Complaint for Patent Infringement in AT&T v. Microsoft.
Source: AT&T. Tech Law Journal converted an MS Word file into HTML.
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
- against -
Civil Action No. _________
COMPLAINT FOR PATENT
Plaintiff AT&T Corp. alleges as follows:
1. Plaintiff AT&T Corp. (“AT&T”) is a corporation organized under the laws of the State of New York, and having executive offices in this District at 32 Avenue of the Americas, New York, New York 10013-2412.
2. Defendant Microsoft Corporation (“Microsoft”) is a corporation organized under the laws of the State of Washington, having its principal place of business at One Microsoft Way, Redmond, Washington 98052-6399, and having at least two offices in the State of New York including an office in this District at 825 Eighth Avenue, New York, New York 10019.
JURISDICTION AND VENUE
3. This is a civil action for patent infringement arising under the United States patent statutes, Title 35, United States Code, § 1 et seq.
4. The Court has jurisdiction over the subject matter of this action under Title 28 United States Code, §§ 1331 and 1338(a).
5. Microsoft is subject to this Court’s personal jurisdiction because it (i) transacts business within the State of New York through, inter alia, its office in this District; (ii) has designated an agent for service of process in the State of New York; (iii) has committed tortious acts of patent infringement within the State and in this District; (iv) has committed tortious acts of patent infringement without the State causing injury to person or property within the State and regularly does or solicits business, or engages in any other persistent course of conduct, or derives substantial revenue from goods used or consumed in the State; and (v) previously subjected itself to jurisdiction in the State by filing at least twelve suits in this Court including the following: Microsoft Corporation v. K&E Computer, Inc., No. 00 Civ. 7550 (RLC) (S.D.N.Y. filed October 5, 2000); Microsoft Corporation v. Alliance Tech., Inc., No. 99 Civ. 10254 (S.D.N.Y. filed October 4, 1999); Microsoft Corporation v. Yaruss, No. 99 Civ. 08904 (S.D.N.Y. filed August 13, 1999); and Microsoft Corp. v. NY Computer Exchange, Inc., No. 99 Civ. 08905 (S.D.N.Y. filed August 13, 1999).
6. Venue is proper in this District under Title 28 United States Code, §§ 1391(b)-(c) and 1400(b).
7. AT&T is one of the leading communications companies in the world providing voice, data, and video communications services to large and small businesses, consumers, and government entities.
8. Microsoft develops, manufactures, licenses, and supports a wide range of software products for a multitude of computing devices.
9. On January 19, 1988, the United States Patent and Trademark Office duly and legally issued U.S. Patent Number Reissue 32,580 (“the ‘580 Patent”) to Bishnu S. Atal and Joel R. Remde, entitled “Digital Speech Coder.” A copy of the ‘580 Patent is attached as Exhibit A. The ‘580 Patent relates to the field of speech coding, a field that studies the compression of speech signals. The ‘580 Patent is a reissue of United States Patent Number 4,472,832, which issued on September 18, 1984. The ‘580 Patent is assigned to AT&T.
10. Speech coding applications can reduce the size of a sound file that contains a voice recording. Because the file is smaller, it takes less time to transfer the file across a network, and the file takes up less space on storage devices, such as hard drives. Speech coding can be applied to everyday applications such as certain digital cellular telephones, video conferencing, voice messaging, and Internet voice communications.
11. Dr. Bishnu S. Atal, one of the inventors of the ‘580 Patent, is internationally recognized for his pioneering work in the field of speech coding. In addition to the ‘580 Patent, Dr. Atal has received 15 other U.S. Patents and numerous foreign patents. Throughout his career, he has published more than 90 technical works documenting his research, and his works have been cited more than 800 times by others. In recognition for his distinguished and continuing achievements in original research, Dr. Atal was elected to the National Academy of Engineering and the National Academy of Sciences, each of which is considered one of the highest honors that can be accorded a scientist or engineer. He is also a recipient of the Institute of Electrical and Electronics Engineers’ Signal Processing Society Award and Centennial Medal. In 1994, Dr. Atal received the Thomas Alva Edison Award. In 1996, Dr. Atal was named an AT&T Fellow. Presently, Dr. Atal is a Technology Director at the AT&T Shannon Labs in Florham Park, New Jersey.
12. Dr. Atal’s work on speech coding methods has been incorporated into several industry standards in the communications field.
13. Dr. Atal and Mr. Remde filed the original application that led to the issuance of the ‘580 Patent on December 1, 1981. To date, many companies have taken licenses from AT&T under the ‘580 Patent.
14. In April 1999, AT&T notified Microsoft that it was infringing the ‘580 Patent. Since April 1999, AT&T and Microsoft have participated in licensing discussions regarding the ‘580 Patent. These discussions resulted in AT&T’s offering Microsoft a license under the ‘580 Patent. To date, Microsoft has refused AT&T’s offer.
COUNT -- PATENT INFRINGEMENT
15. AT&T realleges and incorporates herein by this reference paragraphs 1 through 14 of this Complaint as though fully set forth herein.
16. AT&T is the sole owner of the entire right, title, and interest in the ‘580 Patent.
17. TrueSpeech® is a voice codec, a software program that codes and decodes voice signals. Microsoft has incorporated TrueSpeech® into its Windows® 95, Windows® 98, Windows® 2000, Windows NT®, and Windows Me® operating systems (collectively the “Microsoft Operating System Products”).
18. NetMeeting® permits users to hold video and audio conference calls over the Internet, allowing users to have face-to-face conversations. NetMeeting® includes a certain voice codec. Microsoft has incorporated NetMeeting® into certain editions of Windows® 98, Windows® 2000 and Windows Me® operating systems. Microsoft also distributes NetMeeting® through its Web site for users of Windows® 95, Windows® 98, and Windows NT®. See Microsoft Corporation, Windows NetMeeting 3.01 for Windows 95, Windows 98, and Windows NT 4.0, available at http://www.microsoft.com/windows/netmeeting/download/nm301x86.asp (last updated March 18, 1999) (attached as Exhibit B).
19. Microsoft has directly and contributorily infringed, and has induced others to infringe, one or more claims of the ‘580 Patent by making, using, offering to sell, and/or selling within the United States products that include the TrueSpeech® codec and/or the certain NetMeeting® codec, including the Microsoft Operating System Products. Microsoft has also infringed the ‘580 Patent both directly and indirectly by its separate distribution of NetMeeting®.
20. Microsoft continues to directly infringe, contributorily infringe, and induce others to infringe the '580 Patent.
21. Microsoft’s infringement has been willful.
22. AT&T has been, and will continue to be, damaged and irreparably harmed by Microsoft’s infringement, which will continue unless Microsoft is enjoined by this Court.
REQUEST FOR RELIEF
WHEREFORE, AT&T requests the following relief:
A. a permanent injunction against Microsoft, its officers, agents, servants, employees, attorneys, parent and subsidiary corporations, assigns and successors in interest, and those persons in active concert or participation with them, enjoining them from continued acts of infringement of the ‘580 Patent;
B. a judgment holding Microsoft liable for infringement of the ‘580 Patent;
C. an accounting for damages resulting from Microsoft’s infringement of the ‘580 Patent, together with pre-judgement and post-judgment interest;
D. a judgment holding that Microsoft’s infringement of the ‘580 Patent is willful, and a trebling of damages pursuant to Title 35 United States Code, § 284;
E. a judgment holding this Action an exceptional case, and an award to AT&T for its attorneys’ fees and costs pursuant to Title 35 United States Code, § 285; and
F. such other relief as the Court deems just and equitable.
Dated: New York, New York
May 26, 2001
FRIEDMAN KAPLAN SEILER & ADELMAN LLP
Robert D. Kaplan (RK3627)
Stephen C. Neal (Pro Hac Vice application to be filed)
Frank Pietrantonio (Pro Hac Vice application to be filed)
Counsel for Plaintiff AT&T Corp.
Laura A. Kaster
Editor's Note: The Demand for Jury Trial is not reproduced here.