Last week, Apple filed a lawsuit for declaratory judgment against Chian Chiu Li, a Fremont, California resident who is about to file a patent infringement lawsuit against Apple using patent 11,016,564 titled “System and method of providing information”. The patent relates to eye tracking technologies. Apple filed a lawsuit for “declaratory judgment of non-infringement of U.S. Patent 11,016,564 in the Northern District of California in an effort to prevent the patent infringement case from proceeding.”
Type of action
According to the official court filing, Apple notes in part that “this is an action for a declaratory judgment of non-infringement arising under the patent laws of the United States, Title 35 of the United States Code.
Apple has been at the forefront of designing and manufacturing industry-defining consumer electronics devices for more than four decades. Apple’s commitment to innovation led to some of the most popular products on the market during this period, including, for example, the Macintosh PC, iPod, MacBook, iPhone, iPad, Apple Watch and AirPods. Because of Apple’s commitment to innovation, the United States Patent and Trademark Office has granted Apple thousands of patents protecting the technologies behind its breakthrough inventions.
According to information and beliefs, the defendant is the sole proprietor of United States Patent No. 11,016,564 (“the ‘564 patent” or “claimed patent”). Defendant’s prior actions and statements have created substantial controversy of sufficient immediacy and reality to warrant issuance of a declaration of non-infringement as to whether the Apple products infringe the claimed patent.
On April 5, 2022, defendant filed a patent infringement lawsuit against Apple in the Northern District of California. See Chian Chiu Li v. Apple Inc., Case No. 4:22-cv-2159 (Dkt.1) (hereinafter “Original Complaint”) (attached as Exhibit A).
In the original complaint, the defendant alleged that Apple products, such as several versions of the iPhone and iPad Pro, infringed the ‘564 patent.
Specifically, the defendant alleged that Apple “directly infringes and continues to directly infringe at least claims 1, 4, 5, 8, 11, 12, 14, 18 and 20 of the ‘564 patent . . . in particular by manufacturing, using, selling, offering to sell and/or importing . . . counterfeit goods include[ing] at least the following devices: (i) iPhone 13 Pro Max, iPhone 13 Pro, iPhone 13 mini, iPhone 13, iPhone 12 Pro Max, iPhone 12 Pro, iPhone 12 mini, iPhone 12, iPhone 11 Pro Max, iPhone 11 Pro, iPhone 11, iPhone XS Max, iPhone XS, iPhone XR and iPhone X, and (ii) 12.9-inch iPad Pro (4th generation), 12.9-inch iPad Pro (3rd generation), 11-inch iPad Pro (2nd generation) , and 11-inch iPad Pro (collectively, the “Defendant Devices”). ”
The defendant further alleged that the “Unlock with Face ID” feature on the defendant devices violated every limitation of claim 1 of the claimed patent, as well as every limitation of claims 8 and 14.
Defendant further alleged in the original complaint that Apple was “notified of the ‘564 patent on June 9, 2021 when [Mr. Li] sent Mr. Asa Wynn-Grant, Legal Counsel, IP Transactions at Apple, an email and claim table showing Apple’s infringement of claims 1, 8 and 14 of the ‘564 patent”, and therefore “Apple was notified of its infringement of the ‘564 patent at least as early as June 9, 2021.”
Indeed, as mentioned above, the history of the parties goes back beyond the defendant’s actual trial. The defendant and Apple’s respective representatives exchanged correspondence over several months before the defendant filed the original complaint. Apple maintained throughout the parties’ submissions that it did not infringe the ‘564 patent and explained why a license was not required.
Prior to filing the Original Complaint and in the Original Complaint, the Defendant argued that Apple was unlicensed and alleged to have infringed the ‘564 patent.
Without notice to Apple, on May 17, 2022, Respondent voluntarily dismissed the Initial Complaint without prejudice to the new filing. Defendant provided no explanation or rationale for its decision to voluntarily dismiss the original complaint without prejudice to filing again here or in another district, and provided Apple with no assurance that Apple was immune from a future lawsuit involving the claimed patent and substantially identical infringement allegations.
Apple has a reasonable apprehension that the defendant will bring a new lawsuit and allege that the defendant devices infringe the ‘564 patent. The pre-trial communications between Apple and the defendant and the defendant’s dismissal of the original complaint without notice and without prejudice demonstrate that there is a strong likelihood that the defendant will again assert infringement of the ‘564 patent against Apple. In the meantime, the cloud of defendant’s allegations and litigation hangs over Apple.” [Emphasis here set by Patently Apple]
Apple is asking the court to declare judgment in favor of Apple against the defendant; Declare that Apple has not and does not directly, contributorily, induce, or willfully infringe any claim of the ‘564 patent by making, using, selling, offering to sell, and/or importing the Accused Devices; Considering this an exceptional case under 35 USC § 285, and awarding Apple its reasonable attorneys’ fees, and more.
