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Tech Law Journal |
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IN THE UNITED STATES DISTRICT COURT
COMPLAINT Plaintiff, NCR Corporation, Inc. ("NCR") through its attorneys, for its Complaint against Defendant Palm, Inc. ("Palm") and Defendant Handspring, Inc. ("Handspring") (Handspring and Palm sometimes collectively referred to as "Defendants"), alleges as follows: NATURE OF THE ACTION 1. This is a patent infringement action for Defendants’ unauthorized and infringing manufacture, importation, sale, offers to sell, and use of handheld data handling devices and systems (including, without limitation, devices sold under the designations Palm Pilot, Palm and Visor and systems which include these devices) which are covered by two of NCR’s patents: U.S. Patent No. 4,634,845 ("the Hale ‘845 Patent") and U.S. Patent No. 4,689,478 ("the Hale ‘478 Patent") (collectively referred to as "the NCR Patents").2. NCR seeks injunctive relief to prevent Palm and Handspring from their continuing infringement of NCR’s valuable patent rights in the field of handheld data handling devices and systems which include such devices. In addition, NCR seeks monetary damages for Defendants’ past infringement of the NCR Patents. Finally, NCR seeks recovery of increased damages and its attorneys’ fees, interest, costs, and expenses because this is an exceptional case within the meaning of the Patent statute. Defendants’ disregard for NCR’s patent rights demonstrates a lack of the required duty of care to avoid infringement of the NCR Patents and makes this case exceptional. FACTUAL BACKGROUND NCR’s History 3. NCR was founded in 1884 as National Cash Register and developed the world’s first modern cash register.4. NCR has a long history of breakthrough innovations and annually spends hundreds of millions of dollars on research and development for innovations for new and improved products and concepts. NCR further spends millions of dollars annually to obtain and maintain patents on such innovations. Data Handling Devices and Systems 5. One of the products developed by the researchers at NCR was a revolutionary new device and system for handling and transmitting data – a system with a portable terminal small enough to fit in the user’s hand. William J. Hale, William R. Horst, Ellen P. Riley, and Arthur R. Creech, recognized an unsatisfied need for a portable, handheld device which would allow the user to enter information such as appointments, to-do lists, and addresses, and execute financial and shopping transactions by connecting to networks using an interface module.6. NCR’s researchers designed a system to accomplish these objectives. The system included a portable handheld device with a display panel and an interface module, i.e., a docking station or a cradle, into which the user would insert the handheld device. The interface module could be used to interface the handheld device with other systems. 7. NCR elected to disclose its invention to the public in exchange for the grant of patents. NCR's Patents-In-Suit 8. To provide a description of the invention, NCR’s researchers worked with NCR patent attorneys to prepare patent applications that described the inventions and provided specific examples of devices and systems made in accordance with the principles of the inventions. Drawings were prepared and included in the application to further illustrate the concepts of the invention and help those skilled in the art to understand and appreciate the inventive concepts and advantages of the system.9. Two patent applications were prepared by NCR and filed in the United States Patent and Trademark Office: one directed to a handheld data handling device, the other to a system which included the handheld device and an interface for receiving the handheld device. 10. A Patent Office Examiner reviewed the application for the Hale ‘845 Patent and considered the claims which were directed towards the data handling device invented by the NCR researchers. The Examiner conducted a search of the prior art and selected the best art for consideration. After a thorough review of the claims, the Examiner allowed the 17 claims of the application. 11. The Hale ‘845 Patent entitled "Portable Personal Terminal For Use In A System For Handling Transactions" was issued by the United States Patent and Trademark Office on January 6, 1987. The inventors of the Hale ‘845 Patent are William J. Hale, William R. Horst, and Ellen P. Riley. A true and correct copy of the Hale ‘845 Patent is attached as Exhibit 1. 12. Similarly, a Patent Office Examiner reviewed the application for the Hale ‘478 Patent and considered the claims. These claims were directed towards a system for handling data enabling the portable data handling device to interface with other systems. The Examiner also searched for prior art and selected the best art for consideration. After a thorough review of the claims and negotiation with the inventors’ attorneys, the Examiner allowed the 11 claims of the application. 13. The Hale ‘478 Patent entitled "System For Handling Transactions Including A Portable Personal Terminal" was issued by the United States Patent and Trademark Office on August 25, 1987. The inventors of the Hale ‘478 Patent are William J. Hale, William R. Horst, and Arthur R. Creech, Jr. A true and correct copy of the Hale ‘478 Patent is attached as Exhibit 2. 14. Pursuant to their employment agreements, the inventors of the Hale ‘845 Patent and the Hale ‘478 Patent have assigned to NCR their rights, titles, and interest to these patents, including the rights to pursue infringers and recover for infringements of these patents. NCR owns the entire right, title and interest in and to the Hale ‘845 and Hale ‘478 Patents, including the right to sue and recover damages for past infringement. THE PARTIES 15. NCR is a corporation organized and existing under the laws of Maryland and has its principal place of business at 1700 South Patterson Blvd. in Dayton, Ohio.16. Defendant Palm is a corporation organized and existing under the laws of Delaware. Palm’s corporate offices are located at 5470 Great America Parkway in Santa Clara, California. 17. Defendant Handspring is a corporation organized and existing under the laws of Delaware. Handspring’s corporate offices are located at 189 Bernardo Avenue in Mountain View, California. Infringement Of NCR’s Patents By Palm And Handspring 19. Instead, in total disregard of NCR’s patent rights, Palm and Handspring both chose to use the inventions that had been developed and patented by NCR without paying for them. 20. Handspring continued its infringement of NCR’s Patents even after NCR gave Handspring a notice of infringement. 21. Upon information and belief, Palm knew of this notice of infringement to Handspring and knew that its products infringed for the same reasons. Yet, Palm continued its infringement of the NCR Patents. 22. The portable handheld data handling devices marketed by the Defendants and covered by the NCR Patents have enjoyed tremendous commercial success. This technology has provided the users with the ability to access and manage a substantial amount of information that is important to the user, such as date books, to-do lists and financial information. NCR Continues To Suffer Harm By Defendant's Continued Infringement 24. Defendant Palm has caused further damage to NCR by licensing technology covered by the NCR Patents to others. 25. Finally, Defendants’ unauthorized, infringing use of the Hale ‘845 Patent and the Hale ‘478 Patent has threatened the value of NCR’s intellectual property. Accordingly, unless and until Defendants’ continued acts of infringement are enjoined, NCR will continue to suffer harm. JURISDICTION AND VENUE 26. This is an action for patent infringement under the Patent Act of the United States, 35 U.S.C. § 100 et seq., including §§ 271 and 281. This Court has subject matter jurisdiction over this patent infringement action pursuant to 28 U.S.C. § 1338(a).27. Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1400(b) and 1391(c). COUNTS Count I – Direct Patent Infringement of the Hale ‘845 Patent 28. Paragraphs 1 through 27 are incorporated by reference as if stated fully herein.29. Defendant Palm has in the past imported, made, used, sold, and offered to sell and presently imports, makes, uses, offers to sell and sells handheld data handling devices that infringe the Hale ‘845 Patent (including, without limitation, the Palm Pilot and Palm devices). 30. Defendant Handspring has in the past imported, made, used, sold, and offered to sell and presently imports, makes, uses, offers to sell and sells handheld data handling devices that infringe the Hale ‘845 Patent (including, without limitation, devices marketed under the name Visor). 31. NCR has been damaged by Defendants’ aforesaid infringement of the Hale ‘845 Patent and NCR will continue to suffer irreparable harm unless Defendants are enjoined by this Court. Count II – Inducement To Infringe the Hale ‘845 Patent 32. Paragraphs 1 through 27 are incorporated by reference as if stated fully herein.33. Defendant Palm has actively induced and is inducing infringement of the Hale ‘845 Patent by knowingly aiding and abetting the direct infringement of the Hale ‘845 Patent by licensees of Palm and their customers. 34. NCR has been damaged by Palm’s infringement and NCR will continue to suffer harm unless Palm is enjoined by this Court. Count III – Contributory Infringement of the Hale ‘845 Patent 35. Paragraphs 1 through 27 are incorporated by reference as if stated fully herein.36. Defendant Palm has contributed and continues to contribute to the infringement of the Hale ‘845 Patent because the handheld data handling device technology provided by Palm to others (a) results in direct infringement of the Hale '845 Patent, (b) constitutes a material part of the invention claimed by the Hale '845 Patent, and (c) is not a staple article or commodity of commerce suitable for substantial noninfringing uses, and because, upon information and belief, Palm provided the technology to others while Palm had knowledge of the Hale ‘845 Patent. 37. NCR has been damaged by Palm’s infringement and will continue to suffer irreparable harm unless enjoined by this Court. Count IV – Direct Patent Infringement of the Hale ‘478 Patent 38. Paragraphs 1 through 27 are incorporated by reference as if stated fully herein.39. Upon information and belief, Defendant Palm has in the past used and presently uses systems for handling data that infringe the Hale ‘478 Patent (including, without limitation, the Palm Pilot and Palm devices along with docking cradles which are connected to a computer). 40. Upon information and belief, Defendant Handspring has in the past used and presently uses systems for handling data that infringe the ‘478 Patent (including, without limitation, the Visor devices along with docking cradles which are connected to a computer). 41. NCR has been damaged by Defendants’ aforesaid infringement of the Hale ‘478 Patent and NCR will continue to suffer irreparable harm unless Defendants are enjoined by this Court. Count V – Inducement to Infringe the Hale ‘478 Patent 42. Paragraphs 1 through 27 are incorporated by reference as if stated fully herein.43. Defendant Palm has been and is actively inducing infringement of the Hale ‘478 Patent by knowingly aiding and abetting the direct infringement of the Hale ‘478 Patent by Palm’s customers through its sale of handheld data handling devices and cradles designed for connection to computers and support of systems for handling data (including, without limitation, the Palm Pilot and Palm devices with docking cradles for connection to a computer). 44. Defendant Palm has actively induced and is inducing infringement of the Hale ‘478 Patent by knowingly aiding and abetting the direct infringement of the Hale ‘478 Patent by licensees of Palm and its customers. 45. Defendant Handspring has been and is actively inducing infringement of the Hale ‘478 Patent by knowingly aiding and abetting the direct infringement of the Hale ‘478 Patent by Handspring’s customers through Handspring’s sale of handheld data handling devices and cradles designed for connection to computers and support of systems for handling data (including, without limitation, the Visor devices and docking cradles for connection to a computer). 46. NCR has been damaged by Defendants’ infringement and NCR will continue to suffer irreparable harm unless Defendants are enjoined by this Court. Count VI – Contributory Infringement of the Hale ‘478 Patent 47. Paragraphs 1 through 27 are incorporated by reference as if stated fully herein.48. Palm has contributed and continues to contribute to the infringement of the Hale ‘478 Patent because the handheld data handling devices and cradles for connecting said devices to computers that Palm sells to others (a) result in direct infringement by others of the Hale ‘478 Patent, (b) constitute a material part of the invention claimed by the Hale ‘478 Patent, and (c) are not staple articles or commodities of commerce suitable for substantial noninfringing uses, and because, upon information and belief, Palm has sold said devices and cradles to others with knowledge of the Hale ‘478 Patent. 49. Defendant Palm has also contributed and continues to contribute to the infringement of the Hale ‘478 Patent because the handheld data handling device technology provided by Palm to others (a) results in direct infringement by others of the Hale '478 Patent, (b) constitutes a material part of the invention claimed by the Hale ‘478 Patent, and (c) is not a staple article or commodity of commerce suitable for substantial noninfringing uses, and because, upon information and belief, Palm has provided the infringing data handling technology to others while Palm had knowledge of the Hale ‘478 Patent. 50. Handspring has contributed and continues to contribute to the infringement of the Hale ‘478 Patent because the handheld data handling devices and cradles for connecting said devices to computers that Handspring sells to others (a) result in direct infringement by others of the Hale ‘478 Patent, (b) constitute a material part of the invention claimed by the Hale ‘478 Patent, and (c) are not staple articles or commodities of commerce suitable for substantial noninfringing uses, and because, upon information and belief, Handspring has sold said devices and cradles to others with knowledge of the Hale ‘478 Patent. 51. NCR has been damaged by Defendants’ contributory infringement and will continue to suffer irreparable harm unless Defendants’ infringing activities are enjoined by this Court. WHEREFORE, NCR respectfully requests that the Court: A. Preliminarily and permanently enjoin Palm, its agents, servants, attorneys, employees and those persons in active concert or participation with them who receive actual notice of the order granting the injunction, from making, using, selling, offering to sell, importing, or otherwise engaging in acts of infringement of the NCR Patents;B. Preliminarily and permanently enjoin Handspring, its agents, servants, attorneys, employees and those persons in active concert or participation with them who receive actual notice of the order granting the injunction, from making, using, selling, offering to sell, importing, or otherwise engaging in acts of infringement of the NCR Patents; C. Award to NCR damages adequate to compensate NCR for infringement of the NCR Patents by Palm, but in no event less than a reasonable royalty, together with interest and costs; D. Award to NCR actual damages suffered by NCR as the result of infringement of the NCR Patents by Handspring, but in no event less than a reasonable royalty, together with interests and costs; E. Award increased damages pursuant to 35 U.S.C. § 284 against Palm up to three times the amount found or assessed; F. Award increased damages pursuant to 35 U.S.C. § 284 against Handspring up to three times the amount found or assessed; G. Enter an order declaring this as an exceptional case pursuant to 35 U.S.C. § 285 and award to NCR reasonable attorney fees; and H. Grant to NCR such other and further relief as may be just and appropriate. JURY DEMAND NCR demands a trial by jury of any issue triable of right by a jury.
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