Case3:14-cv-00498-WHA Document1 Filed01/31/14 Page1 of 23
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`KAYE SCHOLER LLP
`Michael Malecek (Cal. Bar No. 171034)
`michael.malecek@kayescholer.com
`Timothy Chao (Cal. Bar No. 261720)
`timothy.chao@kayescholer.com
`Two Palo Alto Square
`Suite 400
`3000 El Camino Real
`Palo Alto, CA 94306-2112
`(650) 319-4500 (telephone)
`(650) 319-4700 (facsimile)
`
`Attorneys for Plaintiff GOOGLE INC.
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`GOOGLE INC.,
`
`CASE NO.
`
`Plaintiff,
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.,
`
`COMPLAINT FOR DECLARATORY
`JUDGMENT OF NON-INFRINGEMENT
`OF U.S. PATENT NOS. 6,963,859;
`7,523,072; 7,774,280; 8,001,053; 7,269,576;
`8,370,956; 8,393,007; 7,225,160; 8,583,556
`
`Defendant.
`
`DEMAND FOR JURY TRIAL
`
`Plaintiff Google Inc. (“Google”) seeks a declaration that Google does not directly or
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`indirectly infringe United States Patent Nos. 6,963,859, 7,523,072, 7,774,280, 8,001,053,
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`7,269,576, 8,370,956, 8,393,007, 7,225,160, and 8,583,556 as follows:
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`01980.00011/5659994.7
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`COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT
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`

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`Case3:14-cv-00498-WHA Document1 Filed01/31/14 Page2 of 23
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`NATURE OF THE ACTION
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`1.
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`This is an action for a declaratory judgment of non-infringement arising under the
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`patent laws of the United States, Title 35 of the United States Code. Google requests this relief
`
`because Defendant ContentGuard Holdings, Inc. (“ContentGuard”) recently filed a lawsuit in the
`Eastern District of Texas, Case No. 2:13-cv-01112 (“DRM Action”)1, claiming that several mobile
`device manufacturers, some of which are Google’s customers, infringe some or all of United
`
`States Patent Nos. 6,963,859, 7,523,072, 7,774,280, 8,001,053, 7,269,576, 8,370,956, 8,393,007,
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`7,225,160, and 8,583,556 (the “patents-in-suit”) by making, using, selling, and/or offering for sale
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`products and methods that “use one or more of the Google Play ‘apps’ (Google Play Books,
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`Google Play Movies, and Google Play Music) to practice the claimed inventions . . . Google Play
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`Books and Google Play Music are available and have been used in accused devices made by each
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`of the Defendants, including, merely by way of example, the Apple iPad, the Amazon Kindle Fire,
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`the Blackberry Z10, the HTC One Max, the Huawei Ascend, the Motorola Moto X, and the
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`Samsung Galaxy S4. In each of these devices and many other devices supplied by Defendants,
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`Google Play Books and Google Play Music are and have been used to practice ContentGuard’s
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`DRM patents. In addition, Google Play Movies is and has been used to practice ContentGuard’s
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`DRM patents on accused devices.” (See DRM Action, Am. Compl., D.E. 22 at ¶ 52.)
`
`ContentGuard’s litigation has threatened Google’s business and relationships with its customers
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`and partners, and created a justiciable controversy between Google and ContentGuard.
`
`THE PARTIES
`
`2.
`
`Plaintiff Google Inc. (“Google”) is a corporation organized and existing under the
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`laws of the state of Delaware, with its principal place of business at 1600 Amphitheatre Parkway,
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`Mountain View, California, 94043. Google’s mission is to organize the world’s information and
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`make it universally accessible and useful. As part of that mission, Google developed Google Play
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`Books, Google Play Music, and Google Play Movies.
`
`1 ContentGuard’s Case No. 2:13-cv-1112, will hereinafter be referred to as the “DRM Action”.
`The abbreviation “DRM” stands for digital rights management.
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`Case3:14-cv-00498-WHA Document1 Filed01/31/14 Page3 of 23
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`3.
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`Defendant ContentGuard is a corporation organized and existing under the laws of
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`the state of Delaware. ContentGuard’s principal place of business is at Legacy Town Center II,
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`6900 North Dallas Parkway, Suite No. 850, Plano, Texas, 75024. On information and belief, until
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`mid-2013, ContentGuard’s principal place of business was located at 222 N. Sepulveda Blvd.,
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`Suite 1400, El Segundo, California 90245-5644. ContentGuard is admittedly a “business [that] is
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`focused on the licensing of [a] . . . patent portfolio” that produces only one product, and therefore
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`exists mainly to license and assert its patents. (http://contentguard.pendrell.com/what-we-
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`do/overview.html.)
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`JURISDICTIONAL STATEMENT
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`4.
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`This action arises under the Declaratory Judgment Act, 28 U.S.C. § 2201, and
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`under the patent laws of the United States, 35 U.S.C. §§ 1-390.
`
`5.
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`This Court has subject matter jurisdiction over this action under 28 U.S.C. §§ 1331,
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`1338(a), and 2201(a).
`
`6.
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`This Court has personal jurisdiction over ContentGuard. Among other things,
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`ContentGuard has continuous and systematic business contacts with California. On information
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`and belief, until mid-2013, ContentGuard’s principal place of business was located at 222 N.
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`Sepulveda Blvd., Suite 1400, El Segundo, California 90245-5644. At least during the period from
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`2009-2013, while it was based in El Segundo, California, ContentGuard actively pursued efforts to
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`license or otherwise monetize its patent portfolio, including the patents-in-suit.
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`7.
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`ContentGuard has “successfully licensed its DRM technologies for use in
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`smartphones and tablets” to companies with U.S. headquarters in California, including Nokia,
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`Toshiba, Fujitsu, Hitachi, and Sanyo.
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`(See DRM Action, Am. Compl., D.E. 22 at ¶ 38.)
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`ContentGuard stated that “these companies embraced ContentGuard’s DRM technologies and
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`agreed to license use of those technologies for substantial royalties.” (See Ex. A, Pendrell Spring
`
`Investment Conference Presentation, June 4, 2013 (hereinafter “Pendrell Presentation”) available
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`at
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`http://files.shareholder.com/downloads/ICOG/2928081561x0x668008/ade99f13-1f92-4fe9-
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`983c-865ad2b72304/Pendrell%20IR%20Stephens%20FINAL%20053113.pdf; see DRM Action,
`Am. Compl., D.E. 22 at ¶ 38.)2
`8.
`ContentGuard has purposefully directed into California its enforcement activities
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`regarding the patents-in-suit. On information and belief, ContentGuard contacted and/or met with
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`California-based companies, including Apple, in order to discuss the licensing of ContentGuard’s
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`patent portfolio regarding DRM technology.
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`9.
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`In addition, ContentGuard has expressed its interest in pursuing, and its intent to
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`pursue, license agreements with a host of companies based in California including Google, ACER,
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`Adata, Adobe, Asus, DirecTV, Disney, Kingston, Kyocera, Landmark Theaters, Paramount,
`Sandisk, Transcend, Universal, Vizio, and 20th Century Fox. (See Ex. A, Pendrell Presentation.)
`10.
`On information and belief, ContentGuard’s licensing and enforcement efforts in
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`and from California have generated substantial revenues. (See DRM Action, Am. Compl., D.E. 22
`
`at ¶ 38.)
`
`11.
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`Additionally, ContentGuard conducts business by marketing and distributing a
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`software application in the state of California and this judicial district. The application,
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`“CONTENTGUARD,” is for sale via Apple Inc.’s (“Apple”) iTunes store and available at least on
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`Apple’s mobile devices. ContentGuard’s application can be and has been downloaded in the state
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`of California. ContentGuard alleges that its mobile family of products, including its app, practice
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`the
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`‘859 patent by providing notice under 35 U.S.C. § 287(a) on
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`its website.
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`(http://www.contentguard.com/.)
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`12.
`
`On information and belief, a number of inventors of the patents-in-suit reside in
`
`California. Mark J. Stefik, inventor of U.S. Patent Nos. 6,963,859 (the “’859 patent”), 7,523,072
`
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`2 Pendrell Corp. (“Pendrell”) is a 90.1% shareholder of ContentGuard, and Time Warner, Inc.
`(“Time Warner”), is a 9.9% shareholder of ContentGuard. Pendrell’s headquarters are in
`Kirkland, Washington, and it maintains an office in San Francisco, California; its wholly owned
`subsidiary, Ovidian Group LLC, also has an office in Berkeley, California. In addition, Time
`Warner, which is based in New York, has subsidiaries that are headquartered in California,
`including Warner Bros. Entertainment Inc. and New Line Cinema.
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`Case3:14-cv-00498-WHA Document1 Filed01/31/14 Page5 of 23
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`(the “’072 patent”), 7,269,576 (the “’576 patent”), 8,370,956 (the “’956 patent”), 8,393,007 (the
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`“’007 patent”), and 7,225,160 (the “’160 patent”), resides in Portola Valley, California. Peter
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`Pirolli, inventor of the ‘859, ‘072, ‘576, ‘956, ‘007, and the ‘160 patents, resides in or around San
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`Francisco, California. Ralph Merkle, inventor of the ‘576 and the ‘160 patents, resides in
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`Sunnyvale, California. Mai Nguyen, inventor of U.S. Patent Nos. 7,774,280 (the “’280 patent”)
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`and 8,001,053 (the “’053 patent”), resides in Sunnyvale, California. Xin Wang, inventor of the
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`‘280 and the ‘053 patents, resides in Los Angeles, California. Thanh Ta, inventor of the ‘280
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`patent, resides in Irvine, California. Eddie Chen, inventor of the ‘280 and the ‘053 patents, resides
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`in Los Angeles, California.
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`13.
`
`Venue is proper in this District under 28 U.S.C. §§ 1391(b) and (c), because a
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`substantial part of the events giving rise to Google’s claim occurred in this district, and because
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`ContentGuard is subject to personal jurisdiction here.
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`14.
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`An immediate, real, and justiciable controversy exists between Google and
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`ContentGuard as to whether Google is infringing or has infringed the ‘859, ‘072, ‘280, ‘053, ‘576,
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`‘956, ‘007, and ‘160 patents and U.S. Patent No. 8,583,556 (the “’556 patent”).
`
`INTRADISTRICT ASSIGNMENT
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`15.
`
`For purposes of intradistrict assignment under Civil Local Rules 3-2(c) and 3-5(b),
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`this Intellectual Property Action will be assigned on a district-wide basis.
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`CONTENTGUARD’S THREATENED LITIGATION AGAINST GOOGLE
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`16.
`
`On December 18, 2013, ContentGuard brought a patent infringement action against
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`Amazon.com (“Amazon”), Apple, Blackberry Corporation (fka Research in Motion Corporation)
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`(“Blackberry Corporation”), Huawei Device USA, Inc. (“Huawei Device”), and Motorola
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`Mobility LLC (“Motorola”) in the Marshall Division of the United States District Court for the
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`Eastern District of Texas. DRM Action. On January 17, 2014, ContentGuard amended its patent
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`infringement complaint in the DRM Action, adding additional defendants: Blackberry Limited
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`(fka Research in Motion Limited) (“Blackberry Limited”), HTC Corporation and HTC America,
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`Inc. (collectively “HTC”), Huawei Technologies Co. Ltd. (“Huawei Technologies”), Samsung
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`Electronics America, Inc. and Samsung Telecommunications America, LLC (collectively,
`“Samsung”).3
`17.
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`In the DRM Action, ContentGuard alleges that each DRM Defendant infringes
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`some or all of the ‘859, ‘072, ‘280, ‘053, ‘576, ‘956, ‘007, ‘160, and ‘556 patents by making,
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`using, selling, and/or offering for sale products and methods that “use one or more of the Google
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`Play ‘apps’ (Google Play Books, Google Play Movies, and Google Play Music) to practice the
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`claimed inventions . . . Google Play Books and Google Play Music are available and have been
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`used in accused devices made by each of the Defendants, including, merely by way of example,
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`the Apple iPad, the Amazon Kindle Fire, the Blackberry Z10, the HTC One Max, the Huawei
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`Ascend, the Motorola Moto X, and the Samsung Galaxy S4. In each of these devices and many
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`other devices supplied by Defendants, Google Play Books and Google Play Music are and have
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`been used to practice ContentGuard’s DRM patents. In addition, Google Play Movies is and has
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`been used to practice ContentGuard’s DRM patents on accused devices.” (See DRM Action, Am.
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`Compl., D.E. 22 at ¶ 52.)
`
`18.
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`ContentGuard has alleged that the DRM Defendants’ “ability to sell the accused
`
`products is wholly dependent upon the availability of these [Google Play] ‘apps’ and the digital
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`content they make available to users.” (See e.g., id.at ¶ 52.) ContentGuard further alleges that
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`“[t]hese [Google Play] ‘apps’ cannot be used with accused [DRM Defendant] . . . products without
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`infringing” the patents-in-suit. (See e.g., id. )
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`19. Moreover, in publicly available material, ContentGuard has made clear that it
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`intends to target Google as part of its digital media licensing and patent portfolio program. Of the
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`entities
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`listed under
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`the “Digital Media Licensing Program Representative Unlicensed
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`Companies” section of the Pendrell Presentation, six out of the fifteen companies that do not have
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`licenses related to Pendrell’s Digital Media recently were named as defendants in ContentGuard’s
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`DRM Action, suggesting that it is only a matter of time before Google (which similarly was listed
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`3 The defendants accused in both ContentGuard’s initial and amended complaint in the DRM
`Action, will hereinafter be referred to as the “DRM Defendants.”
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`Case3:14-cv-00498-WHA Document1 Filed01/31/14 Page7 of 23
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`as unlicensed in the Pendrell Presentation) will be accused in a ContentGuard suit involving the
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`patents-in-suit. (See Ex. A, Pendrell Presentation.)
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`20.
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`On information and belief, ContentGuard intends the DRM Action to harm Google
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`Play Books, Google Play Music, and Google Play Movies, and to disrupt Google’s relationships
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`with many of the DRM Defendants.
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`21.
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`For all these reasons, an actual controversy exists between Google and
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`ContentGuard regarding the alleged infringement of the ‘859, ‘072, ‘280, ‘053, ‘576, ‘956, ‘007,
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`‘160, and ‘556 patents.
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`GOOGLE DOES NOT INFRINGE THE PATENTS-IN-SUIT
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`22.
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`No version of Google Play Books, Google Play Music, and/or Google Play Movies
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`provided by Google directly or indirectly infringes the ‘859, ‘072, ‘280, ‘053, ‘576, ‘956, ‘007,
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`‘160, and ‘556 patents.
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`23.
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`To the best of Google’s knowledge, no third party infringes the ‘859, ‘072, ‘280,
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`‘053, ‘576, ‘956, ‘007, ‘160, and ‘556 patents by using Google Play Books, Google Play Music,
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`and/or Google Play Movies. Google has not caused, directed, requested, or facilitated any such
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`infringement, much less with specific intent to do so. Google Play Books, Google Play Music,
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`and/or Google Play Movies are not designed to infringe the ‘859, ‘072, ‘280, ‘053, ‘576, ‘956,
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`‘007, ‘160, and ‘556 patents. To the contrary, each of these applications is a product with
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`substantial uses that do not infringe any of these patents.
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`FIRST COUNT
`(Declaration of Non-Infringement of the ‘859 Patent)
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`24.
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`Google restates and incorporates by reference the allegations in paragraphs 1
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`through 23 of this Complaint as if fully set forth herein.
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`25.
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`ContentGuard claims to own all rights, title, and interest in United States Patent
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`No. 6,963,859 (the “’859 patent”). A true and correct copy of the ‘859 patent is attached hereto as
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`Exhibit B.
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`26.
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`In the DRM Action, ContentGuard accuses all of the DRM Defendants: Amazon,
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`Apple, Blackberry Corporation and Blackberry Limited (collectively “Blackberry”), HTC, Huawei
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`Device and Huawei Technologies (collectively “Huawei”), Motorola, and Samsung of infringing
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`the ‘859 patent, and alleges that each “actively induces content providers and/or end users of . . .
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`[DRM Defendants’] products to infringe the ‘859 Patent by, among other things, (a) providing
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`access to certain ‘apps’ (such as . . . Google Play ‘apps’) that use the ContentGuard DRM solution
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`claimed in the ‘859 Patent, (b) providing instructions for using such ‘apps’; (c) providing
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`advertisings for using such ‘apps’ . . .” (See DRM Action, Am. Compl., D.E. 22 at ¶ 57.)
`
`27.
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`The Amended Complaint in the DRM Action accuses three Google Play apps:
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`Google Play Books, Google Play Music, and Google Play Movies. Specifically, ContentGuard
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`has accused the DRM Defendants of infringing the patents-in-suit by making, using, selling,
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`and/or offering for sale products and methods that “use one or more of the Google Play ‘apps’
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`(Google Play Books, Google Play Movies, and Google Play Music) to practice the claimed
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`inventions. . . . Google Play Books and Google Play Music are available and have been used in
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`accused devices made by each of the Defendants, including, merely by way of example, the Apple
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`iPad, the Amazon Kindle Fire, the Blackberry Z10, the HTC One Max, the Huawei Ascend, the
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`Motorola Moto X, and the Samsung Galaxy S4. In each of these devices and many other devices
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`supplied by Defendants, Google Play Books and Google Play Music are and have been used to
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`practice ContentGuard’s DRM patents. In addition, Google Play Movies is and has been used to
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`practice ContentGuard’s DRM patents on accused devices.” (See DRM Action, Am. Compl., D.E.
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`22 at ¶ 52.)
`
`28.
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`Additionally, the DRM Action alleges that all the DRM Defendants engage in the
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`alleged activities because they “specifically intend” end users of their products “to use [Google
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`Play] ‘apps’ that deploy, and content providers to distribute content that is protected by, the
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`ContentGuard DRM solutions claimed in the ‘859 Patent.” (See DRM Action, Am. Compl., D.E.
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`22 at ¶ 57.) Furthermore, ContentGuard alleges that the DRM Defendants’ “ability to sell the
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`accused products is wholly dependent upon the availability of these [Google Play] ‘apps’ and the
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`digital content they make available to users.” (See DRM Action, Am. Compl., D.E. 22 at ¶ 57.)
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`29. Moreover, the DRM Action alleges that all the DRM Defendants contributorily
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`infringe the ‘859 patent “because there is no substantial non-infringing use of these [Google Play]
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`‘apps’ on the accused . . . products . . . [and because] [t]hese [Google Play] ‘apps’ cannot be used
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`with accused [DRM Defendants] . . . products without infringing the ‘859 patent.” (See id.)
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`30.
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`A substantial, immediate, and real controversy therefore exists between Google and
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`ContentGuard regarding whether Google Play Books, Google Play Music, and/or Google Play
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`Movies infringe the ‘859 patent. A judicial declaration is necessary to determine the parties’
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`respective rights regarding the ‘859 patent.
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`31.
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`Google seeks a judgment declaring that Google Play Books, Google Play Music,
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`and/or Google Play Movies do not directly or indirectly infringe the ‘859 patent.
`
`SECOND COUNT
`(Declaration of Non-Infringement of the ‘072 Patent)
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`32.
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`Google restates and incorporates by reference the allegations in paragraphs 1
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`through 31 of this Complaint as if fully set forth herein.
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`33.
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`ContentGuard claims to own all rights, title, and interest in United States Patent
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`No. 7,523,072 (the “’072 patent”). A true and correct copy of the ’072 patent is attached hereto as
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`Exhibit C.
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`34.
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`In the DRM Action, ContentGuard accuses all the DRM Defendants of infringing
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`the ‘072 patent, and alleges that each “actively induces content providers and/or end users of . . .
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`[DRM Defendants’] products to infringe the ‘072 Patent by, among other things, (a) providing
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`access to certain ‘apps’ (such as . . . Google Play ‘apps’) that use the ContentGuard DRM solution
`
`claimed in the ‘072 Patent, (b) providing instructions for using such ‘apps’; (c) providing
`
`advertisings for using such ‘apps’ . . .” (See DRM Action, Am. Compl., D.E. 22 at ¶ 65.)
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`35.
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`The Amended Complaint in the DRM Action accuses three Google Play apps:
`
`Google Play Books, Google Play Music, and Google Play Movies. Specifically, ContentGuard
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`Case3:14-cv-00498-WHA Document1 Filed01/31/14 Page10 of 23
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`has accused the DRM Defendants of infringing the patents-in-suit by making, using, selling,
`
`and/or offering for sale products and methods that “use one or more of the Google Play ‘apps’
`
`(Google Play Books, Google Play Movies, and Google Play Music) to practice the claimed
`
`inventions. . . . Google Play Books and Google Play Music are available and have been used in
`
`accused devices made by each of the Defendants, including, merely by way of example, the Apple
`
`iPad, the Amazon Kindle Fire, the Blackberry Z10, the HTC One Max, the Huawei Ascend, the
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`Motorola Moto X, and the Samsung Galaxy S4. In each of these devices and many other devices
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`supplied by Defendants, Google Play Books and Google Play Music are and have been used to
`
`practice ContentGuard’s DRM patents. In addition, Google Play Movies is and has been used to
`
`practice ContentGuard’s DRM patents on accused devices.” (See DRM Action, Am. Compl., D.E.
`
`22 at ¶ 52.)
`
`36.
`
`Additionally, the DRM Action alleges that all the DRM Defendants “specifically
`
`intend” end users of their products “to use [Google Play] ‘apps’ that deploy, and content providers
`
`to distribute content that is protected by, the ContentGuard DRM solutions claimed in the ‘072
`
`Patent.” (See DRM Action, Am. Compl., D.E. 22 at ¶ 65.) Furthermore, ContentGuard alleges
`
`that the DRM Defendants’ “ability to sell the accused products is wholly dependent upon the
`
`availability of these [Google Play] ‘apps’ and the digital content they make available to users.”
`
`(See DRM Action, Am. Compl., D.E. 22 at ¶ 65.)
`
`37. Moreover, the DRM Action alleges that all the DRM Defendants contributorily
`
`infringe the ‘072 patent “because there is no substantial non-infringing use of these [Google Play]
`
`‘apps’ on the accused . . . products . . . [and because] [t]hese [Google Play] ‘apps’ cannot be used
`
`with accused [DRM Defendants] . . . products without infringing the ‘072 patent.” (See id.)
`
`38.
`
`A substantial, immediate, and real controversy therefore exists between Google and
`
`ContentGuard regarding whether Google Play Books, Google Play Music, and/or Google Play
`
`Movies infringe or have infringed the ‘072 patent. A judicial declaration is necessary to determine
`
`the parties’ respective rights regarding the ‘072 patent.
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`Case3:14-cv-00498-WHA Document1 Filed01/31/14 Page11 of 23
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`39.
`
`Google seeks a judgment declaring that Google Play Books, Google Play Music,
`
`and/or Google Play Movies do not directly or indirectly infringe the ‘072 patent.
`
`THIRD COUNT
`(Declaration of Non-Infringement of the ‘280 Patent)
`
`40.
`
`Google restates and incorporates by reference the allegations in paragraphs 1
`
`through 39 of this Complaint as if fully set forth herein.
`
`41.
`
`ContentGuard claims to own all rights, title, and interest in United States Patent
`
`No. 7,774,280 (the “’280 patent”). A true and correct copy of the ‘280 patent is attached hereto as
`
`Exhibit D.
`
`42.
`
`In the DRM Action, ContentGuard accuses DRM Defendants Apple, Blackberry,
`
`HTC, Huawei, Motorola, and Samsung of infringing the ‘280 patent, and alleges that each of these
`
`defendants “actively induces content providers and/or end users of . . . [DRM Defendants’]
`
`products to infringe the ‘280 Patent by, among other things, (a) providing access to certain ‘apps’
`
`(such as . . . Google Play ‘apps’) that use the ContentGuard DRM solution claimed in the ‘280
`
`Patent, (b) providing instructions for using such ‘apps’; (c) providing advertisings for using such
`
`‘apps’ . . .” (See DRM Action, Am. Compl., D.E. 22 at ¶ 73.)
`
`43.
`
`The Amended Complaint in the DRM Action accuses three Google Play apps:
`
`Google Play Books, Google Play Music, and Google Play Movies. Specifically, ContentGuard
`
`has accused the DRM Defendants of infringing the patents-in-suit by making, using, selling,
`
`and/or offering for sale products and methods that “use one or more of the Google Play ‘apps’
`
`(Google Play Books, Google Play Movies, and Google Play Music) to practice the claimed
`
`inventions. . . . Google Play Books and Google Play Music are available and have been used in
`
`accused devices made by each of the Defendants, including, merely by way of example, the Apple
`
`iPad, the Amazon Kindle Fire, the Blackberry Z10, the HTC One Max, the Huawei Ascend, the
`
`Motorola Moto X, and the Samsung Galaxy S4. In each of these devices and many other devices
`
`supplied by Defendants, Google Play Books and Google Play Music are and have been used to
`
`practice ContentGuard’s DRM patents. In addition, Google Play Movies is and has been used to
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`Case3:14-cv-00498-WHA Document1 Filed01/31/14 Page12 of 23
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`practice ContentGuard’s DRM patents on accused devices.” (See DRM Action, Am. Compl., D.E.
`
`22 at ¶ 52.)
`
`44.
`
`Additionally, the DRM Action alleges that DRM Defendants Apple, Blackberry,
`
`HTC, Huawei, Motorola, and Samsung “specifically intend” end users of their products “to use
`
`[Google Play] ‘apps’ that deploy, and content providers to distribute content that is protected by,
`
`the ContentGuard DRM solutions claimed in the ‘280 Patent.” (See DRM Action, Am. Compl.,
`
`D.E. 22 at ¶ 73.) Furthermore, ContentGuard alleges that these DRM Defendants’ “ability to sell
`
`the accused products is wholly dependent upon the availability of these [Google Play] ‘apps’ and
`
`the digital content they make available to users.” (See DRM Action, Am. Compl., D.E. 22 at ¶
`
`73.)
`
`45. Moreover, the DRM Action alleges that DRM Defendants Apple, Blackberry,
`
`HTC, Huawei, Motorola, and Samsung contributorily infringe the ‘280 patent “because there is no
`
`substantial non-infringing use of these [Google Play] ‘apps’ on the accused . . . products . . . [and
`
`because] [t]hese [Google Play] ‘apps’ cannot be used with accused [DRM Defendants] . . .
`
`products without infringing the ‘280 patent.” (See id.)
`
`46.
`
`A substantial, immediate, and real controversy therefore exists between Google and
`
`ContentGuard regarding whether Google Play Books, Google Play Music, and/or Google Play
`
`Movies infringe or have infringed the ‘280 patent. A judicial declaration is necessary to determine
`
`the parties’ respective rights regarding the ‘280 patent.
`
`47.
`
`Google seeks a judgment declaring that Google Play Books, Google Play Music,
`
`and/or Google Play Movies do not directly or indirectly infringe the ‘280 patent.
`
`FOURTH COUNT
`(Declaration of Non-Infringement of the ‘053 Patent)
`
`48.
`
`Google restates and incorporates by reference the allegations in paragraphs 1
`
`through 47 of this Complaint as if fully set forth herein.
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`Case3:14-cv-00498-WHA Document1 Filed01/31/14 Page13 of 23
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`49.
`
`ContentGuard claims to own all rights, title, and interest in United States Patent
`
`No. 8,001,053 (the “’053 patent”). A true and correct copy of the ‘053 patent is attached hereto as
`
`Exhibit E.
`
`50.
`
`In the DRM Action, ContentGuard accuses DRM Defendants Apple, Blackberry,
`
`HTC, Huawei, Motorola, and Samsung of infringing the ‘053 patent, and alleges that each of these
`
`defendants “actively induces content providers and/or end users of . . . [DRM Defendants’]
`
`products to infringe the ‘053 Patent by, among other things, (a) providing access to certain ‘apps’
`
`(such as . . . Google Play ‘apps’) that use the ContentGuard DRM solution claimed in the ‘053
`
`Patent, (b) providing instructions for using such ‘apps’; (c) providing advertisings for using such
`
`‘apps’ . . .” (See DRM Action, Am. Compl., D.E. 22 at ¶ 80.)
`
`51.
`
`The Amended Complaint in the DRM Action accuses three Google Play apps:
`
`Google Play Books, Google Play Music, and Google Play Movies. Specifically, ContentGuard
`
`has accused the DRM Defendants of infringing the patents-in-suit by making, using, selling,
`
`and/or offering for sale products and methods that “use one or more of the Google Play ‘apps’
`
`(Google Play Books, Google Play Movies, and Google Play Music) to practice the claimed
`
`inventions . . . Google Play Books and Google Play Music are available and have been used in
`
`accused devices made by each of the Defendants, including, merely by way of example, the Apple
`
`iPad, the Amazon Kindle Fire, the Blackberry Z10, the HTC One Max, the Huawei Ascend, the
`
`Motorola Moto X, and the Samsung Galaxy S4. In each of these devices and many other devices
`
`supplied by Defendants, Google Play Books and Google Play Music are and have been used to
`
`practice ContentGuard’s DRM patents. In addition, Google Play Movies is and has been used to
`
`practice ContentGuard’s DRM patents on accused devices.” (See DRM Action, Am. Compl., D.E.
`
`22 at ¶ 52.)
`
`52.
`
`Additionally, the DRM Action alleges that DRM Defendants Apple, Blackberry,
`
`HTC, Huawei, Motorola, and Samsung “specifically intend” end users of their products “to use
`
`[Google Play] ‘apps’ that deploy, and content providers to distribute content that is protected by,
`
`the ContentGuard DRM solutions claimed in the ‘053 Patent.” (See DRM Action, Am. Compl.,
`
`1 2 3 4 5 6 7 8 9
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`COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT
`
`

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`Case3:14-cv-00498-WHA Document1 Filed01/31/14 Page14 of 23
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`D.E. 22 at ¶ 80.) Furthermore, ContentGuard alleges that these DRM Defendants’ “ability to sell
`
`the accused products is wholly dependent upon the availability of these [Google Play] ‘apps’ and
`
`the digital content they make available to users.” (See DRM Action, Am. Compl., D.E. 22 at ¶
`
`80.)
`
`53. Moreover, the DRM Action alleges that the DRM Defendants Apple, Blackberry,
`
`HTC, Huawei, Motorola, and Samsung contributorily infringe the ‘053 patent “because there is no
`
`substantial non-infringing use of these [Google Play] ‘apps’ on the accused . . . products . . . [and
`
`because] [t]hese [Google Play] ‘apps’ cannot be used with accused [DRM Defendants] . . .
`
`products without infringing the ‘053 patent.” (See id.)
`
`54.
`
`A substantial, immediate, and real controversy therefore exists between Google and
`
`ContentGuard regarding whether Google Play Books, Google Play Music, and/or Google Play
`
`Movies infringe or have infringed the ‘053 patent. A judicial declaration is necessary to determine
`
`the parties’ respective rights regarding the ‘053 patent.
`
`55.
`
`Google seeks a judgment declaring that Google Play Books, Google Play Music,
`
`and/or Google Play Movies do not directly or indirectly infringe the ‘053 patent.
`
`FIFTH COUNT
`(Declaration of Non-Infringement of the ‘576 Patent)
`
`56.
`
`Google restates and incorporates by reference the allegations in paragraphs 1
`
`through 55 of this Complaint as if fully set forth herein.
`
`57.
`
`ContentGuard claims to own all rights, title, and interest in United States Patent
`
`No. 7,269,576 (the “’576 patent”). A true and correct copy of the ‘576 patent is attached hereto as
`
`Exhibit F.
`
`58.
`
`In the DRM Action, ContentGuard accuses all the D