Motorola v. TiVo

Case 5:11-cv-00053-DF -CMC Document 1 Filed 02/25/11 Page 1 of 17
IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS
TEXARKANA DIVISION
MOTOROLA MOBILITY, INC. and

GENERAL INSTRUMENT CORPORATION
Civil Action No. _____________
Plaintiffs,
vs.
TIVO INC., JURY TRIAL DEMANDED
Defendant.
COMPLAINT FOR PATENT INFRINGEMENT

AND DECLARATORY JUDGMENT
Plaintiffs Motorola Mobility, Inc. (“Motorola Mobility”) and General Instrument
Corporation (“General Instrument”) (collectively “Plaintiffs”) file this Complaint For Patent
Infringement and Declaratory Judgment against Defendant TiVo Inc. (“TiVo”), and in support of
their Complaint allege as follows:
INTRODUCTION
1. General Instrument, a subsidiary of Motorola Mobility, owns multiple patents that
disclose and claim fundamental inventions related to digital video recorders (“DVRs”), which
are now ubiquitous in American households. These fundamental DVR patents include patents
for inventions from the mid 1990s by a group of former General Instrument engineers who went
on to found Imedia Corporation (“Imedia”). General Instrument subsequently acquired all of the
assets of Imedia, including the Imedia DVR patents. Among the patents the Imedia engineers
were awarded for their inventions are United States Patent Nos. 5,949,948 (“the ’948 Patent”);
6,304,714 (“the ’714 Patent”); and 6,356,708 (“the ’708 Patent”) (collectively “the Imedia
Patents”).
2. The Imedia Patents were filed with the Patent Office beginning in April 1995.
More than two years later, TiVo was founded and began to develop a DVR product. In July
1998, more than three years after the Imedia Patents were first filed with the Patent Office, TiVo
filed a patent application for what it dubbed a “Multimedia Time Warping System.” From that
1998 application, TiVo obtained United States Patent Nos. 6,233,389 (“the ’389 Patent”) and
7,529,465 (“the ’465 Patent) (collectively “the TiVo Patents”), among others. The TiVo Patents
disclose and claim the same technology the Imedia engineers invented years before.
3. TiVo currently is seeking to enforce its patents in this Court against Motorola
Mobility customer Verizon Communications, Inc. (“Verizon”). In TiVo Inc. v. Verizon Comms.,
Inc., et al., 2:09-cv-257-DF (E.D. Tex.) (the “Verizon Lawsuit”), TiVo has accused various QIP
set-top boxes of infringing certain claims of the TiVo Patents. Motorola Mobility and General
Instrument supply the accused QIP set-top boxes to Verizon.
4. Therefore, Plaintiffs now bring this action to: (1) seek all available remedies for
TiVo’s willful infringement of the Imedia Patents; (2) obtain a declaratory judgment that the
claims of the TiVo Patents are anticipated and/or rendered obvious by the Imedia Patents and
Imedia inventions, thus rendering the TiVo Patents invalid; and (3) obtain a declaratory
judgment that the accused QIP set-top boxes do not infringe, directly or indirectly, literally or
under the doctrine of equivalents, claims 31 and 61 of the ’389 Patent or any claim of the ’465
Patent.
2
THE PARTIES
5. Motorola Mobility is a corporation organized and existing under the laws of the
State of Delaware, having a principal place of business at 600 North U.S. Highway 45,
Libertyville, Illinois 60048.
6. General Instrument is a corporation organized and existing under the laws of the
State of Delaware, having a principal place of business at 101 Tournament Drive, Horsham,
Pennsylvania 19044. General Instrument is a wholly-owned subsidiary of Motorola Mobility.
General Instrument designs and supplies the QIP set-top boxes that Motorola Mobility sells and
supplies to Verizon.
7. On information and belief, Defendant TiVo is a corporation organized and
existing under the laws of Delaware with a principal place of business at 2160 Gold Street,
Alviso, California 95002. TiVo can be served with process through its registered agent for
service, Corporation Service Company, d/b/a CSC Lawyers Incorporated, 211 E. 7th Street,
Suite 620, Austin, Texas 78701.
JURISDICTION AND VENUE
8. The Court has subject matter jurisdiction over this action pursuant to 28 U.S.C.
§§ 1331 and 1338(a) because this action involves a claim arising under the patent laws of the
United States, 35 U.S.C. § 1, et seq., and under the Federal Declaratory Judgment Act, 28 U.S.C.
§§ 2201 and 2202.
9. Personal jurisdiction and venue are proper in this Court pursuant to 28 U.S.C.
§§ 1391, 1391 and/or 1400, because TiVo resides in this state and district and does business in
this state and district, has committed acts of infringement in this district, and has availed itself of
this forum by repeatedly commencing litigation in this district on the TiVo Patents.
3
FACTUAL BACKGROUND
A. The Imedia Patents
10. On September 7, 1999, the United States Patent and Trademark Office duly and
lawfully issued the ’948 Patent, entitled “Method and Apparatus for Implementing Playback
Features for Compressed Video Data” to Dr. Edward A. Krause, Paul Shen and Dr. Adam S.
Tom. A true and correct copy of the ’948 Patent is attached to this Complaint as Exhibit A.
General Instrument owns the entire right, title and interest in and to the ’948 Patent. The ’948
Patent was filed on November 20, 1995.
11. On October 16, 2001, the United States Patent and Trademark Office duly and
lawfully issued the ’714 Patent, entitled “In-Home Digital Video Unit With Combine Archival
Storage and High-Access Storage” to Dr. Krause, Dr. Jerrold Heller, Dr. Tom and Mr. Shen. A
true and correct copy of the ’714 Patent is attached to this Complaint as Exhibit B. General
Instrument owns the entire right, title and interest in and to the ’714 Patent. The ’714 Patent
claims priority to application number 08/425,896, filed on April 21, 1995.
12. On March 12, 2002, the United States Patent and Trademark Office duly and
lawfully issued the ’708 Patent, entitled “Method and Apparatus for Implementing Playback
Features for Compressed Video Data” to Dr. Krause, Mr. Shen and Dr. Tom. A true and correct
copy of the ’708 Patent is attached to this Complaint as Exhibit C. General Instrument owns the
entire right, title and interest in and to the ’708 Patent. The ’708 Patent is a division of
application number 08/560,732, filed on November 20, 1995, now the ’948 Patent.
B. The TiVo Patents
13. On May 15, 2001, the United States Patent and Trademark Office issued the ’389
Patent, entitled “Multimedia Time Warping System” to James M. Barton, Roderick James
4
McInnis, Alan S. Moskowitz, Andrew Martin Goodman, Ching Tong Chow and Jean Swey Kao.
A true and correct copy of the ’389 Patent is attached to this Complaint as Exhibit D. TiVo has
alleged that it owns the ’389 Patent.
14. On May 5, 2009, the United States Patent and Trademark Office issued the ’465
Patent, entitled “System for Time Shifting Multimedia Content Streams” to James M. Barton,
Roderick James McInnis, Alan S. Moskowitz, Andrew Martin Goodman, Ching Tong Chow and
Jean Swey Kao. A true and correct copy of the ’465 Patent is attached to this Complaint as
Exhibit E. TiVo has alleged that it owns the ’465 Patent.
C. General Instrument Is a Pioneer in Digital Television.
15. General Instrument is a pioneer in the field of communication systems and is
responsible for many groundbreaking innovations in television set-top box technology. In 1990,
General Instrument proposed the world’s first all-digital HDTV (high-definition television)
technical standard.
16. Until 1994, the inventors of the Imedia Patents were employed by General
Instrument developing technology that is still used in set-top boxes today, including those
supplied by General Instrument, Motorola Mobility, TiVo and others. For example, Dr. Krause
helped invent three patented technologies while at General Instrument that the MPEG LA
licensing organization determined were essential to the MPEG-2 compression standard. On
information and belief, TiVo subsequently licensed Dr. Krause’s patented inventions through the
MPEG LA licensing pool. As another example, in 1996 Dr. Krause was awarded an Emmy by
the Academy of Television Arts and Sciences for creating the DigiCipher system while working
at General Instrument. The winning DigiCipher technology was used to demonstrate digital TV
transmitted over satellite and cable channels.
5
17. In early 2000, Motorola, Inc. and General Instrument merged, which positioned
Motorola as a leader in the convergence of voice, video and data technologies. General
Instrument is now a wholly-owned subsidiary of Motorola Mobility. The combined company
continues to focus on broadband solutions that deliver interactive television, the Internet and
telephone services over wired and wireless networks.
D. The Imedia Engineers Invented the DVR in the Mid 1990s.
18. In March 1994, Dr. Krause, Dr. Tom and Mr. Shen left General Instrument to
found Imedia and were joined soon thereafter by Dr. Heller. Turning down an offer from
General Instrument to set up a separate division, the four engineers instead started their own
company in a spare room in Dr. Krause’s home in San Diego, California.
19. Imedia quickly became a success, developing innovative products that enabled
cable operators to select and customize their program lineup for viewer preferences, including
the highly successful Cherry Picker product. While at Imedia, the Imedia engineers conceived of
their DVR invention and filed a series of patent applications covering various aspects of their
invention. They marketed their DVR invention as the “Home Video Server,” which featured
digital random-access storage of television programming, full trick-mode playback, and easy-to-
use content manager that allowed selective capturing of television programs.
20. Each of the Imedia Patents was originally assigned to Imedia. In or about 1999,
Imedia was acquired by Terayon Communications Systems, Inc. (“Terayon”) for a reported $100
million. With the acquisition, the Imedia Patents were assigned to Terayon. Terayon later was
merged into General Instrument, making General Instrument the successor in interest to all right
and title to the Imedia patents.
6
E. TiVo Obtained Patents on its DVR Product and Sued the Industry.
21. On information and belief, in or around 1997, TiVo was founded and began to
develop its DVR product. In July 1998—more than three years after the Imedia Patents were
first filed—TiVo submitted a patent application for what it dubbed a “Multimedia Time Warping
System.” That application eventually matured into the ’389 Patent and ’465 Patent, among
others. The TiVo Patents disclose and claim the same technology the Imedia engineers invented
years earlier.
22. On January 5, 2004, TiVo filed a patent infringement lawsuit in the United States
District Court for the Eastern District of Texas against EchoStar Communications, Case No. 04-
cv-00001 (DF) (the “EchoStar Lawsuit”). In the EchoStar Lawsuit, TiVo asserted that EchoStar
infringed the ’389 Patent by making, using, offering to sell and/or selling digital recording
devices, digital video recording device software and/or personal television services falling within
the scope of one or more claims of the ’389 Patent.
23. On August 26, 2009, TiVo filed a patent infringement lawsuit in the Eastern
District of Texas against AT&T Inc., Case No. 09-cv-00259 (DF) (the “AT&T Lawsuit”). In the
AT&T Lawsuit, TiVo asserted that AT&T infringed the TiVo Patents by making, using, offering
for sale, selling and/or importing products and/or processes falling within the scope of one or
more claims of the TiVo Patents, including AT&T’s U-verse product and/or service.
24. On August 26, 2009, TiVo filed the Verizon Lawsuit. On February 2, 2010, TiVo
filed an amended complaint in the Verizon Lawsuit adding Verizon Services Corp. and Verizon
Corporate Resources Group, LLC as defendants (all defendants in the Verizon Lawsuit are
referred to collectively as “Verizon”). In the Verizon Lawsuit, TiVo asserted that Verizon’s
digital recording devices, digital video recording device software and personal television services
7
infringed the TiVo Patents. On February 24, 2010, Verizon answered TiVo’s amended
complaint. On or about April 4, 2010, TiVo identified certain QIP set-top boxes as accused
instrumentalities in the Verizon Lawsuit.
25. On or about August 27, 2010, TiVo served a subpoena on Motorola, Inc. seeking
documents related to the design, operation and sale by Motorola, Inc. to Verizon of “all DVRs
manufactured or otherwise produced for or sold to Verizon by Motorola, including the following
models: Motorola QIP 27xx Series Standard-Definition Watch and Record DVR, Motorola
QIP6200/QIP64xx Series, and Motorola QIP7200 Series.” On October 8, 2010, Motorola, Inc.
served its objections to TiVo’s subpoena. On January 4, 2011, Motorola Mobility ceased being a
subsidiary of Motorola, Inc. On January 14, 2011, TiVo served a substitute subpoena on
Motorola Mobility, seeking documents related to the QIP set-top boxes. On February 2, 2011,
Motorola Mobility served its objections to TiVo’s substitute subpoena and produced various
documents. TiVo has requested production of Motorola source code related to the accused QIP
set-top boxes, and Motorola Mobility currently is in the process of meeting and conferring with
TiVo regarding producing that source code for inspection.
26. As a result of TiVo’s accusations of infringement and the Verizon Lawsuit,
Verizon has demanded that Motorola Mobility defend and/or indemnify Verizon against TiVo’s
claims of patent infringement related to the QIP set-top boxes. In light of TiVo’s aggressive
litigation history, TiVo’s accusations of infringement against QIP set-top boxes, TiVo’s requests
for detailed Motorola technical information related to the accused QIP set-top boxes and
Verizon’s indemnification demand, an actual controversy exists between Plaintiffs and TiVo
regarding questions of infringement and validity of the TiVo Patents.
8
FIRST CAUSE OF ACTION
(TiVo’s Infringement of the ’714 Patent)
27. Plaintiffs incorporate by reference the allegations in the preceding paragraphs.
28. General Instrument is the sole holder of the entire right, title and interest in the
’714 Patent.
29. TiVo has infringed and continues to infringe, directly and indirectly by
contributing to and inducing the infringement of others, one or more claims of the ’714 Patent by
making, using, importing, selling, and/or offering to sell DVR devices, DVR software, DVR
accessories and related services that are covered by the claims of the ’714 Patent.
30. On information and belief, TiVo has been on notice of and aware of the ’714
Patent since at least October 2005.
31. On information and belief, TiVo has actively induced, and continues to actively
induce, the infringement of one or more claims of the ’714 patent by, among other things,
instructing its customers to operate the accused products in a manner that infringes the claims of
the ’714 patent. TiVo intends that its customers will use its DVR devices, DVR software and
DVR accessories in a manner that infringes the ’714 patent.
32. On information and belief, TiVo has contributorily infringed and continues to
contributorily infringe the ’714 patent by offering to sell and/or selling within the United States
and/or importing into the United States one or more components of a machine, manufacture, or
combination covered by the ’714 patent that constitute a material part of the invention, which is
not a staple article or commodity of commerce suitable for substantial noninfringing use. On
information and belief, TiVo knows that the component and/or apparatus is especially made or
especially adapted for use in infringing the ’714 patent.
9
Patent since at least October 2005 and has nevertheless continued to infringe, despite an
objectively high likelihood that its actions constitute infringement of the ’714 patent.
Accordingly, TiVo’s infringement has been and continues to be willful.
34. As a result of TiVo’s infringement of the ’714 Patent, General Instrument is
suffering irreparable harm for which it has no adequate remedy at law. Unless enjoined by this
Court, this infringement will continue and will result in further irreparable harm to General
Instrument.
35. General Instrument is entitled to recover damages from TiVo not less than a
reasonable royalty adequate to compensate for the infringement.
SECOND CAUSE OF ACTION
’948 Patent.
Patent since at least October 2005.
10
Patent since at least October 2005 and has nevertheless continued to infringe, despite an
objectively high likelihood that its actions constitute infringement of the ’948 patent.
Accordingly, TiVo’s infringement has been and continues to be willful.
43. As a result of infringement of the ’948 Patent, General Instrument is suffering
irreparable harm for which General Instrument has no adequate remedy at law. Unless enjoined
by this Court, this infringement will continue and will result in further irreparable harm to
General Instrument.
THIRD CAUSE OF ACTION
11
’708 Patent.
Patent.
Patent and has nevertheless continued to infringe, despite an objectively high likelihood that its
12
actions constitute infringement of the ’708 patent. Accordingly, TiVo’s infringement has been
and continues to be willful.
52. As a result of infringement of the ’708 Patent, General Instrument is suffering
irreparable harm for which General Instrument has no adequate remedy at law. Unless enjoined
by this Court, this infringement will continue and will result in further irreparable harm to
General Instrument.
FOURTH CAUSE OF ACTION
(Invalidity of the ’389 Patent)
55. Claims 31 and 61 of the ’389 Patent are invalid for failure to meet the
requirements of patentability under 35 U.S.C. §§ 102, 103 and/or 112.
56. As a result of the acts described in the foregoing paragraphs, there exists a
substantial and actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202, between
Plaintiffs and TiVo of sufficient immediacy and reality to warrant the issuance of a declaratory
judgment.
57. A judicial declaration is necessary and appropriate so that Plaintiffs may ascertain
their rights regarding claims 31 and 61 of the ’389 Patent.
FIFTH CAUSE OF ACTION
(Invalidity of the ’465 Patent)
13
59. The claims of the ’465 Patent are invalid for failure to meet the requirements of
patentability under 35 U.S.C. §§ 102, 103 and/or 112.
judgment.
their rights regarding the ’465 Patent.
SIXTH CAUSE OF ACTION
(Noninfringement of the ’389 Patent)
63. The QIP set-top boxes do not infringe directly, indirectly, or otherwise, either
literally or equivalently, claim 31 or 61 of the ’389 Patent.
judgment.
their rights regarding claims 31 and 61 of the ’389 Patent.
SEVENTH CAUSE OF ACTION
(Noninfringement of the ’465 Patent)
14
67. The QIP set-top boxes do not infringe, directly, indirectly, or otherwise, either
literally or equivalently, any valid claim of the ’465 Patent.
judgment.
their rights regarding the ’465 Patent.
DEMAND FOR JURY TRIAL
Plaintiffs demand trial by jury of all issues triable of right by a jury.
PRAYER FOR RELIEF
WHEREFORE, Plaintiffs ask this Court to enter judgment in its favor against TiVo and
grant the following relief:
A. Judgment that the ’714, ’948 and ’708 Patents are each valid, enforceable, and
infringed by TiVo;
B. A preliminary and permanent injunction enjoining TiVo, its officers, agents,
servants, employees, subsidiaries and affiliated companies, and those persons acting in active
concert or participation therewith, from engaging in the aforesaid unlawful acts of patent
infringement;
C. An award of damages arising out of each of TiVo’s acts of patent infringement,
together with pre-judgment and post-judgment interest;
D. Judgment that the damages be trebled in accordance with 35 U.S.C. § 284;
E. Judgment declaring that claims 31 and 61 of the ’389 Patent are invalid under 35
15
U.S.C. §§ 102, 103 and/or 112;
F. Judgment declaring that each of the claims of the ’465 Patent are invalid under 35
U.S.C. §§ 102, 103 and/or 112;
G. Judgment declaring that neither claim 31 nor claim 61 of the ’389 Patent has been
infringed by Plaintiffs, directly or indirectly, literally or equivalently, by the making, using,
selling, offering to sell, and/or importing of QIP set-top boxes;
H. Judgment declaring that no valid claim of the ’465 Patent has been infringed by
Plaintiffs, directly or indirectly, literally or equivalently, by the making, using, selling, offering
to sell, and/or importing of QIP set-top boxes;
I. Declaring this case exceptional and awarding Plaintiffs their attorneys’ fees and
costs incurred in this action, pursuant to 35 U.S.C. § 285; and
J. Granting Plaintiffs such other, further and different relief as the Court may deem
just and proper.
Dated: February 25, 2011 By: /s/ Brian Erickson

John Allcock (pro hac vice app. pending)
john.allcock@dlapiper.com
Sean Cunningham (pro hac vice app. pending)
sean.cunningham@dlapiper.com
Erin Gibson (pro hac vice app. pending)
erin.gibson@dlapiper.com
DLA Piper LLP (US)
401 B Street, Suite 1700
San Diego, CA 92101
Telephone: 619-699-2700
Facsimile: 619-699-2701
Wayne Harding
Texas Bar No. 08978500
wayne.harding@dlapiper.com
Brian Erickson
brian.erickson@dlapiper.com
John Guaragna
16

john.guaragna@dlapiper.com
DLA Piper LLP (US)
401 Congress Avenue, Suite 2500
Austin, TX 78701-3799
Telephone: 512-457-7000
Facsimile: 512-457-7001
Attorneys for Plaintiffs

MOTOROLA MOBILITY, INC. and
17
Case 5:11-cv-00053-DF -CMC Document 1-1
2JS 44 (Rev. 12/07) CIVIL COVER SHEETFiled 02/25/11 Page 1 of 2
The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as provided
by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the purpose of initiating
the civil docket sheet. (SEE INSTRUCTIONS ON THE REVERSE OF THE FORM.)
I. (a) PLAINTIFFS DEFENDANTS

MOTOROLA MOBILITY, INC. and TIVO INC.
(b) County of Residence of First Listed Plaintiff Lake County, IL County of Residence of First Listed Defendant
(EXCEPT IN U.S. PLAINTIFF CASES) (IN U.S. PLAINTIFF CASES ONLY)
NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE
LAND INVOLVED.
(c) Attorney’s (Firm Name, Address, and Telephone Number) Attorneys (If Known)
Brian K. Erickson, DLA Piper LLP (US), 401 Congress, Suite 2500, Austin,
Texas 78701; (512) 457-7000
II. BASIS OF JURISDICTION (Place an “X” in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES(Place an “X” in One Box for Plaintiff
(For Diversity Cases Only) and One Box for Defendant)
u 1 U.S. Government u 3 Federal Question PTF DEF PTF DEF
Plaintiff (U.S. Government Not a Party) Citizen of This State u 1 u 1 Incorporated or Principal Place u 4 u 4
of Business In This State
u 2 U.S. Government u 4 Diversity Citizen of Another State u 2 u 2 Incorporated and Principal Place u 5 u 5
Defendant of Business In Another State
(Indicate Citizenship of Parties in Item III)
Citizen or Subject of a u 3 u 3 Foreign Nation u 6 u 6
Foreign Country
IV. NATURE OF SUIT (Place an “X” in One Box Only)
CONTRACT TORTS FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTES
u 110 Insurance PERSONAL INJURY PERSONAL INJURY u 610 Agriculture u 422 Appeal 28 USC 158 u 400 State Reapportionment
u 120 Marine u 310 Airplane u 362 Personal Injury - u 620 Other Food & Drug u 423 Withdrawal u 410 Antitrust
u 130 Miller Act u 315 Airplane Product Med. Malpractice u 625 Drug Related Seizure 28 USC 157 u 430 Banks and Banking
u 140 Negotiable Instrument Liability u 365 Personal Injury - of Property 21 USC 881 u 450 Commerce
u 150 Recovery of Overpayment u 320 Assault, Libel & Product Liability u 630 Liquor Laws PROPERTY RIGHTS u 460 Deportation
& Enforcement of Judgment Slander u 368 Asbestos Personal u 640 R.R. & Truck u 820 Copyrights u 470 Racketeer Influenced and
u 151 Medicare Act u 330 Federal Employers’ Injury Product u 650 Airline Regs. u 830 Patent Corrupt Organizations
u 152 Recovery of Defaulted Liability Liability u 660 Occupational u 840 Trademark u 480 Consumer Credit
Student Loans u 340 Marine PERSONAL PROPERTY Safety/Health u 490 Cable/Sat TV
(Excl. Veterans) u 345 Marine Product u 370 Other Fraud u 690 Other u 810 Selective Service
u 153 Recovery of Overpayment Liability u 371 Truth in Lending LABOR SOCIAL SECURITY u 850 Securities/Commodities/
of Veteran’s Benefits u 350 Motor Vehicle u 380 Other Personal u 710 Fair Labor Standards u 861 HIA (1395ff) Exchange
u 160 Stockholders’ Suits u 355 Motor Vehicle Property Damage Act u 862 Black Lung (923) u 875 Customer Challenge
u 190 Other Contract Product Liability u 385 Property Damage u 720 Labor/Mgmt. Relations u 863 DIWC/DIWW (405(g)) 12 USC 3410
u 195 Contract Product Liability u 360 Other Personal Product Liability u 730 Labor/Mgmt.Reporting u 864 SSID Title XVI u 890 Other Statutory Actions
u 196 Franchise Injury & Disclosure Act u 865 RSI (405(g)) u 891 Agricultural Acts
REAL PROPERTY CIVIL RIGHTS PRISONER PETITIONS u 740 Railway Labor Act FEDERAL TAX SUITS u 892 Economic Stabilization Act
u 210 Land Condemnation u 441 Voting u 510 Motions to Vacate u 790 Other Labor Litigation u 870 Taxes (U.S. Plaintiff u 893 Environmental Matters
u 220 Foreclosure u 442 Employment Sentence u 791 Empl. Ret. Inc. or Defendant) u 894 Energy Allocation Act
u 230 Rent Lease & Ejectment u 443 Housing/ Habeas Corpus: Security Act u 871 IRS—Third Party u 895 Freedom of Information
u 240 Torts to Land Accommodations u 530 General 26 USC 7609 Act
u 245 Tort Product Liability u 444 Welfare u 535 Death Penalty IMMIGRATION u 900Appeal of Fee Determination
u 290 All Other Real Property u 445 Amer. w/Disabilities - u 540 Mandamus & Other u 462 Naturalization Application Under Equal Access
Employment u 550 Civil Rights u 463 Habeas Corpus - to Justice
u 446 Amer. w/Disabilities - u 555 Prison Condition Alien Detainee u 950 Constitutionality of
Other u 465 Other Immigration State Statutes
u 440 Other Civil Rights Actions
V. ORIGIN (Place an “X” in One Box Only) Appeal to District

u 1 Original u 2 Removed from u 3 Remanded from u 4 Reinstated or u 5 Transferred from
another district u 6 Multidistrict u 7 Judge from
Magistrate
Proceeding State Court Appellate Court Reopened Litigation
(specify) Judgment
Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
35 U.S.C. Sec. 1 and 28 U.S.C. Secs. 2201 and 2202
VI. CAUSE OF ACTION Brief description of cause:
Complaint for Patent Infringement and Declaratory Judgment
VII. REQUESTED IN u CHECK IF THIS IS A CLASS ACTION DEMAND $ CHECK YES only if demanded in complaint:
COMPLAINT: UNDER F.R.C.P. 23 JURY DEMAND: ✔
u Yes u No
VIII. RELATED CASE(S)
(See instructions):
IF ANY JUDGE See attached DOCKET NUMBER
DATE SIGNATURE OF ATTORNEY OF RECORD

02/25/2011 /s/ Brian K. Erickson
FOR OFFICE USE ONLY
RECEIPT # AMOUNT APPLYING IFP JUDGE MAG. JUDGE

Case 5:11-cv-00053-DF -CMC Document 1-1 Filed 02/25/11 Page 2 of 2
Related Cases:
TiVo v. Verizon Communications, Inc., et al, Case No. 2:09-cv-257- DF; Judge David Folsom
TiVo v. AT&T Inc., Case No. 2:09-cv-00259-DF; Judge David Folsom
Dish Network Corp., et al v. TiVo, Case No. 2:09-cv-00171; Judge David Folsom
TiVo v. EchoStar Communications, et al, Case No. 2:04-cv-00001; Judge David Folsom
EchoStar Communications v. TiVo Inc., et al, Case No. 5:05-cv-00081; Judge David Folsom

Motorola v. TiVo

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Case 5:11-cv-00053-DF -CMC Document 1 Filed 02/25/11 Page 1 of 17

IN THE UNITED STATES DISTRICT COURT

MOTOROLA MOBILITY, INC. and

TIVO INC., JURY TRIAL DEMANDED

COMPLAINT FOR PATENT INFRINGEMENT

Plaintiffs Motorola Mobility, Inc. (“Motorola Mobility”) and General Instrument

their Complaint allege as follows:

1. General Instrument, a subsidiary of Motorola Mobility, owns multiple patents that

Instrument supply the accused QIP set-top boxes to Verizon.

Libertyville, Illinois 60048.

Pennsylvania 19044. General Instrument is a wholly-owned subsidiary of Motorola Mobility.

7. On information and belief, Defendant TiVo is a corporation organized and

Suite 620, Austin, Texas 78701.

JURISDICTION AND VENUE

§§ 2201 and 2202.

A. The Imedia Patents

Patent was filed on November 20, 1995.

claims priority to application number 08/425,896, filed on April 21, 1995.

B. The TiVo Patents

alleged that it owns the ’389 Patent.

Exhibit E. TiVo has alleged that it owns the ’465 Patent.

C. General Instrument Is a Pioneer in Digital Television.

15. General Instrument is a pioneer in the field of communication systems and is

licensing organization determined were essential to the MPEG-2 compression standard. On

transmitted over satellite and cable channels.

Instrument is now a wholly-owned subsidiary of Motorola Mobility. The combined company

telephone services over wired and wireless networks.

D. The Imedia Engineers Invented the DVR in the Mid 1990s.

company in a spare room in Dr. Krause’s home in San Diego, California.

use content manager that allowed selective capturing of television programs.

and title to the Imedia patents.

the scope of one or more claims of the ’389 Patent.

instrumentalities in the Verizon Lawsuit.

TiVo regarding producing that source code for inspection.

26. As a result of TiVo’s accusations of infringement and the Verizon Lawsuit,

regarding questions of infringement and validity of the TiVo Patents.

FIRST CAUSE OF ACTION

(TiVo’s Infringement of the ’714 Patent)

27. Plaintiffs incorporate by reference the allegations in the preceding paragraphs.

Patent since at least October 2005.

DVR accessories in a manner that infringes the ’714 patent.

especially adapted for use in infringing the ’714 patent.

Accordingly, TiVo’s infringement has been and continues to be willful.

34. As a result of TiVo’s infringement of the ’714 Patent, General Instrument is

reasonable royalty adequate to compensate for the infringement.

SECOND CAUSE OF ACTION

(TiVo’s Infringement of the ’948 Patent)

36. Plaintiffs incorporate by reference the allegations in the preceding paragraphs.

Patent since at least October 2005.

DVR accessories in a manner that infringes the ’948 patent.

especially adapted for use in infringing the ’948 patent.

Accordingly, TiVo’s infringement has been and continues to be willful.

43. As a result of infringement of the ’948 Patent, General Instrument is suffering

reasonable royalty adequate to compensate for the infringement.

THIRD CAUSE OF ACTION

(TiVo’s Infringement of the ’708 Patent)

45. Plaintiffs incorporate by reference the allegations in the preceding paragraphs.

DVR accessories in a manner that infringes the ’708 patent.

especially adapted for use in infringing the ’708 patent.

and continues to be willful.

52. As a result of infringement of the ’708 Patent, General Instrument is suffering

reasonable royalty adequate to compensate for the infringement.

FOURTH CAUSE OF ACTION