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Case 3:19-cv-02471-WHO Document 1 Filed 05/07/19 Page 1 of 8
`
`James R. Batchelder (CSB # 136347)
`Mark D. Rowland (CSB # 157862)
`Andrew T. Radsch (CSB # 303665)
`ROPES & GRAY LLP
`1900 University Ave. Sixth Floor
`East Palo Alto, CA 94303-2284
`Tel: (650) 617-4000
`Fax: (650) 617-4090
`james.batchelder@ropesgray.com
`mark.rowland@ropesgray.com
`andrew.radsch@ropesgray.com
`
`Attorneys for Plaintiff
`PALO ALTO NETWORKS, INC.
`
`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
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`PALO ALTO NETWORKS, INC.,
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`
`
`Plaintiff,
`
`
`
`v.
`
`PACKET INTELLIGENCE LLC,
`
`
`
`
`Defendant.
`
`Case No.
`
`COMPLAINT FOR DECLARATORY
`JUDGMENT OF NON-INFRINGEMENT
`
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`
`DEMAND FOR JURY TRIAL
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`COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT
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`Case 3:19-cv-02471-WHO Document 1 Filed 05/07/19 Page 2 of 8
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`Plaintiff Palo Alto Networks, Inc. (“Palo Alto Networks”), by its attorneys, Ropes & Gray
`LLP, files this Complaint against Defendant Packet Intelligence LLC (“Packet Intelligence”) and
`hereby alleges as follows:
`
`NATURE OF THE ACTION
`1.
`This action arises from Packet Intelligence’s efforts at enforcement of U.S. Patent
`Nos. 6,651,099, entitled “Method and apparatus for monitoring traffic in a network” (the “’099
`Patent”); 6,665,725, entitled “Processing protocol specific information in packets specified by a
`protocol description language” (the “’725 Patent”); 6,839,751, entitled “Re-using information from
`data transactions for maintaining statistics in network monitoring” (the “’751 Patent”); 6,954,789,
`entitled “Method and apparatus for monitoring traffic in a network” (the “’789 Patent”); and
`6,771,646, entitled “Associative cache structure for lookups and updates of flow records in a network
`monitor” (the “’646 Patent”) (collectively, the “Patents-in-Suit”). Palo Alto Networks asserts claims
`for declaratory judgment of non-infringement of the Patents-in-Suit.
`PARTIES
`2.
`Plaintiff Palo Alto Networks is a Delaware corporation having its principal place of
`business at 3000 Tannery Way, Santa Clara, California 95054. Palo Alto Networks is a global leader
`in the design, development, and distribution of advanced cybersecurity solutions.
`3.
`On information and belief, Defendant Packet Intelligence is a limited liability
`company existing under the laws of the state of Texas having its principal place of business at 505
`East Travis Street, Suite 209, Marshall, TX 75670. On information and belief, Packet Intelligence
`is a non-practicing entity, which aims to license its patent portfolio to others.
`JURISDICTION AND VENUE
`4.
`This action arises under the patent laws of the United States, 35 U.S.C. § 1 et seq.,
`and the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202. Subject matter jurisdiction is based
`upon 28 U.S.C. §§ 1331 and 1338(a).
`5.
`This Court has personal jurisdiction over Packet Intelligence in this District. Upon
`information and belief, Packet Intelligence, directly or through its agents, has regularly conducted
`business activities in California and this action arises out of and relates to activities that Packet
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`COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT
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`Packet Intelligence Ex. 2044 Page 2 of 8
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`Case 3:19-cv-02471-WHO Document 1 Filed 05/07/19 Page 3 of 8
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`Intelligence has purposefully directed at California and this District. Among other things, Packet
`Intelligence purposefully directed allegations of patent infringement to Palo Alto Networks in this
`District by addressing and sending to Palo Alto Networks in this District a patent assertion letter
`alleging that Palo Alto Networks infringes one or more claims of the Patents-in-Suit.
`6.
`Upon information and belief, Packet Intelligence has sent, or caused to be sent, other
`patent assertion and/or licensing letters to other persons and/or companies in this District. Upon
`information and belief, Packet Intelligence has charged infringement and threatened litigation against
`numerous companies residing and conducting business in this District.
`7.
`In addition, upon information and belief, Packet Intelligence entered into an
`agreement with Exar Corporation (“Exar”) of Fremont, California, in this District, whereby Exar
`assigned the Patents-in-Suit to Packet Intelligence (“Exar Assignment Agreement”). Furthermore,
`the Exar Assignment Agreement establishes an ongoing relationship between Exar and Packet
`Intelligence relating to Packet Intelligence’s enforcement activities, whereby Exar agrees to “testify
`in any legal proceedings concerning the Patent Property [subject of the Exar Assignment
`Agreement]” and to undertake other specified activities concerning the Patents-in-Suit.
`8.
`Additionally, on information and belief, Packet Intelligence has entered into a
`settlement and license agreement relating to the Patents-in-Suit with Cisco Systems, Inc. (“Cisco”)
`of San Jose, California, in this District. On information and belief, Packet Intelligence has received
`or is contracted to receive monetary consideration from Cisco, thereby benefitting from at least one
`California company in the form of monies and/or other consideration.
`9.
`On information and belief, Packet Intelligence also has entered into a consulting
`agreement with Russel Dietz of San Jose, California, a named inventor on each of the Patents-in-
`Suit, relating to Packet Intelligence’s enforcement efforts concerning the Patents-in-Suit. On
`information and belief, Packet Intelligence has directed communications to Mr. Dietz in this District
`relating to Packet Intelligence’s enforcement efforts for one or more of the Patents-in-Suit. In
`addition, upon information and belief, Packet Intelligence has directed communications to another
`named inventor of Patents-in-Suit, Joseph Maixner of San Jose, California, in this District, relating
`to Packet Intelligence’s enforcement efforts for one or more of the Patents-in-Suit.
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`-2-
`COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT
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`Packet Intelligence Ex. 2044 Page 3 of 8
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`Case 3:19-cv-02471-WHO Document 1 Filed 05/07/19 Page 4 of 8
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`10.
`
`Venue is proper in this judicial district based on 28 U.S.C. §§ 1391(b)-(c).
`INTRADISTRICT ASSIGNMENT
`11.
`This case is an Intellectual Property Action under Civil Local Rule 3-2(c) and,
`pursuant to Civil Local Rule 3-5(b), shall be assigned on a district-wide basis.
`FACTUAL ALLEGATIONS
`THE PATENTS-IN-SUIT
`12.
`The ’099 Patent states on its cover that it was issued on November 18, 2003 to named
`inventors Russell S. Dietz of San Jose, California; Joseph R. Maixner of Aptos, California; Andrew
`A. Koppenhaver of Littleton, Colorado; William H. Bares of Germantown, Tennessee; Haig A.
`Sarkissian of San Antonio, Texas; and James F. Torgerson of Andover, Minnesota. The ’099 Patent
`also states that the initial assignee of the ’099 Patent was Hi/fn, Inc. of Los Gatos, California.
`13.
`The ’725 Patent states on its cover that it was issued on December 16, 2003 to named
`inventors Russell S. Dietz of San Jose, California; Andrew A. Koppenhaver of Littleton, Colorado;
`and James F. Torgerson of Andover, Minnesota. The ’725 Patent also states that the initial assignee
`of the ’725 Patent was Hi/fn, Inc. of Los Gatos, California.
`14.
`The ’751 Patent states on its cover that it was issued on January 4, 2005 to named
`inventors Russell S. Dietz of San Jose, California; Joseph R. Maixner of Aptos, California; and
`Andrew A. Koppenhaver of Littleton, Colorado. The ’751 Patent also states that the initial assignee
`of the ’751 Patent was Hi/fn, Inc. of Los Gatos, California.
`15.
`The ’789 Patent states on its cover that it was issued on October 11, 2005 to named
`inventors Russell S. Dietz of San Jose, California; Joseph R. Maixner of Aptos, California; Andrew
`A. Koppenhaver of Littleton, Colorado; William H. Bares of Germantown, Tennessee; Haig A.
`Sarkissian of San Antonio, Texas; and James F. Torgerson of Andover, Minnesota. The ’789 Patent
`also states that the initial assignee of the ’789 Patent was Hi/fn, Inc. of Los Gatos, California.
`16.
`The ’646 Patent states on its cover that it was issued on August 3, 2004 to named
`inventors Russell S. Dietz of San Jose, California and Haig A. Sarkissian of San Antonio, Texas.
`The ’646 Patent also states that the initial assignee of the ’646 Patent was Hi/fn, Inc. of Los Gatos,
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`-3-
`COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT
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`Packet Intelligence Ex. 2044 Page 4 of 8
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`

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`Case 3:19-cv-02471-WHO Document 1 Filed 05/07/19 Page 5 of 8
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`California. On information and belief, William H. Bares of San Jose, California was added as a
`named inventor to the ’646 patent through a certificate of correction.
`DISPUTE BETWEEN PALO ALTO NETWORKS AND
`PACKET INTELLIGENCE CONCERNING THE PATENTS-IN-SUIT
`17.
`Packet Intelligence, by its attorney, sent a letter to Palo Alto Networks with the subject
`line: “Notice of Infringement And Invitation to License Patents of Packet Intelligence LLC” (“Packet
`Intelligence’s Assertion Letter”). Packet Intelligence’s Assertion Letter alleges that Palo Alto
`Networks infringes the Patents-in-Suit and provides “examples” of allegedly infringing Palo Alto
`Networks products. Packet Intelligence’s Assertion Letter identified the following products as
`allegedly infringing: PA-Series Firewall Appliances (PA-200, PA-7000, PA-7050, PA-7080) and
`VM-Series Firewall (VM-50, VM-100, VM-300, VM-500, VM-700) (collectively, the “Palo Alto
`Networks Accused Products”).
`18.
`Palo Alto Networks, by its counsel, responded to Packet Intelligence concurrent with
`this filing that, among other things, Palo Alto Networks does not infringe the Patents-in-Suit, and
`that Palo Alto Networks declines to take a license.
`19.
`Accordingly, an actual and justiciable controversy exists between Palo Alto Networks
`and Packet Intelligence concerning whether Palo Alto Networks infringes one or more claims of any
`of the Patents-in-Suit. Palo Alto Networks now seeks a declaratory judgment that Palo Alto
`Networks does not infringe the claims of the Patents-in-Suit.
`FIRST CLAIM FOR RELIEF
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’099 PATENT
`20.
`This is a claim for declaratory judgment of non-infringement of the ’099 Patent. The
`allegations of Paragraphs 1 through 19 above are repeated as though fully set forth herein.
`21.
`Palo Alto Networks is not infringing and has not infringed, directly or indirectly,
`literally or under the doctrine of equivalents, willfully or otherwise, any claim of the ’099 Patent.
`22.
`Palo Alto Networks is entitled to a judicial declaration and order that it does not
`infringe and has not infringed any claim of the ’099 Patent.
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`COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT
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`Packet Intelligence Ex. 2044 Page 5 of 8
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`

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`Case 3:19-cv-02471-WHO Document 1 Filed 05/07/19 Page 6 of 8
`
`SECOND CLAIM FOR RELIEF
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’725 PATENT
`23.
`This is a claim for declaratory judgment of non-infringement of the ’725 Patent. The
`allegations of Paragraphs 1 through 22 above are repeated as though fully set forth herein.
`24.
`Palo Alto Networks is not infringing and has not infringed, directly or indirectly,
`literally or under the doctrine of equivalents, willfully or otherwise, any claim of the ’725 Patent.
`25.
`Palo Alto Networks is entitled to a judicial declaration and order that it does not
`infringe and has not infringed any claim of the ’725 Patent.
`THIRD CLAIM FOR RELIEF
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’751 PATENT
`26.
`This is a claim for declaratory judgment of non-infringement of the ’751 Patent. The
`allegations of Paragraphs 1 through 25 above are repeated as though fully set forth herein.
`27.
`Palo Alto Networks is not infringing and has not infringed, directly or indirectly,
`literally or under the doctrine of equivalents, willfully or otherwise, any claim of the ’751 Patent.
`28.
`Palo Alto Networks is entitled to a judicial declaration and order that it does not
`infringe and has not infringed any claim of the ’751 Patent.
`FOURTH CLAIM FOR RELIEF
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’789 PATENT
`29.
`This is a claim for declaratory judgment of non-infringement of the ’789 Patent. The
`allegations of Paragraphs 1 through 28 above are repeated as though fully set forth herein.
`30.
`Palo Alto Networks is not infringing and has not infringed, directly or indirectly,
`literally or under the doctrine of equivalents, willfully or otherwise, any claim of the ’789 Patent.
`31.
`Palo Alto Networks is entitled to a judicial declaration and order that it does not
`infringe and has not infringed any claim of the ’789 Patent.
`FIFTH CLAIM FOR RELIEF
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’646 PATENT
`32.
`This is a claim for declaratory judgment of non-infringement of the ’646 Patent. The
`allegations of Paragraphs 1 through 31 above are repeated as though fully set forth herein.
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`COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT
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`Packet Intelligence Ex. 2044 Page 6 of 8
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`

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`Case 3:19-cv-02471-WHO Document 1 Filed 05/07/19 Page 7 of 8
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`33.
`Palo Alto Networks is not infringing and has not infringed, directly or indirectly,
`literally or under the doctrine of equivalents, willfully or otherwise, any claim of the ’646 Patent.
`34.
`Palo Alto Networks is entitled to a judicial declaration and order that it does not
`infringe and has not infringed any claim of the ’646 Patent.
`PRAYER FOR RELIEF
`WHEREFORE, Palo Alto Networks prays for the following relief:
`A.
`The Court enter a declaratory judgment that Palo Alto Networks in not infringing
`and has not infringed, directly or indirectly, literally or under the doctrine of equivalents, willfully
`or otherwise, any claim of each of the Patents-in-Suit;
`B.
`Preliminarily and permanently enjoining Packet Intelligence, its officers, agents,
`servants, employees, and attorneys, and those persons in active concert or participation with it who
`receive actual notice by personal service or otherwise, from asserting or threatening to assert
`against Palo Alto Networks or its customers, potential customers, or users of the Palo Alto
`Networks Accused Products, any charge of infringement of any claims of the Patents-in-Suit;
`C.
`Awarding to Palo Alto Networks its costs and attorneys’ fees; and
`D.
`Granting to Palo Alto Networks such other and further relief as this Court may deem
`just and proper.
`///
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`-6-
`COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT
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`Packet Intelligence Ex. 2044 Page 7 of 8
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`

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`Case 3:19-cv-02471-WHO Document 1 Filed 05/07/19 Page 8 of 8
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`JURY DEMAND
`Palo Alto Networks demands a trial by jury on all issues so triable in this action.
`
`
`
`
`Respectfully submitted,
`
`
`By: /s/ James R. Batchelder
`James R. Batchelder
`Mark D. Rowland
`Andrew T. Radsch
`ROPES & GRAY LLP
`1900 University Ave. Sixth Floor
`East Palo Alto, CA 94303-2284
`james.batchelder@ropesgray.com
`mark.rowland@ropesgray.com
`andrew.radsch@ropesgray.com
`
`Attorneys for Plaintiff,
`PALO ALTO NETWORKS, INC.
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`Date: May 7, 2019
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`-7-
`COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT
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`Packet Intelligence Ex. 2044 Page 8 of 8
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`

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