Case: 1:11-cv-07607 Document #: 1 Filed: 10/25/11 Page 1 of 31 PageID #:1
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`HELFERICH PATENT LICENSING, LLC,
`an Illinois Limited Liability Company,
`
`
`
`
`Plaintiff,
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`v.
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`
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`CBS CORPORATION,
`a Delaware Corporation,
` Defendant.
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`
`No. 1:11-cv-07607
`
`
`(Jury Trial Demanded)
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`
`
`Plaintiff Helferich Patent Licensing, LLC (“HPL”), by and through its undersigned
`
`counsel, complains against CBS Corporation (“CBS”) as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action for patent infringement arising under the United States
`
`Patent Act, 35 U.S.C. §§ 101-376, including 35 U.S.C. § 271. This Court has subject
`
`matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a) in that this is a civil action
`
`arising out of the patent laws of the United States of America.
`
`JURISDICTION AND VENUE
`
`2.
`
`This Court has personal jurisdiction over Defendant because Defendant
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`conducts substantial and continuous business in the State of Illinois and in this District,
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`including maintaining its offices for WBBM-TV located in the Chicago, IL, and
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`purposefully directs its infringing activities to residents of this State and District by
`
`CBS 1005
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`HELFERICH PATENT LICENSING, LLC,
`an Illinois Limited Liability Company,
`
`
`
`
`Plaintiff,
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`CBS CORPORATION,
`a Delaware Corporation,
` Defendant.
`
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`No. 1:11-cv-07607
`
`
`(Jury Trial Demanded)
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`
`
`Plaintiff Helferich Patent Licensing, LLC (“HPL”), by and through its undersigned
`
`counsel, complains against CBS Corporation (“CBS”) as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action for patent infringement arising under the United States
`
`Patent Act, 35 U.S.C. §§ 101-376, including 35 U.S.C. § 271. This Court has subject
`
`matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a) in that this is a civil action
`
`arising out of the patent laws of the United States of America.
`
`JURISDICTION AND VENUE
`
`2.
`
`This Court has personal jurisdiction over Defendant because Defendant
`
`conducts substantial and continuous business in the State of Illinois and in this District,
`
`including maintaining its offices for WBBM-TV located in the Chicago, IL, and
`
`purposefully directs its infringing activities to residents of this State and District by
`
`CBS 1005
`
`
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`Case: 1:11-cv-07607 Document #: 1 Filed: 10/25/11 Page 2 of 31 PageID #:2
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`causing infringing messages to be sent to residents of this State and District, as described
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`more fully in the paragraphs hereafter.
`
`3.
`
`Venue is appropriate pursuant to 28 U.S.C. § 1391(c) and 1400(b) because,
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`among other reasons, Defendant is subject to personal jurisdiction in this District, and has
`
`caused infringing messages to be sent to residents of this State and District.
`
`PLAINTIFF
`
`4.
`
`HPL is an Illinois limited liability company with a principal place of
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`business at 70 W. Madison St., Three First National Plaza, Suite 1400, Chicago, IL
`
`60602. HPL is the exclusive licensee of twenty-five (25) U.S. patents, eleven (11)
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`pending U.S. applications, and over a dozen related foreign patents and patent
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`applications all relating to mobile wireless communication devices and the provision of
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`media and content to such devices (collectively the “HPL Portfolio”). The HPL Portfolio
`
`includes the patents and applications listed in Exhibit A.
`
`5.
`
` On November 16, 2010, the United States Patent and Trademark Office
`
`(“Patent Office”) issued Patent No. 7,835,757 entitled “System and Method for
`
`Delivering Information to a Transmitting and Receiving Device” (the “‘757 patent”).
`
`HPL is the exclusive licensee of all right, title, and interest in the ‘757 patent.
`
`6.
`
`The ‘757 patent provides for methods and systems relating to wireless
`
`messaging to mobile devices. More particularly, the patent includes claims that relate to,
`
`among other things, the transmission of notification messages to mobile devices that
`
`include identifiers (such as a URL) that identify content available for download. Other
`2
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`
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`claims relate to notifications that identify content that is updated or changed prior to the
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`content being sent to the mobile user in response to a request for such content. Examples
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`of such notifications include SMS messages that include an identifier of content (such as
`
`a URL) in the message, and where the identified content is updated and/or changed by the
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`content provider between the time the notification is sent and the time the content is
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`requested. Yet another set of claims relates to notifications that indicate the time the
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`identified content is to be available. Examples of such notifications include MMS
`
`notifications or an SMS message that includes an identifier of content (such as a URL) as
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`well as an indication of the time the content is to be available (such as text indicating a
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`“24 hour sale”) and where the identified content is either removed or changed after the
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`expiration of the time period specified in the notification.. The ‘757 patent also includes
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`claims relating to the transmission of notification messages to mobile devices that include
`
`acknowledgement requests. Examples of such notifications include MMS notifications
`
`that include requests for delivery reports.
`
`7.
`
`On March 3, 2009, the Patent Office issued Patent No. 7,499,716 entitled
`
`“System and Method for Delivering Information to a Transmitting and Receiving
`
`Device” (the “‘716 patent”). HPL is the exclusive licensee of all right, title, and interest
`
`in the ‘716 patent.
`
`8.
`
`The ‘716 patent provides for methods and systems that relate to wireless
`
`messaging to mobile devices. More particularly, the patent includes claims that relate to,
`
`among other things, the transmission of notification messages to mobile devices that
`
`3
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`Case: 1:11-cv-07607 Document #: 1 Filed: 10/25/11 Page 4 of 31 PageID #:4
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`include identifiers (such as a URL) that identify content available for download. Other
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`claims relate to notifications that indicate the time the identified content is to be
`
`available. An example of such a notification is an MMS or SMS notification that
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`includes an identifier of content (such as a URL) as well as an indication of the time the
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`content is to be available (such as text indicating a “24 hour sale”) and where the
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`identified content is either removed or changed after the expiration of the time period
`
`specified in the notification. The ‘757 patent also includes claims relating to the
`
`transmission of notification messages to mobile devices from which content providers
`
`can receive commands to perform on the content. Examples of such notifications include
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`MMS notifications in response to which various commands to perform on content, such
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`as a “reply” command, “forward” command, or “delete” command, are received.
`
`9.
`
`On October 9, 2007, the Patent Office issued Patent No. 7,280,838 entitled
`
`“Paging Transceivers and Methods for Selectively Retrieving Messages” (the “‘838
`
`patent”). HPL is the exclusive licensee of all right, title, and interest in the ‘838 patent.
`
`10.
`
`The ‘838 patent provides for methods and systems relating to wireless
`
`messaging to mobile devices. More particularly, the ‘838 patent includes claims that
`
`relate to, among other things, the transmission of notification messages to mobile devices
`
`that include identifiers (such as a URL) that identify content available for download.
`
`Examples of such notifications include SMS or MMS messages that include an identifier
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`of content (such as a URL) in the message.
`
`4
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`
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`11. On December 26, 2006, the Patent Office issued Patent No. 7,155,241
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`entitled “Systems and Methods for Enabling a User of a Communication Device to
`
`Manage Remote Information” (the “‘241 patent”). HPL is the exclusive licensee of all
`
`right, title, and interest in the ‘241 patent.
`
`12.
`
`The ‘241 patent provides for methods and systems relating to wireless
`
`messaging to mobile devices. More particularly, the ‘241 patent includes claims that
`
`relate to the transmission of notification messages to mobile devices that include
`
`acknowledgement requests. Examples of such notifications include MMS notifications,
`
`which include requests for delivery reports.
`
`13. On July 14, 2010, HPL filed suit against New York Times Company
`
`asserting infringement by the New York Times Company of threeof the patents asserted
`
`herein: the ‘757 patent, the ‘716 patent, and the ‘838 patent. Approximately six (6)
`
`months later (in late February 2011), New York Times Company filed three (3) ex parte
`
`reexaminations in the Patent Office, one for each of these three asserted patents. While
`
`all three reexaminations are still under review, the Patent Office has confirmed as
`
`patentable the following claims without amendment:
`
`(cid:120) Reexamination SN 90/009,882 (corresponding to the ‘757 patent): 1, 6, 11,
`18, 19, and 20 (all other claims are still under review).
`(cid:120) Reexamination SN 90/009,880 (corresponding to the ‘716 patent): claims 2,
`16, 22, 23, 31, 34, 35, 38, 39, 43, 48, 49, 52, and 58 (all other claims are
`still under review).
`
`
`
`14.
`
`In addition, HPL recently received Notices of Allowance for pending
`
`applications Serial Nos. 11/598,202, 12/167,971, and 12/367,358, all of which were
`
`5
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`allowed by the Patent Office over express consideration of art and arguments present by
`
`New York Times Company in the aforementioned ex parte reexamination requests. HPL
`
`anticipates amending this Complaint to add allegations of infringement of the allowed
`
`claims, once issued.
`
`15.
`
`To date, more than eighty-five (85) of the world’s most sophisticated
`
`companies have agreed to a license to the HPL Portfolio. Licensees include: ABInBev
`
`(Anheuser Busch), Adidas/Reebok, ADT Securities, Advanced Publications (Condé
`
`Nast), Ally Bank, Amazon, American Eagle Outfitters, American Greetings, Apple,
`
`Carnival Cruise Lines, Coinstar, Dairy Queen, Dell, Disney, eBay, Epitaph Records, Glu
`
`Mobile, GSI Commerce (owned by eBay), Hair Cuttery, Harley-Davidson, Hewlett-
`
`Packard (and Palm), H&R Block, KGB, Macy’s, McDonald’s, MGM Resorts
`
`International, Microsoft, Motorola Mobility, the National Football League, the National
`
`Hockey League, Newegg.com, Qdoba Restaurants, Redbox, Research in Motion, Sears
`
`Holding Corporation, Shoptext, Starbucks, Steve Madden, Taco Bell, Toyota, World
`
`Wrestling Entertainment, Walgreens, Yamaha, Zuffa/UFC and numerous other
`
`companies including those whose identities HPL has agreed to keep confidential.
`
`The Defendant
`
`16. Defendant CBS is a Delaware corporation with its principal place of business
`
`in New York City, New York. CBS is an entertainment company comprised of television
`
`networks and studios, cable networks, publishing, and local broadcasting. CBS
`
`broadcasts reach millions of viewers throughout the country, including in Chicago,
`6
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`Illinois. Moreover, CBS purposefully directs its infringing activities (described below) to
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`residents of this State and District by causing infringing messages to be sent to residents
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`of the State of Illinois and this District.
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`17. Within the last six (6) years, CBS has initiated and caused numerous
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`infringing messages to be sent in connection with at least the following product and
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`service offerings:
`
`a)
`
`CBS provides alerts to its customers’ mobile devices via SMS messaging,
`
`whereby CBS causes infringing messages to be sent to its customers’ mobile devices
`
`alerting its customers of programming and other offerings that often include an identifier
`
`of content (such as a URL) within the notification. Moreover, such notifications often
`
`link to dynamic content (e.g., content that is changed between the time of the original
`
`notification and the time such content is requested), as well as indicate the time the
`
`identified content is to be available. For example, in October, 2011, CBS sent a message
`
`to its mobile alert subscribers via SMS pertaining to a news story form the CBS Program
`
`Entertainment Tonight.
`
` The SMS message linked to the mobile website for
`
`Entertainment Tonight. Figure 1, below, shows the message, and Figures 2 and 3 show
`
`that the content is dynamic because the content was different when accessed at two
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`different times.
`
`7
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`
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`Figures 1, 2, and 3.
`Figure 1 provides an example of an SMS
`message created and caused to be delivered by
`CBS containing a specific URL identifying the
`CBS content shown in Figures 2 and 3, which
`CBS delivered to a mobile phone upon a
`request (using the provided URL) to do so.
`Figure 2 shows the content when first
`accessed, and Figure 3 shows the content when
`accessed at a later time with an additional
`comment.
`
`8
`
`
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`(b) CBS also provides alerts to its customers’ mobile devices via MMS
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`messaging, whereby CBS causes infringing messages to be sent to its customers’ mobile
`
`devices alerting its customers of programming and other offerings that often include an
`
`identifier of content (such as a URL) within the notification. Further, these MMS
`
`messages include acknowledgement requests, include an indication of the time the MMS
`
`content is available, and enable CBS to receive commands to perform on the content. For
`
`example, on May 3, 2010, CBS sent a mobile alert to its subscribers via MMS messaging
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`that included a slideshow for CBS’s “Entertainment Tonight” program. Figures 4-6,
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`below, show the message and the content.
`
`Figures 4-6. CBS initiated the above MMS message to a mobile user containing a slide
`show including the two photographs pictured.
`
`9
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`(c)
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`CBS also causes infringing messages to be sent through its various social
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`media websites. For example, in conjunction with its @CBSNews Twitter feed, CBS
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`causes thousands, if not millions, of infringing messages to be sent via SMS to its
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`“followers” daily, as shown below in Figures 7 and 8. Many of the messages indicate the
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`time the content is available, and others contain identifiers to dynamic content where the
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`content is changed between the time of the notification and the time the content is
`
`requested by CBS’s customers.
`
`Figures 7 and 8 An @CBSNews Twitter feed
`alert received via SMS messaging, and
`associated with the content identified by
`http://t.co/EUYaPOUB.
`
`10
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`
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`18. On or about June 2, 2010, HPL gave written notice to CBS of its
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`infringement of the ‘716, ‘838, and ‘241 patents. The notice letter provided CBS with a
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`detailed description of the claims, and in addition, provided detailed information
`
`including infringement charts demonstrating infringement of the claims. On or about
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`January 18, 2011, HPL gave written notice to CBS of its infringement of the ‘757 patent,
`
`which had not issued at the time of HPL’s initial letter to CBS. The June 2, 2010 notice
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`letter provided CBS with a detailed description of the claims of the ‘757 patent (then
`
`pending application 12/764,025), and in addition, provided detailed information including
`
`infringement charts demonstrating infringement of the claims.
`
`19.
`
` For the past sixteen (16) months, CBS has continued to infringe HPL’s
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`patents while repeatedly refusing to accept a license on HPL’s well-established and
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`reasonable licensing terms. CBS refused a license even in the face of the Patent Office
`
`both confirming existing claims and allowing new claims over express consideration of
`
`the prior art and arguments proffered by New York Times Company and others now
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`cooperating with New York Times Company. More specifically:
`
`(a)
`
` Following Notice, CBS Ignored HPL for Eight (8) Months: As mentioned
`
`above, HPL first provided CBS with written notice of its infringement in June 2010.
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`Thereafter, HPL periodically wrote to CBS inviting CBS to once again consider a license
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`(or, in the alternative, to present defenses) and to provide CBS with periodic updates
`
`regarding HPL’s ongoing
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`licensing,
`
`litigation and patent prosecution efforts.
`
`Specifically, HPL sent letters to CBS on July 16, 2010, November 1, 2010, January 18,
`
`11
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`2011, March 30, 2011, and May 24, 2011, respectively. Notwithstanding HPL’s detailed
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`notice letter and many subsequent communications, CBS completely ignored HPL until
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`February 2, 2011—some eight (8) months after HPL’s first communication—at which
`
`time CBS tersely stated that it was still “reviewing” the matter.
`
`(b) CBS Continued to Refuse a License After New York Times Filed its Ex
`
`Parte Reexaminations: As discussed above, in late February 2011, New York Times filed
`
`its three (3) ex parte reexaminations on the ‘757, ‘716, and ‘828 patents. Promptly
`
`thereafter, on March 30, 2011, HPL advised CBS of the reexaminations and provided
`
`CBS with a detailed analysis explaining why HPL believed a large number of claims
`
`were likely to be confirmed. Notwithstanding HPL’s analysis and the fact that the
`
`reexaminations did not cover all of the patents asserted to be infringed by CBS
`
`(including, the ‘241 patent), CBS continued to refuse a license and to infringe HPL’s
`
`patents.
`
`(c)
`
`CBS Continued to Refuse a License After the PTO Confirmed Claims: As
`
`previously mentioned, in the third quarter of 2011, the Patent Office confirmed as
`
`patentable numerous infringed claims in two (2) of the pending ex parte reexamination
`
`proceedings over express consideration of New York Times Company’s invalidity
`
`arguments, including many of the claims asserted to be infringed in this Complaint.
`
`Notwithstanding the Patent Office confirming many of the claims asserted in this
`
`Complaint, CBS continued to refuse a license and to infringe HPL’s patents.
`
`12
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`(d) CBS Continued to Refuse a License After the Filing of Inter Parte
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`Reexaminations on Less than All Asserted Claims: On September 6, 2011, after the
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`Patent Office confirmed and allowed numerous infringed claims of HPL’s patents and
`
`applications over New York Times Company’s invalidity arguments, CBS’s wholly
`
`owned subsidiary, CBS Interactive, Inc., joined with several other companies (including
`
`New York Times Company) in filing yet another round of reexamination requests for the
`
`‘757, ‘716, and ‘838 patents. HPL believes that these most recent reexamination requests
`
`present cumulative arguments and include numerous items of prior art already considered
`
`by the Patent Office. In addition, the new reexamination requests fail to seek
`
`reexamination of all claims asserted to be infringed by CBS, including at least asserted
`
`claim 1 of the ‘757 patent, claims 38 and 39 of the ‘716 patent, and claims 1, 2, 10, 13,
`
`14, 38, 39, 40, 41, 42, 53, 54, 71, 72, 80, 84, and 85 of the ‘241 patent. Notwithstanding
`
`the most recent reexamination requests presenting cumulative arguments and failing to
`
`seek reexamination of all claims asserted herein, CBS continues to refuse a license and to
`
`infringe the asserted patents.
`
`COUNT I
`(Infringement of United States Patent No. 7,835,757 via SMS)
`
`20. HPL incorporates by reference Paragraphs 1 through 19 of this Complaint
`
`and realleges them as though fully set forth herein.
`
`21. HPL is informed and believes, and thereon alleges, that Defendant has been
`
`and is currently infringing the ‘757 patent in violation of 35 U.S.C. § 271(a) by, among
`
`13
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`other things, using and practicing methods that embody one or more of at least claims 1-
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`20 of the ‘757 patent within the United States without authority or license from HPL. As
`
`mentioned previously, claims 1, 6, 11 and 18-20 of the ‘757 patent have been confirmed
`
`by the Patent Office in connection with New York Times Company’s ex parte
`
`reexamination request.
`
`22. HPL is informed and believes, and thereon alleges, that Defendant infringes
`
`the ‘757 patent because it causes SMS notifications of the type described in Paragraph 6
`
`to be sent to its customers’ mobile devices. HPL is informed and believes, and thereon
`
`alleges that Defendant infringes the ‘757 patent in connection with at least the product
`
`offerings and services described in Paragraph 17, above.
`
`
`
`23.
`
`In the alternative, HPL is informed and believes, and thereon alleges, that
`
`Defendant has actively induced and is currently inducing the infringement of the ‘757
`
`patent in violation of 35 U.S.C. § 271(b) or has contributed to and is currently
`
`contributing to the infringement of the ‘757 patent in violation of 35 U.S.C. § 271(c)
`
`because numerous SMS notifications of the type described in Paragraph 22 have been,
`
`and continue to be, sent to its customers’ mobile devices.
`
`
`
`24. More specifically, Defendant has been on notice of its infringement of the
`
`‘757 patent since January of 2011, and since that time large numbers of infringing SMS
`
`messages as described in Paragraph 22 have been, and continue to be, sent to Defendant’s
`
`customers along with links to Defendant’s content. HPL is informed and believes, and
`
`thereon alleges, that if it is not Defendant causing the infringing messages to be sent as
`
`14
`
`
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`alleged in Paragraph 22, then Defendant has actively induced or contributed to, and is
`
`currently actively inducing or contributing to the actions of third parties to cause such
`
`infringing messages to be sent on its behalf, and knew or should have known that its
`
`actions would cause actual infringement of the ‘757 Patent.
`
`25.
`
`In addition, having placed Defendant on notice of infringement of the ‘757
`
`patent ten (10) months ago, HPL is informed and believes, and thereon alleges, that
`
`Defendant’s infringement of the ‘757 patent has been and continues to be willful.
`
`26. As a direct and proximate result of Defendant’s conduct, HPL has suffered
`
`and will continue to suffer irreparable injury, for which it has no adequate remedy at law.
`
`HPL has also been damaged and, until an injunction issues, will continue to be damaged
`
`in an amount yet to be determined.
`
`COUNT II
`(Infringement of United States Patent No. 7,499,716 via SMS)
`
`27. HPL incorporates by reference Paragraphs 1 through 19 of this Complaint
`
`and realleges them as though fully set forth herein.
`
`28. HPL is informed and believes, and thereon alleges, that Defendant has been
`
`and is currently infringing the ‘716 patent in violation of 35 U.S.C. § 271(a) by, among
`
`other things, using and practicing methods that embody one or more of at least claims 15,
`
`17, 18, 21, 22, 23, 27, 30, 38, and 39 of the ‘716 patent (and likely others) within the
`
`United States without authority or license from HPL. As mentioned previously, claims
`
`15
`
`
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`22, 23, 38, and 39 of the ‘716 patent have been confirmed by the Patent Office in
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`connection with New York Times Company’s ex parte reexamination request.
`
`29. HPL is informed and believes, and thereon alleges, that Defendant infringes
`
`the ‘716 patent because it causes SMS notifications of the type described in Paragraph 8
`
`to be sent to its customers’ mobile devices. HPL is informed and believes, and thereon
`
`alleges, that Defendant infringes the ‘716 patent in connection with at least the product
`
`offerings and services described in Paragraph 17, above.
`
`
`
`30.
`
`In the alternative, HPL is informed and believes, and thereon alleges, that
`
`Defendant has actively induced and is currently inducing the infringement of the ‘716
`
`patent in violation of 35 U.S.C. § 271(b) or has contributed to and is currently
`
`contributing to the infringement of the ‘716 patent in violation of 35 U.S.C. § 271(c)
`
`because numerous SMS notifications of the type described in Paragraph 29 have been,
`
`and continue to be, sent to its customers’ mobile devices.
`
`
`
`31. More specifically, Defendant has been on notice of its infringement of the
`
`‘716 patent since June of 2010, and since that time large numbers of infringing messages
`
`as described in Paragraph 29 have been, and continue to be, sent to Defendant’s
`
`customers along with links to Defendant’s content. HPL is informed and believes, and
`
`thereon alleges, that if it is not Defendant causing the infringing messages to be sent as
`
`alleged in Paragraph 29, then Defendant has actively induced or contributed to, and is
`
`currently actively inducing or contributing to the actions of third parties to cause such
`
`16
`
`
`
`Case: 1:11-cv-07607 Document #: 1 Filed: 10/25/11 Page 17 of 31 PageID #:17
`
`infringing messages to be sent on its behalf, and knew or should have known that its
`
`actions would cause actual infringement of the ‘716 Patent.
`
`32.
`
`In addition, having placed Defendant on notice of infringement of the ‘716
`
`patent more than sixteen (16) months ago, HPL is informed and believes, and thereon
`
`alleges, that Defendant’s infringement of the ‘716 patent has been and continues to be
`
`willful.
`
`33. As a direct and proximate result of Defendant’s conduct, HPL has suffered
`
`and will continue to suffer irreparable injury, for which it has no adequate remedy at law.
`
`HPL has also been damaged and, until an injunction issues, will continue to be damaged
`
`in an amount yet to be determined.
`
`COUNT III
`(Infringement of United States Patent No. 7,280,838 via SMS)
`
`34. HPL incorporates by reference Paragraphs 1 through 19 of this Complaint
`
`and realleges them as though fully set forth herein.
`
`35. HPL is informed and believes, and thereon alleges, that Defendant has been
`
`and is currently infringing the ‘838 patent in violation of 35 U.S.C. § 271(a) by, among
`
`other things, using and practicing methods that embody one or more of at least claims 9,
`
`10, 12, 13, 15, 16, 18, and 20 of the ‘838 patent (and likely others) within the United
`
`States without authority or license from HPL. As mentioned previously, all claims of the
`
`‘838 patent are currently under review by the Patent Office in connection with New York
`
`Time’s ex parte reexamination request.
`
`17
`
`
`
`Case: 1:11-cv-07607 Document #: 1 Filed: 10/25/11 Page 18 of 31 PageID #:18
`
`36. HPL is informed and believes, and thereon alleges, that Defendant infringes
`
`the ‘838 patent because it causes SMS notifications of the type described in Paragraph 10
`
`to be sent to its customers’ mobile devices. HPL is informed and believes, and thereon
`
`alleges, that Defendant infringes the ‘838 patent in connection with at least the product
`
`offerings and services described in Paragraph 17, above.
`
`
`
`37.
`
`In the alternative, HPL is informed and believes, and thereon alleges, that
`
`Defendant has actively induced and is currently inducing the infringement of the ‘838
`
`patent in violation of 35 U.S.C. § 271(b) or has contributed to and is currently
`
`contributing to the infringement of the ‘838 patent in violation of 35 U.S.C. § 271(c)
`
`because numerous SMS notifications of the type described in Paragraph 36 have been,
`
`and continue to be, sent to its customers’ mobile devices.
`
`
`
`38. More specifically, Defendant has been on notice of its infringement of the
`
`‘838 patent since June of 2010, and since that time large numbers of infringing messages
`
`as described in Paragraph 36 have been, and continue to be, sent to Defendant’s
`
`customers along with links to Defendant’s content. HPL is informed and believes, and
`
`thereon alleges, that if it is not Defendant causing the infringing messages to be sent as
`
`alleged in Paragraph 36, then Defendant has actively induced or contributed to, and is
`
`currently actively inducing or contributing to the actions of third parties to cause such
`
`infringing messages to be sent on its behalf, and knew or should have known that its
`
`actions would cause actual infringement of the ‘838 Patent.
`
`18
`
`
`
`Case: 1:11-cv-07607 Document #: 1 Filed: 10/25/11 Page 19 of 31 PageID #:19
`
`39.
`
`In addition, having placed Defendant on notice of infringement of the ‘838
`
`patent more than sixteen (16) months ago, HPL is informed and believes, and thereon
`
`alleges that Defendant’s infringement of the ‘838 patent has been and continues to be
`
`willful.
`
`40. As a direct and proximate result of Defendant’s conduct, HPL has suffered
`
`and will continue to suffer irreparable injury, for which it has no adequate remedy at law.
`
`HPL has also been damaged and, until an injunction issues, will continue to be damaged
`
`in an amount yet to be determined.
`
`COUNT IV
`(Infringement of United States Patent No. 7,835,757 via MMS)
`
`41. HPL incorporates by reference Paragraphs 1 through 19 of this Complaint
`
`and realleges them as though fully set forth herein.
`
`42. HPL is informed and believes, and thereon alleges, that Defendant has been
`
`and is currently infringing the ‘757 patent in violation of 35 U.S.C. § 271(a) by, among
`
`other things, using and practicing methods that embody one or more of at least claims 2,
`
`4, 5, 7-10, 12-16, and 18 of the ‘757 patent within the United States without authority or
`
`license from HPL. As mentioned previously, claim 18 of the ‘757 patent has already
`
`been confirmed by the Patent Office in connection with New York Times Company’s ex
`
`parte reexamination request.
`
`43. HPL is informed and believes, and thereon alleges, that Defendant infringes
`
`the ‘757 patent because it causes MMS notifications of the type described in Paragraph 6
`
`19
`
`
`
`Case: 1:11-cv-07607 Document #: 1 Filed: 10/25/11 Page 20 of 31 PageID #:20
`
`to be sent to its customers’ mobile devices. HPL is informed and believes, and thereon
`
`alleges that Defendant infringes the ‘757 patent in connection with at least the product
`
`offerings and services described in Paragraph 17, above.
`
`
`
`44.
`
`In the alternative, HPL is informed and believes, and thereon alleges, that
`
`Defendant has actively induced and is currently inducing the infringement of the ‘757
`
`patent in violation of 35 U.S.C. § 271(b) or has contributed to and is currently
`
`contributing to the infringement of the ‘757 patent in violation of 35 U.S.C. § 271(c)
`
`because numerous MMS notifications of the type described in Paragraph 43 have been,
`
`and continue to be, sent to its customers’ mobile devices.
`
`
`
`45. More specifically, Defendant has been on notice of its infringement of the
`
`‘757 patent since January of 2011, and since that time large numbers of infringing
`
`messages as described in Paragraph 43 have been, and continue to be, sent to Defendant’s
`
`customers along with links to Defendant’s content. HPL is informed and believes, and
`
`thereon alleges, that if it is not Defendant causing the infringing messages to be sent as
`
`alleged in Paragraph 43, then Defendant has actively induced or contributed to, and is
`
`currently actively inducing or contributing to the actions of third parties to cause such
`
`infringing messages to be sent on its behalf, and knew or should have known that its
`
`actions would cause actual infringement of the ‘757 Patent.
`
`46.
`
`In addition, having placed Defendant on notice of infringement of the ‘757
`
`patent ten (10) months ago, HPL is informed and believes, and thereon alleges, that
`
`Defendant’s infringement of the ‘757 patent has been and continues to be willful.
`
`20
`
`
`
`Case: 1:11-cv-07607 Document #: 1 Filed: 10/25/11 Page 21 of 31 PageID #:21
`
`47. As a direct and proximate result of Defendant’s conduct, HPL has suffered
`
`and will continue to suffer irreparable injury, for which it has no adequate remedy at law.
`
`HPL has also been damaged and, until an injunction issues, will continue to be damaged
`
`in an amount yet to be determined.
`
`COUNT V
`(Infringement of United States Patent No. 7,499,716 via MMS)
`
`48. HPL incorporates by reference Paragraphs 1 through 19 of this Complaint
`
`and realleges them as though fully set forth herein.
`
`49. HPL is informed and believes, and thereon alleges, that Defendant has been
`
`and is currently infringing the ‘716 patent in violation of 35 U.S.C. § 271(a) by, among
`
`other things, using and practicing methods that embody one or more of at least claims 15-
`
`18, 21-26, 28-33, and 37-43 of the ‘716 patent (and likely others) within the United States
`
`without authority or license from HPL. As mentioned previously, claims 22, 23, 38 and
`
`39 of the ‘716 patent have already been confirmed by the Patent Office in connection
`
`with New York Times Company’s ex parte reexamination request.
`
`50. HPL is informed and believes, and thereon alleges, that Defendant infringes
`
`the ‘716 patent because it causes MMS notifications of the type described in Paragraph 8
`
`to be sent to its customers’ mobile devices. HPL is informed and believes, and thereon
`
`alleges, that Defendant infringes the ‘716 patent in connection with at least the product
`
`offerings and serv
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