 200, Plano, TX 75093 (the same as Acacia’s office in Plano,
`Texas). On information and belief, St. Lawrence is a wholly-owned indirect
`subsidiary of Acacia Research.
`JURISDICTION AND VENUE
`6.
`This action arises under the Declaratory Judgment Act, 28 U.S.C. §
`2201 and under the patent laws of the United States, 35 U.S.C. §§ 1, et seq. This
`Court has subject matter jurisdiction over this action under 28 U.S.C. §§ 1331,
`COMPLAINT FOR DECLARATOR JUDGMENT OF
`NON-INFRINGEMENT
`
`2.
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`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`

`
`Case 8:15-cv-00378-CJC-DFM Document 1 Filed 03/09/15 Page 3 of 10 Page ID #:3
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`1338(a), and 2201(a).
`7.
`This Court has personal jurisdiction over Acacia Research because it
`maintains its headquarters in Newport Beach, California, which is within this
`judicial district. Acacia has also directed its licensing and enforcement activities
`against individuals and entities located in California and purposefully availed itself
`of the privileges and protections of doing business in California. Venue is proper in
`this judicial district under 28 U.S.C. §§ 1391 (b)-(d), and 28 U.S.C. § 1400(b).
`8.
`Personal jurisdiction and venue are also proper against St. Lawrence in
`this judicial district because, on information and belief, St. Lawrence is completely
`controlled by and an alter ego of Acacia Research. On information and belief, St.
`Lawrence has no employees, officers, facilities, operations or assets that are not
`shared with Acacia Research and/or its other subsidiaries. For example, according
`to records from the Texas Secretary of State, St. Lawrence was formed on
`December 6, 2013 listing “Acacia Research Group, LLC” (a wholly owned
`subsidiary of Acacia Research) as its sole managing member. St. Lawrence shares
`the same business address as Acacia Research’s office in Plano, Texas. The
`Patents-in-Suit were assigned to St. Lawrence approximately two weeks after its
`formation. The patent assignment records of the U.S. Patent and Trademark Office
`identify Ms. Jennifer Graff as St. Lawrence’s correspondent for the Patents-in-Suit.
`On information and belief, Ms. Graff is a paralegal working at Acacia Research at
`its headquarters in Newport Beach.1
`9.
`St. Lawrence has identified Mr. Marvin Key (CEO of St. Lawrence) as
`responsible for license negotiations with respect to the Patents-in-Suit. Mr. Key
`also serves as CEO of Acacia Research Group LLC, the sole managing member of
`St. Lawrence, and as a Senior Vice President of defendant Acacia Research in
`
`
`1 (See LinkedIn page for Jennifer Graff <https://www.linkedin.com/pub/jennifer-
`graff/15/a74/bb7> (last visited March 6, 2015).)
`
`3.
`
`COMPLAINT FOR DECLARATOR JUDGMENT OF
`NON-INFRINGEMENT
`
`
`
`
`
`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`

`
`Case 8:15-cv-00378-CJC-DFM Document 1 Filed 03/09/15 Page 4 of 10 Page ID #:4
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`Newport Beach. Acacia Research identifies Mr. Key as “responsible for public
`policy implementation, Acacia’s public communication strategy, and contribut[ing]
`to the firm’s merger and acquisition activity.”2
`10. St. Lawrence has a website at <http://web.saintlawrencegmbh.com>
`that provides information about the Patents-in-Suit, their alleged applicability to the
`AMR-WB standard (discussed below), and licensing information including
`proposed royalty rates. The website domain was registered by Acacia Research
`with “Wild West Domains” in June 2014, and lists the address of Acacia
`Research’s headquarters in Newport Beach as the sole registrant and administrator.
`11. Based on all of these facts, Acacia Research exercises complete
`control over St. Lawrence, which is a mere shell company and alter ego solely used
`to hold the Patents-in-Suit for the benefit of Acacia Research. Allowing Acacia
`Research to avoid jurisdiction and venue through an alter ego shell company would
`be unjust. Venue and personal jurisdiction are therefore proper with respect to St.
`Lawrence for the same reasons as Acacia Research.
`
`ACACIA’S PATENT LITIGATION CAMPAIGN AGAINST HTC AND
`PRODUCTS THAT USE THE AMR-WB STANDARD
`
`12. Acacia Research holds itself out as a leading company in the business
`of asserting patents in litigation. Acacia Research is a prolific patent assertion
`entity that is estimated to have orchestrated the filing of more than 650 patent
`infringement suits in courts throughout the United States.3 On information and
`
`2 (See Acacia Research website <http://acaciaresearch.com/about-us/#people> (last
`visited March 6, 2015).)
`3 (See T. Cushing, Know Your Troll: Innovative Display Technologies Targeting
`Any Company That Creates A Product With An LCD Screen, available at
`<https://www.techdirt.com/articles/20140629/12410727724/know-your-troll-
`innovative-display-technologies-targeting-any-company-that-creates-product-with-
`lcd-screen.shtml> (last visited March 6, 2015).)
`
`4.
`
`COMPLAINT FOR DECLARATOR JUDGMENT OF
`NON-INFRINGEMENT
`
`
`
`
`
`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`

`
`Case 8:15-cv-00378-CJC-DFM Document 1 Filed 03/09/15 Page 5 of 10 Page ID #:5
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`belief, Acacia Research does not manufacture, develop or sell any products or
`technologies of its own.
`13. Like many other companies in the technology industry, HTC has been
`a frequent target of patent lawsuits from Acacia Research. Acacia Research and/or
`entities owned or controlled by Acacia Research have brought at least fifteen
`different lawsuits against HTC in the past five years.
`14. St. Lawrence claims to own the Patents-in-Suit through assignment
`from VoiceAge Corporation in December 2013. Acacia Research and its alter ego
`St. Lawrence have publically claimed that the Patents-in-Suit cover mobile handsets
`that
`implement
`the Adaptive Multi-Rate-Wideband
`(“AMR-WB”) speech
`compression standard.
`15. For example, in July 2014, St. Lawrence Communications GmbH (“St.
`Lawrence GmbH”), the German subsidiary of defendant St. Lawrence, initiated
`patent infringement suits in Germany against Vodafone GmbH and Telekom
`Deutschland GmbH (“German Litigations”) based on German counterparts to the
`Patents-in-Suit. Acacia Research claims that the defendants in the German
`Litigations infringe by offering HTC handsets to their customers that practice the
`AMR-WB standard. HTC has been served with third party notices in the German
`Litigations and has been forced to intervene at least in the suit against Telekom
`Deutschland GmbH based on Acacia Research’s allegations against HTC handsets.
`16. On December 9, 2014, HTC wrote a letter to St. Lawrence GmbH,
`requesting that the parties enter into negotiations for a possible patent license on
`FRAND (fair, reasonable, and non-discriminatory) terms. By letter dated
`December 22, 2014, St. Lawrence GmbH responded by stating that “we are glad to
`note that HTC is finally contemplating to enter into negotiations for a FRAND
`license concerning our AMR-WB patent portfolio and that HTC has already taken
`note of our license rates published on our website.”
`
`
`
`5.
`
`COMPLAINT FOR DECLARATOR JUDGMENT OF
`NON-INFRINGEMENT
`
`
`
`
`
`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`

`
`Case 8:15-cv-00378-CJC-DFM Document 1 Filed 03/09/15 Page 6 of 10 Page ID #:6
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`17. The letter further suggested that a license covering just Germany
`would not be acceptable, and asked HTC to execute a Non-Disclosure Agreement
`(NDA) to pursue further discussions. The letter indicated that the NDA would be
`signed by Mr. Marvin Key “for our parent company [defendant St. Lawrence] that
`owns foreign counterparts of the patents in our AMR-WB patent portfolio that
`might also be of interest to HTC.” The “foreign counterparts” owned by defendant
`St. Lawrence, referenced in the letter, are the U.S. patents in the AMR-WB
`portfolio including the Patents-in-Suit. The December 22 letter further stated that
`“[o]nce we have received the countersigned NDA we will send you a license
`agreement for our AMR-WB patent portfolio.” HTC signed the NDA on December
`26, 2014. HTC and Acacia Research have not to date entered into any license for
`the AMR-WB portfolio, which includes the Patents-in-Suit.4
`18. As mentioned above, Acacia Research claims that the Patents-in-Suit
`in the United States read on the AMR-WB standard. Acacia Research’s litigation
`campaign against AMR-WB has accordingly not been limited to Germany – it also
`included lawsuits filed in the United States. For example, on April 2, 2014, St.
`Lawrence filed suit in the U.S. District Court for the Eastern District of Texas
`against Samsung Electronics, alleging that mobile handsets that practice the AMR-
`WB standard infringed the Patents-in-Suit. See Saint Lawrence Comms. LLC v.
`Samsung Elecs. Co. Ltd. et al., No. 14-CV-00293. That suit was dismissed with
`prejudice on April 22, 2014 based, on information and belief, on a license
`agreement between Samsung and St. Lawrence. On November 18, 2014, another
`suit was filed by St. Lawrence against LG Electronics alleging that LG mobile
`handsets that practice AMR-WB infringe the Patents-in-Suit. See Saint Lawrence
`Comms. LLC v. LG Elecs., Inc. et al., No. 14-CV-01055. LG has not yet responded
`
`4 Discussions between Acacia Research and HTC occurring after execution of the
`NDA, if any, are not set forth in this Complaint and not relied upon for purposes of
`showing subject matter jurisdiction under 28 U.S.C. § 2201.
`
`6.
`
`COMPLAINT FOR DECLARATOR JUDGMENT OF
`NON-INFRINGEMENT
`
`
`
`
`
`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`

`
`Case 8:15-cv-00378-CJC-DFM Document 1 Filed 03/09/15 Page 7 of 10 Page ID #:7
`
`
`to the Complaint in that action, and has until April 27, 2015 to do so.
`19. The facts set forth above show that a substantial controversy exists
`between Acacia Research and HTC, of sufficient immediacy and reality, to warrant
`a declaratory judgment under 28 U.S.C. § 2201. As explained above, Acacia
`Research has publicly stated that mobile handsets that implement AMR-WB
`infringe the Patents-in-Suit. Acacia Research has also taken legal action against
`HTC mobile handsets by, among other things, seeking to enjoin their sale and use
`through the German Litigations. Acacia Research also indicated that a proposed
`license agreement for the AMR-WB patent portfolio would be provided to HTC
`upon execution of the NDA. Acacia Research has also filed at least two lawsuits in
`the United States against competitors of HTC in the mobile handset market (i.e.
`Samsung and LG). Those two lawsuits were based on the Patents-in-Suit, which
`are counterparts to the patents asserted in the German Litigations in which HTC
`products have been targeted, and based on Samsung’s and LG’s alleged use of the
`AMR-WB standard. Acacia’s conduct and representations to HTC in its December
`22 letter, its pattern of conduct and behavior toward HTC in Germany, and its filing
`of suit against its direct competitors in the United States have created a cloud over
`HTC’s products and threaten HTC’s business and relationships with customers and
`partners. Based on these facts, HTC has more than a reasonable apprehension of
`suit based on the Patents-in-Suit.
`
`COUNT ONE
`(Declaration of Non-Infringement of U.S. Patent No. 6,795,805)
`20. HTC restates and incorporates by reference the allegations in
`paragraphs 1 through 19 of this Complaint as if fully set forth herein.
`21. St. Lawrence claims to be the assignee of U.S. Patent No. 6,795,805
`(“’805 patent”) and claims to own all rights, title and interest therein.
`
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`7.
`
`COMPLAINT FOR DECLARATOR JUDGMENT OF
`NON-INFRINGEMENT
`
`
`
`
`
`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`

`
`Case 8:15-cv-00378-CJC-DFM Document 1 Filed 03/09/15 Page 8 of 10 Page ID #:8
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`22. HTC does not infringe any claim of the ’805 patent, but based on the
`statements and conduct of Acacia Research as detailed above, HTC has a
`reasonable apprehension of suit. A substantial, immediate, and real controversy
`therefore exists between HTC, Acacia Research and St. Lawrence regarding the
`non-infringement of HTC mobile handsets with respect the non-infringement of the
`’805 patent. A judicial declaration is necessary to resolve this controversy.
`COUNT TWO
`(Declaration of Non-Infringement of U.S. Patent No. 6,807,524)
`23. HTC restates and incorporates by reference the allegations in
`paragraphs 1 through 19 of this Complaint as if fully set forth herein.
`24. St. Lawrence claims to be the assignee of U.S. Patent No. 6,795,524
`(“’524 patent”) and claims to own all rights, title and interest therein.
`25. HTC does not infringe any claim of the ’524 patent, but based on the
`statements and conduct of Acacia Research as detailed above, HTC has a
`reasonable apprehension of suit. A substantial, immediate, and real controversy
`therefore exists between HTC, Acacia Research and St. Lawrence regarding the
`non-infringement of HTC mobile handsets with respect the non-infringement of the
`’524 patent. A judicial declaration is necessary to resolve this controversy.
`COUNT THREE
`(Declaration of Non-Infringement of U.S. Patent No. 7,151,802)
`26. HTC restates and incorporates by reference the allegations in
`paragraphs 1 through 19 of this Complaint as if fully set forth herein.
`27. St. Lawrence claims to be the assignee of U.S. Patent No. 7,151,802
`(“’802 patent”) and claims to own all rights, title and interest therein.
`28. HTC does not infringe any claim of the ’802 patent, but based on the
`statements and conduct of Acacia Research as detailed above, HTC has a
`reasonable apprehension of suit. A substantial, immediate, and real controversy
`therefore exists between HTC, Acacia Research and St. Lawrence regarding the
`COMPLAINT FOR DECLARATOR JUDGMENT OF
`NON-INFRINGEMENT
`
`8.
`
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`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`

`
`Case 8:15-cv-00378-CJC-DFM Document 1 Filed 03/09/15 Page 9 of 10 Page ID #:9
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`non-infringement of HTC mobile handsets with respect the non-infringement of the
`’802 patent. A judicial declaration is necessary to resolve this controversy.
`COUNT FOUR
`(Declaration of Non-Infringement of U.S. Patent No. 7,260,521)
`29. HTC restates and incorporates by reference the allegations in
`paragraphs 1 through 19 of this Complaint as if fully set forth herein.
`30. St. Lawrence claims to be the assignee of U.S. Patent No. 7,260,521
`(“’521 patent”) and claims to own all rights, title and interest therein.
`31. HTC does not infringe any claim of the ’521 patent, but based on the
`statements and conduct of Acacia Research as detailed above, HTC has a
`reasonable apprehension of suit. A substantial, immediate, and real controversy
`therefore exists between HTC, Acacia Research and St. Lawrence regarding the
`non-infringement of HTC mobile handsets with respect the non-infringement of the
`’521 patent. A judicial declaration is necessary to resolve this controversy.
`COUNT FIVE
`(Declaration of Non-Infringement of U.S. Patent No. 7,191,123)
`32. HTC restates and incorporates by reference the allegations in
`paragraphs 1 through 19 of this Complaint as if fully set forth herein.
`33. St. Lawrence claims to be the assignee of U.S. Patent No. 7,191,123
`(“’123 patent”) and claims to own all rights, title and interest therein.
`34. HTC does not infringe any claim of the ’123 patent, but based on the
`statements and conduct of Acacia Research as detailed above, HTC has a
`reasonable apprehension of suit. A substantial, immediate, and real controversy
`therefore exists between HTC, Acacia Research and St. Lawrence regarding the
`non-infringement of HTC mobile handsets with respect the non-infringement of the
`’123 patent. A judicial declaration is necessary to resolve this controversy.
`
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`9.
`
`COMPLAINT FOR DECLARATOR JUDGMENT OF
`NON-INFRINGEMENT
`
`
`
`
`
`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`

`
`Case 8:15-cv-00378-CJC-DFM Document 1 Filed 03/09/15 Page 10 of 10 Page ID #:10
`
`
`PRAYER FOR RELIEF
`WHEREFORE, HTC prays for judgment and relief as follows:
`A. Declaring that HTC does not infringe the Patents-in-Suit;
`B. Declaring that judgment be entered in favor of HTC and against
`Acacia Research and St. Lawrence on each of HTC’s claims;
`C.
`Finding that this case is an exceptional case under 35 U.S.C. § 285;
`D. Awarding HTC its costs and attorneys’ fees in connection with this
`action; and
`E. Awarding such further and additional relief as the Court deems just
`and proper.
`
`
`Dated: March 9, 2015
`
`
`Respectfully submitted,
`
`COOLEY LLP
`
`/s/ Heidi L. Keefe
`Heidi L. Keefe
`
`Attorneys for Plaintiffs
`HTC Corporation and HTC America, Inc.
`
`10.
`
`COMPLAINT FOR DECLARATOR JUDGMENT OF
`NON-INFRINGEMENT
`
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`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO