I!
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`Case 4:11-cv-00597-CW Document 1 Filed 02/09/11 Page 1 of 6
`Case 4:11-cv-00597-CW Document 1 Filed OZ/OQIa Page 1 of 6
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`tglanier@jonesday. com
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`Tharan Gregory Lanier (State Bar No. 138784)
`GregoryL.Lippetz(StateBarNo. 154228)
`glippetz@j0nesday.com
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`Daniel H. Mao (State Bar No. 221539)
`dma0@]'0nesday. com
`Henry L. Welch (State Bar No. 261663)
`hwelch@]'onesday. com
`JONES DAY
`1755 Embarcadero Road
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`F: i i... EDa
`In”W/
`21,11 FEB“__q A, ”y’”I
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`Palo Alto, CA 94303
`Telephone:
`650-739-3939
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`Attorneys for Plaintiff
`SANDISK CORPORATION
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`Facsimile:
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`650-739-3900
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`
`
`(/9
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`
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SANDISK CORPORATION
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`C V AslNoT O 0 5 9 7 JCS
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`Plaintiff,
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`v.
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`MOBILE MEDIA IDEAS LLC,
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`COMPLAINT FOR DECLARATORY
`JUDGMENT OF PATENT NON-
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`INFRINGEMENT, PATENT
`INVALIDITY, AND/OR PATENT
`UNENFORCEABILITY
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`Defendant.
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`DEMAND FOR JURY TRIAL
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`
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`Plaintiff SanDisk Corporation (“SanDisk”) hereby alleges as follows:
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`NATURE OF THE ACTION
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`1.
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`This is an action for a declaratory judgment of non-infringement, invalidity, and
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`unenforceability of United States Patent Nos. 6,427,078 (the “’078 Patent”); 5,812,954 (the
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`“’954 Patent”); 5,490,170 (the “’ 170 Patent”); 5,557,541 (the “’541 Patent”); 5,841,979 (the
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`“’979 Patent”); 5,914,941 (the “’941 Patent”); 6,002,390 (the “’390 Patent”); 6,125,143 (the
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`“’ 143 Patent”); 6,385,386 (the “’386 Patent”); 6,393,430 (the “’430 Patent”); 6,441,828 (the
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`“’828 Patent”); 6,446,080 (the “’080 Patent”); 6,549,942 (the “’942 Patent”); 6,975,732 (the
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`COMPLAINT FOR DECLARATORY JUDGMENT
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`Case 4:11-cv-00597-CW Document 1 Filed 02/09/11 Page 2 of 6
`Case 4:11-cv-(g97-CW Document 1 Filed 02/093 Page 2 of 6
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`“’732 Patent”); 7,190,971 (the “’971 Patent”); 7,313,647 (the “’647 Patent”); 7,349,012 (the
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`“’012 Patent”); 6,725,155 (the “’ 155 Patent”); 7,111,069 (the “’069 Patent”); (collectively, the
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`“Mobile Media Patents”).
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`PARTIES
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`2.
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`Plaintiff SanDisk is a corporation organized and existing under the laws of
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`Delaware, and has its headquarters and principal place of business in Milpitas, California.
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`SanDisk is engaged in the business of, among other things, designing manufacturing, and selling
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`digital media players.
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`3.
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`On information and belief, Defendant Mobile Media Ideas LLC (“Mobile Media)
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`is a Delaware limited liability company with its principal place of business in Chevy Chase,
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`Maryland.
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`JURISDICTION AND VENUE
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`4.
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`This action arises under the Declaratory Judgment Act, 28 U.S.C. §§ 2201 et. seq,
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`and under the patent laws of the United States, Title 35 of the United States Code. This Court
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`has jurisdiction over this action pursuant to 35 U.S.C. §§ 271, et. seq., and 28 U.S.C. §§ 1331,
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`1338, and 2201-2202.
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`5.
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`Venue is proper in this District under 28 U.S.C. §§ 1391 and 1400(b) because a
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`substantial part of the events giving rise to the claims at issue occurred in this District.
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`6.
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`This Court has personal jurisdiction over Mobile Media by virtue of the business
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`activities it conducts within the State of California and within this District, resulting in sufficient
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`minimum contacts with this forum.
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`INTRADISTRICT ASSIGNMENT
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`7.
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`This case is an Intellectual Property Action under Civil Local Rule 3-2(c) and,
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`pursuant to Civil Local Rule 3-5(b), shall be assigned on a district-wide basis.
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`MOBILE MEDIA’S PATENTS
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`8.
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`US. Patent No. 6,427,078, which is entitled “Device for Personal
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`Communications, Data Collection and Data Processing, and a Circuit Card,” issued on June 30,
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`#DJN
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`COMPLAINT FOR DECLARATORY JUDGMENT
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`Case 4:11-cv-00597-CW Document 1 Filed 02/09/11 Page 3 of 6
`Case 4:11-cv-00597-CW Document 1 Filed 02/09/11 Page 3 of 6
`V
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`9.
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`US. Patent No. 5,812,954, which is entitled “Mobile Telephone Power Key Lock
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`Function,” issued on September 22, 1998.
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`10.
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`US. Patent No. 5,490,170, which is entitled “Coding Apparatus for Digital
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`Signal,” issued on February 6, 1996.
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`11.
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`US. Patent No. 5,557,541, which is entitled “Apparatus for Distributing
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`Subscription and On-Demand Audio Programming,” issued on September 17, 1996.
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`12.
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`US. Patent No. 5,841,979, which is entitled “Enhanced Delivery of Audio Data,”
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`issued on November 24, 1998.
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`13.
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`US. Patent No. 5,914,941, which is entitled “Portable Information
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`Storage/Playback Apparatus Having a Data Interface,” issued on June 29, 1999.
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`14.
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`US. Patent No. 6,002,390, which is entitled “Text Input Device and Method,”
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`issued on December 14, 1999.
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`15.
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`US. Patent No. 6,125,143, which is entitled “Picture Encoding Device and
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`Method Thereof, Picture Decoding Device and Method Thereof, and Recording Medium,”
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`issued on September 26, 2000
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`16.
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`US. Patent No. 6,3 85,3 86, which is entitled “Recording/Playback Apparatus,
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`Recording/Playback Method and recording Medium,” issued on May 7, 2002.
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`17.
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`US. Patent No. 6,393,430, which is entitled “Method and System for
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`Automatically Recording Music Data Files by Using the Hard Drive of a Personal Computer as
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`an Intermediate Storage Medium,” issued May 21, 2002
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`18.
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`US. Patent No. 6,441,828, which is entitled “Image Display Apparatus,” issued
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`on August 27, 2002.
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`19.
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`US. Patent No. 6,446,080, which is entitled “Method for Creating, Modifying,
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`and Playing a Custom Playlist, Saved as a Virtual CD, to be Played by a Digital Audio/Visual
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`Actuator Device,” issued on September 3, 2002.
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`20.
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`US. Patent No. 6,549,942, which is entitled “Enhanced Delivery of Audio Data
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`for Portable Playback,” issued on April 15, 2003.
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`3
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`COMPLAINT FOR DECLARATORY JUDGMENT
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`Case 4:11-cv-00597-CW Document 1 Filed 02/09/11 Page 4 of 6
`Case 4:11-cv-00597-CW Document 1 Filed OZ/OQ/fl Page 4 of 6
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`21.
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`US. Patent No. 6,975,732, which is entitled “Audio Signal Reproducing
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`Apparatus,” issued on December 13, 2005.
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`22.
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`US. Patent No. 7,190,971, which is entitled “Information Processing Apparatus
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`and Method, Information Processing System, and Transmission Medium,” issued on March 13,
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`2007.
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`23.
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`US. Patent No. 7,313,647, which is entitled “Storage and Reproduction
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`Apparatus,” issued on December 25, 2007.
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`24.
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`US. Patent No. 7,349,012, which is entitled “Imaging Apparatus With Higher
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`and Lower Resolution Converters and a Compression Unit to Compress Decreased Resolution
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`Image Data,’ issued on March 25, 2008.
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`25. US Patent No. 6,725,155, which is entitled “Method and Apparatus for
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`Information Processing, and Medium for Information Processing,” issued on April 20, 2004.
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`26.
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`US. Patent No. 7,111,069, which is entitled “Information Processing Apparatus
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`and Method, and Program Storage Medium,” issued on September 19, 2006.
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`27.
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`The patents described in paragraphs 8-26 above are hereafter referred to as the
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`Mobile Media Patents. Mobile Media asserts that it has an ownership interest in, including but
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`not limited to, the right to license the Mobile Media Patents.
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`MOBILE MEDIA’S ASSERTION OF THE MOBILE MEDIA PATENTS
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`28.
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`On April 16, 2010, Mobile Media contacted SanDisk to initiate patent license
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`negotiations for several of SanDisk’s digital media players. Mobile Media claimed that several
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`of SanDisk’s digital media players infringed the Mobile Media Patents, and offered a license to
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`SanDisk. Mobile Media offered to meet with SanDisk at SanDisk’s headquarters to discuss
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`licensing the Mobile Media Patents. Since April 2010, Mobile Media has contacted SanDisk
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`several times, accusing SanDisk and its customers of infringing the Mobile Media Patents and
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`asking SanDisk to discuss licensing the Mobile Media Patents, and offering to meet with
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`SanDisk at its headquarters.
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`29.
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`SanDisk has informed Mobile Media that it does not believe that it is required to
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`license the Mobile Media Patents.
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`4
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`COMPLAINT FOR DECLARATORY JUDGMENT
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`Case 4:11-cv-00597-CW Document 1 Filed 02/09/11 Page 5 of 6
`Case 4:11-cv-00597-CW Document 1 Filed OZ/OQfi Page 5 of 6
`U
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`COUNT I
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`(Declaratory Judgment of Invalidity, Unenforceability, and/or
`Non-infringement of the Mobile Media Patents)
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`30.
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`SanDisk re-alleges and incorporates by reference Paragraphs 1 through 29 as if
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`fully set forth herein.
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`31.
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`Mobile Media has stated that certain of SanDisk’s products infringe the Mobile
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`Media Patents and that SanDisk is required to license the Mobile Media Patents.
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`32.
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`SanDisk contends that it is not required to license the Mobile Media Patents
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`because SanDisk has not infringed and does not infringe, either directly or indirectly, any valid
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`and enforceable claim of the Mobile Media Patents.
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`33.
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`As a result of the acts described in the foregoing paragraphs, there exists a
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`substantial controversy of sufficient immediacy and reality to warrant the issuance of a
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`declaratory judgment.
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`34.
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`An actual and justiciable controversy exists between SanDisk and Mobile Media
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`as to whether the Mobile Media Patents are infringed by SanDisk. A judicial declaration is
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`necessary and appropriate so that SanDisk may ascertain its rights regarding the Mobile Media
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`Patents.
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`35.
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`An actual and justiciable controversy exists between SanDisk and Mobile Media
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`as to whether the Mobile Media Patents are valid. A judicial declaration is necessary and
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`appropriate so that SanDisk may ascertain its rights regarding the Mobile Media Patents.
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`36.
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`An actual and justiciable controversy exists between SanDisk and Mobile Media
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`as to whether the Mobile Media Patents are enforceable. A judicial declaration is necessary and
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`appropriate so that SanDisk may ascertain its rights regarding the Mobile Media Patents.
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`PRAYER FOR RELIEF
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`WHEREFORE, SanDisk respectfully requests that judgment be entered in its favor and
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`prays that the court grant the following relief:
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`A.
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`A declaration that the SanDisk’s products have not infringed and do not infringe,
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`either directly or indirectly, any valid and enforceable claim of the Mobile Media Patents;
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`B.
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`A declaration that the claims of the Mobile Media Patents are invalid;
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`5
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`COMPLAINT FOR DECLARATORY JUDGMENT
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`t$,mmihmkénaeki5&uu<tifin’
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`Case 4:11-cv-00597-CW Document 1 Filed 02/09/11 Page 6 of 6
`Case 4:11-0v-Ofi97-CW Document 1 Filed 02/09/& Page 6 of 6
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`C.
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`D.
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`E.
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`A declaration that the Mobile Media Patents are unenforceable;
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`For an award of all damages, including special damages, provable at trial;
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`An order enjoining Mobile Media, its officers, directors, agents, counsel, servants,
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`and employees, and all persons in active concert or participation with any of them, from charging
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`infringement of, or instituting any action for infringement of the Mobile Media Patents against
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`SanDisk and/or any of SanDisk’s customers;
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`F.
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`An order declaring that SanDisk is the prevailing party and that this is an
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`exceptional case under 35 U.S.C. § 285 and award SanDisk its reasonable attorneys fees,
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`expenses, and costs in this action; and
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`G.
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`Such other and further relief as this Court may deem just and proper.
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`DEMAND FOR JURY TRIAL
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`Pursuant to Federal Rule of Civil Procedure 38(b) and Northern District of California
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`Local Rule 3-6(a), Plaintiff respectfully requests a jury trial on all issues triable thereby.
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`Dated: February 9, 2011.
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`JONES DAY
`
`
`
`
`
`Gregory L. Lippetz
`
`Attorneys for Plaintiff
`SANDISK CORPORATION
`
`SVI-89500V1
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`
`