Case 1:20-cv-00907-CFC Document 16 Filed 12/04/20 Page 1 of 9 PageID #: 263
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`APPLE INC.,
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` Plaintiff,
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`C.A. No. 20-907-CFC
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`v.
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`UNIVERSAL SECURE REGISTRY, LLC,
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`Defendant.
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`AMENDED COMPLAINT FOR DECLARATORY JUDGMENT OF
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`NONINFRINGEMENT
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`Plaintiff Apple Inc. (“Apple”) files this Amended Complaint for Declaratory Judgment of
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`Noninfringement against Defendant Universal Secure Registry, LLC (“USR”) and alleges as
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`follows:
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`NATURE OF THE ACTION
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`1.
`This is an action for a declaratory judgment of noninfringement arising under the
`patent laws of the United States, Title 35 of the United States Code.
`2.
`Apple is a California corporation with its principal place of business at One Apple
`Park Way, Cupertino, California 95014. Apple designs, manufactures, and markets mobile
`communication and media devices and personal computers, and sells a variety of related
`software, services, accessories, networking solutions, and third-party digital content and
`applications.
`3.
`Apple’s many pioneering and revolutionary products spanning its history include
`the Macintosh PC (first released in 1984), PowerBook (first released in 1991), Newton (first
`released in 1993), PowerMac (first released in 1994), iMac (first released in 1998), iPod (first
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`released in 2001), iTunes Store (opened in 2003), MacBook (first released in 2006), iPhone and
`Apple TV (first released in 2007), Apple App Store (opened in 2008), Siri (first released in
`2010), iPad (first released in 2010), Apple Pay (first released in 2014), Apple Watch (first
`released in 2015), and AirPods (first released in 2016).
`4.
`The United States Patent and Trademark Office has awarded Apple thousands of
`patents protecting the technological inventions underlying Apple’s groundbreaking products and
`services. Many well-known functionalities and features of Apple’s products were made possible
`with the inventions of Apple engineers.
`5.
`Defendant USR is a patent holding company focused on patent licensing. USR
`purports to be the owner of U.S. Patent No. 10,163,103 (“’103 patent”) (“the Asserted Patent”).
`The Chairman and CEO of USR is Kenneth Weiss. Mr. Weiss is a named inventor on the
`Asserted Patent.
`6.
`Apple does not infringe the Asserted Patent, as set forth below.
`7.
`USR’s actions and statements have created a real and substantial controversy that
`warrants issuance of a declaratory judgment of noninfringement concerning whether Apple
`infringes the Asserted Patent.
`8.
`This Court should not allow the imminent threat of a lawsuit to harm and cause
`uncertainty to Apple’s business.
`PRIOR RELATED PROCEEDING
`9.
`On May 21, 2017, USR filed a complaint for patent infringement against Apple,
`Visa Inc., and Visa U.S.A. Inc. (collectively, “Visa”) styled Universal Secure Registry LLC v.
`Apple Inc., et al., Case No. 17-585-CFC-SRF (“17-585 Case”). The four patents-in-suit in the
`17-585 Case, U.S. Patent Nos. 8,577,813 (“’813 patent”), 8,856,539 (“’539 patent”), 9,100,826
`(“’826 patent”), and 9,530,137 (“’137 patent”) (collectively, the “17-585 Case Patents”), are all
`related to and/or include overlapping or substantially similar subject matter to the Asserted
`Patent in this action for declaratory judgment. The Complaint in the 17-585 Case is attached to
`this Complaint as Exhibit A.
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`10.
`The products accused of infringement in the 17-585 Case included Apple
`Products that are capable of using Apple Pay or conducting transactions through Apple’s iTunes
`software, including iPhones, and iPads (collectively “Accused Apple Products”).1
`11.
`The present case is related to the 17-585 Case pursuant to District of Delaware LR
`3.1(b)(1) and (2).
`12.
`On August 25, 2017, Apple and Visa moved to dismiss the 17-585 Case under
`Fed. R. Civ. P. 12(b)(6). Apple and Visa’s motion argued that the 17-585 Case Patents were
`invalid for failure to claim patent-eligible subject matter under 35 U.S.C. § 101.
`13.
`On June 29, 2018, USR’s counsel sent a letter to Apple stating that USR
`“intend[ed] to move to add” the Asserted Patent to the 17-585 Case. That letter is attached to
`this Complaint as Exhibit B (identifying “U.S. Patent Application No. 14/814,740,” which
`subsequently issued as the Asserted Patent). USR’s counsel further affirmed USR’s intent to add
`the Asserted Patent to the 17-585 Case in a letter dated July 23, 2018. In that same letter, USR’s
`counsel expressed USR’s intent to serve infringement claim charts on Apple. That letter is
`attached as Exhibit C.
`14.
`In October 2018, the 17-585 Case was stayed until the Patent Trial and Appeal
`Board issued final written decisions in post-grant proceedings relating to the 17-585 Case Patents
`filed in the United States Patent and Trademark Office. The stay concluded in January 2020,
`after the last of the final written decisions in those post-grant proceedings issued.
`15.
`On June 19, 2020, USR’s counsel sent an e-mail to Apple stating that “USR does
`not intend to move to add new patents” to the 17-585 Case, but that “USR reserves the right to
`assert additional patents (including patents that issued after the filing date of the complaint in this
`action) in future cases.” A copy of that e-mail is attached as Exhibit D.
`
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`1 The specific Apple Products accused of infringement in the 17-585 Case include at least the
`products USR identified in its May 3, 2018 Initial Identification of Accused Products and
`Asserted Patents. On information and belief, USR intends to assert infringement by additional
`products as well (including, but not limited to newer models and/or versions of these products).
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`16.
`On June 30, 2020, Judge Connolly issued a Memorandum Opinion and
`accompanying Order granting Apple and Visa’s motion to dismiss the complaint in the 17-585
`Case under Fed. R. Civ. P. 12(b)(6). Judge Connolly’s Memorandum Opinion and
`accompanying Order ruled that all four of the 17-585 Case Patents were invalid under 35 U.S.C.
`§ 101, dismissed the complaint in the 17-585 Case with prejudice, and directed the case to be
`closed. See 17-585 Case, D.I. 168.
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`
`THE PARTIES
`17.
`Apple is a California corporation having its principal place of business at One
`Apple Park Way, Cupertino, California 95014.
`18.
`On information and belief, USR is a limited liability company organized and
`existing under the laws of the Commonwealth of Massachusetts with its principal place of
`business at 59 Sargent St. in Newton, Massachusetts 02458.
`JURISDICTION AND VENUE
`19.
`The Court has subject matter jurisdiction over this action pursuant to 28 U.S.C.
`§§ 1331 and 1338(a) because this action involves claims arising under the patent laws of the
`United States, 35 U.S.C. § 1, et seq., and under the Federal Declaratory Judgment Act, 28 U.S.C.
`§§ 2201 and 2202.
`20.
`Personal jurisdiction and venue are proper in this Court pursuant to 28 U.S.C.
`§§ 1391(b), 1391(c), because, on information and belief, USR has directed acts to this District,
`including acts pertaining to the Asserted Patent.
`21.
`For instance, in connection with USR’s business, USR has targeted Apple by
`asserting infringement of the Asserted Patent as well as other related patents. In particular, USR
`filed the 17-585 Case in this District alleging infringement by Apple and Visa of patents in the
`same family as the Asserted Patent.
`22.
`During the 17-585 Case, USR sent correspondence to Apple indicating USR’s
`intent to assert the Asserted Patent either in the 17-585 Case or in some future case. See Ex. B-
`D.
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`23.
`USR has also retained the law firm of Morris, Nichols, Arsht & Tunnell LLP
`(“Morris Nichols”), including lawyers based in this District, to pursue its infringement
`allegations against Apple. On information and belief, Morris Nichols attorneys in this District
`were and are responsible for managing various aspects of the 17-585 Case, including by drafting
`and filing pleadings, motions, correspondence, and other litigation tasks.
`24.
`On information and belief, Kenneth P. Weiss, the Chief Executive Officer of
`USR, traveled to this District to attend a hearing relating to Apple and Visa’s motion to dismiss
`in the 17-585 Case.
`25.
`Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391(b) and 1391(c)
`because a substantial part of the events giving rise to the claims alleged in this Complaint
`occurred or arose out of litigation occurring in this District and USR has voluntarily subjected
`itself to the Court’s personal jurisdiction with respect to the 17-585 Case.
`26.
`For these and the reasons set forth below, a substantial controversy exists between
`the parties which is of sufficient immediacy and reality to warrant declaratory relief.
`27.
`USR’s actions and allegations, outlined above, have placed a strain on Apple’s
`business and its personnel. USR’s present threat to file “future cases” against Apple casts further
`uncertainty on Apple’s business. See Ex. D.
`THE ASSERTED PATENT
`28.
`On December 25, 2018, the Patent Office issued the ’103 patent. A true and
`correct copy of the ’103 patent is attached as Exhibit E.
`29.
`On information and belief, USR purports to be the owner of the ’103 patent by
`assignment. The ’103 patent lists Kenneth P. Weiss as the sole named inventor and lists
`Defendant Universal Secure Registry LLC as the Applicant.
`30.
`As noted above, in 2018, counsel for Defendant USR informed Apple that USR
`intended to move for leave to amend the complaint in the 17-585 Case (where Defendant USR is
`the sole Plaintiff) to assert infringement of the ’103 patent. See Ex. B-C. USR later indicated in
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`correspondence that USR reserved the right to bring a future lawsuit alleging infringement of
`the ’103 patent. See Ex. D.
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`COUNT ONE
`(Declaratory Judgment of Non-Infringement of U.S. Patent No. 10,163,103)
`31.
`Apple repeats and realleges Paragraphs 1 through 30 of this Complaint.
`32.
`Apple has not infringed and does not infringe at least claim 1 of the ’103 patent,
`either directly, contributorily, or by inducement, literally or under the doctrine of equivalents,
`including through its making, use, importation into the United States, sale, and/or offer for sale
`of the Accused Apple Products.
`33.
`Claim 1 of the ’103 patent is directed to:
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`A system for authenticating a user for enabling a transaction, the system
`comprising:
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` first processor, the first processor programmed to authenticate a user of the first
`device based on secret information known to the user of the first device and to
`generate first authentication information and also configured to receive first
`biometric information of the user of the first device from a biometric sensor and
`to retrieve information corresponding to previously stored second biometric
`information of the user of the first device;
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` a
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` first wireless transceiver coupled to the first processor and programmed to
`transmit a first wireless signal; and
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`the biometric sensor configured to capture the first biometric information of the
`user of the first device; and
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`wherein the first processor is programmed to generate the first wireless signal
`including two or more of the first authentication information, at least a portion of
`at least one of the first biometric information and the second biometric
`information, and a time varying value subsequent to generation of the first
`authentication information, to provide the first wireless signal for processing by a
`second device; and
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`wherein the first processor is configured to receive an enablement signal
`indicating an approved transaction from the second device, wherein the
`enablement signal provided from the second device is based on one of the second
`device retrieving biometric information associated with the user of the first device
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` first device including:
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` a
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` a
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`from stored biometric information of a plurality of first users stored in a second
`memory of the second device and generating an indication of biometric
`authentication or the second device receiving the indication of biometric
`authentication associated with the user of the first device, and wherein the second
`device is also configured to use at least a portion of the first wireless signal with
`the indication of biometric authentication of the user of the first device to
`complete processing of the transaction, wherein processing of the transaction
`includes authentication of an identity of the user of the first device to enable the
`transaction.
`34.
`Apple does not infringe at least claim 1 of the ’103 patent because the Accused
`Apple Products lack every limitation required by claim 1. As one example, claim 1 requires a
`“first processor programmed to” both “authenticate a user of the first device based on secret
`information” and “generate the first wireless signal.” The Accused Apple Products lack the
`“first processor” that is programmed to “authenticate a user of the first device based on secret
`information” and “generate the first wireless signal.”
`35.
`Separately and additionally, claim 1 requires the first processor to generate a “first
`wireless signal including two or more of the first authentication information, at least a portion of
`at least one of the first biometric information and the second biometric information, and a time
`varying value subsequent to generation of the first authentication information.” The Accused
`Apple Products do not generate a signal that meets the requirements of this claim limitation.
`36.
`As a third and further example, claim 1 requires the first processor to be
`“programmed to … retrieve information corresponding to previously stored second biometric
`information of the user of the first device.” But the Accused Apple Products do not store any
`“second biometric information of the user” or “retrieve” any information “corresponding to” any
`such stored biometric information as those terms are used in the ’103 patent. Therefore, the
`Accused Apple Products cannot meet the claim limitation.
`37.
`Finally, to the extent claim 1 requires a “second device” that must be configured
`to, for example, “use at least a portion of the first wireless signal with the indication of biometric
`authentication of the user of the first device to complete processing of the transaction,” the
`Accused Apple Products do not comprise a “second device.” Further, the Accused Apple
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`Products do not “use” any “first wireless signal with the indication of biometric authentication of
`the user of the first device to complete processing of the transaction.” Nor does Apple direct or
`control or operate a joint enterprise with any other entity that “use[s]” any “first wireless signal”
`as required by claim 1.
`38.
`Accordingly, at least for the above reasons, the Accused Apple Products do not
`infringe claim 1 of the ’103 patent, either literally or under the doctrine of equivalents.
`39.
`Apple also does not induce infringement of the ’103 patent, or otherwise
`indirectly infringe the ’103 patent, because there is no direct infringement of the ’103 patent for
`at least the reasons stated above and because Apple has not acted with specific intent necessary
`for induced infringement.
`40.
`Apple also does not contributorily infringe at least claim 1 of the ’103 patent
`because there is no direct infringement for at least the reasons stated above and because the
`Accused Apple Products have substantial non-infringing uses, many of which do not involve
`Apple Pay or conducting transactions.
`41.
`Apple also does not jointly infringe at least claim 1 of the ’103 patent in
`conjunction with any other party at least because it does not operate any joint enterprise with or
`direct and control the acts of any third party merchant, payment network operator or bank.
`42.
`Apple does not infringe the remaining claims of the ’103 patent for at least one or
`more of the above reasons.
`43.
`As set forth above, there exists an actual controversy between Apple and
`Defendant with respect to alleged infringement of the ’103 patent of sufficient immediacy and
`reality to warrant the issuance of a declaratory judgment as to whether the ’103 patent is
`infringed. Accordingly, Apple is entitled to a judicial determination and declaration that it has
`not directly infringed, induced others to infringe, or contributed to the infringement of any claim
`of the ’103 patent.
`44.
`A judicial determination is necessary and appropriate so that Apple may ascertain
`its rights regarding the claims of the ’103 patent.
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`PRAYER FOR RELIEF
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`WHEREFORE, Apple respectfully requests that judgment be entered:
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`A. Declaring that Apple has not and does not infringe, directly, contributorily, by
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`inducement, literally or by equivalents, jointly, or willfully, any claim of the ’103
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`patent by making, using, selling, offering to sell, and/or importing of the Accused
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`Apple Products;
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`B. If the facts demonstrate that the case is exceptional within the meaning of 35 U.S.C.
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`§ 285, an award to Apple of its reasonable attorneys’ fees, expenses, and costs
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`associated with this case;
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`C. Awarding Apple any other remedy or relief to which it may be entitled and which the
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`Court deems just, proper, and equitable.
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`OF COUNSEL:
`
`Mark D. Selwyn
`Liv Herriot
`WILMER CUTLER PICKERING
` HALE AND DORR LLP
`950 Page Mill Road
`Palo Alto, CA 94304
`(650) 858-6000
`Monica Grewal
`WILMER CUTLER PICKERING
` HALE AND DORR LLP
`60 State Street
`Boston, MA 02109
`(202) 663-6000
`
`Derek A. Gosma
`WILMER CUTLER PICKERING
` HALE AND DORR LLP
`350 South Grand Avenue, Suite 2100
`Los Angeles, CA 90071
`(213) 443-5300
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`Dated: December 4, 2020
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`
`/s/ Frederick L. Cottrell, III
`Frederick L. Cottrell, III (#2555)
`Jason J. Rawnsley (#5379)
`RICHARDS, LAYTON & FINGER, P.A.
`920 North King Street
`Wilmington, DE 19801
`(302) 651-7700
`cottrell@rlf.com
`rawnsley@rlf.com
`
`Attorneys for Plaintiff Apple Inc.
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