Case3:15-cv-02101-JD Document1 Filed05/08/15 Page1 of 6
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`CHARLENE M. MORROW (CSB NO. 136411)
`cmorrow@fenwick.com
`FENWICK & WEST LLP
`Silicon Valley Center
`801 California Street
`Mountain View, CA 94041
`Telephone:
`(650) 988-8500
`Facsimile:
`(650) 938-5200
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`DAVID D. SCHUMANN (CSB NO. 223936)
`dschumann@fenwick.com
`BRYAN A. KOHM (CSB NO. 233276)
`bkohm@fenwick.com
`FENWICK & WEST LLP
`555 California Street, Suite 1200
`San Francisco, CA 94104
`Telephone: (415) 875-2300
`Facsimile: (415) 281-1350
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`Attorneys for Plaintiff
`HEWLETT-PACKARD COMPANY
`
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SAN JOSE DIVISION
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`HEWLETT-PACKARD COMPANY, a
`Delaware corporation,
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`Case No.
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`COMPLAINT FOR DECLARATORY
`JUDGMENT
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`DEMAND FOR JURY TRIAL
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`Plaintiff,
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`v.
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`PAPST LICENSING GMBH & CO. KG, a
`German company,
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`Defendant.
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`Plaintiff Hewlett-Packard Company (“HP”) hereby alleges as follows for this complaint
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`against Papst Licensing GmbH & Co. KG (“Papst” or “Defendant”):
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`THE PARTIES
`Plaintiff HP is a corporation organized under the laws of Delaware, with its
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`1.
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`headquarters at 3000 Hanover Street, Palo Alto, California.
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`COMPLAINT FOR DECLARATORY JUDGMENT
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`Case3:15-cv-02101-JD Document1 Filed05/08/15 Page2 of 6
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`2.
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`On information and belief, Papst is a company existing under the laws of The
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`Federal Republic of Germany with a place of business at Bahnofstrasse 33, 78112 St. Georgen,
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`Germany.
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`JURISDICTION AND VENUE
`This action is based on the patent laws of the United States, Title 35 of the United
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`3.
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`States Code, § 1 et seq., with a specific remedy sought under the Federal Declaratory Judgments
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`Act, 28 U.S.C. §§ 2201 and 2202. An actual, substantial, and continuing justiciable controversy
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`exists between HP and Papst that requires a declaration of rights by this Court.
`4.
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`This court has subject matter jurisdiction over this action pursuant to 28 U.S.C.
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`§§ 1331 and 1338(a).
`5.
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`The Court has personal jurisdiction over Papst because Papst has established
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`certain minimum contacts with California such that the exercise of personal jurisdiction over
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`Papst would not offend traditional notions of fair play and substantial justice. See Hewlett-
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`Packard Co. v. Papst Licensing GmbH & Co. KG, No. 5:08-cv-01732 (N.D. Cal. Mar. 31, 2008).
`6.
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`Venue is proper in this court pursuant to 28 U.S.C. § 1391 because Papst is an
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`alien entity and therefore subject to suit in any district.
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`FACTUAL BACKGROUND
`HP is a leading provider of imaging and printing-related products and services.
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`On information and belief, Papst is a patent licensing company that neither makes
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`7.
`8.
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`nor sells any products or services.
`9.
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`On information and belief, Papst purports to be the owner of U.S. Patent No.
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`8,504,746 (the “’746 patent”). The ’746 patent is entitled “Analog Data Generating and
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`Processing Device for Use With a Personal Computer.” A copy of the ’746 patent is attached as
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`Exhibit A.
`10.
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`On information and belief, Papst purports to be the owner of U.S. Patent No.
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`8,966,144 (the “’144 patent”). The ’144 patent is entitled “Analog Data Generating and
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`Processing Device Having a Multi-Use Automatic Processor.” A copy of the ’144 patent is
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`attached as Exhibit B.
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`COMPLAINT FOR DECLARATORY JUDGMENT
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`MOUNTAIN VIEW
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`Case3:15-cv-02101-JD Document1 Filed05/08/15 Page3 of 6
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`11.
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`Collectively, the ’746 patent and the ’144 patent will be referred to as the “patents-
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`in-suit.”
`12.
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`On March 31, 2008, HP filed a Complaint for Declaratory Judgment in this district
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`against Papst seeking a declaration that HP does not infringe U.S. Patent Nos. 6,470,399 (the
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`“’399 patent”) and 6,895,449 (the “’449 patent”). Hewlett-Packard Co. v. Papst Licensing GmbH
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`& Co. KG, No. 5:08-cv-01732, Dkt. No. 1 (N.D. Cal. Mar. 31, 2008).
`13.
`14.
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`The patents-in-suit are in the same family as the ’399 and ’499 patents.
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`The Hewlett-Packard Co. v. Papst Licensing matter was subsequently transferred
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`to United States District Court for the District of District of Columbia for coordinated or
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`consolidated pretrial proceedings pursuant to 28 U.S.C. § 1407. See In Re Papst Licensing
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`Digital Camera Litig. – MDL 1800, No. 1:07-mc-00493, Dkt. No. 87 (D.D.C. May 8, 2008).
`15.
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`In the Joint proposed Scheduling Order filed on May 1, 2015 in the In Re Papst
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`Licensing matter, Papst stated that:
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`Papst respectfully submits that it will seek to amend the complaint
`to include infringement claims based on United States Patent Nos.
`8,504,746 and 8,966,144. These patents issued on August 6, 2013,
`and February 24, 2015, respectively.
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`No. 1:07-mc-00493, Dkt. No. No. 585 at 1.
`16.
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`HP does not infringe any claims of the patents-in-suit.
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`FIRST CAUSE OF ACTION
`(Declaratory Judgment of Non-Infringement of the ’746 Patent)
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`17.
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`HP hereby incorporates by reference its allegations contained in paragraphs 1
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`through 16 of this Complaint as though fully set forth herein.
`18.
`19.
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`Papst has alleged that HP infringes one or more claims of the ’746 patent.
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`HP asserts that it does not infringe or contributes to any infringement of any claim
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`of the ’746 patent either literally or under the doctrine of equivalents. HP further asserts that it
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`has not and does not induce any infringement of any claim of the ’746 patent.
`20.
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`Therefore, there exits a substantial controversy between HP and Papst, the parties
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`having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a
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`Case3:15-cv-02101-JD Document1 Filed05/08/15 Page4 of 6
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`declaratory judgment that HP have not infringed any claim of the ’746 patent.
`21.
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`An actual and justiciable controversy exists regarding the alleged infringement of
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`the ’746 patent by HP. HP accordingly requests a judicial determination of its rights, duties, and
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`obligations with regarding to the ’746 patent.
`22.
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`A judicial declaration is necessary and appropriate so that HP may ascertain its
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`rights regarding the ’746 patent.
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`SECOND CAUSE OF ACTION
`(Declaratory Judgment of Non-Infringement of the ’144 Patent)
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`23.
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`HP hereby incorporates by reference its allegations contained in paragraphs 1
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`through 16 of this Complaint as though fully set forth herein.
`24.
`25.
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`Papst has alleged that HP infringes one or more claims of the ’144 patent.
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`HP asserts that it does not infringe or contributes to any infringement of any valid
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`and enforceable claim of the ’144 patent either literally or under the doctrine of equivalents. HP
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`further asserts that it has not and does not induce any infringement of any claim of the ’144
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`patent.
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`26.
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`Therefore, there exists a substantial controversy between HP and Papst, the parties
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`having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a
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`declaratory judgment that HP have not infringed and do not infringe any claims of the ’144
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`patent.
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`27.
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`An actual and justiciable controversy exists regarding the alleged infringement of
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`the ’144 patent by HP. HP accordingly requests a judicial determination of its rights, duties, and
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`obligations with regarding to the ’144 patent.
`28.
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`A judicial declaration is necessary and appropriate so that HP may ascertain its
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`rights regarding the ’144 patent.
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`PRAYER FOR RELIEF
`WHEREFORE, HP prays for a declaratory judgment against Defendant as follows:
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`A.
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`A declaration that HP’s technology is not covered by any claim of the ’746 patent
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`and that HP does not infringe any claim of the ’746 patent;
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`COMPLAINT FOR DECLARATORY JUDGMENT
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`B.
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`A declaration that HP’s technology is not covered by any claim of the ’144 patent
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`and that HP does not infringe any claim of the ’144 patent;
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`C.
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`A declaration that HP’s case against Defendant is an exceptional case within the
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`meaning of 35 U.S.C. § 285;
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`D.
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`E.
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`An award of costs and attorneys’ fees to HP; and
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`Such other and further relief as the Court deems just and reasonable.
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`Dated: May 8, 2015
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`FENWICK & WEST LLP
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`By: s/ Charlene M. Morrow
`Charlene M. Morrow
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`Attorneys for Plaintiff
`Hewlett-Packard Company
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`Case3:15-cv-02101-JD Document1 Filed05/08/15 Page6 of 6
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`DEMAND FOR JURY TRIAL
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`Plaintiff HP hereby demands a trial by jury of all issues so triable.
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`Dated: May 8, 2015
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`FENWICK & WEST LLP
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`By: s/ Charlene M. Morrow
`Charlene M. Morrow
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`Attorneys for Plaintiff
`Hewlett-Packard Company
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