Case: 3:15-cv-00621-wmc Document #: 1 Filed: 09/25/15 Page 1 of 8
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`WISCONSIN ALUMNI RESEARCH
`FOUNDATION,
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`APPLE INC.,
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`v.
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`UNITED STATES DISTRICT COURT FOR THE
`WESTERN DISTRICT OF WISCONSIN
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`Case No. 15-CV-621
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`DEMAND FOR JURY TRIAL
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`Plaintiff,
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`Defendant.
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`COMPLAINT
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`Plaintiff Wisconsin Alumni Research Foundation, by its undersigned counsel, for its
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`complaint against defendant Apple Inc., states as follows, with knowledge as to its own acts, and
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`on information and belief as to the acts of others:
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`I.
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`INTRODUCTION
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`1.
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`This is an action for infringement of a patent awarded to computer scientists for
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`their work at the University of Wisconsin—Madison. The patent is owned by the plaintiff,
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`Wisconsin Alumni Research Foundation (“WARF”), the designated patent management
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`organization of the University of Wisconsin - Madison. WARF’s mission is to support research
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`and scholarship at the University. Since 1925, WARF has used the revenue from patents
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`developed by University researchers to support the University’s on-going educational and
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`research work.
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`2.
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`The patent-in-suit is United States Patent No. 5,781,752 (the “’752 patent”),
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`entitled “Table Based Data Speculation Circuit for Parallel Processing Computer” to Andreas
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`Case: 3:15-cv-00621-wmc Document #: 1 Filed: 09/25/15 Page 2 of 8
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`Moshovos, Scott Breach, Terani Vijaykumar, and Gurindar Sohi. The inventors are leading
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`researchers in the field of computer microprocessor architecture. Their work at the University of
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`Wisconsin—Madison, particularly the work for which they were awarded the patent-in-suit, has
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`significantly improved the efficiency and performance of contemporary computer processors.
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`This work has been recognized as a major milestone in the field of computer microprocessor
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`architecture/design. Indeed, Dr. Sohi, the leader of the lab that developed the ’752 patent, has
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`been elected to the National Academy of Engineering based on his work in the field of computer
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`architecture. And in 2011 he received the computer architecture community’s most prestigious
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`award, the Eckert-Mauchly Award, also based on his work, including specifically the work in the
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`’752 patent. Another inventor, Dr. Moshovos, received the prestigious Maurice Wilkes award
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`from the Association for Computing Machinery, for outstanding contribution to computer
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`architecture by an individual in the profession 20 years or less, for his work in the ’752 patent.
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`3.
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`WARF is informed and believes, and on this basis alleges, that Apple is one of the
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`largest makers of smart phones and tablet computers in the world.
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`4.
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`WARF is informed and believes, and on this basis alleges, that Apple’s newest
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`products—including the iPhone 6S, iPhone 6S Plus, and iPad Pro—contain Apple’s newest A9
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`and A9X processors.
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`5.
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`WARF is informed and believes, and on this basis alleges, that Apple has
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`incorporated the technology of WARF’s ’752 patent into the A9 and A9X processors to achieve
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`enhanced speed, efficiency and performance in its products. WARF now asks this Court to
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`prevent Apple’s unauthorized use of the ’752 patent.
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`II.
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`PARTIES
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`6.
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`Plaintiff WARF is a not-for-profit Wisconsin corporation having its principal
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`place of business at 614 Walnut Street, Madison, Wisconsin 53726. WARF is the designated
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`Case: 3:15-cv-00621-wmc Document #: 1 Filed: 09/25/15 Page 3 of 8
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`patent management organization of the University of Wisconsin - Madison (the “University”).
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`WARF’s mission is to support research at the University. WARF carries out this mission by
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`patenting and licensing University inventions and by returning the proceeds of that licensing to
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`fund additional research at the University.
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`7.
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`Apple Inc. (“Apple” or “Defendant”) is a California corporation which has its
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`principal place of business at 1 Infinite Loop, Cupertino, CA 95014.
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`III.
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`JURISDICTION AND VENUE
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`8.
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`Subject matter jurisdiction is based on 28 U.S.C. § 1338, in that this action arises
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`under federal statute, the patent laws of the United States (35 U.S.C. §§ 1, et seq.).
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`9.
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`The Court has personal jurisdiction over Apple pursuant to Wis. Stat. § 801.05(1)
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`because Apple is engaged in substantial and not isolated activities in this state and judicial
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`district, including maintaining a retail store and employees here. Personal jurisdiction over
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`Apple is also proper under Wis. Stat. § 801.05(3) because Apple has sold products that infringe
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`WARF’s patent rights in this state and judicial district. Personal jurisdiction over Apple is also
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`proper under Wis. Stat. § 801.05(4) because WARF has suffered injury within this state and
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`judicial district while Apple has carried on solicitation and service activities here and while
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`products manufactured by Apple were used here. This Court’s exercise of personal jurisdiction
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`over Apple comports with the Due Process Clause of the United States Constitution.
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`10.
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`Venue lies in this Court pursuant to 28 U.S.C. §§ 1391(b) and (c) and § 1400(a)
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`and (b). Because Apple is subject to personal jurisdiction in this district, it is thus deemed to
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`reside in this district under § 1391(c)(2), and thus venue is proper under § 1391(b)(1). Further,
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`under § 1391(b)(2), a substantial part of the events giving rise to this claim occurred in this
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`district, including but not limited to the development of the invention claimed in the patent that is
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`the subject of this action and the prosecution of that patent, and because WARF resides in this
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`district. Venue is also proper in this district under § 1400(a) and (b) because Apple is deemed to
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`reside in this district, and also under § 1400(b) because Apple has committed acts of
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`infringement in this district and maintains a regular and established place of business in this
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`district.
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`IV.
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`FACTUAL ALLEGATIONS
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`11.
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`On July 14, 1998, the United States Patent and Trademark Office duly and legally
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`issued United States Patent No. 5,781,752 (hereinafter “the ’752 patent”) entitled “Table Based
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`Data Speculation Circuit for Parallel Processing Computer” to Andreas Moshovos, Scott Breach,
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`Terani Vijaykumar, and Gurindar Sohi. A true and correct copy of the ’752 patent is attached
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`hereto as Exhibit A.
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`12. WARF is the owner of all rights, title, and interest in the ’752 patent by
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`assignment and thereby is authorized and has standing to bring legal action to enforce all rights
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`arising under the ’752 patent.
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`13.
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`In general, the ’752 patent discloses a “predictor circuit [that] permits advanced
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`execution of instructions depending for their data on previous instructions by predicting such
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`dependencies based on previous mis-speculations . . . .”
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`14.
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`The invention disclosed and claimed in the ’752 patent was the result of the labor
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`and ingenuity of the four named inventors of the ’752 patent, Drs. Moshovos, Breach,
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`Vijaykumar and Sohi, at the University of Wisconsin.
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`15.
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`The invention disclosed and claimed in the ’752 patent has been recognized by
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`those in the art as a major milestone in the field of computer microprocessing.
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`16.
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`Apple is well aware of the ’752 patent and its application to Apple’s products.
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`For example, WARF has asserted the ’752 patent against Apple in another lawsuit in this district.
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`Wisconsin Alumni Research Foundation v. Apple Inc., Case No. 14-cv-00062-WMC. That
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`lawsuit involved WARF’s allegations that Apple processors with the LSD Predictor and iPhones
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`and iPads that include those processors infringe the ’752 patent. As a result of Apple’s request to
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`the Court during that lawsuit, only the Apple A7, A8 and A8x processors were the subject of
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`discovery and trial in the preceding suit. Further, Apple filed a request that the United States
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`Patent Trial and Appeal Board (“Board”) institute an Inter Partes Review of the ’752 patent. In a
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`highly substantive, 27-page decision, the Board made express findings denying institution of the
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`IPR for all claims, concluding that Apple did not show a reasonable likelihood that any claim of
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`the ’752 patent would be found invalid. When Apple petitioned for rehearing on the grounds
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`that the Board had misapprehended or overlooked important aspects of the prior art in reaching
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`its decision, the Board issued another detailed 10-page decision again rejecting Apple’s
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`arguments about the prior art and denying the petition.
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`17.
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`Apple has stated that it is the policy of the company not to accept or consider
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`proposals regarding licensing from outside entities like WARF for any purpose, making the
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`initiation of this lawsuit a necessity.
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`V.
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`COUNT ONE: INFRINGEMENT OF U.S. PATENT NO. 5,781,752
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`18. WARF incorporates by reference the foregoing paragraphs of this Complaint.
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`19. WARF is informed and believes, and on this basis alleges, that Defendant has
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`been, and currently is, making, using, selling, offering to sell, importing and/or exporting
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`processors that infringe claims of the ’752 patent, including the Apple A9 and A9X processors.
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`20. WARF is informed and believes, and on this basis alleges, that the A9 and A9X
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`processors are designed by Apple, manufactured by Apple or its agents, and sold exclusively in
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`Apple devices.
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`21. WARF is informed and believes, and on this basis alleges, that Defendant, or an
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`agent of Defendant acting under Defendant’s direction and control, has been, and currently is,
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`Case: 3:15-cv-00621-wmc Document #: 1 Filed: 09/25/15 Page 6 of 8
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`infringing the ’752 patent in violation of 35 U.S.C. § 271 and all causes of action thereunder, by
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`making, using, selling, offering to sell in this judicial district and elsewhere throughout the
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`United States, and importing into, and exporting from, the United States, without license or
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`authority from WARF, infringing products, including at least the A9 and A9X processors, and
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`the iPhone 6S, iPhone 6S Plus, and the iPad Pro, which themselves include the A9 and A9X
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`processors, as well as any other device that includes the A9 and A9X processors (collectively,
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`the “Accused Products”), to the damage and injury of WARF.
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`22. WARF is informed and believes, and on this basis alleges, that Defendant has
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`been, and currently is, inducing infringement of the ’752 patent, in violation of 35 U.S.C.
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`§ 271(b), by knowingly encouraging or aiding third parties to make, use, sell, or offer to sell
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`infringing products in the United States, or to import infringing products into the United States,
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`without license or authority from WARF, including at least the Accused Products. Defendant has
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`been aware of the ’752 patent, as evidenced at least by WARF’s previous Complaint against
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`Apple and Apple’s unsuccessful efforts to invalidate the patent in the Patent Office. WARF is
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`informed and believes, and on this basis alleges, that despite Defendant’s awareness of the ’752
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`patent, and despite its awareness that the ’752 patent is relevant to the technology disclosed in
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`Defendant’s own patent filings, Defendant has intentionally aided and encouraged third parties
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`(including its customers) to use Accused Products in the United States and has intentionally
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`aided and encouraged third parties (including its vendors and contractors) to make Accused
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`Products in the United States, having known that the acts it was causing would be infringing.
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`23. WARF is informed and believes, and on this basis alleges, that Defendant has
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`been, and currently is, contributorily infringing the ’752 patent, in violation of 35 U.S.C.
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`§ 271(c), by selling or offering for sale to third parties, in this judicial district and throughout the
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`United States, components that embody a material part of the inventions described in the ’752
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`patent, are known by Defendant to be especially made or especially adapted for use in
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`infringement of the ’752 patent, and are not staple articles of commodities suitable for
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`substantial, non-infringing use, including at least the Accused Products. Defendant has done so
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`without license or authority from WARF.
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`24. WARF is informed and believes, and on this basis alleges, that these third parties
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`have infringed and will infringe the ’752 patent by using the infringing products in violation of
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`35 U.S.C. § 271(a).
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`25. WARF is informed and believes, and on this basis alleges, that the acts of
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`infringement by Defendant have been, and continue to be, willful, intentional, and in conscious
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`disregard of WARF’s rights in the ’752 patent.
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`26.
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`27.
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`Unless enjoined by this Court, Defendant will continue to infringe the ’752 patent.
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`As a direct and proximate result of Defendant’s infringement of the ’752 patent,
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`WARF has suffered and will continue to suffer irreparable injury for which there is no adequate
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`remedy at law. WARF has also been damaged and, until an injunction issues, will continue to be
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`damaged in an amount yet to be determined.
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`VI.
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`PRAYER FOR RELIEF
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`WHEREFORE, Wisconsin Alumni Research Foundation prays for relief 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 judgment that the ’752 patent is infringed by Defendant;
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`A judgment that the ’752 patent is valid and enforceable;
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`A judgment that Defendant’s infringement of the ’752 patent is willful;
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`An order preliminarily and permanently enjoining Defendant and its subsidiaries,
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`parents, officers, directors, agents, servants, employees, affiliates, attorneys and all others in
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`active concert or participation with any of the foregoing, from further acts of infringement of the
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`’752 patent;
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`E.
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`An accounting for damages resulting from Defendant’s infringement of the ’752
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`patent and the trebling of such damages because of the willful nature of Defendant’s
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`infringement;
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`F.
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`G.
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`An assessment of interest on damages;
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`A judgment awarding damages to WARF for its costs, disbursements, expert
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`witness fees, and attorneys’ fees and costs incurred in prosecuting this action, with interest,
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`including damages for an exceptional case pursuant to 35 U.S.C. § 285 and as otherwise
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`provided by law;
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`H.
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`Such other and further relief as this Court may deem just and equitable.
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`VII. DEMAND FOR JURY TRIAL
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`28.
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`Pursuant to Fed. R. Civ. P. 38(b), WARF requests a trial by jury on all issues.
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`Dated this 25th day of September, 2015.
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` /s/ Jennifer L. Gregor
`Jennifer L. Gregor
`GODFREY & KAHN, S.C.
`One East Main Street, Suite 500
`Madison, WI 53703
`Tel: (608) 257-3911
`Fax: (608) 257-0609
`JGregor@gklaw.com
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`Morgan Chu
`Gary Frischling
`Jason Sheasby
`Alan Heinrich
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`Tel: (310) 277-1010
`MChu@irell.com; GFrischling@irell.com;
`JSheasby@irell.com; AHeinrich@irell.com
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`Attorneys for Plaintiff
`Wisconsin Alumni Research Foundation
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