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To read comments to this article, go here
Lodsys - Another Update
Wednesday, December 14 2011 @ 04:45 PM EST

Although the Lodsys cases continue to remain in the early stages, with jockeying between the plaintiff and defendants, we are continuing to see shakeout. Most recently Trend Micro has been dismissed from the Lodsys v. Brother case without prejudice, and adidas, Vitamin Shoppe, and BestBuy have been dismissed from the Lodsys v adidas case without prejudice. In each of these instances, the dismissals have made reference to the defendant's reliance on products/services from ForeSee (or in the case of BestBuy, ForeSee and iPerception). In other words, ForeSee (and iPerception) are moving into the position of indemnifying their customers from the Lodsys claims.

This narrowing of the parties makes a lot of sense. Lodsys does not lose its ability to reassert against any of these parties, but it also now only has to prove infringement by ForeSee and/or iPerception. The efficiency of the case is certainly enhanced. That doesn't mean that Lodsys' behavior is any less onerous, just that this move makes sense.

In the Lodsys v. DriveTime case, two additional defendants have been dismissed with prejudice: DriveTime and ESET. Could this be a direct result of the declaratory judgment actions brought in other venues by these defendants. Quite possibily. It is certainly the case that in neither of these two suits does the dismissal make mention of a third party product as the basis of the infringement claim, e.g., ForeSee or iPerception.

In addition to these dismissals, we have also seen two new declaratory judgment actions brought in the Eastern District of Wisconsin, one by PC Drivers Headquarters and the other by PCS Sales (USA). So Lodsys is continuing to draw attention from potential defendants.

*************

Documents

Lodsys v Brother - 140 [PDF]

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION

LODSYS, LLC,
Plaintiff,
v.
BROTHER INTERNATIONAL CORPORATION;
CANON U.S.A., INC.;
HEWLETT-PACKARD COMPANY;
HULU, LLC;
LENOVO (UNITED STATES) INC.;
LEXMARK INTERNATIONAL, INC.;
MOTOROLA MOBILITY, INC.;
NOVELL, INC;
SAMSUNG ELECTRONICS CO., LTD.;
SAMSUNG ELECTRONICS AMERICA, INC.;
SAMSUNG TELECOMMUNICATIONS AMERICA, LLC;
TREND MICRO INCORPORATED,
Defendants.

CIVIL ACTION NO. 2:11-cv-0090 (DF)

ORDER

Having considered Plaintiff Lodsys, LLC (“Lodsys”) and Defendant Trend Micro Incorporated (“Trend Micro”) Joint Motion to Dismiss Certain Claims Without Prejudice based on the settlement of certain claims asserted by and between them, the Court finds that good cause exists for granting the motion. The Joint Motion to Dismiss Certain Claims Without Prejudice is GRANTED. It is hereby

ORDERED, ADJUDGED AND DECREED that the following claims are hereby dismissed without prejudice:

(a) Lodsys’s claim for “Infringement Of U.S. Patent No. 5,999,908” against Trend Micro, and any and all other claims for infringement against Trend Micro, to the extent such claims relate to products and/or services provided to Trend Micro by ForeSee.

It is further ORDERED that all costs, expenses, and attorneys’ fees related to the above-listed claims are to be borne by the party that incurred them.

So ORDERED.

SIGNED this 5th day of December, 2011.

/s/David Folsom
DAVID FOLSOM
UNITED STATES DISTRICT JUDGE

2


Lodsys v adidas - 76 [PDF]

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION

LODSYS, LLC,
Plaintiff,
v.
ADIDAS AMERICA INC.;
BBY SOLUTIONS, INC.;
BEST WESTERN INTERNATIONAL, INC.;
CVS CARMARK CORPORATION;
SAM’S WEST, INC.;
STANLEY, BLACK & DECKER, INC.;
THE CONTAINER STORE, INC.;
THE TEACHING COMPANY, LLC;
VEGAS.COM, LLC;
VITAMIN SHOPPE, INC.,
Defendants.

CIVIL ACTION NO. 2:11-cv-283 (DF)

ORDER

Having considered Plaintiff Lodsys, LLC (“Lodsys”) and Defendants adidas America, Inc. (“adidas”) and Vitamin Shoppe, Inc. (“Vitamin Shoppe”) Joint Motion to Dismiss Certain Claims Without Prejudice based on the settlement of certain claims asserted by and between them, the Court finds that good cause exists for granting the motion. The Joint Motion to Dismiss Certain Claims Without Prejudice is GRANTED. It is hereby

ORDERED, ADJUDGED AND DECREED that the following claims are hereby dismissed without prejudice:

(a) Lodsys’s claim for “Infringement Of U.S. Patent No. 5,999,908” against adidas, and any and all other claims for infringement against adidas, to the extent such claims relate to products and/or services provided to adidas by ForeSee;

(b) Lodsys’s claim for “Infringement Of U.S. Patent No. 5,999,908” against Vitamin Shoppe, and any and all other claims for infringement against Vitamin Shoppe, to the extent such claims relate to products and/or services provided to Vitamin Shoppe by ForeSee;

It is further ORDERED that all costs, expenses, and attorneys’ fees related to the above-listed claims are to be borne by the party that incurred them.

So ORDERED.

SIGNED this 6th day of December, 2011.

/s/David Folsom
DAVID FOLSOM
UNITED STATES DISTRICT JUDGE

2


Lodsys v adidas - 77 [PDF]

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION

LODSYS, LLC,
Plaintiff,
v.
ADIDAS AMERICA INC.;
BBY SOLUTIONS, INC.;
BEST WESTERN INTERNATIONAL, INC.;
CVS CARMARK CORPORATION;
SAM’S WEST, INC.;
STANLEY, BLACK & DECKER, INC.;
THE CONTAINER STORE, INC.;
THE TEACHING COMPANY, LLC;
VEGAS.COM, LLC;
VITAMIN SHOPPE, INC.,
Defendants.

CIVIL ACTION NO. 2:11-cv-283 (DF)

ORDER

Having considered Plaintiff Lodsys, LLC’s (“Lodsys”) and Defendant BestBuy.com, LLC’s (“BestBuy”) Joint Motion to Dismiss Certain Claims Without Prejudice based on the settlement of certain claims asserted by and between them, the Court finds that good cause exists for granting the motion. The Joint Motion to Dismiss Certain Claims Without Prejudice is GRANTED. It is hereby

ORDERED, ADJUDGED AND DECREED that the following claims are hereby dismissed without prejudice:

(a) Lodsys’s claim for “Infringement Of U.S. Patent No. 5,999,908” against BestBuy, and any and all other claims for infringement against BestBuy, to the extent such claims relate to products and/or services provided to BestBuy by iPerceptions, Inc. and ForeSee Results, Inc.;

It is further ORDERED that all costs, expenses, and attorneys’ fees related to the above-listed claims are to be borne by the party that incurred them.

So ORDERED.

SIGNED this 6th day of December, 2011.

/s/David Folsom
DAVID FOLSOM
UNITED STATES DISTRICT JUDGE

2


Lodsys v DriveTime - 54 [PDF]

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION

LODSYS, LLC,
Plaintiff,
v.
DRIVETIME AUTOMOTIVE GROUP, INC.;
ESET, LLC;
FORESEE RESULTS, LLC;
LIVEPERSON, INC.;
OPINIONLAB, INC.;
THE NEW YORK TIMES COMPANY,
Defendants.

CIVIL ACTION NO. 2:11-cv-309

ORDER OF DISMISSAL WITH PREJUDICE

In consideration of Plaintiff Lodsys, LLC’s Notice of Dismissal of all claims between Plaintiff Lodsys, LLC and Defendant DriveTime Automotive Group, Inc., it is ORDERED, ADJUDGED, AND DECREED that all claims asserted in this suit between Plaintiff Lodsys, LLC and Defendant DriveTime Automotive Group, Inc. are hereby dismissed with prejudice.

It is further ORDERED that all attorneys’ fees, expenses, and costs are to be borne by the party that incurred them.

So ORDERED.

SIGNED this 6th day of December, 2011.

/s/David Folsom
DAVID FOLSOM
UNITED STATES DISTRICT JUDGE

2


Lodsys v DriveTime - 57 [PDF]

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION

LODSYS, LLC,
Plaintiff,
v.
DRIVETIME AUTOMOTIVE GROUP, INC.;
ESET, LLC;
FORESEE RESULTS, LLC;
LIVEPERSON, INC.;
OPINIONLAB, INC.;
THE NEW YORK TIMES COMPANY,
Defendants.

CIVIL ACTION NO. 2:11-cv-309

ORDER OF DISMISSAL WITH PREJUDICE

In consideration of Plaintiff Lodsys, LLC’s Notice of Dismissal of all claims between Plaintiff Lodsys, LLC and Defendant ESET, LLC, it is ORDERED, ADJUDGED, AND DECREED that all claims asserted in this suit between Plaintiff Lodsys, LLC and Defendant DriveTime Automotive Group, Inc. are hereby dismissed with prejudice.

It is further ORDERED that all attorneys’ fees, expenses, and costs are to be borne by the party that incurred them.

So ORDERED.

SIGNED this 12th day of December, 2011.

/s/David Folsom
DAVID FOLSOM
UNITED STATES DISTRICT JUDGE

2


PC Drivers Headquarters v. Lodsys - 1 [PDF]

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF WISCONSIN

PC Drivers Headquarters 1, Inc
PC Drivers Headquarters, LP.,
Plaintiffs,
v.
LODSYS, LLC,
Defendant.

Civil Action No. 11-1099
JURY TRIAL DEMANDED

COMPLAINT FOR DECLARATORY JUDGMENT

Plaintiffs, PC Drivers Headquarters 1, Inc. and PC Drivers Headquarters, LP (“PC Drivers”) hereby allege for their Complaint for Declaratory Judgment against Defendant Lodsys, LLC (“Defendant”) on knowledge as to its own actions and on information and belief as to the actions of others, as follows:

NATURE OF THE ACTION

1. This is an action for a declaratory judgment that PC Drivers do not infringe any valid claim of United States Patent Nos. 5,999,908 (“the ‘908 patent”), 7,133,834 (“the ‘834 patent”), 7,222,078 (“the ‘078 patent”) or 7,620,565 (“the ‘565 patent”) (collectively, the “Asserted Patents”), and for a declaratory judgment that the claims of each of the Asserted Patents are invalid.

2. A true and correct copy of the ‘078 patent is attached hereto as Exhibit A.

3. A true and correct copy of the ‘834 patent is attached hereto as Exhibit B.

4. A true and correct copy of the ‘908 patent is attached hereto as Exhibit C.

5. A true and correct copy of the ‘565 patent is attached hereto as Exhibit D.

THE PARTIES

6. Plaintiff PC Drivers Headquarters 1, Inc. is a Texas corporation having a place of business at 9433 FM 2244, Building 1, Suite 250; Austin, Texas 78733.

-1-

7. Plaintiff PC Drivers Headquarters, LP is a Texas limited partnership having a place of business at 9433 FM 2244, Building 1, Suite 250; Austin, Texas 78733.

8. On information and belief, Lodsys is a Texas limited liability company having a place of business at 800 Brazos Street, Suite 400, Austin, Texas 78701.

9. On information and belief, Mark Small is the Chief Executive Officer and sole employee of Lodsys, residing in the Eastern District of Wisconsin.

JURISDICTION AND VENUE

10. This action arises under the Patent Laws of the United States, Title 35, United States Code 35 U.S.C. § 1, et seq., and under the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202. This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. §§ 1331, 1338(a), 2201 and 2202.

11. This action is filed to resolve an actual and justiciable controversy between the parties hereto. Defendant’s conduct has put, and continues to put, PC Drivers under a reasonable and serious apprehension of imminent suit alleging that sale, offering and/or use of PC Drivers’ products or services infringe the ‘078 patent, the ‘908 patent, the ‘834 patent, and/or the ‘565 patent. As set forth in paragraphs herein, there is a conflict of asserted rights among the parties and an actual controversy exists between PC Drivers and the Defendant with respect to the infringement, validity and scope of the ‘078 patent, the ‘834 patent, the ‘908 patent and the ‘565 patent.

12. Upon information and belief, this Court has personal jurisdiction over Lodsys because Lodsys’ Chief Executive Officer and sole employee resides in, and conducts business from, this Judicial District.

13. Venue is proper in this district pursuant to 28 U.S.C. §§ 1391 and/or 1400.

-2-

ALLEGATIONS IN SUPPORT OF DECLARATORY
JUDGMENT JURISDICTION

14. PC Drivers reallege and incorporate herein by reference each and every allegation contained in paragraphs 1-13.

15. Through communications and conduct, Defendant has threatened assertion of the ‘908 patent, the ‘834 patent, the ‘078 patent and/or the ‘565 patent against customers of PC Drivers because of their conducting sales of computer driver update services via the internet.

16. On or about September 20, 2011, Defendant sent a letter to PC Drivers alleging that PC Drivers are infringing at least claim 1 of US 7,222,078 as it relates to PC Drivers’ business operations. The September 20, 2011 letter also offered a license to PC Drivers under the ‘908 patent, the ‘834 patent, the ‘078 patent and the ‘565 patent.

17. As part of the referenced September 20, 2011 letter, Defendant sent PC Drivers an “Infringement Claim Chart” in which Defendant purported to demonstrate PC Drivers’ infringement of Claim 1 of the ‘078 patent. A copy of the September 20, 2011 letter and “Infringement Claim Chart” are included in the attached Exhibit E.

FIRST CLAIM FOR RELIEF

Declaratory Judgment of Non-infringement of the ‘908 Patent

18. PC Drivers reallege and incorporate herein by reference each and every allegation contained in paragraphs 1-17.

19. Based on the above-stated conduct, PC Drivers are informed and believe, and on that basis aver, the Defendant contends that PC Drivers’ products and/or services infringe one or more claims of the ‘908 patent.

20. Accordingly, an actual controversy exists between PC Drivers and the Defendant as to whether or not PC Drivers have infringed, or are infringing the ‘908 patent; have

-3-

contributed to infringement, or are contributing to infringement of the ‘908 patent; and have induced infringement, or are inducing infringement of the ‘908 patent.

21. The controversy is such that, pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., PC Drivers are entitled to a declaration, in the form of a judgment, that by their activities PC Drivers have not infringed and are not infringing any valid and enforceable claim of the ‘908 patent; have not contributed to infringement and are not contributing to infringement of the ‘908 patent; and/or have not induced infringement and are not inducing infringement of the ‘908 patent. Such a determination and declaration is necessary and appropriate at this time.

SECOND CLAIM FOR RELIEF

Declaratory Judgment of Non-infringement of the ‘834 patent

22. PC Drivers reallege and incorporate herein by reference each and every allegation contained in paragraphs 1-21.

23. Based on the above-stated conduct, PC Drivers are informed and believe, and on that basis aver, the Defendant contends that PC Drivers’ products and/or services infringe one or more claims of the ‘834 patent.

24. Accordingly, an actual controversy exists between PC Drivers and the Defendant as to whether or not PC Drivers have infringed, or are infringing the ‘834 patent; have contributed to infringement, or are contributing to infringement of the ‘834 patent; and have induced infringement, or are inducing infringement of the ‘834 patent.

25. The controversy is such that, pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., PC Drivers are entitled to a declaration, in the form of a judgment, that by their activities PC Drivers have not infringed and are not infringing any valid and enforceable

-4-

claim of the ‘834 patent; have not contributed to infringement and are not contributing to infringement of the ‘834 patent; and/or have not induced infringement and are not inducing infringement of the ‘834 patent. Such a determination and declaration is necessary and appropriate at this time.

THIRD CLAIM FOR RELIEF

Declaratory Judgment of Non-infringement of the ‘078 patent

26. PC Drivers reallege and incorporate herein by reference each and every allegation contained in paragraphs 1-25.

27. Based on the above-stated conduct, PC Drivers are informed and believe, and on that basis aver, the Defendant contends that PC Drivers’ products and/or services infringe one or more claims of the ‘078 patent.

28. Accordingly, an actual controversy exists between PC Drivers and the Defendant as to whether or not PC Drivers have infringed, or are infringing the ‘078 patent; have contributed to infringement, or are contributing to infringement of the ‘078 patent; and have induced infringement, or are inducing infringement of the ‘078 patent.

29. The controversy is such that, pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., PC Drivers are entitled to a declaration, in the form of a judgment, that by their activities PC Drivers have not infringed and are not infringing any valid and enforceable claim of the ‘078 patent; have not contributed to infringement and are not contributing to infringement of the ‘078 patent; and/or have not induced infringement and are not inducing infringement of the ‘078 patent. Such a determination and declaration is necessary and appropriate at this time.

-5-

FOURTH CLAIM FOR RELIEF

Declaratory Judgment of Non-infringement of the ‘565 patent

30. PC Drivers reallege and incorporate herein by reference each and every allegation contained in paragraphs 1-29.

31. Based on the above-stated conduct, PC Drivers are informed and believe, and on that basis aver, the Defendant contends that PC Drivers’ products and/or services infringe one or more claims of the ‘565 patent.

32. Accordingly, an actual controversy exists between PC Drivers and the Defendant as to whether or not PC Drivers have infringed, or are infringing the ‘565 patent; have contributed to infringement, or are contributing to infringement of the ‘565 patent; and have induced infringement, or are inducing infringement of the ‘565 patent.

33. The controversy is such that, pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., PC Drivers are entitled to a declaration, in the form of a judgment, that by their activities PC Drivers have not infringed and are not infringing any valid and enforceable claim of the ‘565 patent; have not contributed to infringement and are not contributing to infringement of the ‘565 patent; and have not induced infringement and are not inducing infringement of the ‘565 patent. Such a determination and declaration is necessary and appropriate at this time.

FIFTH CLAIM FOR RELIEF

Declaratory Judgment of Invalidity of the ‘908 patent

34. PC Drivers reallege and incorporate herein by reference each and every allegation contained in paragraphs 1-33.

-6-

35. Based on the above-stated conduct, PC Drivers are informed and believe, and on that basis aver, that the Defendant contends that PC Drivers infringe one or more claims of the ‘908 patent.

36. PC Drivers deny that they, jointly or severally, infringe any valid and enforceable claim of the ‘908 patent, and aver that the assertions of infringement cannot be maintained consistently with statutory conditions of patentability and the statutory requirements for disclosure and claiming that must be satisfied for patent validity under at least one of 35 U.S.C. §§ 101, 102, 103, and 112.

37. Accordingly, an actual controversy exists between PC Drivers and the Defendant as to the validity of the ‘908 patent. The controversy is such that, pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., PC Drivers are entitled to a declaration, in the form of a judgment, that the ‘908 patent is invalid. Such a determination and declaration is necessary and appropriate at this time.

SIXTH CLAIM FOR RELIEF

Declaratory Judgment of Invalidity of the ‘834 patent

38. PC Drivers reallege and incorporate herein by reference each and every allegation contained in paragraphs 1-37.

39. Based on the above-stated conduct, PC Drivers are informed and believe, and on that basis aver, that the Defendant contends that PC Drivers infringe one or more claims of the ‘834 patent.

40. PC Drivers deny that they, jointly or severally, infringe any valid and enforceable claim of the ‘834 patent, and aver that the assertions of infringement cannot be maintained consistently with statutory conditions of patentability and the statutory requirements for

-7-

disclosure and claiming that must be satisfied for patent validity under at least one of 35 U.S.C. §§ 101, 102, 103, and 112.

41. Accordingly, an actual controversy exists between PC Drivers and the Defendant as to the validity of the ‘834 patent. The controversy is such that, pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., PC Drivers are entitled to a declaration, in the form of a judgment, that the ‘834 patent is invalid. Such a determination and declaration is necessary and appropriate at this time.

SEVENTH CLAIM FOR RELIEF

Declaratory Judgment of Invalidity of the ‘078 patent

42. PC Drivers reallege and incorporate herein by reference each and every allegation contained in paragraphs 1-41.

43. Based on the above-stated conduct, PC Drivers are informed and believe, and on that basis aver, that the Defendant contends that PC Drivers infringe one or more claims of the ‘078 patent.

44. PC Drivers deny that they, jointly or severally, infringe any valid and enforceable claim of the ‘078 patent, and aver that the assertions of infringement cannot be maintained consistently with statutory conditions of patentability and the statutory requirements for disclosure and claiming that must be satisfied for patent validity under at least one of 35 U.S.C. §§ 101, 102, 103, and 112.

45. Accordingly, an actual controversy exists between PC Drivers and the Defendant as to the validity of the ‘078 patent. The controversy is such that, pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., PC Drivers are entitled to a declaration, in the

-8-

form of a judgment, that the ‘078 patent is invalid. Such a determination and declaration is necessary and appropriate at this time.

EIGHTH CLAIM FOR RELIEF

Declaratory Judgment of Invalidity of the ‘565 patent

46. PC Drivers reallege and incorporate herein by reference each and every allegation contained in paragraphs 1-45.

47. Based on the above-stated conduct, PC Drivers are informed and believe, and on that basis aver, that the Defendant contends that PC Drivers infringe one or more claims of the ‘565 patent.

48. PC Drivers deny that they, jointly or severally, infringe any valid and enforceable claim of the ‘565 patent, and aver that the assertions of infringement cannot be maintained consistently with statutory conditions of patentability and the statutory requirements for disclosure and claiming that must be satisfied for patent validity under at least one of 35 U.S.C. §§ 101, 102, 103, and 112.

49. Accordingly, an actual controversy exists between PC Drivers and the Defendant as to the validity of the ‘565 patent. The controversy is such that, pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., PC Drivers are entitled to a declaration, in the form of a judgment, that the ‘565 patent is invalid. Such a determination and declaration is necessary and appropriate at this time.

PRAYER FOR RELIEF

WHEREFORE, plaintiffs PC Drivers pray for a judgment as follows:

1. For a declaration that assertions of infringement of the ‘908 patent cannot be maintained consistently with statutory conditions of patentability and the statutory requirements

-9-

for disclosure and claiming that must be satisfied for patent validity under one or more of 35 U.S.C. §§ 101, 102, 103, and 112;

2. For a declaration that the claims of the ‘908 patent are invalid under one or more of 35 U.S.C. §§ 101, 102, 103, and 112;

3. For a declaration that their products and services do not infringe any valid claim of the ‘834 patent;

4. For a declaration that assertions of infringement of the ‘834 patent cannot be maintained consistently with statutory conditions of patentability and the statutory requirements for disclosure and claiming that must be satisfied for patent validity under one or more of 35 U.S.C. §§ 101, 102, 103, and 112;

5. For a declaration that the claims of the ‘834 patent are invalid under one or more of 35 U.S.C. §§ 101, 102, 103, and 112;

6. For a declaration that their products do not infringe any valid claim of the ‘078 patent;

7. For a declaration that assertions of infringement of the ‘078 patent cannot be maintained consistently with statutory conditions of patentability and the statutory requirements for disclosure and claiming that must be satisfied for patent validity under one or more of 35 U.S.C. §§ 101, 102, 103, and 112;

8. For a declaration that the claims of the ‘078 patent are invalid under one or more of 35 U.S.C. §§ 101, 102, 103, and 112;

9. For a declaration that their products do not infringe any valid claim of the ‘565 patent;

-10-

10. For a declaration that assertions of infringement of the ‘565 patent cannot be maintained consistently with statutory conditions of patentability and the statutory requirements for disclosure and claiming that must be satisfied for patent validity under one or more of 35 U.S.C. §§ 101, 102, 103, and 112;

11. For a declaration that the claims of the ‘565 patent are invalid under one or more of 35 U.S.C. §§ 101, 102, 103, and 112;

12. For a preliminary and permanent injunction enjoining and restraining Defendant and its respective officers, partners, employees, agents, parents, subsidiaries or anyone in privity with them, and all persons acting in concert with them and each of them:

a. from making any claims to any person or entity that any product of PC Drivers infringe the ‘908 patent, the ‘834 patent, the ‘078 patent and/or the ‘565 patent;

b. from interfering with, or threatening to interfere with the manufacture, sale, or use of any PC Drivers’ products by PC Drivers, their customers, distributors, predecessors, successors or assigns; and

c. from instituting or prosecuting any lawsuit or proceeding, placing in issue the right of PC Drivers, their customers, distributors, predecessors, successors or assigns, to make, use or sell products which allegedly infringe the ‘908 patent, the ‘834 patent, the ‘078 patent and/or the ‘565 patent.

13. For an award to PC Drivers of its reasonable attorneys’ fees and costs of suit incurred herein; and

14. For such other and further relief as the Court may deem proper

JURY DEMAND

Plaintiffs respectfully request a trial by jury.

-11-

Respectfully Submitted,

/s/ Renee L. Zipprich
David G. Henry, Sr.
Texas Bar No. 09479355
Renee L. Zipprich
Illinois Bar No. 6280104
DYKEMA GOSSETT, PLLC
[address telephone fax, email]

ATTORNEYS FOR PC DRIVERS
HEADQUARTERS 1, INC. AND PC DRIVERS
HEADQUARTERS, LP

-12-


PCS Sales v. Lodsys - 1 [PDF]

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN

PCS SALES (U.S.A.), INC.,
Plaintiff,
v.
LODSYS, LLC,
Defendant.

Case No. __________

_________________________________________________

COMPLAINT FOR DECLARATORY JUDGMENT

_________________________________________________

Plaintiff PCS Sales (U.S.A.), Inc. (“PCS”) hereby alleges for its Complaint for Declaratory Judgment against Defendant Lodsys, LLC (“Defendant”) as follows:

NATURE OF THE ACTION

1. This is an action for a declaratory judgment that PCS does not infringe any valid claim of United States Patent Nos. 5,999,908 (“the ‘908 patent”), 7,133,834 (“the ‘834 patent”), 7,222,078 (“the ‘078 patent”) or 7,620,565 (“the ‘565 patent”) (collectively, the “Asserted Patents”), and for a declaratory judgment that the claims of each of the Asserted patent are invalid.

2. A true and correct copy of the ‘908 patent is attached hereto as Exhibit A.

3. A true and correct copy of the ‘834 patent is attached hereto as Exhibit B.

4. A true and correct copy of the ‘078 patent is attached hereto as Exhibit C.

5. A true and correct copy of the ‘565 patent is attached hereto as Exhibit D.

THE PARTIES

6. Plaintiff PCS is a Delaware Corporation having a place of business at 1101 Skokie Boulevard, Suite 400, Northbrook, Illinois 60062.

7. On information and belief, Defendant Lodsys is a Texas limited liability company and claims to have a place of business at 505 East Travis Street, Suite 207, Marshall, Texas 75670. The Texas Secretary of State lists the corporate address of Lodsys LLC as 800 Brazos, Suite 400, Austin, Texas 78701.

8. On information and belief, Mark Small is the Chief Executive Officer of Lodsys, LLC, is Lodsys’s sole employee, and conducts that company’s business from an office located in Oconomowoc, Wisconsin, within this judicial district.

JURISDICTION AND VENUE

9. This action arises under the Patent Laws of the United States, Title 35, United States Code 35 U.S.C. § 1, et seq., and under the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202. This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. §§ 1331, 1338(a), 2201 and 2202.

2

10. This action is filed to resolve an actual and justiciable controversy between the parties hereto. Defendant’s conduct towards PCS establishes that a real and substantial dispute exists between the parties regarding Defendant’s allegations that PCS’s products infringe the ‘908 patent, the ‘834 patent, the ‘078 patent and/or the ‘565 patent. This dispute is both definite and concrete and admits of specific relief through a decree of a conclusive character. As set forth in succeeding paragraphs herein, there is a conflict of asserted rights among the parties and an actual controversy exists between PCS and the Defendant with respect to the infringement, validity and scope of the ‘908 patent, the ‘834 patent, the ‘078 patent and the ‘565 patent.

11. Upon information and belief, this Court has personal jurisdiction over Lodsys because Mr. Small is located within, and conducts Lodsys’s business, from his location within this judicial district, in connection with its conduct in wrongfully asserting the Asserted Patents against PCS.

12. Venue is proper in this district pursuant to 28 U.S.C. §§ 1391 and 1400.

ALLEGATIONS SUPPORTING DECLARATORY JUDGMENT
JURISDICTION

13. PCS realleges and incorporates herein by reference each and every allegation contained in paragraphs 1-12.

3

14. Through communications and conduct, Defendant has threatened assertion of the ‘908 patent, the ‘834 patent, the ‘078 patent and the ‘565 patent against the “Feedback” portion of PCS’s website, www.potashcorp.com.

15. On or about November 9, 2011, Defendant sent a letter (attached hereto as Exhibit E) to PCS, alleging that PCS infringed the ‘078, ‘908, ‘834, and ‘565 patents. The November 9 letter accused PCS of “Infringement of U.S. Patent Nos. 5,999,908, 7,133,834, 7,222,078, and 7,620,565 (Abelow),” and stated that PCS “utilizes the inventions embodied in the Lodsys Patents.” The letter contained a claim chart titled “Infringement Claim Chart,” which applied claim one of the ‘078 patent against PCS’s website and stated that the claim chart was only “representative,” referring PCS to the remaining claims of the ‘078 patent as well as to the other Lodsys Patents (i.e., the ‘908, ‘834, and ‘565 patents).

FIRST CLAIM FOR RELIEF
(Declaratory Judgment of Non-infringement of the ‘908 patent)

16. PCS realleges and incorporates herein by reference each and every allegation contained in paragraphs 1-15.

17. Based on the above-stated conduct, PCS is informed and believes, and on that basis avers, the Defendant contends that PCS’s website, www.potashcorp.com, infringes one or more claims of the ‘908 patent.

18. Accordingly, an actual controversy exists between PCS and the Defendant as to whether or not PCS has infringed, or is infringing the ‘908 patent; has contributed to infringement, or is contributing to infringement of the ‘908

4

patent; and has induced infringement, or is inducing infringement of the ‘908 patent.

19. The controversy is such that, pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., PCS is entitled to a declaration, in the form of a judgment, that by its activities PCS has not infringed and is not infringing any valid and enforceable claim of the ‘908 patent; has not contributed to infringement and is not contributing to infringement of the ‘908 patent; and/or has not induced infringement and is not inducing infringement of the ‘908 patent. Such a determination and declaration is necessary and appropriate at this time.

SECOND CLAIM FOR RELIEF
(Declaratory Judgment of Non-infringement of the ‘834 patent)

20. PCS realleges and incorporates herein by reference each and every allegation contained in paragraphs 1-19.

21. Based on the above-stated conduct, PCS is informed and believes, and on that basis avers, the Defendant contends that PCS’s website, www.potashcorp.com, infringes one or more claims of the ‘834 patent.

22. Accordingly, an actual controversy exists between PCS and the Defendant as to whether or not PCS has infringed, or is infringing the ‘834 patent; has contributed to infringement, or is contributing to infringement of the ‘834 patent; and has induced infringement, or is inducing infringement of the ‘834 patent.

5

23. The controversy is such that, pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., PCS is entitled to a declaration, in the form of a judgment, that by its activities PCS has not infringed and is not infringing any valid and enforceable claim of the ‘834 patent; has not contributed to infringement and is not contributing to infringement of the ‘834 patent; and/or has not induced infringement and is not inducing infringement of the ‘834 patent. Such a determination and declaration is necessary and appropriate at this time.

THIRD CLAIM FOR RELIEF
(Declaratory Judgment of Non-infringement of the ‘078 patent)

24. PCS realleges and incorporates herein by reference each and every allegation contained in paragraphs 1-23.

25. Based on the above-stated conduct, PCS is informed and believes, and on that basis avers, that the Defendant contends that PCS’s website, www.potashcorp.com, infringes one or more claims of the ‘078 patent.

26. Accordingly, an actual controversy exists between PCS and the Defendant as to whether or not PCS has infringed, or is infringing the ‘078 patent; has contributed to infringement, or is contributing to infringement of the ‘078 patent; and has induced infringement, or is inducing infringement of the ‘078 patent.

27. The controversy is such that, pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., PCS is entitled to a declaration, in the form of a judgment, that by its activities PCS has not infringed and is not

6

infringing any valid and enforceable claim of the ‘078 patent; has not contributed to infringement and is not contributing to infringement of the ‘078 patent; and/or has not induced infringement and is not inducing infringement of the ‘078 patent. Such a determination and declaration is necessary and appropriate at this time.

FOURTH CLAIM FOR RELIEF
(Declaratory Judgment of Non-infringement of the ‘565 patent)

28. PCS realleges and incorporates herein by reference each and every allegation contained in paragraphs 1-27.

29. Based on the above-stated conduct, PCS is informed and believes, and on that basis avers, that the Defendant contends that PCS’s website, www.potashcorp.com, infringes one or more claims of the ‘565 patent.

30. Accordingly, an actual controversy exists between PCS and the Defendant as to whether or not PCS has infringed, or is infringing the ‘565 patent; has contributed to infringement, or is contributing to infringement of the ‘565 patent; and has induced infringement, or is inducing infringement of the ‘565 patent.

31. The controversy is such that, pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., PCS is entitled to a declaration, in the form of a judgment, that by its activities PCS has not infringed and is not infringing any valid and enforceable claim of the ‘565 patent; has not contributed to infringement and is not contributing to infringement of the ‘565 patent; and has

7

not induced infringement and is not inducing infringement of the ‘565 patent. Such a determination and declaration is necessary and appropriate at this time.

FIFTH CLAIM FOR RELIEF
(Declaratory Judgment of Invalidity of the ‘908 patent)

32. PCS realleges and incorporates herein by reference each and every allegation contained in paragraphs 1-31.

33. Based on the above-stated conduct, PCS is informed and believes, and on that basis avers, that the Defendant contends that PCS infringes one or more claims of the ‘908 patent.

34. PCS denies that it infringes any valid and enforceable claim of the ‘908 patent, and avers that the assertions of infringement cannot be maintained consistently with statutory conditions of patentability and the statutory requirements for disclosure and claiming that must be satisfied for patent validity under at least one of 35 U.S.C. §§ 101, 102, 103, and 112.

35. Accordingly, an actual controversy exists between PCS and the Defendant as to the validity of the ‘908 patent. The controversy is such that, pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., PCS is entitled to a declaration, in the form of a judgment, that the ‘908 patent is invalid. Such a determination and declaration is necessary and appropriate at this time.

8

SIXTH CLAIM FOR RELIEF
(Declaratory Judgment of Invalidity of the ‘834 patent)

36. PCS realleges and incorporates herein by reference each and every allegation contained in paragraphs 1-35.

37. Based on the above-stated conduct, PCS is informed and believes, and on that basis avers, that the Defendant contends that PCS infringes one or more claims of the ‘834 patent.

38. PCS denies that it infringes any valid and enforceable claim of the ‘834 patent, and avers that the assertions of infringement cannot be maintained consistently with statutory conditions of patentability and the statutory requirements for disclosure and claiming that must be satisfied for patent validity under at least one of 35 U.S.C. §§ 101, 102, 103, and 112.

39. Accordingly, an actual controversy exists between PCS and the Defendant as to the validity of the ‘834 patent. The controversy is such that, pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., PCS is entitled to a declaration, in the form of a judgment, that the ‘834 patent is invalid. Such a determination and declaration is necessary and appropriate at this time.

SEVENTH CLAIM FOR RELIEF
(Declaratory Judgment of Invalidity of the ‘078 patent)

40. PCS realleges and incorporates herein by reference each and every allegation contained in paragraphs 1-39.

9

41. Based on the above-stated conduct, PCS is informed and believes, and on that basis avers, that the Defendant contends that PCS infringes one or more claims of the ‘078 patent.

42. PCS denies that it infringes any valid and enforceable claim of the ‘078 patent, and avers that the assertions of infringement cannot be maintained consistently with statutory conditions of patentability and the statutory requirements for disclosure and claiming that must be satisfied for patent validity under at least one of 35 U.S.C. §§ 101, 102, 103, and 112.

43. Accordingly, an actual controversy exists between PCS and the Defendant as to the validity of the ‘078 patent. The controversy is such that, pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., PCS is entitled to a declaration, in the form of a judgment, that the ‘078 patent is invalid. Such a determination and declaration is necessary and appropriate at this time.

EIGHTH CLAIM FOR RELIEF
(Declaratory Judgment of Invalidity of the ‘565 patent)

44. PCS realleges and incorporates herein by reference each and every allegation contained in paragraphs 1-43.

45. Based on the above-stated conduct, PCS is informed and believes, and on that basis avers, that the Defendant contends that PCS infringes one or more claims of the ‘565 patent.

10

46. PCS denies that it infringes any valid and enforceable claim of the ‘565 patent, and avers that the assertions of infringement cannot be maintained consistently with statutory conditions of patentability and the statutory requirements for disclosure and claiming that must be satisfied for patent validity under at least one of 35 U.S.C. §§ 101, 102, 103, and 112.

47. Accordingly, an actual controversy exists between PCS and the Defendant as to the validity of the ‘565 patent. The controversy is such that, pursuant to Federal Rule of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., PCS is entitled to a declaration, in the form of a judgment, that the ‘565 patent is invalid. Such a determination and declaration is necessary and appropriate at this time.

PRAYER FOR RELIEF

WHEREFORE, plaintiff PCS prays for a judgment as follows:

1. For a declaration that its products do not infringe any valid claim of the ‘908 patent;

2. For a declaration that assertions of infringement of the ‘908 patent cannot be maintained consistently with statutory conditions of patentability and the statutory requirements for disclosure and claiming that must be satisfied for patent validity under one or more of 35 U.S.C. §§ 101, 102, 103, and 112;

3. For a declaration that the claims of the ‘908 patent are invalid under one or more of 35 U.S.C. §§ 101, 102, 103, and 112;

11

4. For a declaration that its products do not infringe any valid claim of the ‘834 patent;

5. For a declaration that assertions of infringement of the ‘834 patent cannot be maintained consistently with statutory conditions of patentability and the statutory requirements for disclosure and claiming that must be satisfied for patent validity under one or more of 35 U.S.C. §§ 101, 102, 103, and 112;

6. For a declaration that the claims of the ‘834 patent are invalid under one or more of 35 U.S.C. §§ 101, 102, 103, and 112;

7. For a declaration that its products do not infringe any valid claim of the ‘078 patent;

8. For a declaration that assertions of infringement of the ‘078 patent cannot be maintained consistently with statutory conditions of patentability and the statutory requirements for disclosure and claiming that must be satisfied for patent validity under one or more of 35 U.S.C. §§ 101, 102, 103, and 112;

9. For a declaration that the claims of the ‘078 patent are invalid under one or more of 35 U.S.C. §§ 101, 102, 103, and 112;

10. For a declaration that its products do not infringe any valid claim of the ‘565 patent;

11. For a declaration that assertions of infringement of the ‘565 patent cannot be maintained consistently with statutory conditions of patentability and the statutory requirements for disclosure and claiming that must be satisfied for patent validity under one or more of 35 U.S.C. §§ 101, 102, 103, and 112;

12

12. For a declaration that the claims of the ‘565 patent are invalid under one or more of 35 U.S.C. §§ 101, 102, 103, and 112;

13. For a preliminary and permanent injunction enjoining and restraining Defendant and its respective officers, partners, employees, agents, parents, subsidiaries or anyone in privity with them, and all persons acting in concert with them and each of them:

a. from making any claims to any person or entity that any product of PCS infringes the ‘908 patent, the ‘834 patent, the ‘078 patent and/or the ‘565 patent;

b. from interfering with, or threatening to interfere with the manufacture, sale, or use of any PCS’s products by PCS, its customers, distributors, predecessors, successors or assigns; and

c. from instituting or prosecuting any lawsuit or proceeding, placing in issue the right of PCS, its customers, distributors, predecessors, successors or assigns, to make, use or sell products which allegedly infringe the ‘908 patent, the ‘834 patent, the ‘078 patent and/or the ‘565 patent.

14. For an award to PCS of its reasonable attorneys’ fees and costs of suit incurred herein; and

15. For such other and further relief as the Court may deem proper.

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JURY DEMAND

Plaintiff respectfully requests a trial by jury of all issues so triable.

Dated this 8th day of December, 2011.

s/ David G. Hanson
David G. Hanson
WI State Bar ID No. 1019486
[email]
Allen C. Schlinsog, Jr.
WI State Bar ID No. 1025656
[email]
Attorneys for Plaintiffs
Reinhart Boerner Van Deuren s.c.
[address telephone fax]

Of Counsel:

James R. Daly
[email]
Timothy J. Heverin
[email]
Danielle R. Olivotto
[email]
JONES DAY
[address telephone]

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