Global Connect v. NobelBiz

7/27/2019 Global Connect v. NobelBiz

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COMPLAINT

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uite400North,3773HowardHughesParkway

LasVegas,Nevada

89109

(702)792-3773

(702)792-9002(fax)

Mark G Tratos (Bar No. 1086)Rob Phillips (Bar No. 8225)GREENBERG TRAURIG LLP3773 Howard Hughes ParkwaySuite 400 NorthLas Vegas, Nevada 89109

Telephone: (702) 792-3773Facsimile: (702) 792-9002

Gregory J. Casas (subject to admissionpro hac vice)Texas Bar No. 00787213Ross Spencer Garsson (subject to admissionpro hac vice)Texas Bar No. 00784112GREENBERG TRAURIG LLP300 West 6th Street, Suite 2050Austin, Texas 78701Telephone: (512) 320-7200Facsimile: (512) 320-7210Counsel for GLOBAL CONNECT, LLC

UNITED STATES DISTRICT COURT

DISTRICT OF NEVADA

GLOBAL CONNECT, LLC, a Nevada limitedliability company,

Plaintiff,

v.

NobelBiz, Inc., a Delaware corporation

Defendant.

Case No.

COMPLAINT FOR DECLARATORYJUDGMENT OF NON-INFRINGEMENTAND PATENT INVALIDITY

Plaintiff, Global Connect, LLC, (Global Connect or Plaintiff), by and through it

attorneys makes and files this Complaint against Defendant, NobelBiz, Inc., (NobelBiz o

Defendant); and hereby alleges and demands a jury trial.

THE PARTIES

1. Global Connect is a limited-liability company formed organized under the laws of th

State of Nevada with its principal place of business located at 5218 Atlantic Avenue, Suite 300

Mays Landing, New Jersey 08330.


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COMPLAINT

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LasVegas,Nevada

89109

(702)792-3773

(702)792-9002(fax)

2. Upon information and belief, NobelBiz is a privately held company incorporated

under the laws of the State of Delaware with its principal place of business at 5973 Avenida Encinas

Suite 202, Carlsbad, California 92008.

3.

On information and belief, NobelBiz is a provider of telecommunication solutions to

call centers worldwide.

4. NobelBiz has asserted it is the owner by assignment of U.S. Patent No. 7,899,169

issued on March 1, 2011 (the 169 Patent), U.S. Patent No. 8,135,122 (the 122 Patent), issued

March 13, 2012, and U.S. Patent No. 8,565,399, issued October 22, 2013 (the 399 Patent), which

are all entitled System and Method for Modifying Communication Information (MCI). Thes

three patents are all related, the 169 Patent is the grandparent patent of the 122 Patent and the 399

Patent (with the same parent patent application). A true and correct copy of the 399 Patent i

attached hereto at Exhibit A.

JURISDICTION AND VENUE

5. This is an action for declaratory relief of non-infringement and/or invalidity of the

399 Patent that arises under United States patent laws (35 U.S.C. 101, et seq.). These claims aris

under the Declaratory Relief Act, 28 U.S.C. 2201 and 2202.

6.

The Court has jurisdiction over this case under Title 35 of United States Code and

U.S.C. 1331 and 1338(a).

7. This Court has personal jurisdiction over Defendant because Defendant ha

established substantial contacts in and purposefully availed itself to the laws of the state of Nevada

thus establishing personal jurisdiction over the Defendant, including because, on information and

belief, NobelBiz is doing business in this District.

8.

Venue is proper in the United States District Court for the District of Nevada unde

28 U.S.C. 1391(b), 1391(c), 1391(d), 1400(b), 2201 and 2202, including because NobelBiz i

subject to personal jurisdiction in this District and because a substantial part of the events o

omissions giving rise to the claim occurred in this District.

. . .

. . .


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LasVegas,Nevada

89109

(702)792-3773

(702)792-9002(fax)

FACTUAL BACKGROUND

9. Global Connect is a business that provides web-based voice messaging, and since its

inception (on or before 2002) has helped a variety of organizations throughout the United States

Canada, and Puerto Rico to deliver personalized voice messages quickly and cost-effectively.

10. Global Connect has provided these services utilizing its interactive system (Globa

Connects System). Global Connects System uses a Voice Over Internet Protocol (VoIP) to

deliver prerecorded voice messages to designated telephone numbers over the Internet. Twice

Collection Advisor has named Global Connects System as one of the Top 100 Collection

Technology Products of the year.

11. In general terms, Global Connects System allows its clients to connect to Globa

Connects website, record a prerecorded message, select one or more call lists (having designated

telephone numbers), and schedule a distribution time for broadcasting that prerecorded message to

the designated telephone numbers. Global Connects System then broadcasts the prerecorded

message from Global Connects data centers located in Philadelphia, New York, and Canada.

12. Since September 2004 (and earlier), Global Connects System can and has set the

caller identification data (caller ID) for the client (such as one having the same area code as the

receiving party) at the time each particular telephone call is originated. The process by which Globa

Connect has set the caller ID for a client has remained the same since before September 2004.

13. In 2011, NobelBiz contacted Global Connect to assert Global Connect infringed the

169 Patent. In September 2011, Global Connect explained to NobelBiz s counsel in detail why

Global Connects System did not infringe the 169 Patent.

14. In a letter dated September 8, 2011, Global Connects Intellectual Property counse

Robert Ryan Morishita informed NobelBizs counsel Frank A. Bruno that, among other things:

[C]all broadcasts [from Global Connects System] originate with caller IDinformation selected by the system user. In short, the caller ID information is notmodified; the caller ID information that will be seen by the target party is determinedat the source of the call without modification by an intermediary.

15. NobelBiz has conceded its 169 Patent infringement claim against Global Connect.

16. On April 3, 2012 (just three weeks after issuance of the 122 Patent), NobelBiz filed a

complaint against Global Connect asserting infringement of the 122 Patent in the Eastern District o


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LasVegas,Nevada

89109

(702)792-3773

(702)792-9002(fax)

Texas in a lawsuit presently styledNobelBiz, Inc. v. Global Connect, L.L.C, Civil Action No. 6:12

cv-00244-MHS (the 122 Patent Lawsuit).

17. Global Connect has denied infringement of the 122 Patent in the 122 Paten

Lawsuit. Global Connect has also brought a counterclaim in the 122 Patent Lawsuit, seeking

declaratory judgment that Global Connect does not infringe any claim of the 122 Patent, and al

claims of the 122 Patent are invalid.

18. The 122 Patent Lawsuit is presently pending.

19. In a letter dated September 19, 2013, NobelBizs counsel Ralph A. Dengler informed

Global Connect that the 399 Patent was soon to be issued (within 60 days of that letter), that the

allowed claims in the then soon to be issued 399 Patent were broader than the claims in the 122

Patent (which NobelBiz contended were being infringed by Global Connect in the 122 Paten

Lawsuit), and that when the 399 Patent issued, NobelBiz would file claims against Global Connec

in Federal Court that Global Connect was infringing one or more claims of the 399 Patent.

20. In a Notice to the Court presiding over the 122 Patent Lawsuit, NobelBiz likewis

indicated that, once the 399 Patent issued, NobelBiz intended to file claims against Global Connec

in Federal Court that Global Connect was infringing one or more claims of the 399 Patent.

COUNT ONE

(Declaration of Non-Infringement Under the

Declaratory Judgment Act, 28 U.S.C. 2201, et seq).

21. The allegations set forth in paragraphs 1-20 are incorporated herein by reference.

22. A case and controversy exists between Global Connect and NobelBiz concerning the

399 Patent as to whether Global Connect is infringing the 399 Patent, which requires a declaration

of rights by the Court.

23. Global Connects System and the use of Global Connects System in the United

States does not infringe, contributorily infringe, nor constitute inducement of infringement of any

valid claim of the 399 Patent.

24. While NobelBiz contends otherwise, Global Connect is not directly infringing, and

has not directly infringed the 399 Patent, including literally or under the doctrine of equivalents.


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LasVegas,Nevada

89109

(702)792-3773

(702)792-9002(fax)

25. While NobelBiz contends otherwise, Global Connect is not indirectly infringing, and

has not indirectly infringed, the 399 Patent, including contributorily and/or by active inducement.

26. Global Connect is entitled to a declaratory judgment that it has not infringed and it i

not now infringing, has not contributorily infringed and is not now contributorily infringing, and has

not induced and is not now inducing infringement any valid claim of the 399 Patent.

27. Under the Declaratory Judgment Act, 28 U.S.C. 2201 et seq., Global Connec

requests a declaration that Global Connect is not infringing and has not infringed, directly or

indirectly, the 399 Patent (literally and under the doctrine of equivalents).

COUNT TWO

(Declaration of Invalidity Under

Declaratory Judgment Act, 28 U.S.C. 2201, et seq.)


29. A case and controversy exists between Global Connect and NobelBiz concerning

NobelBizs 399 Patent as to whether the claims of the 399 Patent are valid, which requires

declaration of rights by the Court.

30. While NobelBiz contends otherwise, the claims of the 399 Patent are invalid because

they each fail to satisfy one or more conditions for patentability specified in Title 35 of the United

States Code, including, but not limited to, 35 U.S.C. 101, 102, 103, 112, and 112.

31. The bases for invalidity of the claims include the following:

32. Each of the claims of the 399 Patent are anticipated under 35 U.S.C. 102, including

in view of, but not limited to,

(a) Global Connects System as it existed on or before September 2004 (Globa

Connects 2004 System) (in view of NobelBizs indication that the claims o

the 399 Patent are broader than the claims of the 122 Patent and in view o

the breadth of the claims of the 122 Patent that NobelBiz is asserting in the

122 Patent Lawsuit);

(b) Lippincott, Melanie G., Users Guide (September 2004), Global Connec

Strategic Voice Broadcasting, produced by Global Connect, (September 15


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COMPLAINT

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LasVegas,Nevada

89109

(702)792-3773

(702)792-9002(fax)

2004) (in view of NobelBizs indication that the claims of the 399 Paten

NobelBizs are broader than the claims in the 122 Patent and in view of th

breadth of the claims of the 122 Patent that NobelBiz is asserting in the 122

Patent Lawsuit);

(c) U.S. Patent No. 7,640,009 to Belkin, et al.;

(d) U.S. Patent No. 8,027,332 to Martin, et al.;

(e) U.S. Patent No. 5,901,209 to Tannenbaum, et al.;

(f) U.S. Patent No. 7,925,003 to Haug, Jr., et al.;

(g) U.S. Patent Application No. 11/286,310 to Black, et al.;

(h) U.S. Patent No. 7,756,253 to Breen, et al.;

(i) U.S. Patent No. 5,590,184 to London;

(j) U.S. Patent Application No. 10/655.880 to Giannoit;

(k) Torrone, Phillip, Questions about the Caller ID falsification service answered

www.engadget.com (August 31, 2004); and

(l) TCN Inc.s (TCN) method and system as it existed on or before Septembe

2004 that TCN provided its customers with the ability to enter any of thei

phone numbers to be displayed on the recipients caller ID (in view o

NobelBizs indication that the claims of the 399 Patent NobelBizs ar

broader than the claims in the 122 Patent and in view of the breadth of th

claims of the 122 Patent that NobelBiz is asserting in the 122 Paten

Lawsuit).

33. Each of the claims of the 399 Patent is obvious under 35 U.S.C. 103.

34. Each of the anticipatory prior art references identified in Paragraph 32, either alone or

in combination with other prior art, render each of the 399 Patent claims invalid as obvious.

35. Each of the claims of the 399 Patent is invalid for lack of enablement and for lack of

written description under 35 U.S.C. 112, 1.
http://www.engadget.com/http://www.engadget.com/


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COMPLAINT

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LasVegas,Nevada

89109

(702)792-3773

(702)792-9002(fax)

36. In view of NobelBizs indication that the claims of the 399 Patent NobelBizs are

broader than the claims in the 122 Patent and in view of the breadth of the claims of the 122 Paten

that NobelBiz is asserting in the 122 Patent Lawsuit, all claims are not supported by the written

description of the 399 Patent and are not enabled in the 399 Patent.

37. Each of the claims of the 399 Patent is invalid for indefiniteness under 35 U.S.C

112, 2.

38. Global Connect is entitled to a declaratory judgment that each of the claims of the

399 Patent is invalid.

39. Under the Declaratory Judgment Act, 28 U.S.C. 2201 et seq., Global Connec

requests a declaration that each of the claims of the 399 Patent is invalid.

EXCEPTIONAL CASE


41. This is an exceptional case entitling Global Connect to an award of its attorneys fees

incurred in connection with this action pursuant to 35 U.S.C. 285.

42. It was necessary for Global Connect to retain and employ legal counsel to defend this

legal action. Global Connect requests the recovery of its reasonable attorneys fees. Global Connec

reserves the right to plead for compensatory and exemplary damages, if, during discovery or during

the pendency of this action, NobelBiz causes injury, loss or damage to Global Connect.

PRAYER FOR RELIEF

WHEREFORE, Global Connect respectfully prays that the Court enter declaratory judgment

relief and Order against NobelBiz as follows:

(A) A declaration that Global Connect has not, and is not currently infringing

contributorily infringing, or inducing infringement of any valid claim of U.S. Patent No. 8,565,399;

(B) A declaration that each of the claims of U.S. Patent No. 8,565,399 is invalid;

(C) A declaration that this suit exceptional under 35 U.S.C. 285 and Global Connect b

awarded its costs, expenses, and reasonable attorneys fees, including, without limitation pre

judgment interest and post-judgment interest; and

. . .


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COMPLAINT

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LasVegas,Nevada

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(702)792-3773

(702)792-9002(fax)

(D) Awarding such other and further relief as this Court may deem just and proper.

JURY DEMAND

Global Connect hereby demands a trial by jury on all issues so triable.

Respectfully submitted this 23rd day of October, 2013.

GREENBERG TRAURIG LLP

Mark G Tratos (Bar No. 1086)Rob L. Phillips (Bar No. 8225)Greenber Trauri3773 Howard Hughes ParkwaySuite 400 North

Las Vegas, Nevada 89169Telephone: (702) 792-3773Facsimile: 702 792-9002

Gregory J. Casas (subject to admissionpro hacvice)

Texas Bar No. 00787213Ross Spencer Garsson (subject to admissionprohac vice)Texas Bar No. 00784112GREENBERG TRAURIG LLP300 West 6th Street, Suite 2050Austin, Texas 78701Telephone: (512) 320-7200Facsimile: (512) 320-7210

Counsel for GLOBAL CONNECT, LLC


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Global Connect v. NobelBiz

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Transcript of Global Connect v. NobelBiz