telecommunication systems v. porto technology et. al

8/13/2019 TeleCommunication Systems v. Porto Technology Et. Al.

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IN TH E UNITED S T T ES D IS TR IC T C O U RTF O R T H E E ST E RN D IS TR IC T O F VIRGINI

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I i IFEB I 8 2 14

CLERK, U.S. DISTRICT COURTALEXANDRIA, VIRGINIATelecommunication Systems, Inc.,

Plaintiff Civil A c t i o n N o . cv HtfPorto Technology, LLC,Porto Technology, Co., Ltd, andJi-Soo Lee

D e f e nda nt s .

J U R Y T R I L D E M N D E D

C O M P L I N T F O R D E C L R T O R Y JU D G ME NT

N T U R E O F T HE C TIO N

1. This is a civil action under the Declaratory Judgment Act, 28 U.S.C. 2201, etseq., for declaration of patent non-infringement and/or invalidity of U.S. Patent No.6,233,518( the '518 patent or the Patent-in-Suit ).

P R T I E S

2. Plaintiff Telecommunication Systems, Inc. ( TCS ) is a Marylandcorporationwith a principal place of business at 275 West Street, Annapolis, MD 21401.

3. TCS is informed and believes, and thereupon alleges, that Defendant PortoTechnology, LLC ( PortoUSA is a Virginia Limited Liability Company having a principalplace of business at 10387 Main Street, Fairfax, Virginia 22030, and is a wholly ownedsubsidiary of Porto Technology, Co., Ltd.

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4. TCS is informed and believes, and thereupon alleges, that Defendant PortoTechnology,Co., Ltd ( Porto Korea ) is a corporation formed under the laws of the RepublicofKoreawith its principal place ofbusiness at 102,1302 Dukyoungdaero,Gwonsun-gu,Suwon-si, Gyunggido, Republic of Korea.

5. TCS is informed and believes, and thereupon alleges, that Defendant Ji-Soo Lee isan individual citizen ofThe Republic of Korea, residingat 120-1101 SamMaeul HanyangAPT1121 Hogye-dong, Dongan-gu, Anyang-si, Gyungki-do, Republic of Korea.

J U R IS D IC T IO N N D V E N U E6. This Court has personal jurisdiction over Defendants Porto Korea and Ji-Soo Lee

by virtue of 35 U.S.C. 293.7. This Court also has personal jurisdiction over Defendants Porto Korea, Porto

USA, and Ji-Soo Lee by virtue of their continuous, systematic contacts with the Commonwealthof Virginia and this Judicial District, and by virtue of its purposeful availment of the resources ofthis Judicial District. See, e.g., Porto Technology Co Ltd et l Cellco Partnership D/B/AVerizon Wireless Civ. A. No. 3:12cv 678-HEH (E.D.Va. September 9, 2012), and PortoTechnology Co Ltd et al Cellco Partnership D/B/A Verizon Wireless Civ. A. No. 3:13-cv-265-HEH (E.D. Va. April 26, 2013).

8. ThisCourt has subjectmatterjurisdictionpursuant to28U.S.C.1331,1332,1 3 3 8 a n d 2 2 0 1 .

9. Venue is proper in this Judicial District pursuant to 28 U.S.C. 1391 and 35U.S.C. 293.


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F C T U L B CK G RO U N D

10. TCS is a publicly traded company (NASDAQ:TSYS), and a leadingproviderofmission-critical wireless data solutions to carriers enterprise and government customers(includingthose residing in this Judicial District). TCS's wireless data offerings includelocation-based 9-1-1 services and messaging and location service infrastructure for wirelessoperators, and encrypted satellite communications for government customers.

11. TCSis heavily dependent on research anddevelopment, and the patenting of itsinnovations, for its success and continued growth. Todate, TCS has been granted over threehundred (340) U.S. patents.

12. On September20, 2012, Defendants PortoKorea and Porto USA filed a patentinfringementcomplaint in this Judicial District against Cellco PartnershipD/B/AVerizonWireless ( Cellco ), Civ. A.No. 3:12cv678, andassigned to the Richmond Division andJudgeHenry Hudson.

13. The Complaint alleged that Cellco infringed the 4518 patent, directly andindirectly, by offering for sale cellular telephoneswith VZNavigator Software, and byactivelyinducingothers to infringe,and contributingto the infringementby others.

14. VZ Navigator Software is made and sold to Cellco by TCS.15. CivilActionNo. 3:12cv678 wasdismissed for lack of standingonApril 22, 2013

by order of Judge Hudson, after it came to light that that Plaintiffs Porto Korea and Porto USAdid not have all necessary rights to enforce the '518 patent.

16. Civil ActionNo. 3:13cv265 was filed onApril 26, 2013 as an attempt to cure thelackof standing problem, by including thepurported ownerof the '518 patent, Ji-SooLee.


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17. According to a First Amended Complaint in Civ. A. No. 3:13cv265, Ji-Soo Lee isthe owner, by assignment, of the entire right, title and interest in the '518 patent.

18. TheFirst AmendedComplaintcontainedthe same allegations against the VZNavigator Software as was stated in the prior Civ. A.No. 3:12cv678.

19. Recently, Civ. A. No. 3:13cv265 was dismissed with prejudice as to Cellco.However, TCSwas requested to participate in court orderedmediation that led to an agreed-todismissal, andTCSwas subpoenaed to givediscovery documents and testimony.

20. Through the two previous law suits against Cellco, and in the course of mediationtalks, it becameapparent that Porto Korea, Porto USA and/or Ji-Soo Lee, regardTCS as aninfringer of the '518 patent.

21. Inpleadings filed in both prior litigations against Cellco, it has becomeapparentto TCS that Porto USA and Porto Korea, and by association, Ji-Soo Lee, view TCS s VZNavigatorproduct to be an infringementof the '518 patent, either directly or indirectly.

22. As a result of the pleadings filed in the Cellco complaints, an actual controversyexists between Porto USA, Porto Korea and Ji-SooLee regarding the invalidityof the '518patent, and/or non-infringementofTCS's VZNavigator and/or similar software products andm e t h o d s .

23. Defendants, in the aforementioned suits against Cellco, have asserted that Ji-SooLee is the ownerof the '518 patent, entitled Methodand Systemfor Providing An ImageVector-Based Traffic Information. A copy of the '518 patent is attached hereto as Exhibit 1.


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CL IM F O R RELIEF DECL R TION OF N O N I N F R I N G E M E N T N D O RINV LIDITY O F TH E 5 18 P TENT

24. TCS incorporates by reference and realleges each of the allegations set forth inParagraphs 1-24 above.

25. TCS has not and does not directly infringe, indirectly infringe, contribute to, orinduce infringement of any valid and enforceable claim of the '518 patent.

26. One or more claims of the '518 patent, including at least claim 1, is invalid forviolation of one or more provisions of 35 U.S.C. 102, 103, 112 and/or 282.

27. TCS is entitled to offer its productsand services, including the VZ Navigator andsimilar or related offerings under different brand names, without interference by Porto USA,P o rt o K o re a a n d/ o r J i- S oo L e e .

D EM N D F OR J U R Y T R I L

28. TCS demands a trial by jury on all issues so triable.

R E QU E ST E D R E L IE FWHEREFORE, TCS requests that:

a. This Court enter a judgment declaring that one or more claims of the ' 518 patentis invalid;

b. This Court enter a judgment declaringthat TCS has not directly infringed,contributorily infringed, or induced others to infringe any valid and enforceable claim of the '518patent;


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c. This Court enter a judgment declaringthat it is the right ofTCS to continue tomake, use and sell its productsand services, including the VZNavigator softwareas well asothersoftware products and related hardware thatprovide similarfunctionality as theVZNavigator to other customers of TCS;

d. ThatDefendants and its agents, representatives, attorneys, and those persons inactiveconcert or participationwith them, including Heung-SooLee, who receive actual noticethereof, bepreliminarily and permanently enjoined from threatening or initiating infringementlitigation against TCSor anyof its customers, distributors, or suppliers, or anyprospective orpresent customers, distributors or suppliers of TCS,or charging any of themeitherorally or inwriting with infringement of the '518 patent.

e. That the Court declare this case exceptional and award TCS its attorney's fees andexpenses incurred in this action;

f. TCS be awarded costs pursuant to 28 U.S.C. 1920;g. TCS be awarded relief under 28 U.S.C. 2202;h. TCSbe awardedsuch other and further relief as this Court deemsproper.

Edward A. Pennington (VBN 23511)[email protected] M I T H G A M B R E L L & R U S S E L L1055 Thomas Jefferson Street, NWSuite 4 0 0Washington, D.C. 20007Phone: (202) 263-4307Fax: (202) 263-4329Attorneyor PlaintiffTelecommunication Systems Inc

telecommunication systems v. porto technology et. al

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