Case 1:15-cv-01170-GMS Document 74 Filed 11/10/16 Page 1 of 10 PageID #: 954
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`KONINKLIJKE PHILIPS N.V.,
`U.S. PHILIPS CORPORATION,
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`Plaintiffs,
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`v.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 15-1170-GMS
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`JURY TRIAL DEMANDED
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`ACER INC.,
`ACER AMERICA CORPORATION,
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`Defendants.
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`MICROSOFT CORPORATION,
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`Intervenor-Plaintiff,
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`v.
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`KONINKLIJKE PHILIPS N.V.,
`U.S. PHILIPS CORPORATION,
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`
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` Intervenor-Defendants.
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`MICROSOFT CORPORATION’S COMPLAINT IN INTERVENTION
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`Pursuant to Rule 24(c) of the Federal Rules of Civil Procedure, Intervenor-Plaintiff
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`Microsoft Corporation (“Microsoft”) alleges as follows for its Complaint in Intervention against
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`Plaintiffs and Intervenor-Defendants Koninklijke Philips N.V. and U.S. Philips Corporation
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`(collectively, “Philips” or “Plaintiffs”):
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`1.
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`Microsoft seeks a declaratory judgment of non-infringement pursuant to the
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`Declaratory Judgment Act, 28 U.S.C. §§ 2201(a) and 2202.
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`PARTIES
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`2.
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`Microsoft is a corporation organized under the laws of the State of Washington,
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`with its principal place of business at One Microsoft Way, Redmond, Washington 98052.
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`PHILIPS 2004
`Microsoft v. Philips
`IPR2018-00026
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`Case 1:15-cv-01170-GMS Document 74 Filed 11/10/16 Page 2 of 10 PageID #: 955
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`3.
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`Plaintiff and Defendant in Intervention Koninklijke Philips N.V., formerly known
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`as Koninklijke Philips Electronics N.V., purports to be a corporation organized and existing
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`under the laws of the Netherlands with its principal place of business at High Tech Campus 5,
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`5656 AE Eindhoven, the Netherlands.
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`4.
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`Plaintiff and Defendant in Intervention U.S. Philips Corporation purports to be a
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`corporation organized and existing under the laws of Delaware with its principal place of
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`business at 3000 Minuteman Road, Andover, Massachusetts 01810.
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`JURISDICTION AND VENUE
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`5.
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`This action arises under the patent laws of the United States, 35 U.S.C. §§ 1 et
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`seq., and the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202. This Court has subject
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`matter jurisdiction over this action pursuant to 28 U.S.C. §§ 1331 and 1338(a).
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`6.
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`7.
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`Venue is proper in this District pursuant to 28 U.S.C. §§ 1391(b) and (c) and 1400.
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`This Court has personal jurisdiction over Philips due to its filing of the original
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`and amended Complaints in this action.
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`FACTUAL BACKGROUND AND MICROSOFT’S INTEREST IN THIS ACTION
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`8.
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`Philips filed its original Complaint in this action on December 18, 2015, accusing
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`Acer Inc. and Acer America Corp. (collectively, “Acer”) of selling smartphones, tablet
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`computers, laptops, and All-in-One PCs that infringe certain claims of United States Patent Nos.
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`RE 44,913 (“the ’913 patent”), 6,690,387 (“the ’387 patent”), 7,184,064 (“the ’064 patent”),
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`7,529,806 (“the ’806 patent”), 5,910,797 (“the ’797 patent”), 6,522,695 (“the ’695 patent”), RE
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`44,006 (“the ’006 patent”), 8,543,819 (“the ’819 patent”), 6,772,114 (“the ’114 patent”), and RE
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`43,564 (“the ’564 patent”) (collectively, the “Asserted Patents”).
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`9.
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`Acer is a customer of Microsoft’s. Acer sells computer products that incorporate
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`Microsoft’s Windows Operating System.
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`Case 1:15-cv-01170-GMS Document 74 Filed 11/10/16 Page 3 of 10 PageID #: 956
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`10.
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`On April 11, 2016, Philips filed a First Amended Complaint against Acer. D.I. 20
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`(“First Amended Complaint”). In the First Amended Complaint, Philips alleges that either
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`Koninklijke Philips N.V. or U.S. Philips Corporation is “the assignee and owner” of each of the
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`Asserted Patents and the sole owner of “the right to sue and recover for any and all infringements”
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`of each of the Asserted Patents. Id. at ¶¶ 11-20, 38, 54, 72, 85, 101, 110, 119, 128, 145, 154.
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`11.
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`On August 26, 2016, Philips served its Initial Infringement Contentions Against
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`the Acer Defendants (“Infringement Contentions”) (filed herewith as Exhibit A). The
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`Infringement Contentions specifically identify numerous Acer devices that run Windows as
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`allegedly infringing products. See Ex. A, App. K. Additionally, the Infringement Contentions
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`specifically assert that Windows provides the allegedly infringing functionality for certain
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`Asserted Patents.
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`12.
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`The ’913 patent is entitled “Text entry method and device therefor.” The
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`Infringement Contentions allege that Acer infringes claims 1, 3, 4, 5, 8, 9, 12, 13, and 16 of
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`the ’913 patent, both literally and under the doctrine of equivalents. Ex. A at 2. The
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`Infringement Contentions also allege that Acer infringes claims 1, 9, and 12 of the ’913 patent
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`under theories of induced and contributory infringement. Id. at 2-3. The Infringement
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`Contentions include allegations specifically directed to “’913 Windows Accused Products,”
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`which Philips defines as products “preloaded with Microsoft Windows version 8 or higher.” Id.,
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`App. A at 1. The Infringement Contentions state (see id.) that these accused Windows products
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`are listed in Appendix K, which identifies more than 130 products that run Windows. The
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`Infringement Contentions also cite to Microsoft Windows 8 and Windows 10 online documents
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`and Windows 10-related books that refer to touch keyboards to support the allegations of
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`Case 1:15-cv-01170-GMS Document 74 Filed 11/10/16 Page 4 of 10 PageID #: 957
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`functionality for the ’913 Windows Accused Products. See id., App. A at 1, 4-6, 9-10, 12-14,
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`16-17, 19-21; see generally id., App. A at Ex. B.
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`13.
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`The ’387 patent is entitled “Touch-screen image scrolling system and method.”
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`The Infringement Contentions allege that Acer infringes claims 9, 11, and 12 of the ’387 patent
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`both literally and under the doctrine of equivalents. Ex. A at 3. The Infringement Contentions
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`also allege that Acer infringes claims 9, 11, and 12 of the ’387 patent under theories of induced
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`and contributory infringement. Id. at 3-4. The Infringement Contentions include allegations
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`specifically directed to “’387 Windows Accused Products,” which Philips defines as products
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`“preloaded with Microsoft Windows version 7 or higher.” Id., App. B at 1-2. The Infringement
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`Contentions state (see id.) that these accused Windows products are listed in Appendix K, which
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`identifies more than 130 products that run Windows. The Infringement Contentions also cite to
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`Microsoft Windows 8 and Windows 10 support documents to support the allegations of
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`functionality for the ’387 Windows Accused Products. Id., App. B at 2, 4-5, 7, 8, 10-12, 15, 18;
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`see generally id., App. B at Ex. C.
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`14.
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`The ’064 patent is also entitled “Touch-screen image scrolling system and
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`method.” The Infringement Contentions allege that Acer infringes claims 1, 2, 3, 5, 6, and 8 of
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`the ’064 patent both literally and under the doctrine of equivalents. Ex. A at 4; see also id., App.
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`C. The Infringement Contentions include allegations specifically directed to “’064 Windows
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`Accused Products,” which Philips defines as products “preloaded with Microsoft Windows
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`version 7 or higher.” Id., App. C at 2. The Infringement Contentions state (see id.) that these
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`accused Windows products are listed in Appendix K, which identifies more than 130 products
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`that run Windows. The Infringement Contentions also cite to Microsoft Windows 8 and
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`Windows 10 support documents to support the allegations of functionality for the ’064 Windows
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`Case 1:15-cv-01170-GMS Document 74 Filed 11/10/16 Page 5 of 10 PageID #: 958
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`Accused Products. Id., App. C at 2, 4-6, 8, 10-13, 16, 19-20, 24-25; see generally id., App. C at
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`Ex. C.
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`15.
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`The ’695 patent is entitled “Transmitting device for transmitting a digital
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`information signal alternately in encoded form and non-encoded form.” The Infringement
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`Contentions allege that Acer infringes claims 14, 15, and 17 of the ’695 patent both literally and
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`under the doctrine of equivalents. Ex. A at 5; see also id., App. F. The Infringement
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`Contentions include allegations specifically directed to “’695 Windows Accused Products,”
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`which Philips defines as products “preloaded with Microsoft Windows version 10 or higher.” Id.,
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`App. F at 2. The Infringement Contentions state (see id.) that these accused Windows products
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`are listed in Appendix K, which identifies more than 130 products that run Windows. The
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`Infringement Contentions also cite to Microsoft Windows 10 support for FLAC audio to support
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`the allegations of functionality for the ’695 Windows Accused Products. Id., App. F at 2; see
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`generally id., App. F at Ex. B.
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`16.
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`The ’564 patent is entitled “Hand-held with auto-zoom for graphical display of
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`web page.” The Infringement Contentions allege that Acer infringes claims 1, 2, 3, 4, 5, and 7 of
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`the ’564 patent both literally and under the doctrine of equivalents. Ex. A at 7; see also id., App.
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`J. The Infringement Contentions include allegations specifically directed to “’564 Windows
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`Accused Products,” which Philips defines as products “preloaded with Microsoft Windows
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`version 7 or higher.” Id., App. J at 1. The Infringement Contentions state (see id.) that these
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`accused Windows products are listed in Appendix K, which identifies more than 130 products
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`that run Windows. The Infringement Contentions also rely on photos of an Acer Aspire Switch
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`10E running Windows 10 to support the allegations of functionality for the ’564 Windows
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`Accused Products. Id., App. J at 3, 3-5, 7-8, 13-14, 16-17; see generally id., App. J at Ex. C.
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`Case 1:15-cv-01170-GMS Document 74 Filed 11/10/16 Page 6 of 10 PageID #: 959
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`17.
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`Philips’ assertions that Acer’s Windows-based tablet, laptop, and All-in-One PC
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`products infringe at least five of the ten Asserted Patents as a result of functionality provided by
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`Windows are tantamount to allegations that Microsoft’s own Windows products directly infringe
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`these Asserted Patents. Thus, Microsoft has a direct and substantial interest in defending against
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`and defeating Philips’ claims of infringement.
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`18.
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`Upon information and belief, Philips has taken the position that at least the use,
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`sale, and offer for sale of the Windows Operating System pre-installed in the accused Acer
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`products infringes one or more claims of at least five of the ten Asserted Patents.
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`19.
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`An actual and justiciable controversy exists between Microsoft and Philips as to
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`whether or not Microsoft has infringed any claim of the Asserted Patents, directly or indirectly,
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`based on the Windows Operating System.
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`20.
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`As a result of Philips’ Windows-based infringement allegations against Acer,
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`Microsoft has an objectively reasonable apprehension that Philips will claim that Microsoft’s
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`products, including at least the Windows Operating System, directly or indirectly infringe one or
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`more claims of the Asserted Patents. Therefore, an actual controversy exists between Microsoft
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`and Philips. By intervening in this action, Microsoft seeks the Court’s assistance and declaration
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`concerning these matters, which have been and are subjects of disagreement among the parties.
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`COUNT 1
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`(Declaratory Judgment of Noninfringement of U.S. Patent No. RE 44,913)
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`21. Microsoft restates, realleges, and incorporates by reference paragraphs 1 through
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`20.
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`22.
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`A valid and justiciable controversy has arisen and exists between Microsoft and
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`Philips regarding the ’913 patent.
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`Case 1:15-cv-01170-GMS Document 74 Filed 11/10/16 Page 7 of 10 PageID #: 960
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`23. Microsoft does not infringe any claim of the ’913 patent, including claims 1, 3, 4,
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`5, 8, 9, 12, 13, and 16, either directly or indirectly.
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`24.
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`A judicial declaration concerning these matters is necessary and appropriate at
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`this time so that Microsoft can determine its rights and duties with respect to the parties and with
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`respect to designing, developing, manufacturing, marketing, and selling its products. Absent
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`such a declaration, Philips will continue to assert the ’913 patent against Microsoft and/or
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`Microsoft’s customers, and thereby cause Microsoft irreparable injury and damage. Microsoft
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`has no other adequate remedy at law.
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`COUNT 2
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`(Declaratory Judgment of Noninfringement of U.S. Patent No. 6,690,387)
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`25. Microsoft restates, realleges, and incorporates by reference paragraphs 1 through
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`24.
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`26.
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`A valid and justiciable controversy has arisen and exists between Microsoft and
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`Philips regarding the ’387 patent.
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`27. Microsoft does not infringe any claim of the ’387 patent, including claims 9, 11,
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`and 12, either directly or indirectly.
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`28.
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`A judicial declaration concerning these matters is necessary and appropriate at
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`this time so that Microsoft can determine its rights and duties with respect to the parties and with
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`respect to designing, developing, manufacturing, marketing, and selling its products. Absent
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`such a declaration, Philips will continue to assert the ’387 patent against Microsoft and/or
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`Microsoft’s customers, and thereby cause Microsoft irreparable injury and damage. Microsoft
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`has no other adequate remedy at law.
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`Case 1:15-cv-01170-GMS Document 74 Filed 11/10/16 Page 8 of 10 PageID #: 961
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`COUNT 3
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`(Declaratory Judgment of Noninfringement of U.S. Patent No. 7,184,064)
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`29. Microsoft restates, realleges, and incorporates by reference paragraphs 1 through
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`28.
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`30.
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`A valid and justiciable controversy has arisen and exists between Microsoft and
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`Philips regarding the ’064 patent.
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`31. Microsoft does not infringe any claim of the ’064 patent, including claims 1, 2, 3,
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`5, 6, and 8, either directly or indirectly.
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`32.
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`A judicial declaration concerning these matters is necessary and appropriate at
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`this time so that Microsoft can determine its rights and duties with respect to the parties and with
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`respect to designing, developing, manufacturing, marketing, and selling its products. Absent
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`such a declaration, Philips will continue to assert the ’064 patent against Microsoft and/or
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`Microsoft’s customers, and thereby cause Microsoft irreparable injury and damage. Microsoft
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`has no other adequate remedy at law.
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`COUNT 4
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`(Declaratory Judgment of Noninfringement of U.S. Patent No. 6,522,695)
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`33. Microsoft restates, realleges, and incorporates by reference paragraphs 1 through
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`32.
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`34.
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`A valid and justiciable controversy has arisen and exists between Microsoft and
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`Philips regarding the ’695 patent.
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`35. Microsoft does not infringe any claim of the ’695 patent, including claims 14, 15,
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`and 17, either directly or indirectly.
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`36.
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`A judicial declaration concerning these matters is necessary and appropriate at
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`this time so that Microsoft can determine its rights and duties with respect to the parties and with
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`Case 1:15-cv-01170-GMS Document 74 Filed 11/10/16 Page 9 of 10 PageID #: 962
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`respect to designing, developing, manufacturing, marketing, and selling its product. Absent such
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`a declaration, Philips will continue to assert the ’695 patent against Microsoft and/or Microsoft’s
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`customers, and thereby cause Microsoft irreparable injury and damage. Microsoft has no other
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`adequate remedy at law.
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`COUNT 5
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`(Declaratory Judgment of Noninfringement of U.S. Patent No. RE 43,564)
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`37. Microsoft restates, realleges, and incorporates by reference paragraphs 1 through
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`36.
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`38.
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`A valid and justiciable controversy has arisen and exists between Microsoft and
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`Philips regarding the ’564 patent.
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`39. Microsoft does not infringe any claim of the ’564 patent, including claims 1, 2, 3,
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`4, 5, and 7, either directly or indirectly.
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`40.
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`A judicial declaration concerning these matters is necessary and appropriate at
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`this time so that Microsoft can determine its rights and duties with respect to the parties and with
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`respect to designing, developing, manufacturing, marketing, and selling its products. Absent
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`such a declaration, Philips will continue to assert the ’564 patent against Microsoft and/or
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`Microsoft’s customers, and thereby cause Microsoft irreparable injury and damage. Microsoft
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`has no other adequate remedy at law.
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`REQUESTED RELIEF
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`Therefore, Microsoft requests judgment against Philips as follows:
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`a.
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`b.
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`c.
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`d.
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`A Declaration that Microsoft does not infringe any claim of the ’913 patent;
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`A Declaration that Microsoft does not infringe any claim of the ’387 patent;
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`A Declaration that Microsoft does not infringe any claim of the ’064 patent;
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`A Declaration that Microsoft does not infringe any claim of the ’695 patent;
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`Case 1:15-cv-01170-GMS Document 74 Filed 11/10/16 Page 10 of 10 PageID #: 963
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`e.
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`f.
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`A Declaration that Microsoft does not infringe any claim of the ’564 patent;
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`A determination that this case is “exceptional” within the meaning of 35 U.S.C.
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`§ 285, entitling Microsoft to an award of its reasonable attorneys’ fees, expenses and costs; and
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`g.
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`A grant of such other and further equitable or legal relief as the Court deems
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`proper.
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`DEMAND FOR JURY TRIAL
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`Microsoft hereby demands trial by jury on all issues so triable.
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`ASHBY & GEDDES
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`/s/ Steven J. Balick
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`Steven J. Balick (#2114)
`Andrew C. Mayo (#5207)
`500 Delaware Avenue, 8th Floor
`P.O. Box 1150
`Wilmington, DE 19899
`(302) 654-1888
`sbalick@ashby-geddes.com
`amayo@ashby-geddes.com
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`Attorneys For Intervenor-Plaintiff Microsoft
`Corporation
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`Of Counsel:
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`Chad S. Campbell
`Jared W. Crop
`PERKINS COIE LLP
`2901 N. Central Avenue, Suite 2000
`Phoenix, AZ 85012-2788
`(602) 351-8000
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`Judith Jennison
`Christina McCullough
`PERKINS COIE LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101-3099
`(206) 359-8000
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`Dated: November 10, 2016
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