Case 3:14-cv-00819-GPC-NLS Document 1 Filed 04/07/14 Page 1 of 8
`
`The Markow Law Group
`Gregory S. Markow (Cal. Bar No. 216748)
`E-mail: gsm@markowlaw.com
`600 West Broadway, Suite 700
`San Diego, CA 92101
`Telephone: 619.500.3644
`Facsimile: 619.272.7090
`Attorneys for Plaintiff
`Rothschild GPS Sharing Innovations, LLC
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`'14CV0819
`GPC
`NLS
`Case No. _______________
`_____________________________________________
`ROTHSCHILD GPS SHARING
`INNOVATIONS, LLC,
`COMPLAINT FOR PATENT
`INFRINGEMENT
`Plaintiff,
`
`vs.
`NISSAN NORTH AMERICA, INC.,
` Defendant.
`
`DEMAND FOR JURY TRIAL
`
`Judge:
`
`COMPLAINT
`
`Plaintiff Rothschild GPS Sharing Innovations, LLC for its Complaint for patent
`
`infringement against Defendant Nissan North America, Inc. alleges as follows:
`
`NATURE OF THE LAWSUIT
`
`1.
`
`This is a claim for patent infringement arising under the patent laws of the
`
`United States, Title 35 of the United States Code.
`
`PARTIES
`
`2.
`
`Plaintiff Rothschild GPS Sharing Innovations, LLC (“Rothschild GPS Sharing
`
`Innovations”) is a Florida corporation with its principal place of business at 1108 Kane
`
`Concourse, Suite #310, Bay Harbor Islands, FL 33154.
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`The Markow Law Group
`Gregory S. Markow (Cal. Bar No. 216748)
`E-mail: gsm@markowlaw.com
`600 West Broadway, Suite 700
`San Diego, CA 92101
`Telephone: 619.500.3644
`Facsimile: 619.272.7090
`Attorneys for Plaintiff
`Rothschild GPS Sharing Innovations, LLC
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`'14CV0819
`GPC
`NLS
`Case No. _______________
`_____________________________________________
`ROTHSCHILD GPS SHARING
`INNOVATIONS, LLC,
`COMPLAINT FOR PATENT
`INFRINGEMENT
`Plaintiff,
`
`vs.
`NISSAN NORTH AMERICA, INC.,
` Defendant.
`
`DEMAND FOR JURY TRIAL
`
`Judge:
`
`COMPLAINT
`
`Plaintiff Rothschild GPS Sharing Innovations, LLC for its Complaint for patent
`
`infringement against Defendant Nissan North America, Inc. alleges as follows:
`
`NATURE OF THE LAWSUIT
`
`1.
`
`This is a claim for patent infringement arising under the patent laws of the
`
`United States, Title 35 of the United States Code.
`
`PARTIES
`
`2.
`
`Plaintiff Rothschild GPS Sharing Innovations, LLC (“Rothschild GPS Sharing
`
`Innovations”) is a Florida corporation with its principal place of business at 1108 Kane
`
`Concourse, Suite #310, Bay Harbor Islands, FL 33154.
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`Case 3:14-cv-00819-GPC-NLS Document 1 Filed 04/07/14 Page 2 of 8
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`3.
`
`Rothschild GPS Sharing Innovations is the owner of record and assignee of US
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`Patent No. 7,917,285 (“the ‘285 Patent”). Rothschild GPS Sharing Innovations has and has
`
`had the exclusive right to enforce and collect damages for infringement of the ‘285 Patent
`
`during all relevant time periods. One of the principal investors in Rothschild GPS Sharing
`
`Innovations is Leigh Rothschild, who was the sole inventor of the ‘285 Patent.
`
`4.
`
`On information and belief, Defendant Nissan North America, Inc. (“Nissan”) is
`
`organized and existing under the laws of the State of California, having its principal place of
`
`business at One Nissan Way, Franklin, TN 37067 and having a place of business in
`
`numerous locations in this District, including one at 9800 Campus Point Drive, San Diego,
`
`CA 92121. Nissan’s registered agent in California is: Corporation Service Company d/b/a
`
`CSC – Lawyers Incorporating Service at 2710 Gateway Oaks Dr., Suite 150N, Sacramento,
`
`CA, 95833.
`
`JURISDICTION AND VENUE
`
`5.
`
`This is a civil action for patent infringement arising under the Patent Laws of
`
`the United States, 35 U.S.C. § 1, et seq., and more particularly 35 U.S.C. § 271.
`
`6.
`
`This Court has jurisdiction over the subject matter of this action under 28
`
`U.S.C. §§ 1331 and 1338(a).
`
`7.
`
`Personal jurisdiction over the defendant is proper under C.C.P. § 410.10 and
`
`the United States Constitution because this action arises from the Defendant’s commission of
`
`at least (a) transacting business and (b) committing the complained of tortious acts within
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`this jurisdiction and because Defendant is incorporated in California.
`
`8.
`
`Venue is proper in this District under 28 U.S.C. §§ 1391 (b), (c) and 1400(b).
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`Case 3:14-cv-00819-GPC-NLS Document 1 Filed 04/07/14 Page 3 of 8
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`THE PATENT-IN-SUIT
`
`9.
`
`On March 29, 2011, the ‘285 Patent, entitled “Device, System and Method for
`
`Remotely Entering, Storing and Sharing Addresses for a Positional Information Device” was
`
`duly and legally issued by the United States Patent and Trademark Office. A true and
`
`correct copy of the ‘285 Patent is attached as Exhibit A.
`
`10.
`
`The ‘285 Patent was previously assigned to Qaxaz LLC and has been asserted
`
`in two previous patent infringement lawsuits, resulting in nine licensees of the ‘285 patent.
`
`These previous actions include: Qaxaz LLC v. BMW of North America LLC. et al, Case No.
`
`11 CV 00491, (D. Del.) and Qaxaz LLC v. Alpine Electronics of America, Inc. et al, Case
`
`No. 11 CV 00491, (D. Del.). The defendants in those actions included major automobile
`
`manufacturers such as BMW, Ford, GM, Mercedes-Benz, and Toyota.
`
`Nissan’s Knowledge Of The ‘285 Patent, How It Is Infringed,
`And Continued Infringement Despite That Knowledge
`
`11.
`
`Nissan has been aware of the ‘285 Patent no later than approximately October
`
`11, 2013, when a letter dated October 8, 2013 was delivered by Federal Express to Nissan.
`
`The letter identified the ‘285 Patent and also included a claim chart setting forth Rothschild
`
`GPS Sharing Innovations’ contention of infringement of claim 1 of the ‘285 Patent, thereby
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`making Nissan aware of the activities that constitute infringement.
`
`12.
`
`In addition to the October 11, 2013 letter and claim chart, this Complaint
`
`serves as additional notice to Nissan of the ‘285 Patent and the manner in which it is
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`infringed.
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`13.
`
`Rothschild GPS Sharing Innovations, through counsel, has corresponded with
`
`Nissan several times since the October 11, 2013 letter (including phone calls and or emails in
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`Case 3:14-cv-00819-GPC-NLS Document 1 Filed 04/07/14 Page 4 of 8
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`October, November, December, January, and February), but Nissan has not agreed to license
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`the ‘285 Patent and has not explained why a license is not necessary.
`
`14. With knowledge of the ‘285 Patent and knowledge of the manner in which the
`
`‘285 Patent is infringed, Nissan has continued to produce and distribute systems, including at
`
`least the NissanConnect™ and Infiniti Connection™ systems discussed below that infringe
`
`the ‘285 Patent.
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`15.
`
`Nissan manufactures, sells, and imports automobiles under both the Nissan and
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`Infiniti brands. On information and belief, Infiniti is a brand owned by and a division of
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`Nissan’s parent company Nissan Motor Company, Ltd.
`
`16.
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`In some of the automobiles it manufactures and sells, Nissan offers an option
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`called “NissanConnect™” or “Infiniti Connection™” that enables users to remotely connect
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`with their automobiles, including a feature that enables users to find locations/destinations
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`using a desktop computer and/or a mobile application and send the locations/destinations to
`
`the navigation systems in their automobiles.
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`17.
`
`On information and belief, Nissan owns or controls the NissanConnect™ and
`
`Infiniti Connection™ servers. These servers receive a request for an address of a location
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`not already stored in a positional information device, determine the address and transmit the
`
`determined address to the positional information device (i.e., a Nissan or Infiniti car with a
`
`navigation system).
`
`18.
`
`In light of its knowledge of the ‘285 Patent, knowledge of the manner in which
`
`it is infringed, and refusal to license the ‘285 Patent, Nissan was objectively reckless in
`
`continuing to engage in actions that directly and indirectly infringe the ‘285 Patent. Nissan
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`Case 3:14-cv-00819-GPC-NLS Document 1 Filed 04/07/14 Page 5 of 8
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`knew or should have known that there was an objectively high likelihood that its actions
`
`constituted infringement of a valid patent.
`
`COUNT I: DIRECT INFRINGEMENT OF THE ‘285 PATENT
`
`19.
`
`Rothschild GPS Sharing Innovations incorporates by reference the allegations
`
`set forth in paragraphs 1 through 18 of this Complaint as though set forth fully herein.
`
`20.
`
`By making, using, selling, or offering for sale in this District and elsewhere in
`
`the United States, without authorization or license from Rothschild GPS Sharing
`
`Innovations, products or systems covered by one or more claims of the ‘285 Patent,
`
`Defendant Nissan has been and is currently infringing the ‘285 Patent directly in violation of
`
`35 U.S.C. § 271(a).
`
`21.
`
`Nissan has and controls a server computer and makes, uses, sells, and offers for
`
`sale a positional information device (e.g., the in car navigation unit), that together meet each
`
`and every element of one or more of the claims in the ‘285 patent, resulting in direct
`
`infringement of the ‘285 patent.
`
`22.
`
`23.
`
`Nissan’s conduct is willful and deliberate.
`
`As a direct and proximate result of Nissan’s acts, Rothschild GPS Sharing
`
`Innovations has been and continues to be injured, has sustained, and will continue to sustain,
`
`substantial damages in an amount not yet determined.
`
`COUNT II: INDUCING INFRINGEMENT OF THE ‘285 PATENT
`
`24.
`
`Rothschild GPS Sharing Innovations incorporates by reference the allegations
`
`set forth in paragraphs 1 through 18 and 19 through 23 of this Complaint as though set forth
`
`fully herein.
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`Case 3:14-cv-00819-GPC-NLS Document 1 Filed 04/07/14 Page 6 of 8
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`25.
`
`Nissan, through previous correspondence from Rothschild GPS Sharing
`
`Innovations, and based upon this Complaint, is actually aware of the ‘285 patent and the acts
`
`that constitute infringing conduct.
`
`26. With knowledge of the ‘285 patent and knowledge of the acts that constitute
`
`infringement of the ‘285 patent, Nissan acted with the specific intent to induce the direct
`
`infringement of the ‘285 patent.
`
`27.
`
`Specific acts undertaken by Nissan to induce infringement of the claims of the
`
`‘285 patent include: (1) producing and selling positional information devices (e.g., in-vehicle
`
`navigation units) that can receive addresses remotely; (2) producing and distributing a
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`mobile application that enables individuals to send addresses to their vehicles; (3)
`
`maintaining and controlling a website that enables individuals to send addresses to their
`
`vehicles; and (4) expressly encouraging or instructing individuals to search for an address
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`and send it to their vehicles.
`
`28.
`
`Nissan’s customers directly infringe the ‘285 Patent when they use the claimed
`
`system by putting the system into service (e.g., by remotely requesting an address and
`
`sending it to their vehicles) thereby controlling the system as a whole and obtaining a benefit
`
`from it (e.g., the address is sent to the customers’ vehicles).
`
`29.
`
`Nissan is liable to Rothschild GPS Sharing Innovations for inducing
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`infringement of the ‘285 Patent, in violation of 35 U.S.C. § 271(b).
`
`30.
`
`Nissan’s conduct is willful and deliberate.
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`Case 3:14-cv-00819-GPC-NLS Document 1 Filed 04/07/14 Page 7 of 8
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`31.
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`As a direct and proximate result of Nissan’s acts, Rothschild GPS Sharing
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`Innovations has been and continues to be injured, has sustained, and will continue to sustain,
`
`substantial damages in an amount not yet determined.
`
`REQUEST FOR RELIEF
`
`WHEREFORE, Rothschild GPS Sharing Innovations requests that this Court enter
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`judgment:
`
`A. Adjudging, finding and declaring that Nissan has directly infringed and indirectly
`
`infringed (via induced infringement) the asserted claims of the Patent-In-Suit under
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`35 U.S.C. § 271;
`
`B. Adjudging, finding and declaring that infringement by Nissan is willful and
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`deliberate;
`
`C. Ordering Nissan to pay Rothschild GPS Sharing Innovations an amount that, as
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`adequately as possible, compensates Rothschild GPS Sharing Innovations for
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`infringement by Nissan, in no event less than a reasonable royalty fee;
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`D. Ordering Nissan to pay court costs, pre-judgment interest, post-judgment interest, and
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`attorneys’ fees under 35 U.S.C. §§ 284 and 285;
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`E. Finding that this is an “exceptional” case pursuant to 35 U.S.C. § 285, and awarding
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`enhanced damages up to and including treble the amount of damages and the payment
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`of attorneys’ fees; and
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`F. Granting Rothschild GPS Sharing Innovations such other and further relief as is just
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`and proper, or as the Court deems appropriate.
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`Case 3:14-cv-00819-GPC-NLS Document 1 Filed 04/07/14 Page 8 of 8
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`JURY DEMAND
`
`Rothschild GPS Sharing Innovations demands a trial by jury on all issues that may be
`
`so tried.
`
`Dated: April 7, 2014
`
`Respectfully submitted,
`
`/s/ Gregory Markow
`
`Gregory S. Markow (Cal. Bar No. 216748)
`E-mail: gsm@markowlaw.com
`600 West Broadway, Suite 700
`San Diego, CA 92101
`Telephone: 619.500.3644
`Facsimile: 619.272.7090
`
`David Berten (IL Bar No. 6200898)
`(pro hac vice to be filed)
`E-mail: dberten@giplg.com
`Alexander Debski (IL Bar No. 6305715)
`(pro hac vice to be filed)
`E-mail: adebski@giplg.com
`Global IP Law Group, LLC
`233 South Wacker Drive, 92nd Floor
`Chicago, IL 60606
`T: (312) 241-1500
`F: (312) 241-1522
`
`Attorneys for Plaintiff Rothschild GPS
`Sharing Innovations, LLC.
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