Case 3:16-cv-06180 Document 1 Filed 10/26/16 Page 1 of 18 1 Kathryn D. Zalewski (SBN 263119) Kathryn.Zalewski@wilmerhale.com 2 WILMER CUTLER PICKERING 3 HALE AND DORR LLP 950 Page Mill Road 4 Palo Alto, California 94304 Telephone: (650) 858-6000 5 Facsimile: (650) 858-6100 6 Natalie Hanlon Leh (pro hac vice pending) Natalie.HanlonLeh@wilmerhale.com 7 Mary (Mindy) V. Sooter (pro hac vice pending) Mindy.Sooter@wilmerhale.com 8 WILMER CUTLER PICKERING 9 HALE AND DORR LLP 1225 Seventeenth Street, Suite 2600 10 Denver, Colorado 80202 (720) 274-3135 11 Telephone: Facsimile: (720) 274-3133 12 Attorneys for Plaintiff 13 Comcast Cable Communications, LLC 14 UNITED STATES DISTRICT COURT 15 NORTHERN DISTRICT OF CALIFORNIA 16 17 18 COMCAST CABLE COMMUNICATIONS, LLC, Plaintiff, 19 20 21 v. OPENTV, INC., and NAGRAVISION SA, Case No. 16-cv-6180 COMPLAINT FOR DECLARATORY JUDGMENT OF PATENT NONINFRINGEMENT DEMAND FOR JURY TRIAL Defendants. 22 23 24 25 26 27 28 Case No. 16-cv-6180 COMPLAINT FOR DECLARATORY JUDGMENT Case 3:16-cv-06180 Document 1 Filed 10/26/16 Page 2 of 18 1 2 Plaintiff Comcast Cable Communications, LLC (“Plaintiff” or “Comcast”) alleges for its Complaint against Defendants OpenTV, Inc., and Nagravision SA (“Defendants”) as follows: NATURE OF THE ACTION 3 4 1. This action arises under 28 U.S.C. §§ 1331, 1338(a), 2201, and 2202. 5 2. Comcast brings this action for a declaration that it does not infringe any claim of 6 Defendants’ U.S. Patent Nos. 7,900,229 (the “’229 Patent”); 6,895,595 (the “’595 Patent”); 7 6,725,461 (the “’461 Patent”); 5,907,322 (the “’322 Patent”); 6,985,586 (the “’586 Patent”); 8 6,345,389 (the “’389 Patent”); 6,799,328 (the “’328 Patent”); 7,028,327 (the “’327 Patent”); 9 7,243,139 (the “’139 Patent”); and 6,530,082 (the “’082 Patent”) (collectively “the Asserted 10 Patents”). PARTIES 11 12 3. Comcast Cable Communications, LLC is a Limited Liability Company organized 13 and existing under the laws of the State of Delaware with its principal place of business in 14 Philadelphia, Pennsylvania. Comcast provides video, high-speed Internet, and voice services to 15 residential and business customers under the XFINITY brand, including in this judicial district. 16 4. On information and belief, OpenTV, Inc. (“OpenTV”), is a Delaware corporation 17 with its principal place of business and headquarters at 275 Sacramento Street, San Francisco, 18 California. 19 5. On information and belief, Nagravision SA (“Nagravision”) is a Swiss 20 corporation with its headquarters and principal place of business in Cheseaux-sur-Lausanne, 21 Switzerland. Upon information and belief, Nagravision’s principal place of business in the 22 United States is in El Segundo, California. 23 6. On information and belief, OpenTV and Nagravision are subsidiaries of Kudelski 24 SA, a Swiss conglomerate. On information and belief, Nagra USA, Inc. (“Nagra USA”), is a 25 New York corporation with its principal place of business and headquarters in San Francisco, 26 California, and is also a subsidiary of Kudelski SA. Kudelski SA and its subsidiaries are referred 27 to as the “Kudelski Group.” 28 Case No. 16-cv-6180 -1- COMPLAINT FOR DECLARATORY JUDGMENT Case 3:16-cv-06180 Document 1 Filed 10/26/16 Page 3 of 18 1 7. The Kudelski Group has identified monetizing its intellectual property as one of 2 its priorities and has made repeated use of the courts of this district to attempt to enforce its 3 patents. JURISDICTION 4 5 6 7 8. This is an action for declaratory relief under the Patent Laws of the United States, 35 U.S.C. § 1 et seq. 9. This Court has personal jurisdiction because, on information and belief, 8 Defendants have, and have had, continuous and systematic contacts within the State of 9 California, including this district. On information and belief, the headquarters and principal 10 place of business of OpenTV is located in San Francisco, California and Nagravision’s principal 11 place of business in the United States is located in El Segundo, California. Further, on 12 information and belief, Defendants have purposefully directed business activities at this district 13 and residents of this district have used services and products offered or sold by Defendants. 14 10. For example, on information and belief, Defendants’ enforcement efforts have 15 included hiring counsel who reside and practice in this district (such as Ian Feinberg of Feinberg 16 Day Alberti & Thompson LLP, with respect to licensing negotiations between Time Warner 17 Cable, Inc., and Defendants; Robert F. McCauley from Finnegan, Henderson, who is counsel for 18 OpenTV, Nagravision, and another Kudelski subsidiary in OpenTV, Inc., Nagravision S.A. and 19 Nagra France S.A.S. v. Apple, Inc., N.D. Cal. Case No. 3:15-cv-02008, as well as for OpenTV 20 and Nagravision in OpenTV, Inc. and Nagravision S.A. v. Apple, Inc., N.D. Cal Case No. 3:14- 21 cv-01622; and John Edwards at Kirkland & Ellis, who was counsel of record for OpenTV in 22 OpenTV, Inc. v. Netflix, Inc., N.D. Cal. Case No. 3:14-cv-01525, and for both OpenTV and 23 another Kudelski subsidiary in OpenTV, Inc. and Nagra France SAS v. Netflix, Inc., N.D. Cal. 24 Case No. 3:14-cv-01723) for the express purpose of enforcing their patent rights. 25 11. This Court has federal question jurisdiction under 28 U.S.C. §§ 1331 and 1338(a) 26 because this is a civil action arising under the Patent Act. This Court has subject matter 27 jurisdiction over Comcast’s declaratory judgment claims pursuant to 28 U.S.C. §§ 2201 and 28 2202 because an immediate and substantial controversy exists between Comcast and Defendants Case No. 16-cv-6180 -2- COMPLAINT FOR DECLARATORY JUDGMENT Case 3:16-cv-06180 Document 1 Filed 10/26/16 Page 4 of 18 1 with respect to whether the Asserted Patents cover Comcast’s activities based on Defendants’ 2 communications with Comcast asserting the Asserted Patents and on Defendants’ pattern of 3 intellectual property assertion against others. 4 12. On December 19, 2012, OpenTV filed an action for patent infringement against 5 Netflix, Inc., in the United States District Court for the District of Delaware. OpenTV’s 6 complaint alleged willful infringement by Netflix of seven U.S. patents. In support of its willful 7 infringement allegation, OpenTV averred that it had notified Netflix of the OpenTV patent 8 portfolio as well as several specific patents that it asserted may be relevant to Netflix’s services. 9 10 11 13. On March 31, 2014, the District Court for the District of Delaware transferred OpenTV’s action against Netflix to this judicial district. 14. On April 9, 2014, OpenTV and Nagravision filed an action for patent 12 infringement against Apple Inc., in this district and alleged willful infringement of a number of 13 patents, including the ’229 Patent. OpenTV, Nagravision, and Nagra France S.A.S. filed a 14 second action against Apple Inc., in this district on May 5, 2015, alleging willful infringement of 15 five additional patents. 16 15. On October 30, 2015, OpenTV and Nagra France S.A.S. filed an action for patent 17 infringement against Verizon Communications, Inc., asserting willful infringement by Verizon 18 of a number of patents, including the ’139 Patent and the ’229 Patent. In support of its willful 19 infringement allegation, OpenTV and Nagra France averred that they had contacted Verizon 20 regarding a license to the patents and presented Verizon with details of its alleged infringement. 21 16. On January 21, 2016, Yahoo! Inc. filed an action for declaratory judgment of 22 noninfringement in this district against Kudelski SA and OpenTV, Inc., alleging that those 23 parties threatened litigation against Yahoo! and accused it of infringement of a number of 24 patents, including the ’327 patent also at issue here. 25 17. Similarly, on May 4, 2016, Time Warner Cable, Inc. (“TWC”), filed an action for 26 declaratory judgment of noninfringement against OpenTV, Inc., Nagravision SA, and Kudelski 27 SA, alleging the same pattern of threatened litigation against TWC, including accusations of 28 Case No. 16-cv-6180 -3- COMPLAINT FOR DECLARATORY JUDGMENT Case 3:16-cv-06180 Document 1 Filed 10/26/16 Page 5 of 18 1 infringement of nine patents, including the ’322, ’082, ’595, ’586, and ’139 patents also at issue 2 here. 3 18. On October 1, 2015, Clay Gaetje, who identified himself as Vice President for 4 Licensing at Nagra/Kudelski, e-mailed David Marcus, Comcast’s Chief Patent Counsel. Mr. 5 Gaetje used an “@nagra.com” email address and, on information and belief, Mr. Gaetje’s 6 LinkedIn profile identifies his current position as “VP – IP Licensing at Nagra.” 7 19. In his October 1, 2015, email, Mr. Gaetje asserted that “we have attempted to 8 contact you to start a dialogue about the licensing of Kudelski’s patent portfolio to certain 9 aspects of Comcast’s pay television and over-the-top video services.” Mr. Gaetje stated that 10 “there is another company with whom we will soon either conclude an agreement or litigate” and 11 that “if Comcast meaningfully engages with us beforehand, we can maintain Comcast’s status as 12 an early licensee. If not, then any deal we strike with Comcast will be largely dictated by the 13 other license or the litigation.” 14 20. On November 3, 2015, following a response from Mr. Marcus, Mr. Gaetje offered 15 to demonstrate the alleged “applicability of a representative set of our patents to Comcast’s pay 16 television service (particularly as implemented with respect to set-top boxes provided by Pace), 17 TV Everywhere services such as XFINITY TV Go, NBC Universal streaming services, and other 18 services,” including by providing “detailed claim charts.” The email also stated that Nagra 19 recently filed litigation against Verizon and enclosed that complaint. 20 21. On November 12, 2015, Mr. Gaetje emailed Mr. Marcus and attached a 21 presentation for Mr. Marcus’ review. The email asserted that the presentation included “15 22 representative patents, covering most aspects of Comcast’s video delivery and advertising 23 services” including “Xfinity, X1, i-Guide, Xfinity DVR, X1 voice control, Whole Home DVR, 24 Xfinity TV Anywhere, Xfinity.TV.Net, Spotlight, ad insertion, and others.” The email further 25 asserted that he could provide claim charts as discussions progressed but was unable to do so 26 without a non-disclosure agreement because of the litigation against Verizon. The email also 27 asserted that the materials “should be sufficient to allow [Comcast] to understand the general 28 basis for the assertion, and the breadth of the products and services implicated” and represented Case No. 16-cv-6180 -4- COMPLAINT FOR DECLARATORY JUDGMENT Case 3:16-cv-06180 Document 1 Filed 10/26/16 Page 6 of 18 1 that “[n]one of the patents are being asserted against equipment or services provided by either 2 Cisco or Arris.” 3 22. Mr. Gaetje copied Greg Lundell, another attorney at Nagra USA, on his 4 November 12, 2015, email. Upon information and belief, both Mr. Gaetje and Mr. Lundell are 5 registered with the California State Bar and have a working address at Nagra USA in Mountain 6 View, California. 7 23. A true and correct copy of the presentation attached to Mr. Gaetje’s November 8 12, 2015, email is attached as Exhibit 1 (the “November Presentation”). The November 9 Presentation included a section entitled “Exemplary Patents Relevant to Comcast” and 10 represented that “none of the patents in the following analysis are being asserted against 11 equipment or services provided by either Cisco or Arris to Comcast or for use in the Comcast 12 system.” The November Presentation then identified 15 patents, including nine of the ten 13 Asserted Patents, reproduced the text of specific claims, and purported to identify a “claim 14 mapping” for each patent against Comcast products or services. 15 24. The November Presentation also identified U.S. Patent Number 6,148,081 (the 16 “’081 Patent”), which was also asserted against Apple, Inc., as purportedly “mapping” to 17 Comcast’s products and services. However, on January 28, 2016, Judge Edward Davila in the 18 Northern District of California found claims of the ’081 Patent and another OpenTV patent 19 invalid for being directed to patent-ineligible subject matter under 35 U.S.C. § 101. 20 25. Comcast and Defendants scheduled an in-person meeting for January 28, 2016 21 (the “January 28 Meeting”). This meeting was attended by Comcast employees, including David 22 Marcus, and representatives for Defendants, including Mr. Gaetje and Mr. Lundell. At this 23 meeting, Defendants withdrew their assertion of the ’081 Patent in anticipation of the ruling from 24 Judge Davilla. 25 26. At the January 28 Meeting, Defendants presented their allegations relating to a 26 subset of the fifteen patents included in the November Presentation. U.S. Patent Nos. 7,069,579 27 (the “’579 Patent”), 7,661,117 (the “’117 Patent”), 6,018,768 (the “’768 Patent”), 6,006,256 (the 28 “’256 Patent”), and 7,669,212 (the “’212 Patent”), which had been in the November 12 Case No. 16-cv-6180 -5- COMPLAINT FOR DECLARATORY JUDGMENT Case 3:16-cv-06180 Document 1 Filed 10/26/16 Page 7 of 18 1 presentation, were not included in the January 28 presentation. Defendants indicated they did 2 not intend to discuss those patents further. 27. 3 Defendants also identified the ’082 Patent for the first time, and in the 4 Presentation provided the text of claim 27 of that patent, purported to identify a “claim mapping” 5 of that patent against “Comcast’s ability to make precise audience measurements,” and indicated 6 that a “representative claim chart” would be “illustrated.” 28. 7 8 Defendants have not withdrawn their allegations regarding Comcast’s purported infringement of the Asserted Patents. 29. 9 Further demonstrating Defendants’ pattern of litigation, OpenTV, Inc., filed suit 10 on March 16, 2016, against Hulu LLC in the Central District of California, Case No. 2:16-cv- 11 1785, which includes allegations of infringement by Hulu of the ’327 and ’139 patents at issue 12 here. 13 30. Because Defendants assert rights under the Asserted Patents based on identified 14 ongoing activities of Comcast, and Comcast contends that it has the right to engage in the 15 accused activities without a license, there is a substantial, justiciable controversy between 16 Comcast and Defendants sufficient to warrant a declaratory judgment of their respective rights 17 and duties. 18 31. In view of the correspondence and communication with Comcast—and in light of 19 Defendants’ pattern of conduct with other companies and its stated efforts to monetize its 20 intellectual property—a threat of actual and imminent injury exists to Comcast that can be 21 redressed by judicial relief, and that injury is sufficiently immediate and real to warrant the 22 issuance of a declaratory judgment. Such injury includes, among other things, uncertainty as to 23 whether the development, use, and sale of Comcast products and services will be free from 24 infringement claims based on the Asserted Patents. Absent a declaration of noninfringement, 25 Defendants will wrongfully assert the Asserted Patents against Comcast’s products and services, 26 and will thereby cause Comcast irreparable injury and damage. 27 28 Case No. 16-cv-6180 -6- COMPLAINT FOR DECLARATORY JUDGMENT Case 3:16-cv-06180 Document 1 Filed 10/26/16 Page 8 of 18 VENUE AND INTRADISTRICT ASSIGNMENT 1 2 32. Venue is proper in this district pursuant to 28 U.S.C. § 1391(b) because OpenTV 3 resides in this district and Nagravision resides in the State of California. In addition, a 4 substantial part of the events giving rise to the claims at issue occurred in this district and 5 Defendants are subject to personal jurisdiction within this district. 6 7 33. Pursuant to Civil Local Rules 3-5(b) and 3-2(c), intellectual property actions are assigned on a district-wide basis. 8 THE PATENTS 9 U.S. Patent No. 7,900,229 10 34. The ’229 Patent is titled “Convergence of interactive television and wireless 11 technologies.” The ’229 Patent states that it was issued to Vincent Dureau of Palo Alto, 12 California. A true and correct copy of the ’229 Patent is attached as Exhibit 2. 13 35. The original assignee of the ’229 Patent identified on the patent’s face is 14 OPENTV, Inc., of San Francisco, California. On information and belief, OpenTV claims to be 15 the current owner by assignment of all right, title, and interest in the ’229 Patent. U.S. Patent No. 6,895,595 16 17 36. The ’595 Patent is titled “Module manager for interactive television system.” The 18 ’595 Patent states that it was issued to Andrew Goodman of Menlo Park, California, and Jean 19 Rene Menand of Palo Alto, California. A true and correct copy of the ’595 Patent is attached as 20 Exhibit 3. 21 37. The original assignee of the ’595 Patent identified on the patent’s face is OpenTV, 22 Inc., of San Francisco, California. On information and belief, OpenTV claims to be the current 23 owner by assignment of all right, title, and interest in the ’595 Patent. U.S. Patent No. 6,725,461 24 25 38. The ’461 Patent is titled “Reminder system for broadcast and non-broadcast 26 events based on broadcast interactive applications.” The ’461 Patent states that it was issued to 27 Brian P. Dougherty of Lafayette, California, and Allan C. Thygesen and Michael Capuano of 28 Menlo Park, California. A true and correct copy of the ’461 Patent is attached as Exhibit 4. Case No. 16-cv-6180 -7- COMPLAINT FOR DECLARATORY JUDGMENT Case 3:16-cv-06180 Document 1 Filed 10/26/16 Page 9 of 18 1 39. The original assignee of the ’461 Patent identified on the patent’s face is Wink 2 Communications, Inc., of Alameda, California. On information and belief, OpenTV claims to be 3 the current owner by assignment of all right, title, and interest in the ’461 Patent. U.S. Patent No. 5,907,322 4 5 40. The ’322 Patent is titled “Television event marking system.” The ’322 Patent 6 states that it was issued to Gregory Kelly and Kenneth Goldberg of San Francisco, California; 7 John Gee of Auburn, California; Phillip Levinson of Los Altos Hills, California; and Scott 8 Fullam of Mountain View, California. A true and correct copy of the ’322 Patent is attached as 9 Exhibit 5. 10 41. The original assignee of the ’322 Patent identified on the patent’s face is Catch 11 TV Acquisition Corp. of Burlingame, California. On information and belief, OpenTV claims to 12 be the current owner by assignment of all right, title, and interest in the ’322 Patent. U.S. Patent No. 6,985,586 13 14 42. The ’586 Patent is titled “Distributed information and storage system.” The ’586 15 Patent states that it was issued to Michael John Hill of Coppet, Switzerland. A true and correct 16 copy of the ’586 Patent is attached as Exhibit 6. 17 43. The original assignee of the ’586 Patent identified on the patent’s face is 18 Nagracard S.A. of Cheseax-sur-Lausanne, Switzerland. On information and belief, Nagravision 19 claims to be the current owner by assignment of all right, title, and interest in the ’586 Patent. U.S. Patent No. 6,345,389 20 21 44. The ’389 Patent is titled “Interactive television system and method for converting 22 non-textual information to textual information by a remote server.” The ’389 Patent states that it 23 was issued to Vincent Dureau of Palo Alto, California. A true and correct copy of the ’389 24 Patent is attached as Exhibit 7. 25 45. The original assignee of the ’389 Patent identified on the patent’s face is OpenTV, 26 Inc., of Mountain View, California. On information and belief, OpenTV claims to be the current 27 owner by assignment of all right, title, and interest in the ’389 Patent. 28 Case No. 16-cv-6180 -8- COMPLAINT FOR DECLARATORY JUDGMENT Case 3:16-cv-06180 Document 1 Filed 10/26/16 Page 10 of 18 U.S. Patent No. 6,799,328 1 2 46. The ’328 Patent is titled “Dynamic event information table schedule window.” 3 The ’328 Patent states that it was issued to Felix Freimann of Sunnyvale, California, Jino 4 Nguyen of Mountain View, California, and Jean-Rene Menand of Palo Alto, California. A true 5 and correct copy of the ’328 Patent is attached as Exhibit 8. 6 47. The original assignee of the ’328 Patent identified on the patent’s face is OpenTV, 7 Inc., of San Francisco, California. On information and belief, OpenTV claims to be the current 8 owner by assignment of all right, title, and interest in the ’328 Patent. U.S. Patent No. 7,028,327 9 10 48. The ’327 Patent is titled “Using the electronic program guide to synchronize 11 interactivity with broadcast programs.” The ’327 Patent states that it was issued to Brian P. 12 Dougherty of Lafayette, California, and C. Leo Meier of Berkeley, California. A true and correct 13 copy of the ’327 Patent is attached as Exhibit 9. 14 49. The original assignee of the ’327 Patent identified on the patent’s face is Wink 15 Communication of Alameda, California. On information and belief, OpenTV claims to be the 16 current owner by assignment of all right, title, and interest in the ’327 Patent. U.S. Patent No. 7,243,139 17 18 50. The ’139 Patent is titled “Enhanced video programming system and method for 19 incorporating and displaying retrieved integrated Internet information segments.” The ’139 20 Patent states that it was issued to Craig Ullman, Jack D. Hidary, and Nova T. Spivack, all of 21 New York. A true and correct copy of the ’139 Patent is attached as Exhibit 10. 22 51. The original assignee of the ’139 Patent identified on the patent’s face is Open TV 23 Corporation of San Francisco, California. On information and belief, OpenTV claims to be the 24 current owner by assignment of all right, title, and interest in the ’139 Patent. U.S. Patent No. 6,530,082 25 26 52. The ’082 Patent is titled “Configurable monitoring of program viewership and 27 usage of interactive applications.” The ’082 Patent states that it was issued to Eric E. Del Sesto 28 of Alameda, California, Timothy V. Travaille of Bellevue, Washington, Christopher J. Michel of Case No. 16-cv-6180 -9- COMPLAINT FOR DECLARATORY JUDGMENT Case 3:16-cv-06180 Document 1 Filed 10/26/16 Page 11 of 18 1 Burbank, California, and Jana J. Paquette of Oakland, Maine. A true and correct copy of the 2 ’082 Patent is attached as Exhibit 11. 3 53. The original assignee of the ’082 Patent identified on the patent’s face is Wink 4 Communications, Inc., of Alameda, California. On information and belief, OpenTV claims to be 5 the current owner by assignment of all right, title, and interest in the ’082 Patent. 6 CLAIMS FOR RELIEF 7 COUNT I 8 Declaratory Judgment of Noninfringement of U.S. Patent No. 7,900,229 9 54. Paragraphs 1-53 are incorporated herein by reference. 10 55. Comcast has not infringed and does not infringe any claim of the ’229 Patent, 11 either directly or indirectly, literally or under the doctrine of equivalents, including through the 12 use of user activity and data for advertising accused of infringement in the November 12, 2015, 13 presentation. For example, the accused service does not meet at least the limitation of “updating 14 a user profile responsive to a first user activity.” 15 56. As set forth above, an actual controversy exists between Comcast and OpenTV 16 with respect to infringement of the ’229 Patent and this controversy is likely to continue. 17 Accordingly, Comcast desires a judicial determination and declaration of the respective rights 18 and duties of the parties with respect to the ’229 Patent. 19 57. Such a declaration is necessary and appropriate at this time in order that the 20 parties may ascertain their respective rights and duties with respect to the matters set forth above. 21 COUNT II 22 Declaratory Judgment of Noninfringement of U.S. Patent No. 6,895,595 23 58. Paragraphs 1-57 are incorporated herein by reference. 24 59. Comcast has not infringed and does not infringe any claim of the ’595 Patent, 25 either directly or indirectly, literally or under the doctrine of equivalents, including by providing, 26 making, using, offering for sale, or selling the Comcast Xfinity playback with Restart service and 27 Xfinity app data accused of infringement in the November 12, 2015, presentation. For example, 28 the accused service does not meet at least the limitation of “a receiver configured to . . . receive Case No. 16-cv-6180 - 10 - COMPLAINT FOR DECLARATORY JUDGMENT Case 3:16-cv-06180 Document 1 Filed 10/26/16 Page 12 of 18 1 and monitor both said broadcast signal and said nonbroadcast signal for said requested 2 interactive television application modules” and “store said retrieved interactive television 3 application modules in said data storage device.” 4 60. As set forth above, an actual controversy exists between Comcast and OpenTV 5 with respect to infringement of the ’595 Patent and this controversy is likely to continue. 6 Accordingly, Comcast desires a judicial determination and declaration of the respective rights 7 and duties of the parties with respect to the ’595 Patent. 8 61. Such a declaration is necessary and appropriate at this time in order that the 9 parties may ascertain their respective rights and duties with respect to the matters set forth above. 10 COUNT III 11 Declaratory Judgment of Noninfringement of U.S. Patent No. 6,725,461 12 62. Paragraphs 1-61 are incorporated herein by reference. 13 63. Comcast has not infringed and does not infringe any claim of the ’461 Patent, 14 either directly or indirectly, literally or under the doctrine of equivalents, including by providing, 15 making, using, offering for sale, or selling Comcast’s i-Guide reminder service accused of 16 infringement in the November 12, 2015, presentation. For example, the accused service does not 17 meet at least the limitation of “storing in the local memory of the broadcast receiver reminder 18 data for the future broadcast, including . . . a description of the future broadcast.” 19 64. As set forth above, an actual controversy exists between Comcast and OpenTV 20 with respect to infringement of the ’461 Patent and this controversy is likely to continue. 21 Accordingly, Comcast desires a judicial determination and declaration of the respective rights 22 and duties of the parties with respect to the ’461 Patent. 23 65. Such a declaration is necessary and appropriate at this time in order that the 24 parties may ascertain their respective rights and duties with respect to the matters set forth above. 25 COUNT IV 26 Declaratory Judgment of Noninfringement of U.S. Patent No. 5,907,322 27 66. Paragraphs 1-65 are incorporated herein by reference. 28 Case No. 16-cv-6180 - 11 - COMPLAINT FOR DECLARATORY JUDGMENT Case 3:16-cv-06180 Document 1 Filed 10/26/16 Page 13 of 18 1 67. Comcast has not infringed and does not infringe any claim of the ’322 Patent, 2 either directly or indirectly, literally or under the doctrine of equivalents, including by providing, 3 making, using, offering for sale, or selling its Xfinity DVR service accused of infringement in 4 the November 12, 2015, presentation. For example, the accused service does not meet at least 5 the limitation of “detecting . . . an associated date and time data from a real time clock circuit.” 6 68. As set forth above, an actual controversy exists between Comcast and OpenTV 7 with respect to infringement of the ’322 Patent and this controversy is likely to continue. 8 Accordingly, Comcast desires a judicial determination and declaration of the respective rights 9 and duties of the parties with respect to the ’322 Patent. 10 69. Such a declaration is necessary and appropriate at this time in order that the 11 parties may ascertain their respective rights and duties with respect to the matters set forth above. 12 COUNT V 13 Declaratory Judgment of Noninfringement of U.S. Patent No. 6,985,586 14 70. Paragraphs 1-69 are incorporated herein by reference. 15 71. Comcast has not infringed and does not infringe any claim of the ’586 Patent, 16 either directly or indirectly, literally or under the doctrine of equivalents, including by providing, 17 making, using, offering for sale, or selling its Xfinity whole-home DVR service accused of 18 infringement in the November 12, 2015, presentation. For example, the accused service does not 19 meet at least the limitation of “the operating centre compris[ing] means for transmitting the 20 authorization to the second unit to decrypt the product.” 21 72. As set forth above, an actual controversy exists between Comcast and 22 Nagravision with respect to infringement of the ’586 Patent and this controversy is likely to 23 continue. Accordingly, Comcast desires a judicial determination and declaration of the 24 respective rights and duties of the parties with respect to the ’586 Patent. 25 26 73. Such a declaration is necessary and appropriate at this time in order that the parties may ascertain their respective rights and duties with respect to the matters set forth above. 27 28 Case No. 16-cv-6180 - 12 - COMPLAINT FOR DECLARATORY JUDGMENT Case 3:16-cv-06180 Document 1 Filed 10/26/16 Page 14 of 18 1 COUNT VI 2 Declaratory Judgment of Noninfringement of U.S. Patent No. 6,345,389 3 74. Paragraphs 1-73 are incorporated herein by reference. 4 75. Comcast has not infringed and does not infringe any claim of the ’389 Patent, 5 either directly or indirectly, literally or under the doctrine of equivalents, including by providing, 6 making, using, offering for sale, or selling its Xfinity X1 voice control service accused of 7 infringement in the November 12, 2015, presentation. For example, the accused service does not 8 meet at least the limitation of a “receiving station . . . configured to receive executable interactive 9 application code corresponding to an interactive application via said broadcast signal.” 10 76. As set forth above, an actual controversy exists between Comcast and OpenTV 11 with respect to infringement of the ’389 Patent and this controversy is likely to continue. 12 Accordingly, Comcast desires a judicial determination and declaration of the respective rights 13 and duties of the parties with respect to the ’389 Patent. 14 77. Such a declaration is necessary and appropriate at this time in order that the 15 parties may ascertain their respective rights and duties with respect to the matters set forth above. 16 COUNT VII 17 Declaratory Judgment of Noninfringement of U.S. Patent No. 6,799,328 18 78. Paragraphs 1-77 are incorporated herein by reference. 19 79. Comcast has not infringed and does not infringe any claim of the ’328 Patent, 20 either directly or indirectly, literally or under the doctrine of equivalents, including by providing, 21 making, using, offering for sale, or selling its Xfinity X1 EPG data management service accused 22 of infringement in the November 12, 2015, presentation. For example, the accused service does 23 not meet at least the limitation of “moving said window when an interval between a current time 24 and a time when the window was created is equal to a specified time interval.” 25 80. As set forth above, an actual controversy exists between Comcast and OpenTV 26 with respect to infringement of the ’328 Patent and this controversy is likely to continue. 27 Accordingly, Comcast desires a judicial determination and declaration of the respective rights 28 and duties of the parties with respect to the ’328 Patent. Case No. 16-cv-6180 - 13 - COMPLAINT FOR DECLARATORY JUDGMENT Case 3:16-cv-06180 Document 1 Filed 10/26/16 Page 15 of 18 1 81. Such a declaration is necessary and appropriate at this time in order that the 2 parties may ascertain their respective rights and duties with respect to the matters set forth above. 3 COUNT VIII 4 Declaratory Judgment of Noninfringement of U.S. Patent No. 7,028,327 5 82. Paragraphs 1-81 are incorporated herein by reference. 6 83. Comcast has not infringed and does not infringe any claim of the ’327 Patent, 7 either directly or indirectly, literally or under the doctrine of equivalents, including by providing, 8 making, using, offering for sale, or selling its Xfinity TV Anywhere or Xfinity.TV.net services 9 accused of infringement in the November 12, 2015, presentation. For example, the accused 10 services do not meet at least the limitation of “determining, using an electronic program guide, 11 an interactive application associated with a broadcast program.” 12 84. As set forth above, an actual controversy exists between Comcast and OpenTV 13 with respect to infringement of the ’327 Patent and this controversy is likely to continue. 14 Accordingly, Comcast desires a judicial determination and declaration of the respective rights 15 and duties of the parties with respect to the ’327 Patent. 16 85. Such a declaration is necessary and appropriate at this time in order that the 17 parties may ascertain their respective rights and duties with respect to the matters set forth above. 18 COUNT IX 19 Declaratory Judgment of Noninfringement of U.S. Patent No. 7,243,139 20 86. Paragraphs 1-85 are incorporated herein by reference. 21 87. Comcast has not infringed and does not infringe any claim of the ’139 Patent, 22 either directly or indirectly, literally or under the doctrine of equivalents, including through the 23 insertion of advertisements into streaming content by Xfinity TV Go accused of infringement in 24 the November 12, 2015, presentation. For example, the accused service does not meet at least 25 the limitation of “combining the address, the program, and timing indicia for controlling when 26 the address is used for retrieving online content relating to the program into the programming 27 signal.” 28 Case No. 16-cv-6180 - 14 - COMPLAINT FOR DECLARATORY JUDGMENT Case 3:16-cv-06180 Document 1 Filed 10/26/16 Page 16 of 18 1 88. As set forth above, an actual controversy exists between Comcast and OpenTV 2 with respect to infringement of the ’139 Patent and this controversy is likely to continue. 3 Accordingly, Comcast desires a judicial determination and declaration of the respective rights 4 and duties of the parties with respect to the ’139 Patent. 5 89. Such a declaration is necessary and appropriate at this time in order that the 6 parties may ascertain their respective rights and duties with respect to the matters set forth above. 7 COUNT X 8 Declaratory Judgment of Noninfringement of U.S. Patent No. 6,530,082 9 90. Paragraphs 1-89 are incorporated herein by reference. 10 91. Comcast has not infringed and does not infringe any claim of the ’082 Patent, 11 either directly or indirectly, literally or under the doctrine of equivalents, including through 12 Comcast’s making of precise audience measurements on its X1 platform as accused of 13 infringement in the January 28, 2016, presentation. For example, the accused services do not 14 meet at least the limitation of a “processor in a broadcast receiver” which “perform[s] the step[] 15 of: executing an interactive application to determine if the broadcast receiver is one of a subset of 16 a plurality of broadcast receivers for monitoring specified selected attributes.” 17 92. As set forth above, an actual controversy exists between Comcast and OpenTV 18 with respect to infringement of the ’082 Patent and this controversy is likely to continue. 19 Accordingly, Comcast desires a judicial determination and declaration of the respective rights 20 and duties of the parties with respect to the ’082 Patent. 21 93. Such a declaration is necessary and appropriate at this time in order that the 22 parties may ascertain their respective rights and duties with respect to the matters set forth above. 23 PRAYER FOR RELIEF 24 WHEREFORE, Comcast prays that judgment be entered in its favor and requests: 25 (a) A judgment and declaration that Comcast has not infringed and does not 26 infringe in any manner any claim of the Asserted Patents, directly, 27 contributorily, or by inducement, and has not otherwise infringed or 28 violated any rights of Defendants; Case No. 16-cv-6180 - 15 - COMPLAINT FOR DECLARATORY JUDGMENT Case 3:16-cv-06180 Document 1 Filed 10/26/16 Page 17 of 18 1 (b) An injunction against Defendants and their affiliates, subsidiaries, assigns, 2 employees, agents, and/or anyone acting in privity or concert with 3 Defendants from charging infringement or instituting any legal action for 4 infringement of the Asserted Patents against Comcast or anyone acting in 5 privity with Comcast, including the divisions, successors, assigns, agents, 6 suppliers, manufacturers, contractors and customers of Comcast; 7 (c) A judgment and declaration that this is an exceptional case within the 8 meaning of 35 U.S.C. § 285, entitling Comcast to an award of its 9 reasonable attorneys’ fees, expenses, and costs in this action; 10 (d) An award to Comcast of its costs and reasonable expenses to the fullest extent permitted by law; 11 12 (e) An award of such other and further relief as the Court may deem just and proper. 13 JURY DEMAND 14 15 16 Pursuant to Federal Rule of Civil Procedure 38(b) and Civil Local Rule 3-6(a), Comcast hereby demands a trial by jury on all issues so triable. 17 18 19 20 21 22 23 24 25 26 27 28 Case No. 16-cv-6180 - 16 - COMPLAINT FOR DECLARATORY JUDGMENT Case 3:16-cv-06180 Document 1 Filed 10/26/16 Page 18 of 18 1 Dated: October 26, 2016 Respectfully submitted, 2 WILMER CUTLER PICKERING HALE AND DORR LLP 3 4 By: 5 6 7 8 9 /s/ Kathryn D. Zalewski Kathryn D. Zalewski (SBN 263119) Kathryn.Zalewski@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 950 Page Mill Road Palo Alto, California 94304 Telephone: (650) 858-6000 Facsimile: (650) 858-6100 Natalie Hanlon Leh (pro hac vice pending) Natalie.HanlonLeh@wilmerhale.com Mary (Mindy) V. Sooter (pro hac vice pending) Mindy.Sooter@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 1225 Seventeenth Street, Suite 2600 Denver, Colorado 80202 Telephone: (720) 274-3135 Facsimile: (720) 274-3133 10 11 12 13 14 15 Attorneys for Plaintiff Comcast Cable Communications, LLC 16 17 18 19 20 21 22 23 24 25 26 27 28 Case No. 16-cv-6180 - 17 - COMPLAINT FOR DECLARATORY JUDGMENT