Case 3:16-cv-00575-JD Document 1 Filed 06/15/15 Page 1 of 8
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`HEWLETT-PACKARD COMPANY,
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`v.
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`Defendant.
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`COMPLAINT
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`Plaintiff Papst Licensing GmbH & Co. KG (“Papst”), for its Complaint against defendant
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`Hewlett-Packard Company (“HP”), hereby alleges as follows:
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`The Parties
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`1.
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`Plaintiff Papst is a company organized under the laws of The Federal Republic of
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`Germany with its principal place of business at Bahnhofstrasse 33, 78112, St. Georgen,
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`Germany.
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`2.
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`HP is a Delaware corporation with its principal place of business at 3000 Hanover
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`Street, Palo Alto, California 94304. HP manufactures and sells a wide range of consumer
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`electronics products, including tablets.
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`Nature Of The Action
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`3.
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`This is a civil action for infringement of U.S. Patent No. 8,966,144 (“the ’144
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`patent”) (attached as Exhibit A) (the “Patent-in-Suit”) under the Patent Laws of the United
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`States, 35 U.S.C. § 1 et seq.
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`Civil Action No. ___________
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`JURY TRIAL DEMANDED
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`Plaintiff,
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`PAPST LICENSING GmbH & CO. KG,
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`Case 3:16-cv-00575-JD Document 1 Filed 06/15/15 Page 2 of 8
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`Jurisdiction And Venue
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`4.
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`This Court has jurisdiction over the subject matter of this action pursuant to
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`28 U.S.C. §§ 1331 and 1338(a) because this action arises under the patent laws of the United
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`States, including 35 U.S.C. § 271 et seq.
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`5.
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`This Court has personal jurisdiction over HP because, among other things, HP has
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`committed, aided, abetted, contributed to, and/or participated in the commission of patent
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`infringement in violation of 35 U.S.C. § 271 in this judicial district and elsewhere that led to
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`foreseeable harm and injury to Papst.
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`6.
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`This Court also has personal jurisdiction over HP because, among other things,
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`HP is a Delaware corporate citizen, and has established minimum contacts within the forum such
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`that the exercise of jurisdiction over HP will not offend traditional notions of fair play and
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`substantial justice. For example, HP has placed products that practice and/or embody the
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`claimed inventions of the Patent-in-Suit into the stream of commerce with the reasonable
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`expectation and/or knowledge that purchasers and users of such products were located within
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`this district. In addition, HP has sold, advertised, marketed, and distributed products in this
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`district that practice the claimed inventions of the Patent-in-Suit. HP derives substantial revenue
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`from the sale of infringing products distributed within the district, and/or expects or should
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`reasonably expect its actions to have consequences within the district, and derives substantial
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`revenue from interstate and international commerce. Additionally, HP has previously availed
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`itself of this Court in previous lawsuits.
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`7.
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`In addition, HP knowingly, actively induced and continues to knowingly actively
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`induce (or is willfully blind to the) infringement of the Patent-in-Suit within this district by
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`making, using, offering for sale, and selling infringing products, as well as by contracting with
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`Case 3:16-cv-00575-JD Document 1 Filed 06/15/15 Page 3 of 8
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`others to use, market, sell, and offer to sell infringing products, all with knowledge of the
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`asserted Patent-in-Suit, and its claims, with knowledge that its customers will use, market, sell,
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`and offer to sell infringing products in this district and elsewhere in the United States, and with
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`the knowledge and specific intent to encourage and facilitate infringing sales and use of the
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`products by others within this district and the United States by creating and disseminating
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`promotional and marketing materials, instructional materials, and product manuals, and technical
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`materials related to the infringing products.
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`8.
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`Moreover, HP knowingly contributed to the infringement of the Patent-in-Suit by
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`others in this district, and continues to contribute to the infringement of the Patent-in-Suit by
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`others in this district by selling or offering to sell components of infringing products in this
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`district, which components constitute a material part of the inventions of the Patent-in-Suit,
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`knowing of the patent-in-suit and its claims, knowing those components to be especially made or
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`especially adapted for use to infringe the Patent-in-Suit, and knowing that those components are
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`not staple articles or commodities of commerce suitable for substantial non-infringing use.
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`9.
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`Venue is proper in this district pursuant to 28 U.S.C. §§ 1391(b), 1391(c), and
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`1400(b), because HP is subject to personal jurisdiction in this district and has committed acts of
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`infringement in this district.
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`The Patent-In-Suit
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`10.
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`United States Patent No. 8,966,144 (“the ’144 patent”), titled “Analog Data
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`Generating And Processing Device Having A Multi-Use Automatic Processor,” was duly and
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`lawfully issued by the U.S. Patent and Trademark Office on February 24, 2015. A copy of the
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`’144 patent is attached hereto as Exhibit B. Papst is the assignee of all rights, title, and interest in
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`Case 3:16-cv-00575-JD Document 1 Filed 06/15/15 Page 4 of 8
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`the ’144 patent, and it possesses all rights to sue and recover for any current or past infringement
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`of the ’144 patent.
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`11.
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`Papst and HP have been engaged in litigation regarding United States Patent Nos.
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`6,895,449 and 6,470,399 in the case entitled Hewlett-Packard Co. v Papst Licensing GmbH &
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`Co. KG, 5:08-cv-1732 (N.D. Cal.) filed on March 31, 2008 and consolidated in In re Papst
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`Licensing GmbH & Co. KG Litig., Misc. No. 07-493 (D. D.C.) since May 8, 2008.
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`12.
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`On information and belief, HP has monitored Papst’s patent prosecution activities
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`at least since entering litigation with Papst in 2008.
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`COUNT I
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`Infringement of U.S. Patent No. 8,966,144
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`13.
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`14.
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`15.
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`Paragraphs 1 through 12 are incorporated by reference as if fully stated herein.
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`The ’144 patent is valid and enforceable.
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`HP has infringed, and continue to infringe, one or more claims of the ’144 patent
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`under 35 U.S.C. § 271(a), either literally and/or under the doctrine of equivalents, by making,
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`using, selling, and/or offering for sale in the United States, and/or importing into the United
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`States, products encompassed by those claims, including for example, by making, using, selling,
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`offering for sale, and/or importing into the United States HP tablets that use or are able to be
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`accessed via Mass Storage Device/Mass Storage Class (“MSD”), Media Transfer Protocol
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`(“MTP”), or Picture Transfer Protocol (“PTP”), including without limitation models Pro Slate
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`12, Pro Slate 8, 10 Tablet, 10 Plus, 8 G2, 7 G2, 7 Plus G2 Tablet, and all other tablet models that
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`use or are able to be accessed via MSD, MTP, or PTP (collectively, “the ’144 Infringing
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`Products”).
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`16.
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`HP’s customers (e.g., distributors, retailers, and online vendors) directly infringe
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`one or more claims of the ’144 patent under 35 U.S.C. § 271(a) by selling, offering to sell, or
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`importing the ’144 Infringing Products in the United States. HP has actively induced
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`infringement of, and continue to actively induce infringement of, one or more claims of the ’144
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`patent under 35 U.S.C. § 271(b), either literally and/or under the doctrine of equivalents, by
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`selling, importing, and/or offering for sale the ’144 Infringing Products to its customers with the
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`knowledge of the ’144 patent and its claims, with knowledge that its customers will sell, offer to
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`sell, and/or import into the United States the ’144 Infringing Products, and with knowledge and
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`specific intent to encourage and facilitate those infringing sales of the ’144 Infringing Products
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`through distributing the products to retailers, distributors, and online vendors and creating and
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`disseminating promotional and marketing materials, instructional manuals, product manuals and
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`other technical materials related to the ’144 Infringing Products.
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`17.
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`HP has contributed to the infringement of, and continues to contribute to the
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`infringement of, one or more claims of the ’144 patent under 35 U.S.C. § 271(c) and/or 271(f),
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`either literally and/or under the doctrine of equivalents, by selling, offering for sale, and/or
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`importing into the United States, the ’144 Infringing Products, knowing that those products
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`constitute a material part of the inventions claimed in the ’144 patent, knowing that those
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`products are especially made or adapted to infringe the ’144 patent, and knowing that those
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`products are not staple articles or commodities of commerce suitable for non-infringing use;
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`rather that the components are used for or in systems that infringe one or more claims of the ’144
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`patent.
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`18.
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`HP has had knowledge of the ’144 patent since at least as early as April 28, 2015,
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`when Papst informed HP and the other defendants in the DC action that the ’144 patent had
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`Case 3:16-cv-00575-JD Document 1 Filed 06/15/15 Page 6 of 8
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`issued and proposed a scheduling order that would permit all parties to amend their complaints in
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`that action.
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`19.
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`On information and belief, HP has had knowledge of the ’144 patent since it
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`issued on February 24, 2015, as a result of monitoring Papst’s prosecution activities.
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`HP has infringed, and continues to infringe, the ’144 patent.
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`Papst has been and continues to be damaged by HP’s infringement of the ’144
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`20.
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`21.
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`patent.
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`22.
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`HP has willfully infringed, and continues to willfully infringe, the ’144 patent
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`despite having knowledge of the ’144 patent.
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`23.
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`HP’s conduct in infringing the ’144 patent renders this case exceptional within the
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`meaning of 35 U.S.C. § 285.
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`WHEREFORE, Papst prays for judgment as follows:
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`Prayer For Relief
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`A.
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`B.
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`C.
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`That HP has directly and/or indirectly infringed the Patent-in-Suit;
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`That HP has willfully infringed the Patent-in-Suit;
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`That Papst be awarded all damages adequate to compensate it for HP’
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`infringement of the Patent-in-Suit, including damages pursuant to 35 U.S.C. § 284 and
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`provisional damages pursuant to 35 U.S.C. § 154(d), such damages to be determined by a jury
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`and, if necessary to adequately compensate Papst for the infringement, an accounting, and that
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`such damages be trebled and awarded to Papst with pre-judgment and post-judgment interest;
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`D.
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`That this case be declared an exceptional case within the meaning of 35 U.S.C.
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`§ 285 and that Papst be awarded the attorney fees, costs, and expenses that it incurs prosecuting
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`this action; and
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`Case 3:16-cv-00575-JD Document 1 Filed 06/15/15 Page 7 of 8
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`E.
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`That Papst be awarded such other and further relief as this Court deems just and
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`proper.
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`Demand For Jury Trial
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`Plaintiff Papst hereby demands a trial by jury on all issues so triable.
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`Case 3:16-cv-00575-JD Document 1 Filed 06/15/15 Page 8 of 8
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`FARNAN LLP
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` /s/ Brian E. Farnan
`Brian E. Farnan (Bar No. 4089)
`Michael J. Farnan (Bar No. 5165)
`919 North Market Street
`12th Floor
`Wilmington, DE 19801
`(302) 777-0300 (Telephone)
`(302) 777-0301 (Facsimile)
`bfarnan@farnanlaw.com
`mfarnan@farnanlaw.com
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`Counsel for Plaintiff
`Papst Licensing GmbH Co. KG
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`Dated: June 15, 2015
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`Of Counsel:
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`John M. Desmarais
`Jonas R. McDavit
`Richard M. Cowell
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`(212) 351-3400 (Telephone)
`(212) 351-3401 (Facsimile)
`jdesmarais@desmaraisllp.com
`jmcdavit@desmaraisllp.com
`rcowell@desmaraisllp.com
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