Case 5:21-cv-06858-SVK Document 1 Filed 09/02/21 Page 1 of 10
`
`
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
` Sean S. Pak (SBN 219032)
` seanpak@quinnemanuel.com
` Iman Lordgooei (SBN 251320)
` imanlordgooei@quinnemanuel.com
` Jodie W. Cheng (SBN 292330)
` jodiecheng@quinnemanuel.com
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`Telephone: (415) 875-6600
`Facsimile: (415) 875-6700
`
`Attorneys for Plaintiff,
`Verkada, Inc.
`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`
`MOTOROLA SOLUTIONS, INC.;
`AVIGILON CORPORATION; AVIGILON
`FORTRESS CORPORATION; AVIGILON
`PATENT HOLDING 1 CORPORATION;
`AND AVIGILON TECHNOLOGIES
`CORPORATION
`
`
`Defendants.
`
`VERKADA, INC.
`
`
`Plaintiff,
`
`
`
`v.
`
`
`
`
`
`
`
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`
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` CASE NO. 3:21-cv-6858
`
`COMPLAINT FOR DECLARATORY
`JUDGMENT
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`DEMAND FOR JURY TRIAL
`
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`Case No. 3:21-cv-6858
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`COMPLAINT FOR DECLARATORY JUDGMENT
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`Case 5:21-cv-06858-SVK Document 1 Filed 09/02/21 Page 2 of 10
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`Plaintiff Verkada, Inc. (“Verkada” or “Plaintiff”) submits this Complaint against Defendants
`Motorola Solutions, Inc., Avigilon Corporation, Avigilon Fortress Corporation, Avigilon Patent
`Holding 1 Corporation, and Avigilon Technologies Corporation (collectively, “Defendants”), and
`alleges as follows:
`
`NATURE OF THE ACTION
`1.
`This action is brought pursuant to the Declaratory Judgment Act, 28 U.S.C. §§ 2201-
`2202, and the Patent Laws of the United States, 35 U.S.C. §§ 100 et seq., for a declaratory judgment
`of non-infringement of patents Defendants have asserted against Verkada in proceedings before the
`United States International Trade Commission (“USITC”).
`2.
`Verkada seeks a declaratory judgment of non-infringement of U.S. Patent Nos.
`7,868,912 (the “’912 Patent”), 8,508,607 (the “’607 Patent”), and 10,726,312 (the “’312 Patent”)
`(collectively, the “Asserted Patents”), attached hereto as Exhibits A-C, and any and all other relief
`the Court deems just and proper.
`3.
`Defendants have filed a complaint with the USITC alleging infringement of the
`Asserted Patents by Verkada. An actual and justiciable controversy therefore exists under 28 U.S.C.
`§§ 2201-2202 between Verkada and Defendants as to whether Verkada is infringing or has infringed
`the Asserted Patents.
`
`THE PARTIES
`4.
`Plaintiff Verkada is a Delaware corporation with its principal place of business at
`405 E. 4th Avenue, San Mateo, California 94401.
`5.
`On information and belief, Defendant Motorola Solutions, Inc. (“Motorola”) is a
`Delaware corporation with its headquarters and principal place of business at 500 W. Monroe St.,
`Chicago, IL 60661. On information and belief, Motorola acquired the other Defendants in 2018.
`6.
`On information and belief, Defendant Avigilon Corporation (“Avigilon”) is a
`Canadian corporation and subsidiary of Motorola with principal place of business at 555 Robson St.
`3rd Floor, Vancouver, British Columbia, V6B 1A6 Canada.
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`COMPLAINT FOR DECLARATORY JUDGMENT
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`7.
`On information and belief, Defendant Avigilon Fortress Corporation (“AFC”) is a
`Canadian corporation and subsidiary of Avigilon with principal place of business at 555 Robson St.
`3rd Floor, Vancouver, British Columbia, V6B 1A6 Canada.
`8.
`On information and belief, Defendant Avigilon Patent Holding 1 Corporation
`(“APHC”) is a Canadian corporation and subsidiary of Avigilon with principal place of business at
`555 Robson St. 3rd Floor, Vancouver, British Columbia, V6B 1A6 Canada.
`9.
`On information and belief, Defendant Avigilon Technologies Corporation (“ATC”)
`is a Canadian corporation and subsidiary of Avigilon with principal place of business at 555 Robson
`St. 3rd Floor, Vancouver, British Columbia, V6B 1A6 Canada. On information and belief, ATC is
`the parent of AFC and APHC.
`
`JURISDICTION AND VENUE
`10.
`Verkada brings this action under the Declaratory Judgment Act, 28 U.S.C. § 2201,
`for a declaratory judgment of non-infringement of the Asserted Patents under the Patent Laws of
`the United States, 35 U.S.C. §§ 100 et seq. This Court has subject matter jurisdiction pursuant to
`28 U.S.C. §§ 1331 and 1338, because this Court has exclusive jurisdiction over declaratory
`judgment claims arising under the Patent Laws.
`11.
`Personal jurisdiction and venue are proper in this District as to Motorola Solutions,
`Inc. pursuant to 28 U.S.C. §§ 1391(b) and/or (c) because Motorola has constitutionally sufficient
`contacts with California to make personal jurisdiction proper in this Court. On information and
`belief,
`Motorola
`does
`business
`in
`this
`District
`(see,
`e.g.,
`https://www.motorolasolutions.com/content/dam/msi/docs/en_us/field_marketing/West/nor_ca_pr
`omo_q4_2017.pdf), including through Avigilon. On information and belief, Motorola also employs
`several dozen employees in this District.
`12.
`Personal jurisdiction and venue are proper in this District as to Avigilon, AFC,
`APHC, and ATC pursuant to 28 U.S.C. §§ 1391(b) and/or (c) because Avigilon has constitutionally
`sufficient contacts with California to make personal jurisdiction proper in this Court. On
`information
`and
`belief, Avigilon
`does
`business
`in
`this District
`(see,
`e.g.,
`https://www.avigilon.com/news/releases/avigilon-security-solutions-selected-to-protect-the-city-
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`its Regional Sales
`through
`including
`of-san-francisco%E2%80%99s-historic-union-square),
`Director, William Kennedy. Avigilon also partners with multiple companies located in this District
`(see https://www.avigilon.com/how-to-buy/partner-locator) in order to provide integrated solutions
`to customers located in California (see, e.g., https://www.avigilon.com/partners/technology-partner-
`program). Further, Avigilon, AFC, APHC, and ATC are foreign corporations that do not reside in
`the United States and, therefore, may be sued in any United States judicial district, including this
`District.
`13.
`An actual, substantial, and justiciable controversy exists between Verkada and
`Defendants as to whether Verkada infringes the Asserted Patents. On August 9, 2021, Defendants
`filed a complaint with the USITC (the “USITC Complaint”) under Section 337 of the Tariff Act of
`1930. The USITC Complaint alleges the Verkada infringes the Asserted Patents through the
`manufacture and importation of certain video security equipment and systems, related software,
`components thereof, and products containing the same, including Verkada’s Dome, Mini, Fisheye,
`Bullet, and D-Series series of products. A true and correct copy of the USITC Complaint is attached
`hereto as Exhibit D.
`
`INTRADISTRICT ASSIGNMENT
`14.
`Pursuant to Civil L.R. 3-2(c) and 3-5(b), this is an Intellectual Property Rights Action
`subject to assignment on a district-wide basis.
`FACTUAL BACKGROUND
`15.
`Plaintiff Verkada is a startup company based in San Mateo, California and founded
`in 2016 by computer scientists and security experts who graduated from Stanford University and
`the former co-founder and Chief Operating Officer of enterprise Wi-Fi startup, Meraki, which was
`acquired by Cisco Systems in 2012. Verkada builds modern security solutions that help enterprises
`run safer, smarter buildings, including through Verkada’s line of smart security cameras and
`accessories that operate in conjunction with Verkada’s intelligent, cloud-based software.
`16.
`Since its founding in 2016, Verkada has grown rapidly and continues to gain and
`grow its share of the enterprise physical security market. Indeed, more than 6,000 organizations,
`including over thirty Fortune 500 companies, use Verkada to protect people and assets, secure
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`facilities, and gain new insights that improve the efficiency of their operations. Verkada’s vision is
`to be the operating system that runs every building in the world.
`17.
`Competitors, such as Avigilon, have taken note. Instead of competing with Verkada
`in the market, Defendants have sought to effectively shut Verkada’s business down. On August 9,
`2021, Motorola, in conjunction with Avigilon and their related subsidiaries (i.e., the Defendants),
`filed the USITC Complaint seeking to exclude importation of Verkada’s entire current line of
`security cameras as allegedly infringing Defendants’ Asserted Patents. See Exh. D. Defendants
`have also asked the USITC to issue permanent cease and desist orders preventing Verkada “from
`marketing, distributing, selling, offering for sale, warehousing inventory for distribution, or
`otherwise transferring or importing into the United States the infringing video security equipment
`and systems, related software, components thereof, and/or products containing same.” Id.
`18.
`In the USITC Complaint, Defendants accuse the Verkada Dome Series, the Verkada
`Mini Series, the Verkada Fisheye Series, the Verkada Bullet Series, and the Verkada D-Series of
`security cameras of infringing the following claims and patents: 1) claims 1-4 and 6-36 of the ’912
`Patent; 2) claims 1-4, 6, 7, 10-13, 15, 16, 19-21, 25, 26, and 29 of the ’607 Patent; and 3) claims 1-
`16 of the ’312 Patent.
`19.
`Verkada denies Defendants’ allegations and, thus, there is a substantial and present
`controversy between Verkada and Defendants. Verkada and Defendants have adverse legal interests
`with respect to the question of infringement of the Asserted Patents. Given the above, this dispute
`between Verkada and Defendants is immediate and real.
`ASSERTED PATENTS
`20.
`The ’912 Patent, entitled “Video Surveillance System Employing Video Primitives,”
`issued on January 11, 2011, based on U.S. Patent Application No. 11/098,385, filed on April 5,
`2005. The ’912 Patent is a continuation-in-part of U.S. Patent Application No. 11/057,154, filed on
`February 15, 2005, which is a continuation-in-part of U.S. Patent Application No. 09/987,707, filed
`on November 15, 2001 and now abandoned, which is a continuation-in-part of U.S. Patent
`Application No. 09/694,712, filed on October 24, 2000 and now U.S. Patent No. 6,954,498.
`According to Defendants, AFC is the owner and assignee of the ’912 Patent.
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`21.
`The ’607 Patent, entitled “Method and System for a Programmable Camera for
`Configurable Security and Surveillance Systems,” issued on August 13, 2013, based on U.S. Patent
`Application No. 11/219,951, filed on September 6, 2005. According to Defendants, APHC is the
`owner and assignee of the ’607 Patent.
`22.
`The ’312 Patent, entitled “System and Method for Appearance Search,” issued on
`July 28, 2020, based on U.S. Patent Application No. 15/832,654, filed on December 5, 2017. The
`’312 Patent claims the benefit of U.S. Provisional Patent Application No. 62/527,894, filed on June
`30, 2017, and U.S. Provisional Patent Application No. 62/430,292, filed on December 5, 2016.
`According to Defendants, Avigilon is the owner and assignee of the ’312 Patent.
`COUNT I
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’912 PATENT
`23.
`Verkada incorporates the preceding paragraphs of this Complaint as if fully set forth
`
`herein.
`
`24.
`Defendants claim to own all right, title, and interest in the ’912 Patent by
`assignment—specifically, Defendants claim that AFC is the owner and assignee of the ’912 Patent.
`25.
`In the USITC Complaint, Defendants allege that Verkada’s accused security camera
`products and software infringe the ’912 Patent, including (a) the Verkada Dome Series, such as the
`CD31, CD41, CD51, and CD61 products in all configurations; (b) the Verkada Mini Series, such as
`the CM41, CM41-E, and CM61 products in all configurations; (c) the Verkada Fisheye Series, such
`as the CF81-E product in all configurations; (d) the Verkada Bullet Series, such as the CB51-E,
`CB61-E, CB51-TE, and CB61-TE products in all configurations; and (e) the Verkada D-Series, such
`as the D30, D40, D50, and D80 products in all configurations.
`26.
`Verkada does not directly or indirectly infringe, either literally or under the doctrine
`of equivalents, all of the claim limitations of any claim of the ’912 Patent. Additionally, Verkada’s
`accused security camera products and software have not infringed and do not infringe any claim of
`the ’912 Patent, including (a) the Verkada Dome Series, such as the CD31, CD41, CD51, and CD61
`products in all configurations; (b) the Verkada Mini Series, such as the CM41, CM41-E, and CM61
`products in all configurations; (c) the Verkada Fisheye Series, such as the CF81-E product in all
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`configurations; (d) the Verkada Bullet Series, such as the CB51-E, CB61-E, CB51-TE, and CB61-
`TE products in all configurations; and (e) the Verkada D-Series, such as the D30, D40, D50, and
`D80 products in all configurations.
`27.
`Declaratory relief is necessary and appropriate so Verkada may ascertain its rights
`regarding the ’912 Patent.
`28.
`Verkada therefore respectfully requests that this Court declare that neither Verkada
`nor Verkada’s accused security camera products and software directly or indirectly infringe, whether
`literally or under the doctrine of equivalents, any claim of the ’912 Patent.
`COUNT II
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’607 PATENT
`29.
`Verkada incorporates the preceding paragraphs of this Complaint as if fully set forth
`
`herein.
`
`30.
`Defendants claim to own all right, title, and interest in the ’607 Patent by
`assignment—specifically, Defendants claim that APHC is the owner and assignee of the ’607 Patent.
`31.
`In the USITC Complaint, Defendants allege that Verkada’s accused security camera
`products and software infringe the ’607 Patent, including (a) the Verkada Dome Series, such as the
`CD31, CD41, CD51, and CD61 products in all configurations; (b) the Verkada Mini Series, such as
`the CM41, CM41-E, and CM61 products in all configurations; (c) the Verkada Fisheye Series, such
`as the CF81-E product in all configurations; (d) the Verkada Bullet Series, such as the CB51-E,
`CB61-E, CB51-TE, and CB61-TE products in all configurations; and (e) the Verkada D-Series, such
`as the D30, D40, D50, and D80 products in all configurations.
`32.
`Verkada does not directly or indirectly infringe, either literally or under the doctrine
`of equivalents, all of the claim limitations of any claim of the ’607 Patent. Additionally, Verkada’s
`accused security camera products and software have not infringed and do not infringe any claim of
`the ’607 Patent, including (a) the Verkada Dome Series, such as the CD31, CD41, CD51, and CD61
`products in all configurations; (b) the Verkada Mini Series, such as the CM41, CM41-E, and CM61
`products in all configurations; (c) the Verkada Fisheye Series, such as the CF81-E product in all
`configurations; (d) the Verkada Bullet Series, such as the CB51-E, CB61-E, CB51-TE, and CB61-
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`TE products in all configurations; and (e) the Verkada D-Series, such as the D30, D40, D50, and
`D80 products in all configurations.
`33.
`Declaratory relief is necessary and appropriate so Verkada may ascertain its rights
`regarding the ’607 Patent.
`34.
`Verkada therefore respectfully requests that this Court declare that neither Verkada
`nor Verkada’s accused security camera products and software directly or indirectly infringe, whether
`literally or under the doctrine of equivalents, any claim of the ’607 Patent.
`COUNT III
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’312 PATENT
`35.
`Verkada incorporates the preceding paragraphs of this Complaint as if fully set forth
`
`herein.
`
`36.
`Defendants claim to own all right, title, and interest in the ’312 Patent by
`assignment—specifically, Defendants claim that Avigilon is the owner and assignee of the ’312
`Patent.
`
`37.
`In the USITC Complaint, Defendants allege that Verkada’s accused security camera
`products and software infringe the ’312 Patent, including (a) the Verkada Dome Series, such as the
`CD31, CD41, CD51, and CD61 products in all configurations; (b) the Verkada Mini Series, such as
`the CM41, CM41-E, and CM61 products in all configurations; (c) the Verkada Fisheye Series, such
`as the CF81-E product in all configurations; (d) the Verkada Bullet Series, such as the CB51-E,
`CB61-E, CB51-TE, and CB61-TE products in all configurations; and (e) the Verkada D-Series, such
`as the D30, D40, D50, and D80 products in all configurations.
`38.
`Verkada does not directly or indirectly infringe, either literally or under the doctrine
`of equivalents, all of the claim limitations of any claim of the ’912 Patent. Additionally, Verkada’s
`accused security camera products and software have not infringed and do not infringe any claim of
`the ’312 Patent, including (a) the Verkada Dome Series, such as the CD31, CD41, CD51, and CD61
`products in all configurations; (b) the Verkada Mini Series, such as the CM41, CM41-E, and CM61
`products in all configurations; (c) the Verkada Fisheye Series, such as the CF81-E product in all
`configurations; (d) the Verkada Bullet Series, such as the CB51-E, CB61-E, CB51-TE, and CB61-
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`TE products in all configurations; and (e) the Verkada D-Series, such as the D30, D40, D50, and
`D80 products in all configurations.
`39.
`Declaratory relief is necessary and appropriate so Verkada may ascertain its rights
`regarding the ’312 Patent.
`40.
`Verkada therefore respectfully requests that this Court declare that neither Verkada
`nor Verkada’s accused security camera products and software directly or indirectly infringe, whether
`literally or under the doctrine of equivalents, any claim of the ’312 Patent.
`PRAYER FOR RELIEF
`Verkada respectfully requests the following relief:
`A.
`That the Court enter a judgment declaring that Verkada has not infringed and does
`not infringe, directly or indirectly, any enforceable claim of the ’912 Patent, either literally or under
`the doctrine of equivalents;
`B.
`That the Court enter a judgment declaring that Verkada has not infringed and does
`not infringe, directly or indirectly, any enforceable claim of the ’607 Patent, either literally or under
`the doctrine of equivalents;
`C.
`That the Court enter a judgment declaring that Verkada has not infringed and does
`not infringe, directly or indirectly, any enforceable claim of the ’312 Patent, either literally or under
`the doctrine of equivalents;
`D.
`That the Court enter a judgment in favor of Verkada and against Defendants on all
`of Verkada’s claims;
`E.
`That the Court find this case is exceptional under 35 U.S.C. § 285 and award Verkada
`its attorneys’ fees, costs, and expenses incurred in this action;
`F.
`That the Court award Verkada any and all other relief to which Verkada is entitled;
`G.
`That the Court award Verkada any and all other relief as the Court may deem just,
`equitable, and proper.
`
`JURY DEMAND
`Verkada hereby demands a jury trial on all issues and claims so triable.
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`DATED: September 2, 2021
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`Respectfully Submitted,
`
`By /s/ Sean S. Pak
`
`Sean S. Pak (SBN 219032)
` seanpak@quinnemanuel.com
`Iman Lordgooei (SBN 251320)
` imanlordgooei@quinnemanuel.com
`Jodie W. Cheng (SBN 292330)
` jodiecheng@quinnemanuel.com
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`Telephone: (415) 875-6600
`Facsimile: (415) 875-6700
`
`Attorneys for Plaintiff
`Verkada, Inc.
`
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