ddb technologies v. gannett company et. al

7/29/2019 DDB Technologies v. Gannett Company et. al.

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UNITED STATES DISTRICT COURTFOR THE WESTER N DISTRICT OF TEXASAUSTIN DIVISION)

DDB Technologies, L.L.C.,)Plaintiff,)v.)Gannett Co., Inc.)Gann ett Satellite Information N etwork, Inc., and)USA TO DAY Sports Media Group, LLC,)Defendants. Civil Action No. 13-217Judge:JURY DEMANDEDCOMPLAINT FOR PATENT INFRINGEMENT AND DAM AGESTO THE HONORAB LE JUDGE OF SAID COURT:Plaintiff DDB Technologies, L.L.C., files this Complaint for Patent Infringement andDamages against Gannett Co., Inc., Gannett Satellite Information Network, Inc., and USA

TODAY Sports Media Group, LLC, and would respectfully show the Court as follows:THE PARTIES

1. Plaintiff DDB Technologies, L.L.C. ("DDB"), is a Texas limited liabilitycompan y hav ing its principal place of business at 107 Laura Lane, A ustin, Texas 78746, which iswithin th is judicial district.

2. On information and belief, Defendant Gan nett Co., Inc. ("Gannett") does businessas USA TODAY and is a Delaware corporation with its headquarters at 7950 Jones BranchDrive, McLean, Virginia 22107. Although Gannett is engaged in business in the State of Texas,it has not designated an agent for service of process in the State. Therefore, the Secretary of


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State is an agent for service of process for Gannett pursuant to TEX. CIV. PRAc. & REM. CODE 17.044.

3. On information an d belief, Defendant Gannett Satelli te Information Netwo rk, Inc.("Gannett Satellite") does business as USA TODAY and is a Delaware corporation with itsheadquarters at 7950 Jones Branch Drive, McLean, Virginia 22107. On information and belief,Gannett Satellite operates as a subsidiary of Gannett. Gannett Satellite has designated an agentfor service of process in the State of Texas: C T C orp Systems, 350 N. St. Paul Street, Suite 2900,Dallas, TX 75201.

4. On information and belief, Defendant USA TODAY Sports Media Group, LLC("USA TODAY Sports Media") is a Delaware limited liability company with its headquarters at1440 Broadway, 17th Floor, New York, NY 10016. On information and belief, USA TODAYSports Media operates as a subsidiary of Gannett. Although USA TODAY Sports Media isengaged in business in the State of Texas, it has not designated an agent for service of process inthe State. Therefore, the Secretary of State is an agent for service of process for USA TODAYSports Media pursuant to TEX. CIV. PRA C. & REM . CODE 17.044.

5. Defendants are collectively referred to hereinafter as "USA TODAY."6. USA TODAY transacts business within the State of Texas and in this judicial

district, and has committed acts of patent infringement as hereinafter set forth within the State ofTexas and this judicial district. Such business includes, without limitation, USA TODAY' s

operation of its Internet website, www.usatoday.com/sports/, which is available to and accessedby users, customers, and potential customers of U SA TO DA Y within this judicial district.

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JURISDICTION AND VENUE7. This is a civil action for patent infringement arising under the patent laws of the

United States, Title 35, United States Code. This Court has jurisdiction under 35 U.S.C. 271,et seq., and 28 U.S.C. 1331 and 1338.

8. This Court has personal jurisdiction over USA TODAY pursuant to Tex. Civ.Prac. & Rem. Code 17.041 et seq. Personal jurisdiction generally exists over USA TODAYbecause USA TODAY has minimum contacts with this forum as a result of business regularlyconducted within the State of Texas and within this district, and, on information and belief,

specifically as a result of, at least, committing the tort of patent infringement within Texas andthis district. Personal jurisdiction also exists because, on information and belief, USA TODAYhas entered into numerous contracts with customers in Texas for products and services offeredby USA TODAY, which products and services involve, among other things, the knowing andrepeated transmission of data over the Internet. This Court's jurisdiction over USA TODAYcomports with the constitutional standards of fair play and substantial justice and arises directlyfrom the USA TOD AY ' s purposeful minimum contact with the State of Texas.

9. Venue is proper in this Court under 28 U.S.C. 1391(b) and (c) and 28 U.S.C. 1400(b).

THE PATEN TS-IN-SUIT10. On June 11, 1996, United States Patent No. 5,526,479 ("the '479 Patent"), entitled

"Method and Apparatus for Broadcasting Live Events to Another Location and Producing aComputer Simulation of the Events at that Location," was duly and legally issued by the UnitedStates Patent and Trademark Office to David R. Barstow and Daniel W. Barstow. A copy of the`479 Patent is attached hereto as Exhibit A.

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11. On September 23, 1997, United States Patent No. 5,671,347 ("the '347 Patent"),entitled "Method and Apparatus for Broadcasting Live Events to Another Location andProducing a C omputer Simulation of the E vents at that Location," was duly and legally issued bythe United States Patent and Trademark Office to David R. Barstow and Daniel W. Barstow. Acopy of the '347 Patent is attached hereto as Exhibit B.

12. On March 20, 2001, United States Patent No. 6,204,862 ("the '862 Patent"),entitled "Method and Apparatus for Broadcasting Live Events to Another Location andProducing a C omputer Simulation of the E vents at that Location," was duly and legally issued bythe United States Patent and Trademark Office to David R. Barstow and Daniel W. Barstow. Acopy of the '862 Patent is attached hereto as Exhibit C.

13. On M ay 13, 2008, Un ited States Patent No. 7,373,587 ("the '587 Patent"), entitled"Representing Sub-Events With Physical Exertion Actions," was duly and legally issued by theUnited States Patent and Trademark Office to David R. Barstow and Daniel W. Barstow. Acopy of the '587 Patent is attached hereto as Exhibit D.

14. The '479, '347, '862, and '587 Patents are referred to hereinafter as "the DDBPatents."

15. David R. Barstow and Daniel W. Barstow assigned the DDB Patents to DDB.DD B ow ns all right, title and interest in and to the DDB Patents.

FACTS

16. In the 1980s and continuing through the early 1990's, Dr. David R. Barstow, aPartner in and President of DDB, along with his brother, Daniel W. Barstow, a Partner in DDB,developed a method and apparatus for providing remote viewers with simulations of live

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sporting events such as baseball, football, and basketball games, etc. All of the technologyrequired to produce such simulations is embodied in the DDB Patents.

17. On June 15, 2004, DDB initiated a patent infringement suit against MLBAdvanced Media, L.P. ("MLBAM"), a competitor of USA TODAY in the live game simulationproducts/services industry, alleging that MLBAM's live game simulation product(s)/service(s)infringed the '479, '347, and '862 Patents. This suit received press attention in the industry andresulted in the marking of MLBAM's competing live game simulation product(s)/service(s) withone or more of the DDB Patents.

18. Between April 8, 2010 and November 28, 2011, DDB initiated patentinfringement suits against several other competitors of USA T OD AY in the live gam e simulationproducts/services industry (including, for example, ESPN Inc.), alleging that each competitor'sl ive game simulation p roduct(s)/service(s) infringed the D DB Patents. These suits received pressattention and resulted in the marking of competing live game simulation product(s)/service(s)with one or more of the DDB P atents.

19. DD B is in compliance with applicable marking and notice provisions of 35 U.S.C. 287, with respect to the DDB Patents.

20. Without DDB's permission, USA TODAY began providing live game simulationproducts/services that embody the invention(s) set forth in the DDB patents. At a minimum, forinstance, USA TODAY has provided and continues to provide products/services through its

www.usatoday.com/sports/ websiteincluding the "Play by play" and/or "Box score"products/servicesthat enable remote users to watch simulations of live sporting events (e.g.,baseball, football, hockey, etc.). See, e.g., Exhibit E.

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21. On information and belief, USA TODAY has known of the DDB Patents andknown that its live game simulation products/services infringe the DDB Patents. For instance,on information and belief, USA TODAY has known of the DDB Patents based on DDB'slawsuits against USA TODAY's competitors for infringement of the DDB Patents by competinglive simulation products/services and/or the marking of competing live simulationproducts/services with the DDB Patents. USA TODAY also has knowledge of the DDB Patentsas a result of DD B filing this complaint.

COUNT I:INFRINGEM ENT OF THE '479 PATENT

22. DDB repeats and realleges each of the allegations of paragraphs 1-21 as if setforth in full.

23. DDB has never licensed USA TODAY under any of the DDB Patents orotherwise authorized USA TOD AY to practice the '479 Patent.

24. USA TODAY has infringed and continues to infringe one or more of the claimsof the '479 Patent by making, selling, offering for sale, and/or using live game simulationproducts and/or services (including, for example, USA TODAY's "Play by play" and/or "Boxscore" products/services depicted in Exhibit E) covered by claims of the '479 Patent, withoutDDB's authorization in violation of 35 U.S.C. 271(a) .

25. On information and belief, USA TODAY has infringed and continues to infringeone or m ore of the claims of the '479 Patent with actual knowledge of the '479 Patent.

26. On information and belief, USA TODAY has in the past and continues topromote, advertise, and provide access to its live game simulation products/services to users,

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customers, and potential customers by, at a m inimum, providing links to i ts l ive game simulationproducts/services on its www.usatoday.com/sports/ website. See, e.g., Exhibit F.

27. On information and belief, USA TODAY has engaged in this conduct with theintent to lead others to engage in conduct that USA TODAY knew would constitute aninfringement, in violation of 35 U.S.C. 271(b).

28. On information and belief, USA TODAY also engaged in this conduct whileknowing that its live game simulation products and/or services were especially made orespecially adapted for use in an infringement of the '479 Patent and were not staple articles or

comm odities of com merce suitable for substantial non-infringing use, in v iolation of 35 U.S.C. 271(c).

29. USA TO DA Y's infringing conduct described above is willful and deliberate.30. USA TO DA Y's infringing activities have damaged and continue to damage DD B.31. On information and belief, USA TODAY will continue to infringe the '479

Patent, causing irreparable harm to DDB unless enjoined by this Court.

COUNT IIINFRINGEME NT OF THE '347 PATENT32. DDB repeats and realleges each of the allegations of paragraphs 1-31 as if set

forth in full.33. DDB has never licensed USA TODAY under any of the DDB Patents or

otherwise authorized USA TOD AY to practice the '347 Patent.34. USA TODAY has infringed one or more of the claims of the '347 Patent by

making, selling, offering for sale, and/or using live game simulation products and/or services(including, for example, USA TODAY's "Play by play" and/or "Box score" products/services

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depicted in Exhibit E) covered by claims of the '347 Patent, without DDB's authorization inviolation of 35 U. S .0 . 271(a).

35. On information and belief, USA TODAY has infringed one or more of the claimsof the '347 Patent with actual knowledge of the '347 Patent.

36. On information and belief, USA TODAY has promoted, advertised, and providedaccess to its live game simulation products/services to users, customers, and potential customersby, at a minimum, providing links to its live game simulation products/services on itswww.usatoday.com/sports/ website. See, e.g., Exhibit F.

37. On information and belief, USA TODAY engaged in this conduct with the intentto lead others to engage in condu ct that USA T OD AY knew w ould constitute an infringement, inviolation of 35 U.S.C. 271(b).

38. On information and belief, USA TODAY also engaged in this conduct whileknowing that its live game simulation products and/or services were especially made orespecially adapted for use in an infringement of the '347 Patent and were not staple articles orcomm odities of com merce suitable for substantial non-infringing use, in v iolation of 35 U.S.C. 271(c).

39. USA TO DA Y's infringing conduct described above is willful and deliberate.40. USA T OD AY 's infringing activities have damaged DD B.

COUNT IIIINFRINGEME NT OF THE '862 PATENT

41. DDB repeats and realleges each of the allegations of paragraphs 1-40 as if setforth in full.

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42. DDB has never licensed USA TODAY under any of the DDB Patents orotherwise authorized USA TOD AY to practice the '862 Patent.

43. USA TODAY has infringed one or more of the claims of the '862 Patent bymaking, selling, offering for sale, and/or using live game simulation products and/or services(including, for example, USA TODAY's "Play by play" and/or "Box score" products/servicesdepicted in Exhibit E) covered by claims of the '862 Patent, without DDB's authorization inviolation of 35 U.S.C. 271(a).



46. On information and belief, USA TODAY engaged in this conduct with the intentto lead others to engage in conduct that US A T OD AY knew w ould constitute an infringemen t, inviolation of 35 U.S.C. 271(b).


comm odities of com merce suitable for substantial non-infringing use, in v iolation of 35 U.S.C. 271(c).


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COUNT IVINFRINGEME NT OF THE '587 PATENT50. DDB repeats and realleges each of the allegations of paragraphs 1-49 as if set

forth in full.51. DDB has never licensed USA TODAY under any of the DDB Patents or

otherwise authorized USA TOD AY to practice the '587 Patent.52. USA TODAY has infringed one or more of the claims of the '587 Patent by

making, selling, offering for sale, and/or using live game simulation products and/or services(including, for example, USA TODAY's "Play by play" and/or "Box score" products/servicesdepicted in Exhibit E) covered by claims of the '587 Patent, without DDB's authorization inviolation of 35 U. S .C. 271(a).



55. On information and belief, USA TODAY engaged in this conduct with the intentto lead others to engage in condu ct that USA T OD AY knew w ould constitute an infringement, inviolation of 35 U. S . C . 271(b).


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comm odities of co mm erce suitable for substantial non-infringing use, in violation of 35 U .S.C. 271(c).


REQUEST FOR JURY TRIAL59. Pursuant to FED . R. Civ. P. 38, DD B dem ands a trial by jury of any issue triable of

right by a jury.

PRAYER FOR RELIEFTHE REFO RE, DDB prays for relief against USA T OD AY as follows:A . Judgment that USA TODAY has infringed and continues to infringe one or more

claims of the DDB Patents in violation of 35 U.S.C. 271(a), (b), and (c), and that suchinfringement is willful;

B . An award of damages incurred by DDB as a result of USA TODAY'sinfringement o f the DD B Patents, said damages to be trebled in v iew of the w illful and deliberatenature of the infringement;

C . A preliminary and permanent injunction enjoining USA TODAY, its officers,agents, servants, employees and attorneys, and other persons in active concert or participationwith USA T OD AY from further infringement of the '479 Patent;

D. An assessment of costs, including reasonable attorney fees pursuant to 35 U.S.C. 285, and prejudgment interest against USA TO DAY ; and

E. Such other and further relief as this Court may d eem just and proper.

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Respectfully submitted,

Michael D. Gannon ([email protected] )Leif R. Sigmond, Jr. (sigmond@ mbhb.com )Rory P. Shea ([email protected] )John D. Smith ([email protected] )McDonnell BoehnenHulbert & Bergh off LLP300 South W acker Drive, Suite 3100Chicago, Illinois 60606Tel: (312) 913-0001Fax: (312) 913-0002

/s/ James G. RuizJames G . Ruiz (jruiz@w instead.com )TX B ar No. 17385860Winstead PC401 Congress Av enue, Ste.2100Austin, TX 78701Tel: (512) 370-2818Fax: (512) 370-2850

Counsel for PlaintiffDDB Technologies L.L.C.

Dated: March 15, 2013

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ddb technologies v. gannett company et. al

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