ddb technologies v. sportsdirect

8/3/2019 DDB Technologies v. SportsDirect

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DISTRICTDISTRICTDIVISIONUSTINC O U R TOF TEXASUNITED STATESFOR THE WESTERN

DDB TECHNOLOGIES L.L.C.,)

)) Civil Action No. 11 -cv-942)) Judge:

V. ))) JURY DEMANDEDSPORTSDIRECT I N C . , ))Defendant. ))

COMPLAINT FOR PATENT INFRINGEMENT AND DAMAGESTO THE HONORAB L E JUDG E OF SAID COURT:

Plaint i ff DDB Techno logies , L .L .C. , f i les this Com plaint for Patent Infr inge men t andDamag es against SportsDirect Inc. , and wo uld respectfully show the Cou rt as follows:

THE PARTIES1. Plaintiff DDB Technologies, L.L.C. ("DDB"), is a Texas limited liability

company having i ts principal place of bu siness at 107 L aura L ane , Au stin , Texas 78746, w hich isw ithin this judicial d istrict.

2. Defendant SportsDirect Inc. ("SDI") is a Canadian corporation with itsheadquar ters at 211 Horseshoe La ke Drive , Halifax, NS Canada B 3S 0139.

3. SDI transacts business w ithin the State o f Texa s and in this judicial district, andhas committed ac ts of patent infr ingem ent as hereinafter set forth w ithin the State of Te xas andthis judicial distr ict . Such business includes, without l imitat ion, SDI's operat ion of Internetwebsites, such as newsday.sportsdirectinc.com and scores.suntimes.com, w hich are available to ,


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accessed by, and subscribed to by users, customers, and potential customers of SDI within thisjudicial district.

JURISDICTION AND VENUE4 . 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.

5. This Cou r t has personal jur i sd ic t ion over SDI pursuant to TEX. C IV. PRA C. & REM .CODE 17 .041 et seq. Personal jurisdiction generally exists over SDI because SDI has minimumcontacts with this forum as a result of business regularly conducted within the State of Texas andwithin this district, and, on information and belief, specifically as a result of, at least, committingthe tort of patent infringement within Texas and this district. Personal jurisdiction also existsbecause, on information and belief, SDI has entered into numerous contracts with customers inTexas for products and services offered by SDI, which products and services involve, among

other things, the knowing and repeated transmission of data over the Internet. This Court'sjurisdiction over SDI comports with the constitutional standards of fair play and substantialjustice and arises directly from the SDPs purposeful minimum contact with the State of Texas.

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

7 . Although SDI has engaged in business in the State of Texas, SDI has notdesignated an agent for service in the State. Therefore, the Secretary of the State is an agent forservice of process for SDI pursuant to TEX. CIV. PRA C. & REM . CODE 17 .044 .

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THE PATENTS-IN-SUIT8. On June 11 , 1996 , Uni ted S ta tes Pa ten t No . 5 ,526 ,479 ("the '479 Pa ten t") , en t it l ed

"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 a t tached hereto as Exhibi t A.

9. 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 and

Produc ing a Co mputer S imula t ion o f the Even ts a t tha t Lo ca t ion ," wa s du ly and lega l ly i ssued bythe United States Patent and Trademark Office to David R. Barstow and Daniel W. Barstow. Acopy of the '347 Patent is a t tached hereto as Exhibi t B .

10. 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 andProduc ing a Co mputer S imula t ion o f the Even ts a t tha t Lo ca t ion ," wa s du ly and lega l ly i ssued bythe United States Patent and Trademark Office to David R. Barstow and Daniel W. Barstow. Acopy of the '862 Paten t is a t tached he reto as Exhibi t C.

11. On M ay 1 3 , 2008 , U ni ted S ta tes Pa ten t No . 7 ,373 ,587 (" the '587 Pa ten t") , en t it l ed"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. A

copy o f the '587 Paten t is a t tached hereto as Exhibi t D.12. The '479, '347, '862, and '587 Patents are referred to hereinafter as "the DDB

Patents ."

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13.avid R. Barstow and Daniel W. Barstow assigned the DDB Patents to DDB.DDB owns all right, title and interest in and to the DDB Patents.FACTS

14 . 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 to remote viewers simulations of live sportingevents such as baseball, football, and basketball games, etc. All of the technology required toproduce such simulations is embodied in the DDB Patents.

15. Without DDB's permission, SDI began providing live game simulationproducts/services that embody the invention(s) set forth in the DDB patents. At a minimum, forinstance, SDI has provided and continues to provide products/services through thenewsday.sportsdirectinc.com and scores.suntimes.com websites that enable remote users towatch a simulation of live sporting events such as baseball games, football games, etc. See, e.g.,Exhibit E-F.

16 . On June 15, 2004, DDB initiated a patent infringement suit against MLBAdvanced Media, L.P. ("MLBAM"), a competitor of SDI 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.

17 . Between April 8, 2010 and June 28, 2010, DDB initiated patent infringement suitsagainst several competitors of SDI in the live game simulation products/services industry(including, for example, ESPN Inc.), alleging that each competitor's live game simulation

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product(s)/service(s) infringed the DDB Patents. These suits received press attention andresulted in the marking of other competing live game simulation product(s)/service(s) with oneor more o f the DDB Pa ten ts.

COUN T I:INFRINGEMENT OF THE '479 PATENT

18. DDB repeats and realleges each of the allegations of paragraphs 1-17 as if setforth in full .

19. DDB is in compliance with any applicable marking and notice provisions of 35U.S.C . 287, with respect to the '479 Pa tent .

20. DDB has never licensed SDI under any of the DDB Patents or otherwiseau thor ized SD I to pract ice the '479 Pa tent .

21. SDI has infringed and continues to infringe one or more of the claims of the '479Patent by making, selling, offering for sale, and/or using live game simulation products and/orservices (including, for example, SDI's product/service depicted in Exhibit E) covered by claimsof the '479 Patent , w ithout DDB 's author izat ion in viola t ion of 35 U.S.C. 271(a) .

22. On in format ion and be l ie f , SDI has know ledge o f the ex is tence o f the '479 Pa ten t .For instance, on information and belief, SDI has knowledge of the '479 Patent based on DDB'slawsuits against SDI's competitors for infringement of the DDB Patents and/or the marking ofcompet ing l ive s imula t ion produc ts /serv ices w i th the DD B Pa ten ts .

23. SDI has in the past and continues to promote, advertise, and provide access to itslive game simulation products/services to users, customers, and potential customers by, at aminimum, providing links to its live game simulation products/services on thenewsday . spor tsd i r ec t inc . com and scores . sun t imes .com websi tes . See, e.g., Exhibit F .

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24. On in format ion and be l ie f , SDI has engag ed in th is conduc t w i th the in ten t to l eadothers to engage in conduct that SDI knew would constitute an infringement, in violation of 35U.S.C. 271(b).

25. On information and belief, SDI also engaged in this conduct while knowing thatits live game simulation products and/or services were especially made or especially adapted foruse in an infringement of the '479 Patent and were not staple articles or commodities ofcomme rce su i tab le fo r subs tan t ia l non- in f r ing ing use , in v io la t ion o f 35 U .S .C . 271(c) .

26. SDI's infringing activities have damaged and continue to damage DDB. Oninformation and belief, SDI will continue to infringe the '479 Patent, causing irreparable harm toDDB un less en jo ined by th is Cour t .

27. In view of its knowledge of the '479 Patent, SDI's continued acts of infringementare wil l ful .

COUNT IIINFRINGEMENT OF THE '347 PATENT


29. DDB is in compliance with any applicable marking and notice provisions of 35U.S.C. 287 , with respect to the '347 Patent .

30. DDB has never licensed SDI under any of the DDB Patents or otherwiseauthor ized SD I to pract ice the '347 Paten t .

31. SDI has infringed and continues to infringe one or more of the claims of the '347Patent by making, selling, offering for sale, and/or using live game simulation products and/orservices (including, for example, SDI's product/service depicted in Exhibit E) covered by claimsof the '347 Patent , w ithout DDB 's author izat ion in viola t ion of 35 U.S.C. 271(a) .

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32. On in format ion and be l ie f , SDI has know ledge o f the ex is tence o f the '347 Pa ten t .For instance, on information and belief, SDI has knowledge of the '347 Patent based on DDB'slawsuits against SDI's competitors for infringement of the DDB Patents and/or the marking ofcompet ing l ive s imula t ion produc ts /serv ices w i th the D DB Pa ten ts .

33. SDI has in the past and continues to promote, advertise, and provide access to itslive game simulation products/services to users, customers, and potential customers by, at aminimum, providing links to its live game simulation products/services on thenewsday . spor tsd i r ec t inc . com and scores . sun t imes .com websi tes . See, e.g, Exhibi t F.

34. On in format ion and be l ie f , SDI has engag ed in th is conduc t w i th the in ten t to leadothers to engage in conduct that SDI knew would constitute an infringement, in violation of 35U.S .C . 2 71(b).

35. On information and belief, SDI also engaged in this conduct while knowing thatits live game simulation products and/or services were especially made or especially adapted foruse in an infringement of the '347 Patent and were not staple articles or commodities ofcomme rce su i tab le fo r subs tan t ia l non- in f r ing ing use , in v io la t ion o f 35 U .S .C . 271(c) .

36. SDI's infringing activities have damaged and continue to damage DDB. Oninformation and belief, SDI will continue to infringe the '347 Patent, causing irreparable harm toDDB un less en jo ined by th is Cour t .

37. In view of its knowledge of the '347 Patent, SDI's continued acts of infringementare wil l ful .

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COUNT IIIINFRINGEMENT OF THE '862 PATENT


39. DDB is in compliance with any applicable marking and notice provisions of 35U.S .C . 28 7 , w i th respec t to the ' 862 Pa ten t .

40. DDB has never licensed SDI under any of the DDB Patents or otherwiseauthor ized SD I to pract ice the '862 Paten t .

41. SDI has infringed and continues to infringe one or more of the claims of the '862Patent by making, selling, offering for sale, and/or using live game simulation products and/orservices (including, for example, SDI's product/service depicted in Exhibit E) covered by claimsof the ' 862 Pa ten t , w i thout DD B 's au thor iza t ion in v io la tion o f 35 U.S .C . 27 1(a).

42. On in format ion and be l ie f , SDI has know ledge o f the ex is tence o f the '862 Pa ten t .For instance, on information and belief, SDI has knowledge of the '862 Patent based on DDB's

lawsuits against SDI's competitors for infringement of the DDB Patents and/or the marking ofcompe ting l ive s imulat ion products/services with the DDB Patents .

43. SDI has in the past and continues to promote, advertise, and provide access to itslive game simulation products/services to users, customers, and potential customers by, at aminimum, providing links to its live game simulation products/services on thenewsday . spor tsd i r ec t inc . com and scores . sun t imes .com websi tes . See, e. g. , Exhibit F .

44. On in format ion and b e l ie f , SDI has eng aged in th is conduc t w i th the in ten t to l eadothers to engage in conduct that SDI knew would constitute an infringement, in violation of 35U.S.C. 271(b).

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45.n information and belief, SDI also engaged in this conduct while knowing thatits live game simulation products and/or services were especially made or especially adapted foruse in an infringement of the '862 Patent and were not staple articles or commodities ofcomme rce su i tab le fo r subs tan t ia l non- in f r ing ing use , in v io la tion o f 35 U.S .C . 271(c) .

46. SDI's infringing activities have damaged and continue to damage DDB. Oninformation and belief, SDI will continue to infringe the '862 Patent, causing irreparable harm toDDB un less en jo ined by th is Cour t.

47. In view of its knowledge of the '862 Patent, SDI's continued acts of infringementare w il lfu l .

C O U N T I VINFRINGEMENT OF THE '587 PATENT


49. DDB is in compliance with any applicable marking and notice provisions of 35U.S.C. 287, w ith respect to the '587 Pate nt .

50. DDB has never licensed SDI under any of the DDB Patents or otherwiseauthor ized SDI to pract ice the '587 Patent .

51. SDI has infringed and continues to infringe one or more of the claims of the '587Patent by making, selling, offering for sale, and/or using live game simulation products and/orservices (including, for example, SDI's product/service depicted in Exhibit E) covered by claimsof the '587 Patent , w ithout DDB 's author izat ion in viola t ion of 35 U.S.C. 271 (a) .

52. On in format ion and be l ie f , SDI has know ledge o f the ex is tence o f the '587 Pa ten t .For instance, on information and belief, SDI has knowledge of the '587 Patent based on DDB's

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lawsuits against SDI's competitors for infringement of the DDB Patents and/or the marking ofcompeting live simulation products/services with the DDB Patents.

53 . SDI has in the past and continues to promote, advertise, and provide access to itslive game simulation products/services to users, customers, and potential customers by, at aminimum, providing links to its live game simulation products/services on thenewsday.sportsdirectinc.com and scores.suntimes.com websites. See, e.g., Exhibit F.

54 . On information and belief, SDI has engaged in this conduct with the intent to leadothers to engage in conduct that SDI knew would constitute an infringement, in violation of 35

U.S.C. 271(b).55 . On information and belief, SDI also engaged in this conduct while knowing that

its live game simulation products and/or services were especially made or especially adapted foruse in an infringement of the '587 Patent and were not staple articles or commodities ofcommerce suitable for substantial non-infringing use.

56 . SDI's infringing activities have damaged and continue to damage DDB. Oninformation and belief, SDI will continue to infringe the '587 Patent, causing irreparable harm toDDB unless enjoined by this Court.

57 . In view of its knowledge of the '587 Patent, SDI's continued acts of infringementare willful.

REQUEST FOR JURY TRIAL58 . Pursuant to FED. R. Civ. P. 38, DDB demands a trial by jury of any issue triable of

right by a jury.

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PRAYER FOR RELIEFTHEREFO RE, DD B prays fo r r e li e f aga ins t SDI as fo llows :A . Judgment that SDI 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 such infringement iswil l fu l ;

B . An award of damages incurred by DDB as a result of SDI's infringement of theDDB Patents, said damages to be trebled in view of the willful and deliberate nature of thein f r ingement ;

C. A preliminary and permanent injunction enjoining SDI, its officers, agents,servants, employees and attorneys, and other persons in active concert or participation with SDIf rom fur ther in f ringement o f the DD B Pa ten ts;

D. An assessment of costs, including reasonable attorney fees pursuant to 35 U.S.C. 285, and prejudg men t in teres t against SDI; and

E . Such other and fur ther rel ief as this Cou r t may de em jus t and proper .

Dated : Novem ber 1 , 2011Respectfu l ly submit ted ,/ s/ J ames G . Ruiz

M icha e l D . G a n n o n (ga n n o n @m bhb . co m )L ei f R . S igmond , J r. (s igmond@ mbhb.com )Rory P . Shea ([email protected] )Paul A. Kafadar (ka [email protected] )John D. Smith ([email protected] m )McD onnell BoehnenHulbert & B erghoff LLP300 South W acker Dr ive , Su i te 3100Chicago , I l linois 60606Tel : (312) 913 -0001Fax: (312) 913-0002

James G . Ru iz (j ru iz@wins tead .com )T X B a r N o . 1 7385860W instead PC401 Congress Avenue , S te .2100Aust in , TX 78701Tel : (512) 370-281 8Fax: (512) 370-2850

Counsel for PlaintiffDDB Technologies L.L.C.

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ddb technologies v. sportsdirect

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