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Case 3:20-cv-04448 Document 1 Filed 07/03/20 Page 1 of 11

1 Katherine D. Prescott (SBN 215496 | prescott@fr.com)


2 FISH & RICHARDSON P.C.
500 Arguello Street, Suite 500
3 Redwood City, CA 94063
4 Phone: 650-839-5070
Fax: 650-839-5071
5
6 Indranil Mukerji, (pro hac vice application to be filed), mukerji@fr.com
FISH & RICHARDSON P.C.
7 1000 Maine Ave. SW, Suite 1000
8 Washington, D.C. 20024
Phone: (202) 783-5070
9 Fax: (202) 783-2331
10
Benjamin K. Thompson, (pro hac vice application to be filed), bthompson@fr.com
11 Lawrence R. Jarvis, (pro hac vice application to be filed), jarvis@fr.com
12 FISH & RICHARDSON P.C.
1180 Peachtree Street, NE, 21st Floor
13 Atlanta, GA 30309
14 Phone: 404-582-5005
Fax: 404-582-5002
15
16 Attorneys for Plaintiff APPLE INC.

17 UNITED STATES DISTRICT COURT


18 NORTHERN DISTRICT OF CALIFORNIA

19
APPLE INC., Civil Action No. 3:20-cv-4448
20
Plaintiff, COMPLAINT FOR
21 DECLARATORY JUDGMENT OF
v. NON-INFRINGEMENT OF U.S.
22 PATENT NOS. 7,292,870 AND
ZIPIT WIRELESS, INC., 7,894,837
23
DEMAND FOR JURY TRIAL
24
Defendant.
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COMPLAINT FOR DECLARATORY JUDGMENT OF
NON-INFRINGEMENT
CASE NO. 3:20-CV-4448
Case 3:20-cv-04448 Document 1 Filed 07/03/20 Page 2 of 11

1 COMPLAINT FOR DECLARATORY JUDGMENT


2 Plaintiff Apple Inc. (“Apple”) hereby alleges for its Complaint against
3 Defendant Zipit Wireless, Inc. (“Zipit”) as follows:
4 NATURE AND HISTORY OF THE ACTION
5 1. This is an action for a declaratory judgment of non-infringement of U.S.
6 Patent Nos. 7,292,870 (“the ’870 patent”) and 7,894,837 (“the ’837 patent”)
7 (collectively, the “Zipit Patents”). Zipit has alleged that Apple has infringed these
8 patents, and Apple disagrees.
9 2. Zipit previously asserted the Zipit Patents against Apple. Specifically,
10 Zipit filed suit against Apple on June 11, 2020, accusing Apple of infringing the Zipit
11 Patents directly, contributorily, and by inducement. (See Zipit Wireless, Inc., v.
12 Apple Inc., Civil Action No. 1:20-cv-02488-ELR (N.D. Ga.) (“the Former Zipit
13 Litigation”), ECF No. 1.)
14 3. Without any prior notice to Apple, Zipit voluntarily dismissed the
15 Former Zipit Litigation without prejudice on June 24, 2020 and the action was
16 terminated on June 25, 2020.
17 4. The parties’ history extends back beyond Zipit’s actual lawsuit. Zipit, as
18 it alleged in its Complaint in the Former Zipit Litigation, first contacted Apple
19 regarding the Zipit Patents several years before filing suit. See Former Zipit
20 Litigation ECF No. 1 at 38, 43. In fact, Zipit’s and Apple’s respective representatives
21 met at Apple’s Cupertino, California headquarters in 2015 for the express purpose of
22 conducting extensive negotiations regarding the Zipit Patents (including whether a
23 license was appropriate at all). Overall, the parties’ interactions took place over the
24 course of several years, from at least 2014 through 2016, and further encompassed
25 the exchange of many rounds of correspondence about the Zipit Patents.
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COMPLAINT FOR DECLARATORY JUDGMENT OF
1 NON-INFRINGEMENT
CASE NO. 3:20-CV-4448
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1 5. Zipit maintained throughout these conversations that Apple required a


2 license to the Zipit Patents. Apple maintains that it does not infringe any claims of
3 the Zipit Patents. The parties never reached agreement.
4 6. Zipit’s actions have created a real and immediate controversy between
5 Zipit and Apple as to whether Apple’s products and/or services infringe any claims of
6 the Zipit Patents. Both the pre-suit negotiations between Apple and Zipit, wherein
7 Zipit insisted that Apple requires a license to the Zipit Patents, and Zipit’s dismissal
8 of the Former Zipit Litigation without prejudice, demonstrates that it is highly likely
9 that Defendant Zipit will again assert infringement of the Zipit Patents against Apple.
10 In the meantime, the cloud of Zipit’s allegations and litigation hangs over Apple.
11 7. As set forth herein, Apple does not infringe the Zipit Patents. Therefore,
12 an actual and justiciable controversy exists between the parties as to whether Apple’s
13 products and/or services infringe any claims of the Zipit Patents. The facts and
14 allegations recited herein show that there is a real, immediate, and justiciable
15 controversy concerning these issues. A judicial declaration is necessary to determine
16 the respective rights of the parties regarding the asserted patents, and Apple
17 respectfully seeks a judicial declaration that the Zipit Patents are not infringed by any
18 Apple products and/or services.
19 THE PARTIES
20 8. Plaintiff Apple is a California corporation with its principal place of
21 business at One Apple Park Way, Cupertino, California 95014.
22 9. On information and belief, and based on Zipit’s allegations in the
23 Former Zipit Litigation, Defendant Zipit is a Delaware Corporation with a principal
24 place of business located at 101 North Main Street, Suite 201, Greenville, South
25 Carolina 29601.
26 10. On information and belief, including Zipit’s allegations in the Former
27 Zipit Litigation, Zipit claims to own the Zipit Patents.
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COMPLAINT FOR DECLARATORY JUDGMENT OF
2 NON-INFRINGEMENT
CASE NO. 3:20-CV-4448
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1 JURISDICTION AND VENUE


2 11. This action arises under the Declaratory Judgment Act, 28 U.S.C. §§
3 2201-2202, and under the Patent Laws of the United States, 35 U.S.C. §§ 1 et seq.
4 12. This Court has subject matter jurisdiction over the claims alleged in this
5 action at least under 28 U.S.C. §§ 1331, 1332, 1338, 2201, and 2202, because this
6 Court has exclusive jurisdiction over declaratory judgment claims arising under the
7 Patent Laws pursuant to 28 U.S.C. §§ 1331, 1338, 2201, and 2202.
8 13. This Court can provide the relief sought in this Declaratory Judgment
9 Complaint because an actual case and controversy exists between the parties within
10 the scope of this Court’s jurisdiction pursuant to 28 U.S.C. § 2201, at least because
11 Zipit sued Apple for patent infringement, despite the fact that Apple does not
12 infringe, and has not infringed, any claims of the Zipit Patents. While Zipit
13 dismissed the Former Zipit Litigation, it did so without prejudice, leaving open the
14 possibility of Zipit suing Apple again on these same patents. Zipit’s actions have
15 created a real, live, immediate, and justiciable case or controversy between Zipit and
16 Apple.
17 14. Zipit has consciously and purposefully directed activities at Apple, a
18 company that resides and operates in this District. As previously described, Apple
19 and Zipit had extensive pre-suit communications regarding the Zipit Patents over the
20 course of several years. Zipit also came to the District for an in-person meeting at
21 Apple’s facilities in Cupertino to discuss the Zipit Patents. Throughout, Zipit
22 maintained that Apple required a license to the Zipit Patents. Zipit purposefully
23 directed these activities relating to the Zipit Patents at Apple in this District, and this
24 action arises out of and directly relates to Zipit’s contacts with Apple in this District.
25 15. In doing so, Zipit has established sufficient minimum contacts with the
26 Northern District of California such that Zipit is subject to specific personal
27 jurisdiction in this action. The exercise of personal jurisdiction based on these
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COMPLAINT FOR DECLARATORY JUDGMENT OF
3 NON-INFRINGEMENT
CASE NO. 3:20-CV-4448
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1 repeated and pertinent contacts does not offend traditional notions of fairness and
2 substantial justice.
3 16. Venue in this District is proper under 28 U.S.C. §§ 1391(b), (c), and (d)
4 with respect to Apple’s declaratory judgment claims. As discussed above, this Court
5 has personal jurisdiction over Zipit because Zipit has engaged in actions in this
6 District that form the basis of Apple’s claims against Zipit—namely, the pre-suit
7 communications and interactions with Apple representatives in Cupertino, and the
8 meeting at Apple’s Cupertino headquarters.
9 17. An actual and justiciable controversy exists under 28 U.S.C. §§ 2201-
10 2202 between Apple and Zipit as to whether the Zipit’s Patents are infringed by the
11 Apple products and/or services that Zipit alleged to infringe the Zipit Patents in the
12 Former Zipit Litigation.
13 PATENTS-IN-SUIT
14 18. The ’870 patent, entitled “Instant Messaging Terminal Adapted For Wi-
15 Fi Access Points,” states on its face that it issued on November 6, 2007. A true and
16 correct copy of the ’870 patent is attached as Exhibit A.
17 19. The ’837 patent, entitled “Instant Messaging Terminal Adapted For Wi-
18 Fi Access Points,” states on its face that it issued on February 22, 2011. A true and
19 correct copy of the ’837 patent is attached as Exhibit B.
20 FIRST CLAIM FOR RELIEF
21 (Declaratory Judgment That Apple Does Not Infringe The ’870 Patent)
22 20. Apple repeats and realleges each and every allegation contained in
23 paragraphs 1 through 19 of this Complaint as if fully set forth herein.
24 21. In view of the facts and allegations set forth above, there is an actual,
25 justiciable, substantial, and immediate controversy between Apple, on the one hand,
26 and Zipit, on the other, regarding whether Apple infringes any claim of the ’870
27 patent.
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COMPLAINT FOR DECLARATORY JUDGMENT OF
4 NON-INFRINGEMENT
CASE NO. 3:20-CV-4448
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1 22. Apple does not infringe, and has not infringed, any claim of the ’870
2 patent. For example, the ’870 patent has two independent claims (i.e., claims 1 and
3 20) and Zipit previously identified claim 20 as allegedly infringed in the Former Zipit
4 Litigation. Claim 20 is reproduced below:
5
20. A method for managing wireless network access and instant
6 messaging through a wireless access point with a handheld instant
messaging terminal comprising:
7
8 entering textual characters and graphical symbols with a data entry
device of a handheld terminal to form instant messages for delivery to an
9
instant messaging service;
10
displaying the entered textual characters and graphical symbols on a
11
display of the handheld terminal;
12
communicating instant messages with a wireless, Internet protocol
13
access point, the instant messages being communicated with a
14 communications module and wireless transceiver in the handheld
15 terminal;

16 coordinating authentication for coupling the handheld instant messaging


17 terminal to a local network through the wireless, Internet protocol access
point;
18
19 implementing instant messaging and sessions protocols to control a
conversation session through the wireless, Internet protocol access point,
20 the instant messaging and session protocols being implemented within
21 the handheld instant messaging terminals;

22 displaying conversation histories for active conversations terminated by


23 a loss of a network connection; and

24 automatically searching for wireless, Internet protocol network beacons


25 after the conversation histories are displayed.

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COMPLAINT FOR DECLARATORY JUDGMENT OF
5 NON-INFRINGEMENT
CASE NO. 3:20-CV-4448
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1 23. Claim 1 recites similar limitations. Apple does not infringe any claims
2 of the ’870 patent at least because no Apple product or service meets or embodies at
3 least the following limitations as recited in the claims: “entering textual characters
4 and graphical symbols with a data entry device of a handheld terminal to form instant
5 messages for delivery to an instant messaging service”; “displaying the entered
6 textual characters and graphical symbols on a display of the handheld terminal”;
7 “communicating instant messages with a wireless, Internet protocol access point, the
8 instant messages being communicated with a communications module and wireless
9 transceiver in the handheld terminal”; “coordinating authentication for coupling the
10 handheld instant messaging terminal to a local network through the wireless, Internet
11 protocol access point”; “implementing instant messaging and sessions protocols to
12 control a conversation session through the wireless, Internet protocol access point,
13 the instant messaging and session protocols being implemented within the handheld
14 instant messaging terminals”; “displaying conversation histories for active
15 conversations terminated by a loss of a network connection”; and “automatically
16 searching for wireless, Internet protocol network beacons after the conversation
17 histories are displayed.”
18 24. For example, as shown above, claim 20 recites “a data entry device” and
19 “a display” as separate components with additional ascribed limitations. Apple’s
20 iPhones do not have a separate “data entry device” as they contain only a display.
21 Namely, Apple’s iPhones have a software keyboard as part of the display having
22 distinct keyboard layouts for Emoji symbols and textual characters.
23 25. In view of the foregoing, there is an actual, justiciable, substantial, and
24 immediate controversy between Apple and Zipit regarding whether Apple infringes
25 any claim of the ’870 patent.
26 26. Apple is entitled to judgment declaring that it does not infringe the ’870
27 patent. Apple has no adequate remedy at law.
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COMPLAINT FOR DECLARATORY JUDGMENT OF
6 NON-INFRINGEMENT
CASE NO. 3:20-CV-4448
Case 3:20-cv-04448 Document 1 Filed 07/03/20 Page 8 of 11

1 SECOND CLAIM FOR RELIEF


2 (Declaratory Judgment That Apple Does Not Infringe The ’837 Patent)
3 27. Apple repeats and realleges each and every allegation contained in
4 paragraphs 1 through 26 of this Complaint as if fully set forth herein.
5 28. In view of the facts and allegations set forth above, there is an actual,
6 justiciable, substantial, and immediate controversy between Apple, on the one hand,
7 and Zipit, on the other, regarding whether Apple infringes any claim of the ’837
8 patent.
9 29. Apple does not infringe, and has not infringed, any claim of the ’837
10 patent. For example, the ’837 patent has two independent claims (i.e., claims 1 and
11 11) and Zipit previously identified claim 11 as allegedly infringed in the Former Zipit
12 Litigation. Claim 11 is reproduced below:
13
11. A method for managing wireless network access and instant
14 messaging through a wireless access point with a handheld instant
messaging terminal comprising:
15
16 generating textual characters and graphical symbols in response to
manipulation of keys on a data entry device of a handheld instant
17
messaging terminal;
18
displaying the generated textual characters and graphical symbols on a
19
display of the handheld instant messaging terminal;
20
generating data messages with the generated textual characters and
21
graphical symbols in accordance with at least one instant messaging
22 protocol that is compatible with an instant messaging service;
23
wirelessly transmitting the generated data messages to a wireless
24 network access point through an Internet protocol communications
25 module and wireless transceiver in the handheld instant messaging
terminal; and
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COMPLAINT FOR DECLARATORY JUDGMENT OF
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CASE NO. 3:20-CV-4448
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1 controlling a conversation session in accordance with the at least one


instant messaging protocol being implemented with a control module
2 located within the handheld instant messaging terminal.
3
4 30. Claim 1 recites similar limitations. Apple does not infringe any claims
5 of the ’837 patent at least because no Apple product or service meets or embodies at
6 least the following limitations as used in the claimed inventions: “generating textual
7 characters and graphical symbols in response to manipulation of keys on a data entry
8 device of a handheld instant messaging terminal”; “displaying the generated textual
9 characters and graphical symbols on a display of the handheld instant messaging
10 terminal”; “generating data messages with the generated textual characters and
11 graphical symbols in accordance with at least one instant messaging protocol that is
12 compatible with an instant messaging service”; “wirelessly transmitting the generated
13 data messages to a wireless network access point through an Internet protocol
14 communications module and wireless transceiver in the handheld instant messaging
15 terminal”; and “controlling a conversation session in accordance with the at least one
16 instant messaging protocol being implemented with a control module located within
17 the handheld instant messaging terminal.” For example, as shown above, claim 11
18 recites “a data entry device” and “a display” as separate components with additional
19 ascribed limitations. Apple’s iPhones do not have a separate “data entry device” as
20 they contain only a display. Namely, Apple’s iPhones have a software keyboard as
21 part of the display having distinct keyboard layouts for Emoji symbols and textual
22 characters.
23 31. In view of the foregoing, there is an actual, justiciable, substantial, and
24 immediate controversy between Apple and Zipit regarding whether Apple infringes
25 any claim of the ’837 patent.
26 32. Apple is entitled to judgment declaring that it does not infringe the ’837
27 patent. Apple has no adequate remedy at law.
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COMPLAINT FOR DECLARATORY JUDGMENT OF
8 NON-INFRINGEMENT
CASE NO. 3:20-CV-4448
Case 3:20-cv-04448 Document 1 Filed 07/03/20 Page 10 of 11

1 PRAYER FOR RELIEF


2 Apple respectfully requests the following relief:
3 A. That the Court enter a judgment declaring that Apple has not infringed
4 and does not infringe any valid and enforceable claim of the ’870 patent
5 asserted by Zipit to be infringed by Apple;
6 B. That the Court enter a judgment declaring that Apple has not infringed
7 and does not infringe any valid and enforceable claim of the ’837 patent
8 asserted by Zipit to be infringed by Apple;
9 C. That the Court declare that this case is exceptional under 35 U.S.C. §
10 285 and award Apple its attorneys’ fees, costs, and expenses incurred in
11 this action;
12 D. That the Court award Apple any and all other relief to which Apple may
13 show itself to be entitled; and
14 E. That the Court award Apple any other relief as the Court may deem just,
15 equitable, and proper.
16 JURY DEMAND
17 Apple hereby demands a jury trial on all issues and claims so triable.
18
Dated: July 3, 2020 Respectfully submitted,
19
20
21 By: /s/ Katherine D. Prescott
Katherine D. Prescott, SBN 215496
22 prescott@fr.com
23 FISH & RICHARDSON P.C.
500 Arguello Street, Suite 500
24 Redwood City, CA 94063
25 Phone: 650-839-5180 / Fax: 650-839-5071
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COMPLAINT FOR DECLARATORY JUDGMENT OF
9 NON-INFRINGEMENT
CASE NO. 3:20-CV-4448
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1 Indranil Mukerji, (pro hac vice application to be


filed), mukerji@fr.com
2 FISH & RICHARDSON P.C.
3 1000 Maine Ave. SW, Suite 1000
Washington, D.C. 20024
4 Phone: (202) 783-5070
5 Fax: (202) 783-2331

6 Benjamin K. Thompson, (pro hac vice application


7 to be filed), bthompson@fr.com
Lawrence R. Jarvis, (pro hac vice application to be
8 filed), jarvis@fr.com
9 FISH & RICHARDSON P.C.
1180 Peachtree Street, NE, 21st Floor
10 Atlanta, GA 30309
11 Phone: 404-582-5005
Fax: 404-582-5002
12
13 Attorneys for Plaintiff APPLE INC.

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COMPLAINT FOR DECLARATORY JUDGMENT OF
10 NON-INFRINGEMENT
CASE NO. 3:20-CV-4448