Case 6:12-cv-00058-LED Document 1 Filed 09/27/11 Page 1 of 9 PageID #: 1
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`
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
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`
`
`
`
`Civil Action No.:
`
`
`
`TELECOMMUNICATION SYSTEMS, INC.,
`a Maryland company,
`
`
`Plaintiff,
`
`v.
`
`TRACBEAM, L.L.C.,
`a Colorado limited liability company,
`
`
`Defendant.
`
`
`
`
`COMPLAINT FOR DECLARATORY JUDGMENT AND JURY DEMAND
`
`
`
`Plaintiff, TeleCommunication Systems, Inc. (“TCS”), by and through its undersigned
`
`
`
`counsel, alleges as follows:
`
`NATURE OF THE CASE
`
`1.
`
`This is an action for declaratory judgment of noninfringement and invalidity of
`
`two (2) United States patents pursuant to the Declaratory Judgment Act, 28 U.S.C. §§ 2201-02,
`
`the Patent Laws of the United States, 35 U.S.C. § 1 et seq., and for such relief as the Court deems
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`just and proper.
`
`PARTIES
`
`2.
`
`Plaintiff TCS is a Maryland corporation with its principal place of business at 275
`
`West Street, Annapolis, MD 21401.
`
`T-Mobile / TCS / Ericsson EXHIBIT 1020
`T-Mobile / TCS / Ericsson v. TracBeam
`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
`
`
`
`
`
`Civil Action No.:
`
`
`
`TELECOMMUNICATION SYSTEMS, INC.,
`a Maryland company,
`
`
`Plaintiff,
`
`v.
`
`TRACBEAM, L.L.C.,
`a Colorado limited liability company,
`
`
`Defendant.
`
`
`
`
`COMPLAINT FOR DECLARATORY JUDGMENT AND JURY DEMAND
`
`
`
`Plaintiff, TeleCommunication Systems, Inc. (“TCS”), by and through its undersigned
`
`
`
`counsel, alleges as follows:
`
`NATURE OF THE CASE
`
`1.
`
`This is an action for declaratory judgment of noninfringement and invalidity of
`
`two (2) United States patents pursuant to the Declaratory Judgment Act, 28 U.S.C. §§ 2201-02,
`
`the Patent Laws of the United States, 35 U.S.C. § 1 et seq., and for such relief as the Court deems
`
`just and proper.
`
`PARTIES
`
`2.
`
`Plaintiff TCS is a Maryland corporation with its principal place of business at 275
`
`West Street, Annapolis, MD 21401.
`
`T-Mobile / TCS / Ericsson EXHIBIT 1020
`T-Mobile / TCS / Ericsson v. TracBeam
`
`
`
`Case 6:12-cv-00058-LED Document 1 Filed 09/27/11 Page 2 of 9 PageID #: 2
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`
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`3.
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`On information and belief, Defendant TracBeam L.L.C. (“Defendant” or
`
`“TracBeam”) is a limited liability company incorporated in the State of Colorado and is the
`
`owner of the patents at issue in this case. TracBeam is identified as the assignee and owner of
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`U.S. Patent No. 7,764,231 (“the ‘231 patent”) and U.S. Patent No. 7,525,484 (“the ‘484 patent”)
`
`(collectively “the patents-in-suit”). TracBeam is in the business of enforcing and licensing
`
`patents. On information and belief, TracBeam does not sell or offer for sale any products.
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`JURISDICTION AND VENUE
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`4.
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`This Court has exclusive subject matter jurisdiction pursuant to 28 U.S.C. §§
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`1331 and 1338(a), 2201, and 2202, and the Patent Laws of the United States, 35 U.S.C. § 1, et
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`seq.
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`5.
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`This Court has personal jurisdiction over TracBeam because TracBeam is
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`incorporated in Colorado.
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`6.
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`Venue is proper pursuant to 28 U.S.C. §§ 1391(b) and (c), and 1400(b), as on
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`information and belief, TracBeam’s principal place of business is within this judicial district.
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`FACTS
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`7.
`
`According to the U.S. Patent and Trademark Office (“USPTO”) Assignments
`
`Database, TracBeam is the sole assignee of U.S. Patent No. 7,764,231 entitled “Wireless
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`Location Using Multiple Mobile Station Techniques,” which issued on July 27, 2010. A copy of
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`the ’231 patent is attached as Exhibit 1.
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`8.
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`The USPTO Assignments Database also reflects that TracBeam is the sole
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`assignee of U.S. Patent No. 7,525,484 entitled “Gateway and Hybrid Solutions for Wireless
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`Location,” which issued on April 28, 2009. A copy of the ’484 patent is attached as Exhibit 2.
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`
`
`2
`
`T-Mobile / TCS / Ericsson EXHIBIT 1020
`T-Mobile / TCS / Ericsson v. TracBeam
`
`
`
`Case 6:12-cv-00058-LED Document 1 Filed 09/27/11 Page 3 of 9 PageID #: 3
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`
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`9.
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`On February 25, 2011, TracBeam filed suit in the Tyler Division of the United
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`States District Court for the Eastern District of Texas against AT&T Inc., AT&T Mobility L.L.C.
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`(collectively “AT&T”), MetroPCS Communications, Inc., MetroPCS Wireless, Inc., Texas RSA
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`7B3, L.P. D/B/A/ Peoples Wireless Services, Sprint Nextel Corporation, Sprint Spectrum L.P.,
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`Nextel of California, Inc., Nextel Communications of the Mid-Atlantic, Inc., Nextel of New
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`York, Inc., Nextel South Corp., Nextel of Texas, Inc., Nextel West Corp., and Cellco Partnership
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`d/b/a Verizon Wireless (“Cellco”) (collectively “Texas Action Defendants”), accusing the
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`defendants of infringing the ’231 and ’484 patents (Case No. 6:11-cv-0096) (“the Texas action”).
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`On May 19, 2011, TracBeam filed an Amended Complaint adding Google, Inc., and Skyhook
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`Wireless, Inc. as defendants. TCS is not a named party to the Texas action.
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`10.
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`The Texas action generally alleges that the Texas Action Defendants’ products
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`and services for determining the locations of wireless mobile devices infringe the ‘231 and ‘484
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`patents. TCS is the vendor for products and services for determining the locations of wireless
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`mobile devices to MetroPCS Communications, Inc. and MetroPCS Wireless, Inc. (collectively
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`“MetroPCS”) and Sprint Nextel Corporation, Sprint Spectrum L.P., Nextel of California, Inc.,
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`Nextel Communications of the Mid-Atlantic, Inc., Nextel of New York, Inc., Nextel South
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`Corp., Nextel of Texas, Inc., and Nextel West Corp. (collectively “Sprint”).
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`11. MetroPCS and Sprint have tendered indemnification demands to TCS.
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`12.
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`Separately, on August 30, 2011, TracBeam sent a letter notifying TCS of its
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`patent portfolio, including the ‘231 and ‘484 patents. The notification letter to TCS is attached
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`as Exhibit 3.
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`
`
`3
`
`T-Mobile / TCS / Ericsson EXHIBIT 1020
`T-Mobile / TCS / Ericsson v. TracBeam
`
`
`
`Case 6:12-cv-00058-LED Document 1 Filed 09/27/11 Page 4 of 9 PageID #: 4
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`
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`13.
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`According to the Amended Complaint in the Texas action, TracBeam notified
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`Cellco, Sprint, and AT&T of its patent applications over ten years before they matured into
`
`issued patents. On information and belief, TracBeam initiated a lawsuit against Cellco, Sprint,
`
`and AT&T when they refused to take a license to the patents. TracBeam’s pattern of notification
`
`and subsequent initiation of a lawsuit is indicative of TracBeam’s litigious intentions when a
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`party refuses to take a license to its patent portfolio. TracBeam’s past conduct, coupled with its
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`notice to TCS and suit against TCS customers, results in a substantial controversy between the
`
`parties that is of sufficient immediacy and reality to warrant declaratory relief.
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`14.
`
`TCS’s products and services for determining the locations of wireless mobile
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`devices have not infringed and do not infringe, either directly or indirectly, any valid claim of the
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`’231 or ’484 patents, either literally or under the doctrine of equivalents. A substantial
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`controversy exists between the parties that is of sufficient immediacy and reality to warrant
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`declaratory relief.
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`15.
`
`TCS believes and alleges that one or more of the claims of the ’231 and ’484
`
`patents are invalid.
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`COUNT I
`
`Declaration of Non-Infringement of U.S. Patent No. 7,764,231
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`16.
`
`TCS repeats, realleges, and incorporates by reference herein the allegations
`
`contained in paragraphs 1 through 15 as though expressly set forth herein.
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`17.
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`TracBeam has alleged that at least one customer of TCS infringes the ’231 patent
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`in the United States District Court for the Eastern District of Texas with products supplied by
`
`TCS.
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`
`
`4
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`T-Mobile / TCS / Ericsson EXHIBIT 1020
`T-Mobile / TCS / Ericsson v. TracBeam
`
`
`
`Case 6:12-cv-00058-LED Document 1 Filed 09/27/11 Page 5 of 9 PageID #: 5
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`18.
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`TracBeam has also put TCS on notice of its patent portfolio, including the ‘231
`
`patent that has been asserted against at least one TCS customer.
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`19.
`
`TCS’s products and services for determining the locations of wireless mobile
`
`devices have not infringed and do not infringe, directly or indirectly, any valid claim of the ’231
`
`patent, either literally or under the doctrine of equivalents.
`
`20.
`
`As a result of the acts described in the foregoing paragraphs, there exists a
`
`substantial controversy of sufficient immediacy and reality to warrant the issuance of a
`
`declaratory judgment as to whether TCS infringes, directly or indirectly, any claim of the ’231
`
`patent.
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`21.
`
`A judicial declaration is necessary and appropriate so that TCS may ascertain its
`
`rights regarding the ’231 patent.
`
`COUNT II
`
`Declaration of Invalidity of U.S. Patent No. 7,764,231
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`22.
`
`TCS repeats, realleges, and incorporates by reference herein the allegations
`
`contained in paragraphs 1 through 21 as though expressly set forth herein.
`
`23.
`
`The ’231 patent is invalid for failure to meet the conditions of patentability and/or
`
`otherwise comply with one or more of 35 U.S.C. §§ 100 et seq., including, but not limited to,
`
`sections 101, 102, 103, and/or 112.
`
`24.
`
`As a result of the acts described in the foregoing paragraphs, there exists a
`
`substantial controversy of sufficient immediacy and reality to warrant the issuance of a
`
`declaratory judgment regarding the invalidity of the ’231 patent.
`
`
`
`5
`
`T-Mobile / TCS / Ericsson EXHIBIT 1020
`T-Mobile / TCS / Ericsson v. TracBeam
`
`
`
`Case 6:12-cv-00058-LED Document 1 Filed 09/27/11 Page 6 of 9 PageID #: 6
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`
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`25.
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`A judicial declaration is necessary and appropriate so that Plaintiff TCS may
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`ascertain its rights regarding the ’231 patent.
`
`COUNT III
`
`Declaration of Non-Infringement of U.S. Patent No. 7,525,484
`
`26.
`
`TCS repeats, realleges, and incorporates by reference herein the allegations
`
`contained in paragraphs 1 through 25 as though expressly set forth herein.
`
`27.
`
`TracBeam has alleged that at least one customer of TCS infringes the ’484 patent
`
`in the United States District Court for the Eastern District of Texas with products supplied by
`
`TCS.
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`28.
`
`TracBeam has also put TCS on notice of its patent portfolio, including the ‘484
`
`patent that has been asserted against at least one TCS customer.
`
`29.
`
`TCS’s products and services for determining the locations of wireless mobile
`
`devices have not infringed and do not infringe, directly or indirectly, any valid claim of the ’484
`
`patent, either literally or under the doctrine of equivalents.
`
`30.
`
`As a result of the acts described in the foregoing paragraphs, there exists a
`
`substantial controversy of sufficient immediacy and reality to warrant the issuance of a
`
`declaratory judgment as to whether TCS infringes, directly or indirectly, any claim of the ’484
`
`patent.
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`31.
`
`A judicial declaration is necessary and appropriate so that TCS may ascertain its
`
`rights regarding the ’484 patent.
`
`
`
`
`
`6
`
`T-Mobile / TCS / Ericsson EXHIBIT 1020
`T-Mobile / TCS / Ericsson v. TracBeam
`
`
`
`Case 6:12-cv-00058-LED Document 1 Filed 09/27/11 Page 7 of 9 PageID #: 7
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`
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`COUNT IV
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`Declaration of Invalidity of U.S. Patent No. 7,525,484
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`32.
`
`TCS repeats, realleges, and incorporates by reference herein the allegations
`
`contained in paragraphs 1 through 31 as though expressly set forth herein.
`
`33.
`
`The ’484 patent is invalid for failure to meet the conditions of patentability and/or
`
`otherwise comply with one or more of 35 U.S.C. §§ 100 et seq., including, but not limited to,
`
`sections 101, 102, 103, and/or 112.
`
`34.
`
`As a result of the acts described in the foregoing paragraphs, there exists a
`
`substantial controversy of sufficient immediacy and reality to warrant the issuance of a
`
`declaratory judgment regarding the invalidity of the ‘484 patent.
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`35.
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`A judicial declaration is necessary and appropriate so that TCS may ascertain its
`
`rights regarding the ’484 patent.
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`REQUEST FOR RELIEF
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`WHEREFORE, TCS respectfully requests that the Court enter judgment in favor of TCS
`
`granting the following relief:
`
`A.
`
`A declaration that TCS does not and has not infringed, directly or indirectly, any
`
`valid claim of the patents-in-suit;
`
`B.
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`A declaration that the patents-in-suit are invalid for failure to meet the conditions
`
`of patentability and/or otherwise comply with the requirements of 35 U.S.C. §§ 100 et seq.,
`
`including, but not limited to, 101, 102, 103, and/or 112;
`
`C.
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`An injunction against TracBeam and others in active concert or participation with
`
`TracBeam from asserting infringement or instituting or continuing any legal action for
`
`
`
`7
`
`T-Mobile / TCS / Ericsson EXHIBIT 1020
`T-Mobile / TCS / Ericsson v. TracBeam
`
`
`
`Case 6:12-cv-00058-LED Document 1 Filed 09/27/11 Page 8 of 9 PageID #: 8
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`
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`infringement of the patents-in-suit against TCS or its suppliers, manufacturers, distributors,
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`resellers of its products, customers, or end users of its products;
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`D.
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`An order declaring that this is an exceptional case and awarding TCS its costs,
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`expenses, disbursements, and reasonable attorney fees under 35 U.S.C. § 285 and all other
`
`applicable statutes, rules, and common law; and
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`Such other and further relief as this Court deems to be just or proper.
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`E.
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`
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`JURY DEMAND
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`TCS demands trial by jury for all claims triable by jury pursuant to Fed. R. Civ. P. 38.
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`Dated: September 27, 2011
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`Respectfully submitted,
`
` s/ Victor M. Morales
`____________________________________
`Victor M. Morales, #16974
`MCELROY, DEUTSCH, MULVANEY
` & CARPENTER, LLP
`5613 DTC Parkway, Suite 1100
`P.O. Box 4467
`Greenwood Village, CO 80155-4467
`Direct: (303) 226-8963
`Telephone:
`(303) 293-8800
`Fax:
`
`(303) 839-0036
`E-mail: vmorales@mdmc-lawco.com
`
`
`
`and
`
`8
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`T-Mobile / TCS / Ericsson EXHIBIT 1020
`T-Mobile / TCS / Ericsson v. TracBeam
`
`
`
`Case 6:12-cv-00058-LED Document 1 Filed 09/27/11 Page 9 of 9 PageID #: 9
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`/s/ Edward A. Pennington
`Edward A. Pennington
`Stephanie D. Scruggs
`Sid V. Pandit
`MURPHY & KING
`Professional Corporation
`1055 Thomas Jefferson Street, Suite 400
`Washington, D.C. 20007
`Telephone: (202) 403-2100
`Facsimile: (202) 429-4380
`Email: eap@murphyking.com
` sds@murphyking.com
` svp@murphyking.com
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`
`
`Attorneys for Plaintiff,
`TeleCommunication Systems, Inc.
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`9
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`T-Mobile / TCS / Ericsson EXHIBIT 1020
`T-Mobile / TCS / Ericsson v. TracBeam
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