Original Complaint for Declaratory Relief.
Phone.com v. Geoworks, Case No. ___, U.S.D.C., N.D.Cal., S,F.Div.
Date: April 25, 2000.
Source: Phone.com.

Editor's Notes:
 • This page is based on a PDF version provided by Phone.com.
 • Several features have been eliminated in the conversion to HTML, including paragraph indentations and double spacing.

MATTHEW D. POWERS (Bar No. 104795)
JOSH A. KREVITT
BAO NGUYEN (Bar No. 198023)

WEIL, GOTSHAL & MANGES LLP
Silicon Valley Office
2882 Sand Hill Road, Suite 280
Menlo Park, CA 94025-7022
Telephone: (650) 926-6200
Facsimile: (650) 854-3713

Attorneys for Plaintiff
PHONE.COM, INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

[begin page 1]

Plaintiff Phone.com, Inc. ("Phone.com"), by its undersigned attorneys, for its complaint against defendant Geoworks Corporation ("Geoworks"), hereby alleges as follows:

1. This lawsuit seeks to put an end to Geoworks’ repeated and unjustified accusations that virtually the entire wireless Internet industry infringes a Geoworks patent, which is directed to unrelated technology, and its threats to sue entities unwilling to succumb to its demands to take a costly and unnecessary license. Phone.com is a pioneer in the wireless Internet industry and a leading provider of comprehensive wireless Internet software solutions. Geoworks’ conduct has, and continues to, put Phone.com under a reasonable and serious apprehension of imminent suit. With this lawsuit, Phone.com seeks declaratory judgment that Phone.com’s technology does not infringe the Geoworks patent, and that that patent is also invalid and unenforceable.

2. Phone.com is a corporation organized under the laws of the State of Delaware, with its principal place of business in Redwood City, California. Phone.com’s mission is to develop, market and support comprehensive software solutions that enable the convergence of the Internet and wireless telephony. Phone.com is a founding member of the Wireless Application Protocol (WAP) Forum, a standard-setting industry association with members representing all segments of the wireless Internet industry.

3. On information and belief, Geoworks is a corporation incorporated under the laws of the State of Delaware, with its principal place of business in Alameda, California. On information and belief, Geoworks is a member of the WAP Forum.

4. This Court has jurisdiction over Geoworks which has its principal place of business in this District.

5. This action arises under the patent laws of the United States, Title 35 of the United States Code, and the Declaratory Relief Act.

6. This Court has jurisdiction pursuant to 28 U.S.C. §§ 1331, 1338(a) and [begin page 2] 2201(a).

7. Venue is proper in this District pursuant to 28 U.S.C. §§ 1391 and 1400.

8. This action should be assigned to the San Francisco division of this judicial district because, among other reasons, the acts of Phone.com that will be at issue in this case have taken place within the San Francisco division.

9. The wireless Internet industry is the convergence of the Internet, a global communications medium enabling millions of people to share information and conduct business electronically and on a global scale, and wireless telecommunication, which is becoming widely available and affordable to hundred of millions of mobile subscribers worldwide.

10. Phone.com and other pioneers of the wireless Internet industry developed the WAP technology to bring the Internet directly to wireless digital phones. WAP technology empowers mobile subscribers to access information services and applications, such as e-mail, corporate intranet applications, weather and traffic alerts, news, sports and stock quotes, easily and directly from the screens of their wireless handsets. A component of the WAP technology is the Wireless Markup Language (WML), which is a tailored syntax for describing the information used by WAP-enabled wireless handsets.

11. On information and belief, Geoworks is the owner of United States Patent No. 5,327,529 entitled "Process of Designing User Interfaces for Application Programs," which issued on July 5, 1994 and was assigned to Geoworks (the "‘529 patent"). (A copy of the ‘529 patent is attached hereto as Exhibit 1.) Geoworks has repeatedly claimed that the ‘529 patent is essential to the WAP technology, and covers all WAP-compliant devices and services, including those of Phone.com.

12. Despite Geoworks’ assertion that the ‘529 is essential to WAP-compliant devices and services, the ‘529 patent simply does not cover (and does not even mention) the [begin page 3] wireless Internet technology. Instead, the ‘529 patent is solely directed to certain object-oriented programming techniques, none of which cover WAP, WML, wireless applications or the Internet. Indeed, making clear that the ‘529 patent is directed to object-oriented programming, and not to WAP or markup languages (which existed and were well-known when the ‘529 patent was applied for), the ‘529 patent specification reads as a "primer" on object-oriented programming, and never mentions markup languages, the Internet or wireless communications. The only embodiment disclosed is also an object-oriented programmed operating system. Nothing in the patent, the file history and the cited prior art acknowledges, discusses, suggests or contemplates the use of markup languages for any purpose, much less for use with the Internet. In short, the ‘529 patent does not cover WAP-compliant devices and services that employ WML. Phone.com’s technology clearly does not infringe any claim of the ’529 patent.

13. Notwithstanding the fact that the ‘529 patent clearly does not cover the WAP and WML protocols and the wireless Internet technology, Geoworks has accused virtually every WAP-compliant wireless Internet product or service of infringing, directly or indirectly, at least claim 1 of the ‘529 patent. On or about January 19, 2000, Geoworks, through its Chief Operating Officer and General Counsel, notified WAP Forum members in writing that the ‘529 patent covers WAP and WML and that WAP Forum members must take a license under the ‘529 patent. (A copy of the Geoworks letter is attached hereto as Exhibit 2.)

14. Geoworks attempts to support its unfounded claims in a "white paper" wishfully entitled "The Geoworks Wireless Internet Patent," even though the words "wireless" and "Internet" never appear anywhere in the patent or its file history. (A copy of Geoworks’ "white paper" is attached hereto as Exhibit 3.) Included in the Geoworks "white paper" are clearly erroneous charts purporting to show that the ‘529 patent claims literally read on WAP-compliant devices using the WML syntax.

15. Geoworks has unequivocally threatened entities in the wireless Internet community, including Phone.com, with litigation to enforce the ‘529 patent. For example, Geoworks devotes an entire section of its "white paper" to what is termed "Geoworks' [begin page 4] Enforcement Protocol and Potential Consequences of Infringement." (See ¶ 4.0 of the "white paper," Exhibit 3 hereto). In that section, Geoworks states that it "intends to vigorously enforce its patent rights therein," and unequivocally threatens "to seek full legal redress against unlawful infringement, including injunction against distribution of goods and services, money damages, and fees and costs against all parties that infringe the Geoworks Patent." (Id.). Most recently, Geoworks has set a deadline of July 1, 2000 for Phone.com to take a license to the ‘529 patent.

16. Plaintiff Phone.com is continuing to make, use, sell or offer for sale products and services that Geoworks incorrectly claims infringe the ‘529 patent. Because the ‘529 patent is not infringed, is unenforceable and is invalid, Phone.com has no intention to take a license under the ‘529 patent. Hence, Phone.com is under a reasonable and serious apprehension that it will imminently be sued by Geoworks for infringement of one or more of the claims of the ‘529 patent. As a result, an actual controversy exists between Phone.com and Geoworks concerning whether the ‘529 patent is not infringed, is invalid and is unenforceable.

17. Paragraphs 1 through 16 are incorporated by reference as if stated fully herein.

18. Phone.com has not infringed any valid and enforceable claim of the ‘529 patent.

19. Phone.com seeks a declaration that the ‘529 patent has not been, and is not, infringed by Phone.com.

20. Paragraphs 1 through 19 are incorporated by reference as if stated fully herein.

21. The claims of the ‘529 patent are invalid for failure to meet the requirements of the patent laws of the United States, including 35 U.S.C. §§ 102, 103 and 112. For example, the claims of the ‘529 patent are invalid as being anticipated or rendered obvious by [begin page 5] numerous prior art references, including but not limited to object-oriented programming graphical user interface (GUI) prior art systems and references. Moreover, to the extent that the claims of the ‘529 patent are asserted to cover WAP/WML, they are invalid for lack of support in the written description of the patent, and for being anticipated or rendered obvious by prior art markup languages and prior art graphical data interchange protocols.

22. Phone.com seeks a declaration that the claims of ‘529 patent are invalid.

23. Paragraphs 1 through 22 are incorporated by reference as if stated fully herein.

24. The ‘529 patent is unenforceable under the doctrine of inequitable conduct. On information and belief, the named inventors and/or others substantively involved in prosecuting the applications leading to the ‘529 patent were aware of information material to the patentability of the claims of the ‘529 patent, but intentionally withheld that information from the United States Patent and Trademark Office with the intention of deceiving the United States Patent and Trademark Office. The information that was intentionally concealed includes but is not limited to:

(1) The SGML Markup Language Standard, ISO 8879 (1986);

(2) Tim Berners-Lee, "Information Management: A Proposal" (1989), and/or related, well-known World-Wide Web and Hypertext Markup Language (HTML) work;

(3) Hall et al, "X: A Window System Standard for Distributed Computing Environments", HP Journal October 1988, and/or related X window standards and other publications;

(4) Beshers et al, "Scope: Automatic Generation of Graphical Interfaces", 1989 ACM, and similar GUI prior art references. The Beshers article was referenced in the Zanden et al. cited art;

(5) The PHIGS Computer Graphics Standard, ISO 9592 (1988);

(6) The Computer Graphics Metafile (CGM) Standard, ISO 8632 (1987);

[begin page 6]

(7) The Initial Graphics Exchange Specification (IGES) Standard (1986);

(8) The well-known Smalltalk-80 Model-View-Controller object-oriented programming user interface paradigm first described in Goldberg, "Smalltalk-80: The Interactive Programming Environment", Addison-Wesley Publishers (1983).

25. Phone.com seeks a declaration that the ‘529 patent is unenforceable.

WHEREFORE, Phone.com respectfully requests that the Court:

A. Enter an order declaring that Phone.com has not, and does not, infringe any valid and enforceable claim of the ‘529 patent;

B. Enter an order declaring that the claims of the ‘529 patent are invalid;

C. Enter an order declaring that the ‘529 patent is unenforceable;

D. Enter an order declaring this an exceptional case pursuant to 35 U.S.C. § 285, and awarding Phone.com its attorney fees, costs, and expenses; and

E. Grant to Phone.com such other and further relief as may be just and appropriate.