EDIG VS AAPL, THE COMPLAINT HANDAL ASSOCIATES

EDIG VS AAPL, THE COMPLAINT

HANDAL & ASSOCIATES

1200 THIRD AVE

SUITE 1321

SAN DIEGO, CA 92101

TEL: 619.544.6400

FAX: 619.696.0323

ANTON HANDAL (Bar No. 113812)

anh@handal-law.com

PAMELA C. CHALK (Bar No. 216411)

pchalk@handal-law.com

GABRIEL HEDRICK (Bar No. 220649)

ghedrick@handal-law.com

HANDAL & ASSOCIATES

1200 Third Avenue, Suite 1321

San Diego, California 92101

Tel: 619.544.6400

Fax: 619.696.0323

Attorneys for Plaintiff

e.Digital Corporation

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF CALIFORNIA

e.Digital Corporation,

Plaintiff,

v.

Apple Inc.,

Defendant.

Case No.

COMPLAINT FOR PATENT

INFRINGEMENT

DEMAND FOR JURY TRIAL

Plaintiff e.Digital Corporation (“e.Digital” or “Plaintiff”), by and through its

undersigned counsel, complains and alleges against Defendant Apple Inc. (“Apple”

or “Defendant”) as follows:

NATURE OF THE ACTION

1. This is a civil action for infringement of a patent arising under the

laws of the United States relating to patents, 35 U.S.C. § 101, et seq., including,

without limitation, § 281. Plaintiff e.Digital seeks a preliminary and permanent

injunction and monetary damages for the infringement of its U.S. Patent Nos.

5,842,170; 5,742,737; and 5,491,774.

JURISDICTION AND VENUE

2. This court has subject matter jurisdiction over this case for patent

'13CV0785 MMABLM

COMPLAINT

HANDAL & ASSOCIATES

1200 THIRD AVE

SUITE 1321

SAN DIEGO, CA 92101

TEL: 619.544.6400

FAX: 619.696.0323

infringement under 28 U.S.C. §§ 1331 and 1338(a) and pursuant to the patent laws

of the United States of America, 35 U.S.C. § 101, et seq.

3. Venue properly lies within the Southern District of California

pursuant to the provisions of 28 U.S.C. §§ 1391(b), (c), and (d) and 1400(b). On

information and belief, Defendant conducts substantial business directly and/or

through third parties or agents in this judicial district by selling and/or offering to

sell the infringing products and/or by conducting other business in this judicial

district. Furthermore, Plaintiff e.Digital is headquartered and has its principal

place of business in this district, engages in business in this district, and has been

harmed by Defendant’s conduct, business transactions and sales in this district.

4. This Court has personal jurisdiction over Defendant because, on

information and belief, Defendant transacts continuous and systematic business

within the State of California and the Southern District of California. In addition,

this Court has personal jurisdiction over the Defendant because, on information

and belief, this lawsuit arises out of Defendant’s infringing activities, including,

without limitation, the making, using, selling and/or offering to sell infringing

products in the State of California and the Southern District of California. Finally,

this Court has personal jurisdiction over Defendant because, on information and

belief, Defendant has made, used, sold and/or offered for sale its infringing

products and placed such infringing products in the stream of interstate commerce

with the expectation that such infringing products would be made, used, sold

and/or offered for sale within the State of California and the Southern District of

California.

PARTIES

5. Plaintiff e.Digital is a Delaware corporation with its headquarters and

principal place of business at 16870 West Bernardo Drive, Suite 120, San Diego,

California 92127.

6. Upon information and belief, Defendant Apple Inc. is a corporation

COMPLAINT

HANDAL & ASSOCIATES

1200 THIRD AVE

SUITE 1321

SAN DIEGO, CA 92101

TEL: 619.544.6400

FAX: 619.696.0323

registered and lawfully existing under the laws of the State of California, with an

office and principal place of business located at 1 Infinite Loop, Cupertino, CA

95014.

THE ASSERTED PATENTS

7. On November 24, 1998, United States Patent No. 5,842,170 (“the

’170 patent”) entitled “Method For Editing In Hand Held Recorder,” was duly and

legally issued by the United States Patent and Trademark Office. The named

inventors are Norbert P. Daberko, Richard K. Davis, and Richard D. Bridgewater.

e.Digital is the assignee and owner of the entire right, title and interest in and to the

’170 patent and has the right to bring this suit for damages and other relief. A true

and correct copy of the ’170 patent is attached hereto as Exhibit A.

8. On April 21, 1998, United States Patent No. 5,742,737 (“the ’737

patent”) entitled “Method For Recording Voice Messages On Flash Memory In A

Hand Held Recorder,” was duly and legally issued by the United States Patent and

Trademark Office. The named inventors are Norbert P. Daberko, Richard K.

Davis, and Richard D. Bridgewater. e.Digital is the assignee and owner of the

entire right, title and interest in and to the ’737 patent and has the right to bring this

suit for damages and other relief. A true and correct copy of the ’737 patent is

attached hereto as Exhibit B.

9. On October 17, 2012, the United States Patent and Trademark Office

issued a Reexamination Certificate for the ’737 patent, canceling Claim 5 and

adding new Claim 13, which is substantially identical to former claim 5. A true

and correct copy of the Reexamination Certificate is attached hereto as Exhibit C.

10. On February 13, 1996, United States Patent No. 5,491,774 (“the ‘774

patent”) entitled “Handheld Record And Playback Device With Flash Memory,”

was duly and legally issued by the United States Patent and Trademark Office.

The named inventors are Elwood G. Norris, Norbert P. Daberko, and Steven T.

Brightbill. e.Digital is the assignee and owner of the entire right, title and interest

COMPLAINT

HANDAL & ASSOCIATES

1200 THIRD AVE

SUITE 1321

SAN DIEGO, CA 92101

TEL: 619.544.6400

FAX: 619.696.0323

in and to the ’774 patent and has the right to bring this suit for damages and other

relief. A true and correct copy of the ’774 patent is attached hereto as Exhibit D.

11. On August 14, 2012, the United States Patent and Trademark Office

issued a Reexamination Certificate for the ’774 patent. A true and correct copy of

the Reexamination Certificate is attached hereto as Exhibit E.

COUNT ONE

INFRINGEMENT OF THE ’170 PATENT BY DEFENDANT

12. Plaintiff re-alleges and incorporates by reference each of the

allegations set forth in paragraphs 1 through 11 above.

13. Upon information and belief, Defendant, without authority, (a) has

directly infringed and continues to directly infringe the ’170 patent by making,

using, offering to sell, or selling within the United States, or importing into the

United States, products that practice one ore more claims of the ’170 patent in

violation of 35 U.S.C. § 271(a); (b) has induced and continues to induce

infringement of one or more claims of the ’170 patent in violation of 35 U.S.C. §

271(b); and (c) has contributed and continue to contribute to the infringement of

one ore more claims of the ’170 patent in violation of 35 U.S.C. § 271(c).

14. The accused products for purposes of the ’170 patent include but are

not limited to the Apple iPhone, iPhone 3G, iPhone 3GS, iPhone 4, iPhone 4S, and

iPhone 5 mobile devices; the Apple iPad series of tablets (excluding the first

generation); the Apple iPad Mini series of tablets; the Apple iPod Touch series of

devices (excluding the first generation); the MacBook Pro series of computers; the

MacBook Air series of computers.

15. The accused products, alone or in combination with other products,

practice each of the limitations of independent claims 1 and 7 and dependent

claims 2 through 4, 8 through 9, and 11 through 12 of the ’170 patent.

16. Upon information and belief, Defendant, without authority, has

actively induced infringement and continue to actively induce infringement of the

COMPLAINT

HANDAL & ASSOCIATES

1200 THIRD AVE

SUITE 1321

SAN DIEGO, CA 92101

TEL: 619.544.6400

FAX: 619.696.0323

’170 patent in violation of 35 U.S.C. § 271(b) by causing others to directly infringe

the claims of the ’170 patent and/or by intentionally instructing others how to use

the accused products in a manner that infringes the claims of the ’170 patent. On

information and belief, Defendant has induced and continues to induce

infringement by instructing customers to operate the products in an infringing

manner and/or when Defendant test or otherwise operate the accused products in

the United States.

17. Upon information and belief, Defendant, without authority, has

contributed and continues to contribute to the infringement of the ’170 patent in

violation of 35 U.S.C. § 271(c) by importing into the United States, selling and/or

offering to sell within the United States accused products that (1) embody and

constitute a material part of the invention of the ’170 patent, (2) Defendant knows

to be especially adapted for use in infringing the ’170 patent, and (3) are not staple

articles of commerce suitable for substantial non-infringing use with respect to the

’170 patent.

18. Based on information and belief, Plaintiff alleges that Defendant sells,

ships, or otherwise delivers the accused products with all the features required to

infringe the asserted claims of the ’170 patent. On information and belief, these

products are designed to practice the infringing features.

19. Defendant had knowledge of infringement of the ’170 patent since at

least the filing of this complaint and perhaps as early as 2010 by virtue of the

Plaintiff’s filing of complaints against others within Defendant’s industry. On

information and belief, Defendant has continued to sell products that practice the

’170 patent after acquiring knowledge of infringement.

20. Plaintiff alleges upon information and belief, that the infringement by

Defendant has been and is willful. Plaintiff has been irreparably harmed by these

acts of infringement and has no adequate remedy at law. Upon information and

belief, infringement of the ’170 patent is ongoing and will continue unless

COMPLAINT

HANDAL & ASSOCIATES

1200 THIRD AVE

SUITE 1321

SAN DIEGO, CA 92101

TEL: 619.544.6400

FAX: 619.696.0323

Defendant is enjoined from further infringement by the court.

COUNT TWO

INFRINGEMENT OF THE ’737 PATENT BY DEFENDANT

21. Plaintiff re-alleges and incorporates by reference each of the

allegations set forth in paragraphs 1 through 11 above.

22. Upon information and belief, Defendant, without authority, (a) has

directly infringed and continues to directly infringe the ’737 patent by making,

using, offering to sell, or selling within the United States, or importing into the

United States, products that practice one ore more claims of the ’737 patent in

violation of 35 U.S.C. § 271(a); (b) has induced and continues to induce

infringement of one or more claims of the ’737 patent in violation of 35 U.S.C. §

271(b); and (c) has contributed and continues to contribute to the infringement of

one ore more claims of the ’737 patent in violation of 35 U.S.C. § 271(c).

23. The accused products for purposes of the ‘737 patent include but are

not limited to the Apple iPhone, iPhone 3G, iPhone 3GS, iPhone 4, iPhone 4S, and

iPhone 5 mobile devices; the Apple iPad series of tablets (excluding the first

generation); the Apple iPad Mini series of tablets; the Apple iPod Nano series of

devices (excluding the first generation); the Apple iPod Touch series of devices

(excluding the first generation); the MacBook Pro series of computers; and the

MacBook Air series of computers.

24. The accused products, alone or in combination with other products,

practice each of the limitations of independent claim 1 and dependent claim 3 of

the ‘737 patent; and independent claim 4 of the ‘737 patent.

25. The MacBook accused products, with a slot for a flash memory

module, alone or in combination with other product also infringe each and every

element of independent claims 9 and 13 and dependent claims 6 and 7 of the ‘737

patent.

26. Upon information and belief, Defendant, without authority, has

COMPLAINT

HANDAL & ASSOCIATES

1200 THIRD AVE

SUITE 1321

SAN DIEGO, CA 92101

TEL: 619.544.6400

FAX: 619.696.0323

actively induced infringement and continues to actively induce infringement of the

’737 patent in violation of 35 U.S.C. § 271(b) by causing others to directly infringe

the claims of the ’737 patent and/or by intentionally instructing others how to use

the accused products in a manner that infringes the claims of the ’737 patent. On

information and belief, Defendant has induced and continues to induce

infringement by instructing customers to operate the products in an infringing

manner and/or when Defendant tests or otherwise operates the accused products in

the United States.

27. Upon information and belief, Defendant, without authority, has

contributed to and continues to contribute to the infringement of the ’737 patent in

violation of 35 U.S.C. § 271(c) by importing into the United States, selling and/or

offering to sell within the United States accused products that (1) constitute a

material part of the invention of the ’737 patent, (2) Defendant knows to be

especially adapted for use in infringing the ’737 patent, and (3) are not staple

articles of commerce suitable for substantial noninfringing use with respect to the

’737 patent.

28. Based on information and belief, Plaintiff alleges that Defendant sells,

ships, or otherwise delivers the accused products with all the features required to

infringe the asserted claims of the ’737 patent. On information and belief, these

products are designed to practice the infringing features.

29. Defendant had knowledge of infringement of the ’737 patent since at

least the filing of this complaint and perhaps as early as 2010 by virtue of the

Plaintiff’s filing of complaints against others within Defendant’s industry. On

information and belief, Defendant has continued to sell products that practice the

’737 patent after acquiring knowledge of infringement.

30. Upon information and belief, the infringement by Defendant has been

and is willful.

31. Plaintiff has been irreparably harmed by these acts of infringement

COMPLAINT

HANDAL & ASSOCIATES

1200 THIRD AVE

SUITE 1321

SAN DIEGO, CA 92101

TEL: 619.544.6400

FAX: 619.696.0323

and has no adequate remedy at law. Upon information and belief, infringement of

the ’737 patent is ongoing and will continue unless Defendant is enjoined from

further infringement by the court.

COUNT THREE

INFRINGEMENT OF THE ’774 PATENT BY DEFENDANT

32. Plaintiff re-alleges and incorporates by reference each of the

allegations set forth in paragraphs 1 through 11 above.

33. Upon information and belief, Defendant, without authority, (a) has

directly infringed and continue to directly infringe the ’774 patent by making,

using, offering to sell, or selling within the United States, or importing into the

United States, products that practice one ore more claims of the ’774 patent in

violation of 35 U.S.C. § 271(a); (b) has induced and continues to induce

infringement of one or more claims of the ’774 patent in violation of 35 U.S.C. §

271(b); and (c) has contributed and continues to contribute to the infringement of

one ore more claims of the ’774 patent in violation of 35 U.S.C. § 271(c).

34. The accused products for purposes of the ’774 patent include but are

not limited to certain MacBook Pro series, and the MacBook Air series computers

that are capable of use with removable flash memory device.

35. The accused products, alone or in combination with other products,

practice each of the limitations of independent claims 33 and 34, and dependent

claims 2, 6,10, 15 through 17, 23 through 26, and 28 through 31 of the ’774 patent.

36. Upon information and belief, Defendant, without authority, has

actively induced infringement and continues to actively induce infringement of the

’774 patent in violation of 35 U.S.C. § 271(b) by causing others to directly infringe

the claims of the ’774 patent and/or by intentionally instructing others how to use

the accused products in a manner that infringes the claims of the ’774 patent. On

information and belief, Defendant has induced and continues to induce

infringement by instructing customers to operate the products in an infringing

COMPLAINT

-9-

HANDAL & ASSOCIATES

1200 THIRD AVE

SUITE 1321

SAN DIEGO, CA 92101

TEL: 619.544.6400

FAX: 619.696.0323

manner and/or when Defendant tests or otherwise operates the accused products in

the United States.

37. Upon information and belief, Defendant, without authority, has

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