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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