Case 1:19-cv-02073-CFC Document 1 Filed 10/31/19 Page 1 of 5 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`
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`BLACKBOARD INC.,
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`
`
` v.
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`UNILOC 2017 LLC,
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`
`
`
` Plaintiff,
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` Defendant.
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`:
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`:
`
`CASE NO.
`:
`:
`
`:
`
`:
` JURY TRIAL DEMANDED
`:
`:
`:
`
`
`
`
`
`
`COMPLAINT FOR DECLARATORY JUDGMENT
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`Plaintiff Blackboard Inc. brings this action against Defendant Uniloc 2017 LLC and pleads
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`
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`as follows:
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`NATURE OF THE ACTION
`
`
`
`1.
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`This is an action arising under the Declaratory Judgment Act, 28 U.S.C. § 2201 et
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`seq. and the patent laws of the United States, 35 U.S.C. § 1 et seq. Blackboard Inc. requests a
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`declaratory judgment of non-infringement of one or more claims of U.S. Patent No. 6,324,578,
`
`entitled “Methods, Systems and Computer Program Products for Management of Configurable
`
`Application Programs on a Network,” which issued on November 27, 2001 (the “’578 patent”)
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`(Ex. A), and U.S. Patent No. 7,069,293, entitled “Methods, Systems and Computer Program
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`Products for Distribution of Application Programs to a Target Station on a Network,” which issued
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`on June 27, 2006 (the “’293 patent”) (Ex. B) (collectively the “patents-in-suit”).
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`RELATED CASES
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`
`
`2.
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`At least two cases involving the same patents-in-suit are pending in this District.
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`Those cases will likely involve common issues of law and fact. They include Uniloc 2017 LLC v.
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`
`BLACKBOARD INC.,
`
`
`
` v.
`
`UNILOC 2017 LLC,
`
`
`
`
` Plaintiff,
`
` Defendant.
`
`:
`
`:
`
`CASE NO.
`:
`:
`
`:
`
`:
` JURY TRIAL DEMANDED
`:
`:
`:
`
`
`
`
`
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`
`Plaintiff Blackboard Inc. brings this action against Defendant Uniloc 2017 LLC and pleads
`
`
`
`as follows:
`
`NATURE OF THE ACTION
`
`
`
`1.
`
`This is an action arising under the Declaratory Judgment Act, 28 U.S.C. § 2201 et
`
`seq. and the patent laws of the United States, 35 U.S.C. § 1 et seq. Blackboard Inc. requests a
`
`declaratory judgment of non-infringement of one or more claims of U.S. Patent No. 6,324,578,
`
`entitled “Methods, Systems and Computer Program Products for Management of Configurable
`
`Application Programs on a Network,” which issued on November 27, 2001 (the “’578 patent”)
`
`(Ex. A), and U.S. Patent No. 7,069,293, entitled “Methods, Systems and Computer Program
`
`Products for Distribution of Application Programs to a Target Station on a Network,” which issued
`
`on June 27, 2006 (the “’293 patent”) (Ex. B) (collectively the “patents-in-suit”).
`
`RELATED CASES
`
`
`
`2.
`
`At least two cases involving the same patents-in-suit are pending in this District.
`
`Those cases will likely involve common issues of law and fact. They include Uniloc 2017 LLC v.
`
`
`
`Case 1:19-cv-02073-CFC Document 1 Filed 10/31/19 Page 2 of 5 PageID #: 2
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`ZenPayroll Inc. d/b/a Gusto, C.A. No. 19-1075 (CFC), and Nexon America Inc. v. Uniloc 2017
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`LLC, C.A. No. 19-1096 (RGA).
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`PARTIES
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`
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`3.
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`Plaintiff Blackboard Inc. is a Delaware corporation with its principal place of
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`business in Washington, D.C.
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`
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`4.
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`Upon information and belief, Defendant Uniloc 2007 LLC (“Uniloc”) is a Delaware
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`limited liability company.
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`JURISDICTION AND VENUE
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`
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`5.
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`This is an action for patent infringement arising under the patent laws of the United
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`States, Title 35 of the United States Code. This Court has jurisdiction over this action pursuant to
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`28 U.S.C. §§ 1331,1338(a), 2201, and 2202.
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`
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`6.
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`Uniloc is subject to personal jurisdiction in Delaware because it is formed under
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`Delaware law and because it has brought suit alleging infringement of the patents-in-suit in this
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`Court against numerous defendants.
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`
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`7.
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`Venue is proper in the District of Delaware pursuant to 28 U.S.C. § 1391(b)(1)
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`because Uniloc resides here.
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`GENERAL ALLEGATIONS
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`Uniloc claims to be the owner of the patents-in-suit.
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`Upon information and belief, Uniloc is under common control with related entities
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`
`
`
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`8.
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`9.
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`including Uniloc USA, Inc. and Uniloc Luxembourg, S.A. (the “other Uniloc entities”). In 2016,
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`the other Uniloc entities sued Blackboard for infringement of the patents-in-suit in the U.S. District
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`Court for the Eastern District of Texas. See Uniloc USA, Inc. v. Blackboard, Inc., C.A. No. 16-
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`859 (E.D. Tex). In 2017, when it became apparent that they were about to suffer adverse rulings
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`
`
`2
`
`
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`Case 1:19-cv-02073-CFC Document 1 Filed 10/31/19 Page 3 of 5 PageID #: 3
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`both on claim construction and Blackboard’s pending motion to dismiss, they voluntarily
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`dismissed their claims against Blackboard and simultaneously re-filed them in the U.S. District
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`Court for the Western District of Texas, where they remain pending. See Uniloc USA, Inc. v.
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`Blackboard, Inc., C.A. No. 17-755 (W.D. Tex).
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`
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`10.
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`In May 2018, the other Uniloc entitles purportedly assigned the patents-in-suit to
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`Uniloc. As a result, as of the filing of this complaint for declaratory judgment, the plaintiffs in the
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`Western District of Texas case lack standing to pursue the claims at issue there.
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`
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`11.
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`Uniloc, which claims to be the entity with standing to sue Blackboard, has not sued
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`Blackboard in any court. Nor has Uniloc been joined as a plaintiff in the case against Blackboard
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`in the Western District of Texas. And neither Uniloc nor the other Uniloc entities has sought such
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`joinder. Uniloc nevertheless contends that Blackboard infringes the patents-in-suit.
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`
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`12.
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`Blackboard does not infringe the patents-in-suit. Indeed, under a final non-
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`appealable claim construction order by the Eastern District of Texas, there can be no good faith
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`basis for a claim that Blackboard infringes the patents-in-suit.
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`COUNT I
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`NON-INFRINGEMENT OF THE ’578 PATENT
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`
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`13.
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`14.
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`Blackboard incorporates the foregoing paragraphs as if separately set forth herein.
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`There is an actual controversy within the meaning of 28 U.S.C. §§ 2201 and 2202
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`between Blackboard and Uniloc concerning the infringement of claims of the ’578 patent that
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`requires a declaration of rights by this Court.
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`
`
`
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`15.
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`16.
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`Blackboard has not infringed one or more claims of the ’578 patent.
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`Blackboard is entitled to a declaration that it has not infringed one or more claims
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`of the ’578 patent.
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`
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`3
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`
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`Case 1:19-cv-02073-CFC Document 1 Filed 10/31/19 Page 4 of 5 PageID #: 4
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`COUNT II
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`NON-INFRINGEMENT OF THE ’293 PATENT
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`
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`
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`17.
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`18.
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`Blackboard incorporates the foregoing paragraphs as if separately set forth herein.
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`There is an actual controversy within the meaning of 28 U.S.C. §§ 2201 and 2202
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`between Blackboard and Uniloc concerning the infringement of claims of the ’293 patent that
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`requires a declaration of rights by this Court.
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`
`
`
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`19.
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`20.
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`Blackboard has not infringed one or more claims of the ’293 patent.
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`Blackboard is entitled to a declaration that it has not infringed one or more claims
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`of the ’293 patent.
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`DEMAND FOR JURY TRIAL
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`Blackboard demands a jury trial on all issues so triable.
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`REQUESTED RELIEF
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`Blackboard respectfully requests that this Court:
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`a.
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`Issue a declaratory judgment of non-infringement as to one or more claims of the
`
`
`
`
`
`
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`’578 patent.
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`
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`b.
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`Issue a declaratory judgment of non-infringement as to one or more claims of the
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`’293 patent.
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`
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`c.
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`Find this case exceptional under 35 U.S.C. § 285 and award Blackboard its
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`attorneys’ fees and costs.
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`
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`
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`d.
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`e.
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`Award Blackboard its costs pursuant to 28 U.S.C. § 1920; and
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`Grant Blackboard other such relief as the Court deems just and proper.
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`4
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`Case 1:19-cv-02073-CFC Document 1 Filed 10/31/19 Page 5 of 5 PageID #: 5
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`
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`OF COUNSEL:
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`Michael S. Nadel
`MCDERMOTT WILL & EMERY LLP
`500 North Capitol Street, N.W.
`Washington, D.C. 20001
`(202) 756-8000
`
`Charles M. McMahon
`MCDERMOTT WILL & EMERY LLP
`444 West Lake Street
`Chicago, Illinois 60606
`(312) 372-2000
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`October 31, 2019
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`MCDERMOTT WILL & EMERY LLP
`
`/s/ Ethan H. Townsend
`Ashley R. Altschuler (#3803)
`Ethan H. Townsend (#5813)
`The Nemours Building
`1007 North Orange Street, 4th Floor
`Wilmington, Delaware 19801
`(302) 485-3911
`
`Counsel for Plaintiff Blackboard Inc.
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`
`
`
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