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KEITH J. MITRO (287108) kmitro@kasowitz.com KASOWITZ, BENSON, TORRES & FRIEDMAN LLP 333 Twin Dolphin Drive, Suite 200 Redwood Shores, CA 94065 (650) 453-5170 Telephone (650) 453-5171 Fax Of Counsel: JEFFREY J. TONEY (pro hac vice to be filed) jtoney@kasowitz.com JONATHAN K. WALDROP (pro hac vice to be filed) jwaldrop@kasowitz.com DARCY L. JONES (pro hac vice to be filed) djones@kasowitz.com MARCUS A. BARBER (pro hac vice to be filed) mbarber@kasowitz.com KASOWITZ, BENSON, TORRES & FRIEDMAN LLP 1349 West Peachtree Street, N.W., Suite 1500 Atlanta, GA 30309 (404) 260-6133 Telephone (404) 260-6081 Fax Attorneys for Plaintiff ADOBE SYSTEMS INCORPORATED.

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA

ADOBE SYSTEMS INCORPORATED, Plaintiff, v. TEJAS RESEARCH, LLC, Defendants.

Case No.

COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF U.S. PATENT NO. 6,006,231 DEMAND FOR JURY TRIAL

Plaintiff Adobe Systems Incorporated (Adobe) seeks a declaratory judgment of noninfringement, both direct and indirect, of United States Patent No. 6,006,231 (the 231 patent) as follows: I. 1. NATURE OF THE ACTION

Adobe brings this action seeking a declaratory judgment of non-infringement -1COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF U.S. PATENT NO. 6,006,231

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arising under the patent laws of the United States, Title 35 of the United States Code. Adobe brings this action against Tejas Research, LLC (Tejas), the owner by assignment of the 231 patent (attached as Ex. A). Adobe requests this relief because Defendant Tejas has filed multiple lawsuits against Adobe customers claiming that said Adobe customers infringe the 231 patent (the patent-in-suit) by directly or through intermediaries, making, using, selling, importing, providing, supplying, distributing, selling, and/or offering for sale apparatuses and systems and providing methods (practiced on various websites belonging to Adobe customers) which are covered by one or more claims of the 231 patent literally or under the doctrine of equivalents, to the injury of Tejas. The litigation campaign undertaken by Tejas has placed a cloud on Adobes Scene7 product; threatened Adobes business relationship with its customers and partners, as well as its sales of the Scene7 product; and created a justiciable controversy between Adobe and Tejas. II. 2. THE PARTIES

Plaintiff Adobe is a corporation organized and existing under the laws of the state

of Delaware, with its principal place of business at 345 Park Avenue, San Jose, CA, 95110. Adobes corporate vision is to revolutionize how the world engages with ideas and information. As part of that vision, Adobe produces Scene7, an on-demand rich media software that provides document hosting and interactive publishing services such as online catalogs, targeted email, video, and image management (Adobe Scene7 product). 3. On information and belief, Tejas is a limited liability company organized and

existing under the laws of the state of Texas, with a principal place of business located at 719 West Front Street, Suite 174, Tyler, TX, 75702. Upon information and belief, Tejas is a nonpracticing entity that produces no products, and instead exists solely to assert its patents. III. 4. JURISDICTION

This action arises under the Declaratory Judgment Act, 28 U.S.C. 2201, and

under the patent laws of the United States, 35 U.S.C. 1-390. 5. This Court has subject matter jurisdiction over this action under 28 U.S.C.

1331, 1338(a), and 2201(a). -2COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF U.S. PATENT NO. 6,006,231

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6.

This Court has personal jurisdiction over Tejas. On information and belief, Tejas

has maintained continuous and systematic contacts with the state of California since its inception, and has purposefully directed its activities at, and/or consummated transactions with, residents of California, and/or has performed certain acts that have purposefully availed itself of the privilege of conducting activities in the state of California, and has thereby invoked the benefits and protections of its laws. 7. Conduct, transactions, and/or acts performed by Tejas purposefully directed at

residents of California include, on information and belief: (i) initiating patent litigation actions against various California entities involving the 231 patent, including Vivid Entertainment Group; Vivid Entertainment, LLC; Playboy Enterprises, Inc.; and Playboy.com, Inc.; (ii) negotiating with and entering into settlement/licensing agreements with California entities including Vivid Entertainment Group; Vivid Entertainment, LLC; Playboy Enterprises, Inc.; and Playboy.com, Inc., that allow such entities to continue activities alleged by Tejas to infringe the 231 patent in the state of California; and (iii) creating an apprehension within Adobe that it will imminently and inevitably be sued for infringement of the 231 patent. 8. On information and belief, Tejass licensing and enforcement efforts directed

towards residents of the state of California have generated substantial revenues. 9. Venue is proper in this District under 28 U.S.C. 1391(b & c) because a

substantial part of the events giving rise to Adobes claims occurred in this district, and because Tejas is subject to general and/or personal jurisdiction here. 10. An immediate, real, and justiciable controversy exists between Adobe and Tejas

as to whether Adobe is infringing or has infringed the 231 patent. IV. 11. INTRADISTRICT ASSIGNMENT

For purposes of intradistrict assignment under Civil Local Rules 3-2(c) and

3-5(b), this Intellectual Property Action will be assigned on a district-wide basis. V. 12. TEJASS HISTORY AND BUSINESS

Tejas is a Texas limited liability company that was formed on October 2, 2010.

Plaintiffs only managing member or agent according to its corporate filings is Fielder Properties

-3COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF U.S. PATENT NO. 6,006,231

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Management, LLC. Upon information and belief, Guy Fielder is the sole member and President of Fielder Properties Management, LLC.

13.

Upon information and belief, Tejas obtained ownership of the 231 patent by

assignment from FTX Exchange, LLC, on March 14, 2013. Since that time, Tejas has filed over

twenty lawsuits alleging infringement of the 231 patent, which is entitled File format for an image including multiple versions of an image, and related system and method[,] and is generally drawn to the efficient transmission and downloading of images over a network. 14. On information and belief, Tejas has and continues to aggressively assert the

231 patent as being infringed by the websites of the defendants in the more than twenty lawsuits referenced above, and has entered or attempted to enter licensing agreements with said defendants. 15. On information and belief, Tejas is continuing to seek out additional entities,

including Adobe customers, against which infringement of the 231 patent may be asserted based on the companies having websites with allegedly infringing technology. VI. 16. TEJASS CAMPAIGN AGAINST SCENE7

Among the myriad companies ensnared in Tejass patent dragnet are Adobe

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customers and partners that use Adobes Scene7 product as part of their respective websites, including Bed Bath & Beyond, Inc. (Bed Bath & Beyond), Kohls Department Stores, Inc. (Kohls), J. C. Penney Corporation, Inc. (J. C. Penney), and Dillards, Inc. (Dillards). 17. On October 25, 2013, Tejas brought patent infringement actions against Bed

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Bath & Beyond, Kohls, and J. C. Penney in the Marshall Division of the United States District Court for the Eastern District of Texas: Tejas Research LLC v. Bed Bath & Beyond, Inc., No.

23 2:13-cv-00876; Tejas Research LLC v. J. C. Penney Corporation, Inc., 2:13-cv-00877; and 24 25 26 Adobe customer, in the Marshall Division of the United States District Court for the Eastern 27 28
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Tejas Research LLC v. Kohls Department Stores, Inc., 2:13-cv-00878. Further, on December 31, 2013, Tejas brought an additional patent infringement action against Dillards, also an

District of Texas: Tejas Research, LLC v. Dillards, Inc., 2:13-cv-01141 (collectively, the -4COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF U.S. PATENT NO. 6,006,231

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Scene7 Actions against the Scene7 Defendants). 18. In the Scene7 Actions, Tejas alleged that each Scene7 Defendant has been and is

now infringing the 231 patent in the State of Texas, in this judicial district, and elsewhere in the United States,1 by, among other things, directly or through intermediaries, making, using, importing, providing, supplying, distributing, selling, and/or offering for sale apparatuses and systems and providing methods practiced on the Scene7 Defendants various websites, which are covered by one or more claims of the 231 patent, to the injury of Tejas. 19. Further, in the Scene7 Actions, Tejas also has accused the Scene7 Defendants of

contributing to the infringement of the 231 patent, literally or under the doctrine of equivalents, under 35 U.S.C. 271(c) by selling or offering to sell in the United States the software that powers the accused websites with knowledge that the software is especially made or adapted for use in a way that infringes; [and alleged that] the software that [the Scene7 Defendants] provide[] is a significant part of the inventions of the claims of the 231 [p]atent and has no significant non-infringing use. 20. On information and belief, Adobe is an intermediary referenced by Tejas in

complaints filed in the Scene7 Actions as making, using, selling, importing, providing, supplying, distributing, selling, and/or offering for sale apparatuses and systems and providing methods which are covered by one or more claims of the 231 patent literally or under the doctrine of equivalents, to the injury of Tejas. Assertions such as this by Tejas, among other things, have created an apprehension that Adobe will imminently and inevitably be sued for infringement of the 231 patent. 21. On information and belief, Adobes Scene7 product is the software referenced

by Tejas in complaints filed in the Scene7 Actions as allegedly especially made or adapted for use in a way that infringes[;] and/or is the software referenced that allegedly is a significant part of the inventions of the claims of the 231 patent for purposes of contributory infringement under 271(c). Assertions such as this by Tejas, among other things, have created an

apprehension that Adobe will imminently and inevitably be sued for infringement of the 231
1

Emphasis not included in complaints in Scene7 Actions.

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patent. 22. On information and belief, the Scene7 Actions seek monetary damages from the

Scene7 Defendants, and also seek to enjoin the Scene7 Defendants use of Adobes Scene7 product on their respective websites. 23. On information and belief, Tejas intends the Scene7 Actions to harm Adobes

Scene7 product, disrupt Adobes relationship with the Scene7 Defendants, and disrupt Adobes relationship with other current or potential customers using or considering use of Adobes Scene7 product. 24. For all of these reasons, an actual controversy exists between Adobe and Tejas

regarding the alleged infringement of any claim of the 231 patent. VII. 25. ADOBE DOES NOT INFRINGE THE 231 PATENT

On information and belief, neither Adobes Scene7 product, nor any of the

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Scene7 Defendants websites, or any website or product using the same, infringe any claim of the 231 patent directly, indirectly, or under the doctrine of equivalents. 26. Further, on information and belief, no third party infringes any claim of the 231

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patent by using Adobes Scene7 product on or in relation to its website. Adobe has not caused, directed, requested, or facilitated any such infringement, much less with the specific intent to do

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so. Adobes Scene7 product is not designed for use in any combination which infringes any claim of the 231 patent. To the contrary, Scene7 is a product with substantial uses that do not infringe any claim of the 231 patent. FIRST COUNT

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(Declaration of Non-Infringement of the 231 Patent) Adobe restates and incorporates by reference the allegations in paragraphs 1

through 26 of this Complaint as if fully set forth herein. On information and belief, Tejas owns the 231 patent by assignment. In the Scene7 Actions, Tejas has accused the Scene7 Defendants of infringing the

231 patent in that each has been and is currently making, using, importing, providing, -6COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF U.S. PATENT NO. 6,006,231

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supplying, distributing, selling, and/or offering for sale apparatuses and systems and providing methods practiced on the Scene7 Defendants various websites (including related internal systems supporting the operation of said websites) covered by one or more claims of the 231 patent, to the injury of Tejas. 30. Further, in the Scene7 Actions, Tejas has accused the Scene7 Defendants of

inducing infringement of the 231 patent, literally or under the doctrine of equivalents, under 35 U.S.C. 271(b) by intentionally and knowingly inviting and instructing the users of websites supported by the Scene7 Defendants software to perform the claimed methods and by supplying software modules or components used to directly infringe. 31. Still further, in the Scene7 Actions, Tejas has accused the Scene7 Defendants of

contributing to the infringement of the 231 patent, literally or under the doctrine of equivalents, under 35 U.S.C. 271(c) by selling or offering to sell in the United States the software that powers the accused websites with knowledge that the software is especially made or adapted for use in a way that infringes; and that the software that the Scene7 Defendants provide is a significant part of the inventions of the claims of the 231 patent and has no significant noninfringing use. 32. On information and belief, Tejas intends the Scene7 Actions to harm Adobes

Scene7 product, disrupt Adobes relationship with the Scene7 Defendants, and disrupt Adobes relationship with other current or potential customers using or considering use of Adobes Scene7 product. 33. An immediate, real, and justiciable controversy therefore exists between Adobe

and Tejas regarding whether Adobes Scene7 product infringes the 231 patent. A judicial declaration is necessary to determine the parties respective rights in regard to the 231 patent. Adobe seeks a judgment declaring that Adobes Scene7 product, including its implementation onto the Scene7 Defendants websites, does not directly, indirectly, or under the doctrine of equivalents infringe any claim of the 231 patent.

-7COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF U.S. PATENT NO. 6,006,231

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PRAYER FOR RELIEF WHEREFORE, Adobe prays for judgment and relief as follows: A. B. Declaring that Adobes Scene7 product does not infringe the 231 patent; Declaring that judgment be entered in favor of Adobe and against Tejas on each

of Adobes claims; C. D. E. Finding that this is an exceptional case under 35 U.S.C. 285; Awarding Adobe its costs and attorneys fees in connection with this action; and Such further and additional relief as the Court deems just and proper. JURY DEMAND Adobe demands a jury trial on all issues and claims so triable. Dated: February 26, 2014 By: /s/ Keith J. Mitro Keith J. Mitro Keith J. Mitro Cal. Bar No. 287108 kmitro@kasowitz.com KASOWITZ, BENSON, TORRES & FRIEDMAN LLP 333 Twin Dolphin Drive, Suite 200 Redwood Shores, California 94065 Tel: (650) 453-5170; Fax: (650) 453-5171 Attorneys for Plaintiff Adobe Systems Incorporated.

Of Counsel: Jeffrey J. Toney (pro hac vice to be filed) jtoney@kasowitz.com Jonathan K. Waldrop (pro hac vice to be filed) jwaldrop@kasowitz.com Darcy L. Jones (pro hac vice to be filed) djones@kasowitz.com Marcus A. Barber (pro hac vice to be filed) mbarber@kasowitz.com KASOWITZ, BENSON, TORRES & FRIEDMAN LLP 1349 West Peachtree Street, N.W., Suite 1500 Atlanta, Georgia 30309 Tel: (404) 260-6080; Fax: (404) 260-6081

-8COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF U.S. PATENT NO. 6,006,231