Case 2:24-cv-00198-JRG Document 1 Filed 03/19/24 Page 1 of 9 PageID #: 1
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`TAASERA LICENSING LLC,
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`
`Plaintiff,
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`§
`
`§
`Case No.
`§
`
`JURY TRIAL DEMANDED
`§
`§
`
`§
`§
`§
`§
`§
`§
`
`
`COMPLAINT
`
`
`
`v.
`
`
`JOYA SYSTEMS, LLC
`
`
`Defendants.
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`
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`Plaintiff Taasera Licensing LLC (“Taasera Licensing” or “Plaintiff”) for its Complaint
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`against Defendant Joya Systems, LLC (“Joya” or “Defendant”), alleges as follows:
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`THE PARTIES
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`1.
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`Taasera Licensing is a limited liability company, organized and existing under the
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`laws of the State of Texas, with its principal place of business located in 101 East Park Boulevard,
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`Suite 600, Plano, Texas 75074.
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`2.
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`Defendant Joya, upon information and belief, is a Texas corporation having its
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`principal place of business at 4425 South Mopac Expressway, Building II, Suite 101, Austin,
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`Texas.
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`JURISDICTION AND VENUE
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`3.
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`This is an action for declaratory judgment of no inventorship and no ownership of
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`certain patent assets. This Court has jurisdiction over this matter because the cause of action arises
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`under 35 U.S.C. § 256 and thus creates a federal question pursuant to 28 U.S.C. §§ 1331 and
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`1338(a). Further, there exists an actual controversy with respect to the inventorship and ownership
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`
`
`
`TAASERA LICENSING LLC,
`
`
`Plaintiff,
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`§
`
`§
`Case No.
`§
`
`JURY TRIAL DEMANDED
`§
`§
`
`§
`§
`§
`§
`§
`§
`
`
`COMPLAINT
`
`
`
`v.
`
`
`JOYA SYSTEMS, LLC
`
`
`Defendants.
`
`
`
`
`
`Plaintiff Taasera Licensing LLC (“Taasera Licensing” or “Plaintiff”) for its Complaint
`
`against Defendant Joya Systems, LLC (“Joya” or “Defendant”), alleges as follows:
`
`THE PARTIES
`
`1.
`
`Taasera Licensing is a limited liability company, organized and existing under the
`
`laws of the State of Texas, with its principal place of business located in 101 East Park Boulevard,
`
`Suite 600, Plano, Texas 75074.
`
`2.
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`Defendant Joya, upon information and belief, is a Texas corporation having its
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`principal place of business at 4425 South Mopac Expressway, Building II, Suite 101, Austin,
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`Texas.
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`JURISDICTION AND VENUE
`
`3.
`
`This is an action for declaratory judgment of no inventorship and no ownership of
`
`certain patent assets. This Court has jurisdiction over this matter because the cause of action arises
`
`under 35 U.S.C. § 256 and thus creates a federal question pursuant to 28 U.S.C. §§ 1331 and
`
`1338(a). Further, there exists an actual controversy with respect to the inventorship and ownership
`
`
`
`Case 2:24-cv-00198-JRG Document 1 Filed 03/19/24 Page 2 of 9 PageID #: 2
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`of the patents-in-suit, where, as here, the Plaintiff is under the shadow of threatened litigation
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`arising under federal law. Serco Servs. Co. v. Kelley Co., 51 F.3d 1037, 1038 (Fed. Cir. 1995).
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`Because Defendant has threatened litigation seeking ownership of the patents-in-suit and is
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`seeking to correct inventorship, the conflict is real and immediate and, therefore, the Court may
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`grant the declaratory relief pursuant to 28 U.S.C. §§ 2201 and 2202. Ewen v. Razavi, 123 F.3d
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`1466 (Fed. Cir. 1997).
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`4.
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`This Court also has jurisdiction over the state law claim, under Texas, for tortious
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`interference with prospective business relationship. Defendant is a Texas corporation and the acts
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`underlying the state law claim occurred in whole or part within the State of Texas.
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`5.
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`This Court has specific and personal jurisdiction over Defendant consistent with
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`the requirements of the Due Process Clause of the United States Constitution and the Texas Long
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`Arm Statute. Defendant is a Texas corporation located in Austin, Texas.
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`6.
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`Venue is proper in this Judicial District pursuant to 28 U.S.C. §§ 1391(b) and (c)
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`because the Defendant is subject to personal jurisdiction in this Judicial District, the Defendant
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`has engaged in the alleged wrongful conduct within this District, including by directing the
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`threatening letter (attached as Exhibit A) to a Texas entity located in this District, all of which
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`gives rise to this action.
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`FACTUAL BACKGROUND
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`7.
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`In 2021, Plaintiff, a Texas LLC, purchased a group of patents from Taasera, Inc.,
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`which purported to be a Delaware company with an office located at 175 South Main, #500, Salt
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`Lake City, Utah 84111.
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`8.
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`Taasera Licensing’s acquisition was limited to patents. Taasera Licensing expressly
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`did not assume any liabilities from Taasera, Inc., and the seller represented that it owned all right,
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`title, and interest in the patents.
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`2
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`Case 2:24-cv-00198-JRG Document 1 Filed 03/19/24 Page 3 of 9 PageID #: 3
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`9.
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`Taasera Licensing is not a successor-in-interest to Taasera, Inc. and does not have
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`(and never had) a relationship with Taasera, Inc. aside from purchasing patents in an arm’s length
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`transaction.
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`10.
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`Taasera Licensing acquired additional patents from other sources and began patent
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`litigation proceedings in this District in November 2021 by filing several lawsuits for patent
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`infringement, most of which have been resolved and dismissed.
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`11.
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`On or about March 4, 2024, Defendant Joya served the demand letter (“Demand
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`Letter,” attached as Exhibit A) on Taasera Licensing and its parent company, Quest Patent
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`Research Corporation, a Delaware corporation which has no ownership interest in the subject
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`patents.
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`12.
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`According to the Demand Letter, Joya and Taasera, Inc. (not Taasera Licensing)
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`entered into an agreement in October 2013, which purports to state that Joya would perform
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`services for Taasera, Inc.
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`13.
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`According to the Demand Letter, Taasera, Inc. did not pay for these services
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`rendered, and Joya Systems obtained a default judgment in Travis County, Texas for $161,000.00
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`as well as an additional award of $1,755.00 in attorney’s fees. Plaintiff has no information
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`regarding payments made or not made to Joya. Plaintiff did not exist as an entity until it was formed
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`in Texas in 2021.
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`14.
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`Despite Taasera, Inc. continuing to operate after the judgment was entered,
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`Defendant never sought to enforce this judgment. Defendant states that “Joya was unable to
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`enforce the judgment against Taasera at that time, as Taasera had since left its offices and had no
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`attachable property that Joya was aware of.” Demand Letter, at 1.
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`3
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`Case 2:24-cv-00198-JRG Document 1 Filed 03/19/24 Page 4 of 9 PageID #: 4
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`15.
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`The contract for consulting services is attached to the Demand Letter. This contract
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`contains the following clause relevant to this dispute:
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`“Contractor agrees that all Work Product and other things provided
`to Contractor by Customer [Taasera, Inc.] or acquired by Contractor
`in performance of the Services (“Items”) are Customer’s exclusive
`property . . .”
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`Ex. A, Attachment at 1.
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`16.
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`Despite having no relationship by contract or otherwise with Taasera Licensing or
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`with Quest Patent Research Corporation, (Plaintiff’s parent corporation), Joya has stated that “[t]he
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`patents, intellectual property, and know-how which Taasera Licensing and Quest are now asserting
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`in infringement claims . . . are based, in part, on the intellectual property of Joya Systems—
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`property which Taasera never paid for. These appear to include some of the claims associated with
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`the allegedly infringing patents” which Joya asserts “it created for Taasera”. Demand Letter, at 2.
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`17.
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`Joya claims in the Demand Letter that “all of the intellectual property developed
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`for Taasera remains the property of Joya, and Taasera Licensing and Quest do not have the right
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`to use it.” Id. at 3.
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`COUNT I
`(Declaratory Judgment of No Inventorship)
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`18.
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`19.
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`Paragraphs 1 through 17 are incorporated by reference as if fully set forth herein.
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`Joya has no claim to inventorship of any patent owned by Taasera Licensing,
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`including those patents that were purchased from Taasera, Inc.
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`20.
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`The inventions conceived of by Taasera, Inc., as reflected by the filings of the
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`patents at issue, occurred before Taasera, Inc. allegedly contracted with Joya.
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`21.
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`One of the patents that Taasera Licensing purchased from Taasera, Inc. is U.S.
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`Patent No. 8,327,441 (the “’441 Patent”). The ’441 Patent, entitled “System and Method for
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`4
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`Case 2:24-cv-00198-JRG Document 1 Filed 03/19/24 Page 5 of 9 PageID #: 5
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`Application Attestation), was filed in February 2012 and claims priority to a provisional
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`application that was filed on February 17, 2011.
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`22.
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`Another patent that Taasera Licensing purchased from Taasera, Inc. is U.S. Patent
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`No. 8,776,180 (the “’180 Patent”). The ’180 Patent, entitled “Systems and Methods for Using
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`Reputation Scores in Network Services and Transactions to Calculate Security Risks to Computer
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`Systems and Platforms,” was filed in June 2012 and claims priority to a provisional application
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`that was filed on May 1, 2012.
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`23.
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`Another patent that Taasera Licensing purchased from Taasera, Inc. is U.S. Patent
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`No. 8,850,517 (the “’517 Patent”). The ’517 Patent, entitled “Runtime Risk Detection Based on
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`User, Application, and System Action Sequence Correlation,” was filed in January 2013.
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`24.
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`Another patent that Taasera Licensing purchased from Taasera, Inc. is U.S. Patent
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`No. 8,850,588 (the “’588 Patent”). The ’588 Patent, entitled “Systems and Methods for Providing
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`Mobile Security Based on Dynamic Attestation,” was filed in July 2012 and claims priority to a
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`provisional application filed on May 1, 2012.
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`25.
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`Another patent that Taasera Licensing purchased from Taasera, Inc. is U.S. Patent
`
`No. 8,990,948 (the “’948 Patent”). The ’948 Patent, entitled “Systems and Methods for
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`Orchestrating Runtime Operational Integrity,” was filed in July 2012 and claims priority to a
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`provisional application that was filed on May 1, 2012.
`
`26.
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`Another patent that Taasera Licensing purchased from Taasera, Inc. is U.S. Patent
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`No. 9,027,125 (the “’125 Patent”). The ’125 Patent, entitled “Systems and Methods for Network
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`Flow Remediation Based on Risk Correlation,” was filed in July 2012 and claims priority to a
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`provisional application that was filed on May 1, 2012.
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`5
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`Case 2:24-cv-00198-JRG Document 1 Filed 03/19/24 Page 6 of 9 PageID #: 6
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`27.
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`The final patent that Taasera Licensing purchased from Taasera, Inc. is U.S. Patent
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`No. 9,092,616 (the “’616 Patent”) The ’616 Patent, entitled “Systems and Methods for Threat
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`Identification and Remediation,” was filed in July 2012 and claims priority to a provisional
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`application that was filed on May 1, 2012.
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`28.
`
`29.
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`No other patents were purchased by Taasera Licensing from Taasera, Inc.
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`Joya and its employees, contractors, agents, and representatives did not make any
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`contribution, substantial or otherwise, to the claims set forth in the patents-in-suit, and, therefore,
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`neither Joya nor its employees, contractors, agents, or representatives are inventors of the patents-
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`in-suit.
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`30.
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`Plaintiff is entitled to judgment declaring that neither Joya nor its employees,
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`contractors, agents, or representatives are proper inventors of the patents-in-suit.
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`COUNT II
`(Declaratory Judgment of No Ownership)
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`Paragraphs 1 through 17 are incorporated by reference as if fully set forth herein.
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`Defendant has no claim by contract or otherwise to ownership of any assets of
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`31.
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`32.
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`Taasera Licensing.
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`The purported agreement between Taasera, Inc. and Joya, explicitly states: “all
`Work Product and other things provided to Contractor by Customer [Taasera Inc.]
`or acquired by Contractor in performance of the Services (“Items”) are
`Customer’s exclusive property . . .”
`
`33.
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`The purported agreement between Taasera, Inc. and Joya does not specify that any
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`ownership or other rights, including intellectual property rights would transfer to Joya or any other
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`party in the event of non-payment.
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`6
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`Case 2:24-cv-00198-JRG Document 1 Filed 03/19/24 Page 7 of 9 PageID #: 7
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`34.
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`Joya cannot make a claim that it has ownership rights to intellectual property assets
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`owned by Taasera Licensing , including the patents-in-suit and, therefore, Plaintiff is entitled to a
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`judgment declaring that Defendant Joya has no ownership rights to the patents-in-suit.
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`COUNT III
`(Interference With Prospective Business Relationships Under Texas Law)
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`35.
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`36.
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`Paragraphs 1 through 17 are incorporated by reference as if fully set forth herein.
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`The acts complained of herein constitute intentional interference with business
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`relations under Texas law. The Demand Letter expressly states that Joya intends “to enforce its
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`rights in the intellectual property, which is now the basis of Taasera Licensing and Quest’s suits.”
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`Demand Letter at 3.
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`37.
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`Upon information and belief, Joya is aware that Taasera has engaged and is
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`currently engaging in valuable licensing activities with respect to the patents-in-suit and that there
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`is a reasonable probability that Plaintiff will continue to enter into valuable licensing agreements.
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`38. With such knowledge and information, Defendant has purposefully and
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`intentionally created a cloud on clear title to these patent assets and has also raised a material
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`challenge to the validity and enforceability of the patents-in-suit which prevents and interferes
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`with Plaintiff’s ability to license the patents.
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`39.
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`As a direct result of Defendant’s conduct, Plaintiff has been and will continue to be
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`monetarily damaged in an amount of not less than $10 million, the precise amount to be determined
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`at trial.
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`40.
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`Defendant, Joya’s conduct is of such a willfull and wanton nature that Plaintiff is
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`entitled to an award of punitive damages and attorneys’ fees in addition to an award of
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`compensatory damages.
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`7
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`Case 2:24-cv-00198-JRG Document 1 Filed 03/19/24 Page 8 of 9 PageID #: 8
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`DEMAND FOR JURY TRIAL
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`Plaintiff hereby demands a jury for all issues so triable.
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`PRAYER FOR RELIEF
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`WHEREFORE, Taasera Licensing prays for relief against Defendant as follows:
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`a.
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`Entry of judgment declaring that Defendant does not have a claim for correction
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`of inventorship of any patent owned by Taasera Licensing under 35 U.S.C. § 256.
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`b.
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`Entry of judgment declaring that Defendant has no claim to ownership of any
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`patent owned by Taasera Licensing.
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`c.
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`Entry of judgment that Defendant is liable for tortious interference with business
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`relationships and an award of compensatory damages in an amount of not less than $10 million.
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`d.
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`Entry of judgment awarding Plaintiff punitive damages in an amount to be
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`determined at trial.
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`e.
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`Entry of judgment declaring that this case is exceptional and awarding Taasera
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`Licensing its costs and reasonable attorney fees under 35 U.S.C. § 285;
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`f.
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`Such other equitable relief which may be requested and to which the Plaintiff is
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`entitled; and
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`g.
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`Such other and further relief as the Court deems just and proper.
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`Dated: March 19, 2024
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`Respectfully submitted,
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`/s/ Alfred R. Fabricant
`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: ffabricant@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
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`8
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`Case 2:24-cv-00198-JRG Document 1 Filed 03/19/24 Page 9 of 9 PageID #: 9
`Case 2:24-cv-00198-JRG Document1 Filed 03/19/24 Page 9 of 9 PagelD#: 9
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`ATTORNEYS FOR PLAINTIFF
`ATTORNEYS FOR PLAINTIFF
`TAASERA LICENSING LLC
`TAASERA LICENSING LLC
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`9
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`
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