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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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2.
COMPLAINT
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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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COMPLAINT
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uite400North,3773HowardHughesParkway
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(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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COMPLAINT
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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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COMPLAINT
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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.)
28. The allegations set forth in paragraphs 1-27 are incorporated herein by reference.
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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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.
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COMPLAINT
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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
40. The allegations set forth in paragraphs 1-39 are incorporated herein by reference.
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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(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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Exhibit A
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