Case 3:21-cv-06132-VC Document 77 Filed 05/18/22 Page 1 of 16
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`LATHAM & WATKINS LLP
`GREGORY SOBOLSKI, Bar No. 267428
`greg.sobolski@lw.com
`505 Montgomery Street, Suite 2000
`San Francisco, CA 94111
`Telephone: (415) 391-0600
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`RICHARD FRENKEL, Bar No. 204133
`rick.frenkel@lw.com
`140 Scott Drive
`Menlo Park, CA 94025
`Telephone: (650) 328-4600
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`GABRIEL BELL (pro hac vice)
`gabriel.bell@lw.com
`DIANE E. GHRIST, Bar No. 300487
`diane.ghrist@lw.com
`555 Eleventh Street, NW
`Suite 1000
`Washington, DC 20004
`Telephone: (202) 637-2200
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`Attorneys for Plaintiff Duolingo, Inc.
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN FRANCISCO DIVISION
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`DUOLINGO, INC.,
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`Plaintiff,
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`Case No. 3:21-cv-6132-VC
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`v.
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`SECOND AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
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`MODERN FONT APPLICATIONS LLC,
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`JURY TRIAL DEMANDED
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`Defendant.
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`Plaintiff Duolingo, Inc. (“Duolingo”) pleads the following claims for Declaratory
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`Judgments of Non-Infringement and Invalidity of U.S. Patent No. 9,886,421 (“’421 patent”), U.S.
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`Patent No. 8,522,127 (“’127 patent”), and U.S. Patent No. 9,892,093 (“’093 patent”) (collectively,
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`the “Asserted Patents” (attached as Exhibits A – C)) against Defendant Modern Font Applications
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`LLC (“MFA”), and alleges as follows:
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`SECOND AMENDED COMPLAINT
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`Case 3:21-cv-06132-VC Document 77 Filed 05/18/22 Page 2 of 16
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`NATURE OF THE ACTION
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`1.
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`This declaratory judgment action arises under the patent laws of the United States,
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`35 U.S.C. § 1 et seq. and the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202.
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`2.
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`Duolingo seeks a declaratory judgment that it has not infringed, induced others to
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`infringe, or contributed to the infringement by others of the Asserted Patents, literally or under the
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`Doctrine of Equivalents, and such other relief as the Court deems just and proper.
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`3.
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`Duolingo seeks a declaratory judgment that the Asserted Patents are invalid.
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`4.
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`Duolingo is a Delaware corporation with a principal place of business located in
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`THE PARTIES
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`Pittsburgh, Pennsylvania.
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`5.
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`On information and belief, MFA is a Utah limited liability corporation with a
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`principal place of business located at 299 S. Main Street, Suite 1300, Salt Lake City, Utah 84111.
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`6.
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`On information and belief, MFA is an exclusive licensee of the Asserted Patents
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`and owns all substantial rights in them. On information and belief, patent enforcement and
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`licensing comprise substantially all of MFA’s revenue and activities.
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`7.
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`On information and belief, the Asserted Patents are owned by Clantech, Inc., which
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`does not have any right to enforce or license the Asserted Patents.
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`BACKGROUND
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`8.
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`On or around June 18, 2021, MFA sent Duolingo the certified letter attached as
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`Exhibit D (the “threat letter”). The threat letter alleges, inter alia, that it provides “formal notice
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`that Duolingo, Inc. ‘you’ are infringing” the Asserted Patents. (Ex. D at 3.) MFA’s threat letter
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`was signed by Andrew Oliver, who, on information and belief and as detailed below, is based in
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`this District.
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`9.
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`MFA’s threat letter identified Duolingo’s “Language Lessons application for iOS
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`devices (including version 6.114.0 released April 26, 2021),” “Learn Languages Free application
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`for Android devices (including the version released April 27, 2021),” and Duolingo’s “website at
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`the domain name duolingo.com (including the home page as available on June 13, 2021)”
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`(collectively, the “Duolingo Accused Applications”). (Ex. D at 3.)
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`10.
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`The threat letter alleges that the Duolingo Accused Applications infringe “at least
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`claim 1, 6, and 11” of the ’421 patent, “at least claims 1 and 26” of the ’127 patent, and “claims 1,
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`10, and 18” of the ’093 patent.” (Ex. D at 3-4.)
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`11.
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`The threat letter alleges that “MFA prefers to resolve such infringement through
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`licensing so that both you and MFA can avoid the expense and inconvenience of a patent
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`infringement lawsuit.” (Ex. D at 4.)
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`12.
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`The threat letter alleges that “[h]owever, where necessary, MFA has brought patent
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`infringement lawsuits against several companies in various industries,” and proceeds to identify
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`various lawsuits. (Ex. D at 4.)
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`13.
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`The threat letter alleges that “infringement damages have been accruing since at
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`least June 2018.” (Ex. D at 4.)
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`OTHER PROCEEDINGS
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`14.
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`The validity of the Asserted Patents is currently being challenged in four parallel
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`proceedings before the U.S. Patent and Trademark Office (“PTO”).
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`15.
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`On September 27, 2021, the PTO ordered re-examination of the ’127 patent after
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`concluding that the ’421 patent in combination with Professional Visual Basic 6 Web
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`Programming, Wrox Press 1999, raised a substantial new question of patentability affecting claims
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`1-7 and 26-28 of the ’127 patent. (Ex. G.).
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`16.
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`On April 4, 2022, Duolingo petitioned the PTO for inter partes review of claims 1-
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`17 of the ’421 patent (“’421 Petition”). The ’421 Petition, attached as Exhibit H, relied on five
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`prior art references: U.S Patent No. 5,781,714 to Collins, et al. (“Collins”); U.S Patent No.
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`7,127,493 to Gautier (“Gautier”); U.S Patent No. 7,028,305 to Schaefer (“Schaefer”); U.S. Patent
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`No. 6,346,398 to Parthasarathy, et al. (“Parthasarathy”); and U.S. Patent No. 7,537,167 to Miller
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`(“Miller”). The ’421 Petition raised three grounds for unpatentability based on this prior art: (1)
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`that claims 1-9 of the ’421 patent are obvious under § 103 over Collins in combination with
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`Gautier, and/or Schaefer; (2) that claims 1-5 and 11-17 of the ’421 patent are obvious under § 103
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`over Collins in combination with Gautier, Schaefer, and Parthasarathy, and (3) that claim 10 of the
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`’421 patent is obvious under § 103 over Collins in combination with Gautier, Schaefer, and Miller.
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`(Ex. H at 2.)
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`17.
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`On April 4, 2022, Duolingo petitioned the PTO for inter partes review of claims 1-
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`28 of the ’127 patent (“’127 Petition”). The ’127 Petition, attached as Exhibit I, relied on three
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`prior art references: U.S Patent No. 5,781,714 to Collins, et al.; U.S. Patent No. 6,346,398 to
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`Parthasarathy, et al.; and U.S. Patent No. 6,608,697 to Schorr, et al. (“Schorr”). The ’127 Petition
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`raised three grounds for unpatentability based on this prior art: (1) that claims 1-7 of the ’127
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`patent are obvious under § 103 over the combination of Collins and Parthasarathy; (2) that claims
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`14-21, 23, and 25-28 of the ’127 patent are obvious under § 103 over the combination of Collins
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`and Schorr, and (3) that claims 8-13, 22, and 24 of the ’127 patent are obvious under § 103 over
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`Collins in combination with Parthasarathy, and/or Schorr. (Ex. I at 2.)
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`18.
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`On April 4, 2022, Duolingo petitioned the PTO for inter partes review of claims 1-
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`21 of the ’093 patent (“’093 Petition”). The ’093 Petition, attached as Exhibit J, relied on four
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`prior art references: U.S Patent No. 5,781,714 to Collins, et al.; U.S Patent No. 7,127,493 to
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`Gautier; U.S Patent No. 7,028,305 to Schaefer; and U.S. Patent No. 6,346,398 to Parthasarathy, et
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`al. The ’093 Petition raised two grounds for unpatentability based on this prior art: (1) that claims
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`1-5, 7-10, and 14-21 of the ’093 patent are obvious under § 103 over Collins in combination with
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`Gautier, and/or Schaefer; (2) that claims 6 and 11-13 of the ’093 patent are obvious under § 103
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`over the combination of Collins, Gautier, Schaefer, and Parthasarathy. (Ex. J at 2.)
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`JURISDICTIONAL STATEMENT
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`19.
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`The Court has subject matter jurisdiction over Duolingo’s declaratory judgment
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`claims relating to patent non-infringement and invalidity under 28 U.S.C. §§ 1331, 1338(a), 2201,
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`and 2202.
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`20. MFA has already agreed that it does not contest subject matter jurisdiction for
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`purposes of the non-infringement action. Answer, Dkt. 76, at ⁋ 13.
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`21. MFA’s threat of patent infringement litigation creates an actual and justiciable
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`controversy and threat of litigation between the parties.
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`22.
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`The Court has personal jurisdiction over MFA based at least on its sufficient
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`minimum contacts within California, including in this District.
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`23.
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`24.
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`25.
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`District.
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`Duolingo incorporates paragraphs 4-13.
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`The threat letter sent to Duolingo was signed by Mr. Andrew Oliver.
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`On information and belief, Mr. Oliver is located and lives in California in this
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`26.
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`On information and belief, Mr. Oliver is a lawyer admitted to practice in California
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`(Exhibit E) and advises MFA in an in-house counsel role, including from his location in San Jose,
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`California.
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`27.
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`28.
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`29.
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`On information and belief, Mr. Oliver directs MFA’s patent assertion operations.
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`On information and belief, Mr. Oliver is a Vice President of MFA.
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`On information and belief, Mr. Oliver directs, organizes, and/or operates MFA’s
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`patent infringement and licensing activities, including at least by: (i) preparing and transmitting
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`the Duolingo threat letter described above and (ii) preparing and transmitting a threat letter to
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`Coinbase, Inc. (“Coinbase”), as described below.
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`30.
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`On information and belief, on or around June 18, 2021, MFA sent a threat letter
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`regarding the Asserted Patents signed by Mr. Oliver to Coinbase, a corporation with physical
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`offices in this District in San Francisco, CA and Redwood City, CA. Coinbase has filed a
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`Complaint for Declaratory Judgment of Non-Infringement in this District regarding the Asserted
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`Patents against MFA. (Ex. F.)
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`31.
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`In addition, on information and belief, Mr. Oliver is involved in directing and/or
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`has been involved in directing the patent infringement claims asserted against other various
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`California-based defendants such as El Pollo Loco, Inc. (Modern Font Applications LLC v. El
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`Pollo Loco, Inc., No. 8:19-cv-01699 (C.D. Cal.)), The Habit Restaurants, LLC, BJ’s Restaurants,
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`Inc., and Dine Brand Global, Inc. (Modern Font Applications LLC v. The Habit Restaurants, Inc.,
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`No. 8:19-cv-01690 (C.D. Cal.)).
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`32.
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`On information and belief, Mr. Oliver has sent one or more communications,
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`including one or more threat letters, into California on behalf of MFA.
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`33.
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`On information and belief, MFA has obtained revenue in and from California and
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`this District, based at least on licensing the Asserted Patents.
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`34.
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`Based on the above, MFA has the requisite minimum contacts with California and
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`this District for the Court to exercise personal jurisdiction consistent with the California long-arm
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`statute (Cal. Code Civ. Proc. § 410.10) and federal Constitutional notions of fair play and
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`substantial justice.
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`35. Moreover, MFA has conceded that it “does not contest specific personal
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`jurisdiction (for purposes of this action only).” Answer, Dkt. 76, at ⁋ 15.
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`VENUE
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`36.
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`Venue is proper pursuant to 28 U.S.C. § 1391 because a substantial part of the acts
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`giving rise to Duolingo’s claims occurred in this District and because MFA is subject to personal
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`jurisdiction in this District.
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`37. MFA has conceded that it “does not contest (for purposes of this action only) venue
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`under 28 U.S.C. § 1391.” Answer, Dkt. 76, at ⁋ 27.
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`INTRADISTRICT ASSIGNMENT
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`38.
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`Under Civil Local Rule 3-2(c), this patent action may be assigned throughout the
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`District.
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`39.
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`On information and belief, MFA’s counsel, Mr. Oliver, is based in the San Jose
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`division.
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`COUNT I
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`Declaratory Judgment of Non-Infringement of U.S. Patent No. 9,886,421
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`40.
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`41.
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`42.
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`Duolingo restates each of the allegations in paragraphs 1-37.
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`A copy of the ’421 patent is attached as Exhibit A.
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`Duolingo has not infringed and does not infringe any claim of the ’421 patent,
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`directly or indirectly, literally or under the Doctrine of Equivalents, as shown in the non-limiting
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`examples below.
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`43.
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`The Duolingo Accused Applications do not infringe, directly or indirectly, claim 1
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`of the ’421 patent because, at a minimum, they do not practice the following claim limitations
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`literally or under the Doctrine of Equivalents:
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`a. “the font package separate from the computer executable instructions for
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`identifying the plurality of display characters for display;” and/or
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`b. “an exposure module for installation of the one or more external font files in a
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`temporary fonts directory on the hand-held device;” and/or
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`c. “wherein in response to the one or more external font files being installed, a
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`system font table of the hand-held device is updated to reflect an availability of
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`the external font files.”
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`44.
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`The Duolingo Accused Applications do not infringe, directly or indirectly, claim 6
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`of the ’421 patent because, at a minimum, they do not practice the following claim limitations
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`literally or under the Doctrine of Equivalents:
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`a. “a font package separate from the application file of the network document and
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`referenced by the computer executable instructions of the network document,
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`the font package comprising computer readable formatting information for the
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`operating system of the hand-held device to render the at least one display
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`character using the font and for other applications controlled by the operating
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`system of the hand-held device to render the at least one display character using
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`the font;” and/or
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`b. “installing the computer readable formatting information of the font package in
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`a temporary fonts directory on the hand-held device so as to enable a program
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`module of the operating system of the hand-held device to render the at least
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`one display character using the font, wherein when the at least one display
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`character is displayed, the at least one display character is displayed using the
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`computer readable formatting information installed in the temporary fonts
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`directory” and/or
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`c. “updating a system font table of the hand-held device to reflect an availability
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`of the font.”
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`45.
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`The Duolingo Accused Applications do not infringe, directly or indirectly, claim
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`11 of the ’421 patent because, at a minimum, they do not practice the following claim limitations
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`literally or under the Doctrine of Equivalents:
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`a. “cause the exposure module to install at least a portion of the font package to a
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`temporary fonts directory of the hand-held device so that a program module of
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`the hand-held device can render the at least one display character using the
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`font;” and/or
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`b. “cause a system font table of the hand-held device to be updated to reflect an
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`availability of the font.”
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`46.
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`Duolingo has never had any intent to cause the end users of its website or mobile
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`application or anyone else to infringe the ’421 patent.
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`47.
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`There is an actual and justiciable controversy between Duolingo and MFA
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`concerning non-infringement of the ’421 patent.
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`48.
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`Duolingo should obtain a declaratory judgment that the Duolingo Accused
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`Applications do not directly or indirectly infringe the ’421 patent, either literally or under the
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`Doctrine of Equivalents.
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`COUNT II
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`Declaratory Judgment of Non-Infringement of U.S. Patent No. 8,522,127
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`49.
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`50.
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`51.
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`Duolingo restates each of the allegations in paragraphs 1-37.
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`A copy of the ’127 patent is attached as Exhibit B.
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`Duolingo has not infringed and does not infringe any claim of the ’421 patent,
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`directly or indirectly, literally or under the Doctrine of Equivalents, as shown in the non-limiting
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`examples below.
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`52.
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`The Duolingo Accused Applications do not infringe, directly or indirectly, claim 1
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`of the ’127 patent because, at a minimum, they do not practice the following claim limitations:
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`a. “an exposure module comprising instructions for retrieval and installation of the
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`exposure module on the second browsing computer from the first computer and for
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`installation or exposure of the font package to the second browsing computer from
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`the first computer responsive to the first computer receiving a request for the font
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`package from the second browsing computer so that the second browsing computer
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`can render the display character using the identified font, whereby when the display
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`character is displayed, the display character is displayed using the exact same font.”
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`53.
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`The Duolingo Accused Applications do not infringe, directly or indirectly, claim
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`26 of the ’127 patent because, at a minimum, they do not practice the following claim limitations:
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`a. “a reference to a font package separate from the network document, the font
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`package comprising computer readable formatting information … necessary for
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`other applications controlled by the operating system of the computer to also
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`render the display character using the identified font, whereby when the display
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`character is displayed in the network document or by the other applications, the
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`display character is displayed using the exact same original font information;”
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`and/or
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`b. “the computer providing an adaptation module for translation of function calls
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`and returns in order to provide communication capabilities with other
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`applications running on the operating system.”
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`54.
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`Duolingo has never had any intent to cause the end users of its website or mobile
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`application or anyone else to infringe the ’127 patent.
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`55.
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`There is an actual and justiciable controversy between Duolingo and MFA
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`concerning non-infringement of the ’127 patent.
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`56.
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`Duolingo should obtain a declaratory judgment that the Duolingo Accused
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`Applications do not directly or indirectly infringe the ’127 patent, either literally or under the
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`Doctrine of Equivalents.
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`Declaratory Judgment of Non-Infringement of U.S. Patent No. 9,892,093
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`COUNT III
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`57.
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`58.
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`59.
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`Duolingo restates each of the allegations in paragraphs 1-37.
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`A copy of the ’093 patent is attached as Exhibit C.
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`Duolingo has not infringed and does not infringe any claim of the ’093 patent
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`directly or indirectly, either literally or under the Doctrine of Equivalents, as shown in the non-
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`limiting examples below.
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`60.
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`The Duolingo Accused Applications do not infringe, directly or indirectly, claims
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`1, 10, and 18 of the ’093 patent because, at a minimum, they do not practice the following claim
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`limitations:
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`a. “update[] a system font table of the operating system to include information about
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`the font file.”
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`61.
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`Duolingo has never had any intent to cause the end users of its website or mobile
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`application or anyone else to infringe the ’093 patent.
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`62.
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`There is an actual and justiciable controversy between Duolingo and MFA
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`concerning non-infringement of the ’093 patent.
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`63.
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`Duolingo should obtain a declaratory judgment that the Duolingo Accused
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`Applications do not directly or indirectly infringe the ’093 patent, either literally or under the
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`Doctrine of Equivalents.
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`COUNT IV
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`Declaratory Judgment of Invalidity of U.S. Patent No. 9,886,421
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`Duolingo restates each of the allegations in paragraphs 1-37.
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`A copy of the ’421 patent is attached as Exhibit A.
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`Each of the claims of the ’421 patent is invalid, because it fails to comply with the
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`64.
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`65.
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`66.
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`requirements of Title 35 of the United States Code. §§ 1, et seq., including, inter alia, §§ 101,
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`102, 103, and/or 112.
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`67.
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`Claims 1-17 of the ’421 patent are invalid under 35 U.S.C. §§ 102 and 103 as being
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`anticipated and/or rendered obvious by Collins in combination with Gautier, Schaefer,
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`Parthasarathy, and/or Miller. (See Ex. H at 2.)
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`68.
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`Claims 1-17 of the ’421 patent are invalid under 35 U.S.C. §§ 102 and 103 as being
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`anticipated and/or rendered obvious at least by the following prior art references alone or in
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`combination: (1) U.S. Patent No. 5,367,618 to Ishida; (2) U.S. Patent No. 5,86,242 to McQueen
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`III; (3) Collins; (4) Australian Patent No. 719,368 to Tenshima; (5) U.S. Patent No. 6,012,071 to
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`Krishna; (6) U.S. Patent No. 6,073,147 to Chan; (7) U.S. Patent Appl. No. 2002/0010725 to Mo;
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`(8) U.S. Patent No. 6,678,410 to Phinney; (9) U.S. Patent No. 7,016,963 to Judd; (10) U.S. Patent
`
`No. 7,064,757 to Opstad; (11) U.S. Patent No. 7,155,672 to Adler; (12) U.S. Patent No. 7,461,353
`
`to Rohrabaugh; (13) U.S. Patent No. 7,539,939 to Schomer; (14) Schaefer; (15) Parthasarathy;
`
`(16) Miller; (17) Web Forts: W3C Working Draft July 21, 1997 (World Wide Web Consortium);
`
`(18) Bitstream Inc.’s digital typeface products, including but not limited to My Fonts and Font
`
`Fusion products; (19) Apple, Inc.’s TrueType product; (20) Microsoft’s ClearType product; and/or
`
`(21) Professional Visual Basic 6 Web Programming, Wrox Press 1999.
`
`69.
`
`70.
`
`Claims 1-17 of the ’421 patent are invalid under 35 U.S.C. §§ 102 and 103.
`
`The ’421 Patent is invalid under 35 U.S.C. § 112 as failing to be supported by an
`
`adequate written description and/or lack of enablement.
`
`71.
`
`The ’421 Patent is invalid under 35 U.S.C. § 112 as indefinite at least as to the
`
`following claim terms: “formatting information necessary for the hand-held device to render the
`
`at least one of the plurality of display characters,” “exposure module,” “program module,” “font
`
`package,” “application file,” “non-standard display characters,” and “non-standard fonts.”
`
`72.
`
`The ’421 patent is invalid under 35 U.S.C. § 101 because the claims are directed to
`
`an abstract idea (i.e., displaying non-standard fonts) and lack any inventive concept as the claims
`
`recite only well-known and conventional computer components operating according to their
`
`conventional functions (i.e., transferring, storing, installing, and displaying font data).
`
`73.
`
`Based on the foregoing, Duolingo seeks a declaratory judgment that each claim of
`
`the ’421 patent is invalid.
`
`
`
`
`
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`11
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`FOR DECLARATORY JUDGMENT
`Case No. 3:21-cv-6132-VC
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`Case 3:21-cv-06132-VC Document 77 Filed 05/18/22 Page 12 of 16
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`
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`74.
`
`75.
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`76.
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`COUNT V
`
`Declaratory Judgment of Invalidity of U.S. Patent No. 8,522,127
`
`Duolingo restates each of the allegations in paragraphs 1-37.
`
`A copy of the ’127 patent is attached as Exhibit B.
`
`Each of the claims of the ’127 patent is invalid, because it fails to comply with the
`
`requirements of Title 35 of the United States Code. §§ 1, et seq., including, inter alia, §§ 101,
`
`102, 103, and/or 112.
`
`77.
`
`At least claims 1-7 and 26-28 of the ’127 patent are invalid under 35 U.S.C. § 103
`
`under the doctrine of obviousness-type double patenting based on the ’421 patent in combination
`
`with Professional Visual Basic 6 Web Programming, Wrox Press 1999, and/or other identified
`
`prior art. (Ex. G.)
`
`78.
`
`In addition, claims 1-28 of the ’127 patent are invalid under 35 U.S.C. §§ 102 and
`
`103 as being anticipated and/or rendered obvious by Collins in combination with Parthasarathy
`
`and/or Schorr. (See Ex. I at 2.)
`
`79.
`
`Claims 1-28 of the ’127 patent are invalid under 35 U.S.C. §§ 102 and 103 as being
`
`anticipated and/or rendered obvious at least by the following prior art references alone or in
`
`combination: (1) U.S. Patent No. 5,367,618 to Ishida; (2) U.S. Patent No. 5,86,242 to McQueen
`
`III; (3) Collins; (4) Australian Patent No. 719,368 to Tenshima; (5) U.S. Patent No. 6,012,071 to
`
`Krishna; (6) U.S. Patent No. 6,073,147 to Chan; (7) U.S. Patent Appl. No. 2002/0010725 to Mo;
`
`(8) U.S. Patent No. 6,678,410 to Phinney; (9) U.S. Patent No. 7,016,963 to Judd; (10) U.S. Patent
`
`No. 7,064,757 to Opstad; (11) U.S. Patent No. 7,155,672 to Adler; (12) U.S. Patent No. 7,461,353
`
`to Rohrabaugh; (13) U.S. Patent No. 7,539,939 to Schomer; (14) Schaefer; (15) Parthasarathy;
`
`(16) Miller; (17) Web Forts: W3C Working Draft July 21, 1997 (World Wide Web Consortium);
`
`(18) Bitstream Inc.’s digital typeface products, including but not limited to My Fonts and Font
`
`Fusion products; (19) Apple, Inc.’s TrueType product; (20) and/or Microsoft’s ClearType product;
`
`(21) Schorr; and/or (22) Professional Visual Basic 6 Web Programming, Wrox Press 1999.
`
`80.
`
`The ’127 Patent is invalid under 35 U.S.C. § 112 as failing to be supported by an
`
`adequate written description and/or lack of enablement.
`
`
`
`
`
`
`
`
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`12
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`SECOND AMENDED COMPLAINT
`FOR DECLARATORY JUDGMENT
`Case No. 3:21-cv-6132-VC
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`

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`Case 3:21-cv-06132-VC Document 77 Filed 05/18/22 Page 13 of 16
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`
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`81.
`
`The ’127 Patent is invalid under 35 U.S.C. § 112 as indefinite at least as to the
`
`following terms: “exposure module,” “installation module,” “adaptation module,” “program
`
`module,” “font package,” “application file,” “non-standard display characters,” and “non-standard
`
`fonts.”
`
`82.
`
`The ’127 patent is invalid under 35 U.S.C. § 101 because the claims are directed to
`
`an abstract idea (i.e., displaying non-standard fonts) and lack any inventive concept as the claims
`
`recite only well-known and conventional computer components operating according to their
`
`conventional functions (i.e., transferring, storing, installing, and displaying font data).
`
`83.
`
`Based on the foregoing, Duolingo seeks a declaratory judgment that each claim of
`
`the ’127 patent is invalid.
`
`COUNT VI
`
`Declaratory Judgment of Invalidity of U.S. Patent No. 9,892,093
`
`Duolingo restates each of the allegations in paragraphs 1-37.
`
`A copy of the ’093 patent is attached as Exhibit C.
`
`Each of the claims of the ’093 patent is invalid, because it fails to comply with the
`
`84.
`
`85.
`
`86.
`
`requirements of Title 35 of the United States Code. §§ 1, et seq., including, inter alia, §§ 101,
`
`102, 103, and/or 112.
`
`87.
`
`Claims 1-21 of the ’093 patent are invalid under 35 U.S.C. §§ 102 and 103 as being
`
`anticipated and/or rendered obvious by Collins in combination with Gautier, Parthasarathy and/or
`
`Schaefer. (See Ex. J at 2.)
`
`88.
`
`Claims 1-21 of the ’093 patent are invalid under 35 U.S.C. §§ 102 and 103 as being
`
`anticipated and/or rendered obvious at least by the following prior art references alone or in
`
`combination: (1) U.S. Patent No. 5,367,618 to Ishida; (2) U.S. Patent No. 5,86,242 to McQueen
`
`III; (3) Collins; (4) Australian Patent No. 719,368 to Tenshima; (5) U.S. Patent No. 6,012,071 to
`
`Krishna; (6) U.S. Patent No. 6,073,147 to Chan; (7) U.S. Patent Appl. No. 2002/0010725 to Mo;
`
`(8) U.S. Patent No. 6,678,410 to Phinney; (9) U.S. Patent No. 7,016,963 to Judd; (10) U.S. Patent
`
`No. 7,064,757 to Opstad; (11) U.S. Patent No. 7,155,672 to Adler; (12) U.S. Patent No. 7,461,353
`
`to Rohrabaugh; (13) U.S. Patent No. 7,539,939 to Schomer; (14) Schaefer; (15) Parthasarathy;
`
`
`
`
`
`
`
`
`
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`13
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`SECOND AMENDED COMPLAINT
`FOR DECLARATORY JUDGMENT
`Case No. 3:21-cv-6132-VC
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`

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`Case 3:21-cv-06132-VC Document 77 Filed 05/18/22 Page 14 of 16
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`
`
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`(16) Miller; (17) Web Forts: W3C Working Draft July 21, 1997 (World Wide Web Consortium);
`
`(18) Bitstream Inc.’s digital typeface products, including but not limited to My Fonts and Font
`
`Fusion products; (19) Apple, Inc.’s TrueType product; (20) and/or Microsoft’s ClearType product;
`
`(21) Gautier; and/or (22) Professional Visual Basic 6 Web Programming, Wrox Press 1999.
`
`89.
`
`The ’093 Patent is invalid under 35 U.S.C. § 112 as failing to be supported by an
`
`adequate written description and/or lack of enablement.
`
`90.
`
`The ’093 Patent is invalid under 35 U.S.C. § 112 as indefinite at least as to the
`
`following terms: “automatically exposing the font file,” “defined character or group of characters,”
`
`“installation module,” “font server,” “formatting information necessary to render a non-standard
`
`display character,” “non-standard display characters,” and “non-standard fonts.”
`
`91.
`
`The ’093 patent is invalid under 35 U.S.C. § 101 because the claims are directed to
`
`an abstract idea (i.e., displaying non-standard fonts) and lack any inventive concept as the claims
`
`recite only well-known and conventional computer components operating according to their
`
`conventional functions (i.e., transferring, storing, installing, and displaying font data).
`
`92.
`
`Based on the foregoing, Duolingo seeks a declaratory judgment that each claim of
`
`the ’093 patent is invalid.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Duolingo respectfully prays for judgment in favor of Duolingo and against
`
`MFA, as follows:
`
`1.
`
`For a judicial determination and declaration that Duolingo has not infringed and is
`
`not infringing, directly or indirectly, literally or under the Doctrine of Equivalents, any claim of
`
`the ’421 patent;
`
`2.
`
`For a judicial determination and declaration that Duolingo has not infringed and is
`
`not infringing, directly or indirectly, literally or under the Doctrine of Equivalents, any claim of
`
`the ’127 patent;
`
`3.
`
`For a judicial determination and declaration that Duolingo has not infringed and is
`
`not infringing, directly or indirectly, literally or under the Doctrine of Equivalents, any claim of
`
`the ’093 patent;
`
`
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`14
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`SECOND AMENDED COMPLAINT
`FOR DECLARATORY JUDGMENT
`Case No. 3:21-cv-6132-VC
`
`
`

`

`Case 3:21-cv-06132-VC Document 77 Filed 05/18/22 Page 15 of 16
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`
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`4.
`
`For a judicial determination and declaration that each of the claims of the ’421
`
`patent is invalid;
`
`5.
`
`For a judicial determination and declaration that each of the claims of the ’127
`
`patent is invalid;
`
`6.
`
`For a judicial determination and declaration that each of the claims of the ’093
`
`patent is invalid;
`
`7.
`
`For injunctive relief against MFA from instituting any action against Duolingo
`
`asserting infringement of the Asserted Patents, or for representing that Duolingo’s products or
`
`services, or use of them by others, infringes the Asserted Patents.
`
`8.
`
`For a declaration that this case is exceptional under 35 U.S.C. § 285 and for an
`
`award of attorneys’ fees and costs in this action; and
`
`9.
`
`For such other and further relief as this Court may deem just and proper.
`
`DEMAND FOR JURY TRIAL
`
`Duolingo respectfully demands a jury trial in this action on all issues so triable.
`
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`15
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`SECOND AMENDED COMPLAINT
`FOR DECLARATORY JUDGMENT
`Case No. 3:21-cv-6132-VC
`
`
`

`

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`Case 3:21-cv-06132-VC Document 77 Filed 05/18/22 Page 16 of 16
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`
`Dated: May 18, 2022
`
`LATHAM & WATKINS, LLP
`
`
`By: /s/ Gregory Sobolski
`
`GREGORY SOBOLSKI, Bar No. 267428
`greg.sobolski@lw.com
`505 Montgomery Street, Suite 2000
`San Francisco, CA 94111
`Telephone: (415) 391-0600
`
`RICHARD G. FRENKEL, Bar No. 204133
`rick.frenkel@lw.com
`140 Scott Drive
`Menlo Park, CA 94025
`Telephone: (650) 328-4600
`
`GABRIEL BELL (pro hac vice)
`gabriel.bell@lw.com
`DIANE E. GHRIST, Bar No. 300487
`diane.ghrist@lw.com
`555 Eleventh Street, NW
`Suite 1000
`Washington, DC 20004
`Telephone: (202) 637-2200
`
`Attorneys for Plaintiff Duolingo, Inc.
`
`
`
`16
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`SECOND AMENDED COMPLAINT
`FOR DECLARATORY JUDGMENT
`Case No. 3:21-cv-6132-VC
`
`
`