Case 3:16-cv-02628 Document 1 Filed 05/16/16 Page 1 of 8 1 2 3 4 5 6 7 BIJAL V. VAKIL (CA State Bar No. 192878) bvakil@whitecase.com ALLEN WANG (CA State Bar No. 278953) awang@whitecase.com WHITE & CASE LLP 3000 El Camino Real Five Palo Alto Square, 9th Floor Palo Alto, CA 94306-2109 Telephone: (650) 213-0300 Facsimile: (650) 213-8158 Attorneys for Plaintiff Google Inc. 8 UNITED STATES DISTRICT COURT 9 NORTHERN DISTRICT OF CALIFORNIA 10 11 SILICON VALLEY ATTORNEYS AT LAW W HITE & C ASE LLP 12 13 GOOGLE INC., Plaintiff, 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Case No. 3:16-cv-02628 COMPLAINT FOR DECLARATORY JUDGMENT v. DEMAND FOR JURY TRIAL CREATIVE LABS, INC. and CREATIVE TECHNOLOGY LTD., Defendants. Case 3:16-cv-02628 Document 1 Filed 05/16/16 Page 2 of 8 1 2 3 and Creative Technology Ltd. (collectively, “Creative”), alleges: 4 NATURE OF THE ACTION 5 SILICON VALLEY This is an action for declaratory judgment of non-infringement of United States Patent No. 6,928,433 (the “’433 patent”) (attached as Exhibit A) against Creative, pursuant to the 7 Declaratory Judgment Act, 28 U.S.C. §§ 2201-02, and the patent laws of the United States, 8 35 U.S.C. § 100 et seq., and for other relief the Court deems just and proper. 2. Google requests this relief because Creative has filed an ITC case claiming that 10 Google’s customers infringe the ’433 patent based on allegations they designed, developed, 11 manufactured, tested, used, offered for sale, sold, and/or imported “portable electronic devices” 12 that contain the Google Play Music application developed by Google. 13 ATTORNEYS AT LAW 1. 6 9 W HITE & C ASE LLP Plaintiff Google Inc. (“Google”), for its complaint against Defendants Creative Labs, Inc. 3. Google also requests this relief because Creative Technology Ltd. has concurrently 14 filed seven district court lawsuits against Google’s customers asserting the same ’433 patent 15 based on matching allegations that they designed, developed, manufactured, tested, used, offered 16 for sale, sold, and/or imported “portable electronic devices” that contain the Google Play Music 17 application developed by Google. 18 4. An actual and justiciable controversy therefore exists between Google and 19 Creative concerning the scope of the asserted ’433 patent under 28 U.S.C. §§ 2201-02 as to 20 whether the Google Play Music application is infringing or has infringed the ’433 patent. THE PARTIES 21 22 5. Plaintiff Google is a Delaware corporation, with a principal place of business 23 located at 1600 Amphitheatre Parkway, Mountain View, CA 94043. Google’s mission is to 24 organize the world’s information and make it universally accessible and useful. As part of that 25 mission, Google produces Android, an open-source mobile platform that has been adopted by 26 original equipment manufacturers (“OEMs” or “customers”) worldwide. Google also produces a 27 number of services and applications for use on mobile platforms (sometimes referred to as 28 “apps”), including the Google Play Music app. 6. Upon information and belief, Defendant Creative Technology Ltd. is a company -1COMPLAINT FOR DECLARATORY JUDGMENT CASE NO. 3:16-cv-02628 Case 3:16-cv-02628 Document 1 Filed 05/16/16 Page 3 of 8 1 2 organized under the laws of Singapore, with a principal place of business located at 31 3 International Business Park, #03-01 Creative Resource, Singapore 609921. 4 7. Upon information and belief, Defendant Creative Labs, Inc. is a wholly-owned 5 subsidiary of Creative Technology Ltd., incorporated under the laws of California in 1988, with a 6 principal place of business located at 1901 McCarthy Blvd., Milpitas, CA 95035. Upon 7 information and belief, Creative Labs, Inc.’s agent for service of process is Russell N. Swerdon, 8 Director of Intellectual Property, located at 1901 McCarthy Blvd., Milpitas, CA 95035. JURISDICTION AND VENUE 9 SILICON VALLEY ATTORNEYS AT LAW W HITE & C ASE LLP 10 8. Google files this complaint against Creative Technology and Creative Labs 11 pursuant to the patent laws of the United States, Title 35 of the United States Code, with a 12 specific remedy sought based upon the laws authorizing actions for declaratory judgment in the 13 federal courts of the United States, 28 U.S.C. §§ 2201 and 2202, and under the patent laws of the 14 United States, 35 U.S.C. §§ 1-390. 15 16 17 9. This Court has subject matter jurisdiction over this action, which arises under the patent laws of the United States, pursuant to 28 U.S.C. §§ 1331, 1338(a), and 2201(a). 10. This Court has personal jurisdiction over Creative Technology Ltd., which has 18 maintained purposeful, continuous and systematic business contacts with California. Creative 19 Technology Ltd. has an “extensive, broad-based, multi-tiered channel distribution network” for 20 sales and distribution, including a wholly owned “regional business unit” in the United States 21 located in Milpitas, California. (http://www.creative.com/corporate/about.) Creative’s only other 22 U.S. presence is also in this District in Scotts Valley, California. 23 (http://www.creative.com/corporate/companies/#americas.) On information and belief, Creative 24 Technology Ltd. markets its products in the United States through subsidiary Creative Labs, Inc., 25 a California corporation in Milpitas, California. Moreover, Creative Technology Ltd. has taken 26 specific actions in this state, and in the Northern District of California, thereby purposefully 27 availing itself of the privileges and protections of this District, including: 28 • In 1988: incorporating wholly owned U.S. subsidiary Creative Labs, Inc. under the laws of California, with a principal place of business in Milpitas, California; -2COMPLAINT FOR DECLARATORY JUDGMENT CASE NO. 3:16-cv-02628 Case 3:16-cv-02628 Document 1 Filed 05/16/16 Page 4 of 8 1 • 2 3 against Media Vision, Inc., Case No. 3:1992-cv-01965, followed by filing at least 4 27 other suits in this District including three patent suits: (1) in 1998, against 5 Aureal Semiconductor, Case No. 3:1998-cv-00770; (2) in 2002, against Audio 6 MPEG, Inc., Case No. 5:2002-cv-05369; and (3) in 2006, asserting the same ’433 7 patent at issue in this case against Apple Computer, Inc., Case No. 4:06-cv-03218; • 8 SILICON VALLEY ATTORNEYS AT LAW In 1999 and 2000: having a team of engineers in Scotts Valley, California, that 9 worked on the Creative NOMAD Jukebox project allegedly using the methods 10 claimed by the ’433 patent, including listed inventors Ron Goodman of Santa 11 Cruz, CA and Howard N. Egan of Capitola, CA (Exhibit B at ¶¶ 35-36); • 12 W HITE & C ASE LLP In 1992: availing itself of the jurisdiction of this Court by filing a copyright suit In 1999 and 2000: utilizing the protections of California law in a forum provision 13 of the Creative End-User Software License Agreement for the NOMAD Jukebox 14 (see, e.g., Exhibits C and D); • 15 In 2004: having Creative Labs, Inc.’s in-house attorney Russell N. Swerdon (also 16 Creative Labs, Inc.’s agent for service), based in Milpitas, California, participate in 17 prosecution of the application that led to issuance of the ’433 patent; • 18 In 2006: licensing the ’433 patent to Apple Computer, Inc., in this District, with 19 the potential of paying out to Apple a portion of Creative’s income from further 20 licensing activities (http://www.creative.com/corporate/pressroom/?id=12585); 21 and • 22 In 2016: in the ITC complaint, identifying Apple, Inc., a California company 23 headquartered in Cupertino, California, as allegedly establishing a domestic 24 industry in the United States relating to the ’433 patent (Exhibit B at ¶ 131). 25 11. This Court has personal jurisdiction over Defendant Creative Labs, Inc., whose 26 principal place of business is located in this District. Creative Labs, Inc. is incorporated in 27 California, has maintained continuous and systematic contacts with the State of California, and 28 has taken specific actions in this state and in the Northern District of California, thereby purposefully availing itself of the privileges and protections of this District, including: -3COMPLAINT FOR DECLARATORY JUDGMENT CASE NO. 3:16-cv-02628 Case 3:16-cv-02628 Document 1 Filed 05/16/16 Page 5 of 8 1 • 2 3 principal place of business at 1901 McCarthy Blvd., Milpitas, CA 95035 (Exhibit 4 E); • 5 against Cardinal Tech Inc., Case No. 3:1994-cv-00047, followed by filing 19 other 7 suits in this District, including one patent suit: in 2002, against Audio MPEG, Inc., 8 Case No. 5:2002-cv-05369; • SILICON VALLEY In 1999 and 2000: having a team of engineers in Scotts Valley, California, that 10 worked on the Creative NOMAD Jukebox project allegedly using the methods 11 claimed by the ’433 patent, including listed inventors Ron Goodman of Santa 12 Cruz, CA and Howard N. Egan of Capitola, CA (Exhibit B at ¶¶ 35-36); • 13 ATTORNEYS AT LAW In 1994: availing itself of the jurisdiction of this Court by filing a trademark suit 6 9 W HITE & C ASE LLP In 1988: incorporating under the laws of California with a service address and In 1999 and 2000: consenting to California law in a forum provision of the 14 Creative End-User Software License Agreement for the NOMAD Jukebox (see, 15 e.g., Exhibits C and D); • 16 In 2004: having Creative Labs, Inc.’s in-house attorney Russell N. Swerdon (also 17 Creative Labs, Inc.’s agent for service), based in Milpitas, California, participate in 18 prosecution of the application that led to issuance of the ’433 patent; • 19 In 2008: previously accepting that this District has personal jurisdiction over it in a patent suit brought by SMDK Corp., Case No. 4:10-cv-00116; and 20 • 21 In 2016: in the ITC complaint, identifying Apple, Inc., a California company 22 headquartered in Cupertino, California, as allegedly establishing a domestic 23 industry in the United States relating to the ’433 patent (Exhibit B at ¶ 131). 24 12. Venue in this District is proper under 28 U.S.C. §§ 1391 (b) and (c) because a 25 substantial part of the events giving rise to Google’s claim occurred in this District, and because 26 Creative Technology Ltd. and Creative Labs, Inc. are subject to general and/or personal 27 jurisdiction here. INTRADISTRICT ASSIGNMENT 28 13. Pursuant to Civil L.R. 3-2(c) and 3-5(b), this is an Intellectual Property Action -4COMPLAINT FOR DECLARATORY JUDGMENT CASE NO. 3:16-cv-02628 Case 3:16-cv-02628 Document 1 Filed 05/16/16 Page 6 of 8 1 2 subject to assignment on a district-wide basis. FACTUAL BACKGROUND 3 4 SILICON VALLEY ATTORNEYS AT LAW Google has been headquartered in this District since its founding. In 2004, Google 5 moved to its current headquarters at 1600 Amphitheatre Parkway, Mountain View, CA 94043. 6 The majority of the Google engineers who work on the accused Google Play Music app are 7 located at Google’s headquarters in Mountain View, California. The documentation related to the 8 accused Google Play Music app is maintained at Google’s Mountain View headquarters as well. 9 W HITE & C ASE LLP 14. 15. On information and belief, the patent application leading to the ’433 patent was 10 filed on January 5, 2001, originally naming Ron Goodman and Howard N. Egan as inventors 11 allegedly based on work they conducted in this District at the Creative Labs facility in Scotts 12 Valley, California (Exhibit B at ¶¶ 35-36). Both assigned their rights in the application to 13 Creative Technology Ltd. The ’433 patent issued on August 9, 2005. Later, upon petition, the 14 patent office issued a certificate on May 16, 2006 adding David Bristow as a third inventor. Mr. 15 Bristow also assigned his rights in the ’433 patent to Creative Technology Ltd. 16 16. On information and belief, Mr. Goodman is based in Santa Cruz, California; 17 Mr. Egan is based in Capitola, California; and Mr. Bristow is based in Bainbridge Island, 18 Washington. 19 17. On information and belief, in the 1999-2000 time frame, Creative engineers in 20 Scotts Valley, California worked on an interface for navigation on portable electronic devices that 21 was used in Creative’s NOMAD Jukebox. Creative announced the anticipated release of the 22 NOMAD Jukebox and presented prototypes at the Consumer Electronics Show in January 2000. 23 The NOMAD Jukebox allegedly used the methods of the ’433 patent (Exhibit B at ¶¶ 35-36). GOOGLE DOES NOT INFRINGE THE ’433 PATENT 24 25 18. 26 of the ’433 patent. 27 19. 28 No version of the Google Play Music app directly or indirectly infringes any claim No third party infringes any claim of the ’433 patent by using the Google Play Music app in other devices. Google has not caused, directed, requested, or facilitated any such infringement, and has not had any specific intent to do so. The Google Play Music app is not -5COMPLAINT FOR DECLARATORY JUDGMENT CASE NO. 3:16-cv-02628 Case 3:16-cv-02628 Document 1 Filed 05/16/16 Page 7 of 8 1 2 designed for use in any combination that would infringe any claim of the ’433 patent. Rather, the 3 Google Play Music app has substantial uses that do not infringe any claim of the ’433 patent. 4 FIRST CLAIM 5 DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’433 PATENT 6 7 8 9 SILICON VALLEY ATTORNEYS AT LAW W HITE & C ASE LLP 10 20. Google hereby restates and incorporates by reference the allegations set forth in paragraphs 1 through 20 of this Complaint as if fully set forth herein. 21. Creative claims to own all rights, title, and interest in the ’433 patent by assignment. 22. On March 24, 2016, Creative brought complaints against Google’s customers 11 including ZTE, Sony, Samsung, LG, Lenovo, HTC, and Blackberry at the International Trade 12 Commission and in the Eastern District of Texas. Certain Portable Electronic Devices and 13 Components Thereof, Inv. No. 337-TA-3130; Creative Technology Ltd. v. ZTE Corp., Case No. 14 2:16-cv-00262; Creative Technology Ltd. v. Sony Corp., Case No. 2:16-cv-00263; Creative 15 Technology Ltd. v. Samsung Elecs. Co., Case No. 2:16-cv-00264; Creative Technology Ltd. v. LG 16 Elecs., Inc., Case No. 2:16-cv-00265; Creative Technology Ltd. v. Lenovo Grp. Ltd., Case No. 17 2:16-cv-00266; Creative Technology Ltd. v. HTC Corp., Case No. 2:16-cv-00267; Creative 18 Technology Ltd. v. BlackBerry Ltd., Case No. 2:16-cv-00268. In these lawsuits, Creative 19 specifically accuses, among other things, “portable electronic devices” containing the Google 20 Play Music app. 21 23. An actual and justiciable controversy therefore exists between Google and 22 Creative regarding whether the Google Play Music app infringes or has infringed the ’433 patent. 23 A judicial declaration is necessary to determine the respective rights of the parties regarding the 24 ’433 patent. Google seeks a judgment declaring that the Google Play Music app does not directly 25 or indirectly infringe any claim of the ’433 patent. 26 PRAYER FOR RELIEF 27 WHEREFORE, Google prays for judgment as follows: 28 A. Declaring that the Google Play Music app does not infringe and has not infringed the ’433 patent; -6COMPLAINT FOR DECLARATORY JUDGMENT CASE NO. 3:16-cv-02628 Case 3:16-cv-02628 Document 1 Filed 05/16/16 Page 8 of 8 1 2 B. 3 Google’s claim; 4 C. 5 Declaring that judgment be entered in favor of Google and against Creative on Declaring that Creative is enjoined from claiming that the Google Play Music app infringes the ’433 patent; 6 D. Finding that this is an exceptional case under 35 U.S.C. § 285; 7 E. Awarding Google its costs and attorneys’ fees in connection with this action; and 8 F. Awarding Google such other and further relief as the Court deems just and proper. JURY DEMAND 9 Google demands a jury trial on all issues and claims so triable. 10 11 12 SILICON VALLEY 14 ATTORNEYS AT LAW W HITE & C ASE LLP 13 15 16 17 18 19 20 Dated: May 16, 2016 Respectfully submitted, By: /s/ Bijal V. Vakil Bijal V. Vakil BIJAL V. VAKIL (CA State Bar No. 192878) bvakil@whitecase.com ALLEN WANG (CA State Bar No. 278953) awang@whitecase.com WHITE & CASE LLP 3000 El Camino Real Five Palo Alto Square, 9th Floor Palo Alto, CA 94306-2109 Telephone: (650) 213-0300 Facsimile: (650) 213-8158 Attorneys for Plaintiff Google Inc. 21 22 23 24 25 26 27 28 -7COMPLAINT FOR DECLARATORY JUDGMENT CASE NO. 3:16-cv-02628