Net Talk.Com, Inc. (NTLK)

[Wolftrade]

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
NET TALK.COM, INC.,
Plaintiff,
v.
OBIHAI TECHNOLOGY, INC.,
Defendant.
Case No. 18-cv-1194
COMPLAINT FOR PATENT
INFRINGEMENT
JURY TRIAL DEMANDED
Plaintiff Net Talk.com, Inc. (“Plaintiff” or “NetTalk”), by and through its attorneys,
complains of Defendant, Obihai Technology, Inc. (“Defendant” or “Obihai”), as follows:
I. INTRODUCTION – NATURE OF THE ACTION
1. This is an action arising under the patent laws of the United States, 35 U.S.C. § 1 et
seq., and is brought by Plaintiff against Defendant for Defendant’s infringement of U.S. Patent
Nos. 9,491,304 (“the ‘304 patent”) and 9,667,800 (“the ‘800 patent”) both entitled “VoIP Analog
Telephone System.” Copies of the ‘304 patent and the ‘800 patent are attached as Exhibits A and
B, respectively.
II. THE PARTIES
2. NetTalk is a corporation organized under the laws of the State of Florida with a
place of business at 1080 Northwest 163rd Drive, Miami Gardens, Florida 33169. NetTalk is in
the business of, among other things, the design, marketing, sale, and support of voice over internet
protocol (“VoIP”) products.
3. On information and belief, Obihai is a corporation organized under the laws of the
State of California having a place of business 51 East Campbell Avenue, Campbell, California
95008. On further information and belief, Obihai is in the business of, among other things, the
marketing and sale of consumer electronics, including but not limited to Obihai’s ObiWiFi,
Obi200, Obi202, Obi300, and Obi302 VoIP telephone adapters and accessories.
III. JURISDICTION AND VENUE
4. This Court has exclusive jurisdiction over the subject matter of this case under 28
U.S.C. §§ 1331 and 1338(a) because this action arises under the patent laws of the United States.
5. The Court has personal jurisdiction over Obihai because Obihai is incorporated in
State of California, has a regular and established place of business in the Northern District of
California, and as discussed in greater detail below, has committed acts of patent infringement in
this judicial district.
6. Venue is proper in this judicial district under 28 U.S.C. §§ 1391(b)-(c) and 1400(b).
See, e.g., TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017).
IV. PATENTS-IN-SUIT
7. NetTalk owns all right, title and interest in, and has standing to sue for infringement
of, United States Patent 9,491,304 (“the ‘304 patent”), entitled “VoIP Analog Telephone System,”
which issued on November 8, 2016. A copy of the ‘304 patent is attached hereto as Exhibit A.
8. NetTalk owns all right, title and interest in, and has standing to sue for infringement
of, United States Patent 9,667,800 (“the ‘800 patent”), entitled “VoIP Analog Telephone System,”
which issued on May 30, 2017. A copy of the ‘800 patent is attached hereto as Exhibit B.
V. COUNT I – INFRINGMENT OF U.S. PATENT NO. 9,667,800
9. NetTalk repeats and re-alleges the allegations in preceding paragraphs as though
fully set forth herein.
10. Obihai has infringed and continues to infringe the ‘800 patent by, at least, offering
for sale and, on information and belief, importing into and selling throughout the United States,
including within this judicial district, its Obi200 with OBiWifi, Obi202 with OBiWifi, Obi300 with
OBiWifi, and Obi302 with OBiWifi VoIP analog telephone adapters (collectively, “Obihai ATAs”
or the “Accused Products”), which, according to information previously published on Obihai’s
website, “bridge mobile, fixed line and Internet telephone services.” The Obihai website on which
this information was published was previously located at the following URL:
http://www.obihai.com/what-is. Obihai’s website also included the following images of one of its
Obi200 analog telephone adapter:
[/img]
11. On information and belief, all models of the Obihai ATAs offered for sale on
Obihai’s website infringe the ‘800 patent.
12. Obihai has infringed and continues to infringe at least claims 1-20 of the ‘800 patent
within the meaning of 35 U.S.C. § 271(a) through the foregoing activities including, without
limitation, offering for sale and, on information and belief, importing into and selling the Accused
Products throughout the United States. The Accused Products contain each and every element ofat least claims 1-20 of the ‘800 patent both literally and under the doctrine of equivalents in
contravention of 35 U.S.C. § 271.
13. Subject to additional information obtained during discovery, the Court’s
construction of any patent claim terms about whose meaning the parties disagree, and the detailed
infringement contentions NetTalk will make pursuant to this district’s Local Patent Rules (see, e.g.,
LPR 3-1), the Accused Products infringe claims 1-20 of the ‘800 patent as follows:
a. The Accused Products each include an electronic device that enables users to “make
and receive phone calls and faxes as well as bridge mobile, fixed line and Internet
telephone services.” See
https://web.archive.org/web/20140401011830/http://www.obihai.com/partner/obi3
b. The Accused Products each include an electronic device with a rigid housing, a USB
port, an Ethernet port, a telephone port to send and receive signals from an analog
telephone, a processor, a non-transitory storage medium, and a network interface
card.
[img][/img]
c. The Accused Products each include an electronic device having a first configuration
where the device communicates with the internet via a WiFi adapter in the USB
port, and relays communications from the telephone port to the USB port to enable
telephony services. The relay of communications form the USB port is independent
from the Ethernet port.
[img][/img]
d. The Accused Products each include an electronic device having a second
configuration where the device communicates with the internet via the Ethernet port
and relays communications from the telephone port to the Ethernet port to enable
telephony services.
e. The non-transitory storage medium of the electronic device includes instructions for
automatically detecting internet connectivity at the USB port. See test video at:
https://www.dropbox.com/s/5xsumk2c2776yos/OBIHAI%20300%20-
%20Automatic%20USB-WiFi.m4v?dl=0
f. The non-transitory storage medium of the electronic device includes instructions for
automatically detecting internet connectivity at the Ethernet port. See test video at:
https://www.dropbox.com/s/s4hkt25kxobxsqw/OBIHAI%20300%20-
%20Automatic%20Ethernet.m4v?dl=0
g. The non-transitory storage medium of the electronic device includes instructions for
providing plug-in-play functionality by automatically configuring the electronic
device to utilize the USB port for internet communications when internet
connectivity is detected at the USB port and no internet connectivity is detected at
the Ethernet port. See test video at:
https://www.dropbox.com/s/5xsumk2c2776yos/OBIHAI%20300%20-
%20Automatic%20USB-WiFi.m4v?dl=0
h. The non-transitory storage medium of the electronic device includes instructions for
providing plug-in-play functionality by automatically configuring the electronic
device to utilize the Ethernet port for internet communications when internet
connectivity is detected at the Ethernet port and no internet connectivity is detected
at the USB port. See test video at:
https://www.dropbox.com/s/s4hkt25kxobxsqw/OBIHAI%20300%20-
%20Automatic%20Ethernet.m4v?dl=0
i. The non-transitory storage medium of the electronic device includes instructions for
providing plug-in-play functionality by automatically configuring the electronic
device to utilize the Ethernet port for internet communications when internet
connectivity is detected at both the Ethernet port and the USB port.
j. The Accused Products each include an electronic device having a WiFi adapter
secured in the USB port.
k. The non-transitory storage medium of the electronic device is configured to store
Wi-Fi parameters.
l. Preliminary tests indicate that the electronic devices of the Accused Products send
and receive analog format communications via the telephone port, digital WiFi
format communications via the USB port, and digital Ethernet format
communications via the Ethernet port that are different than the digital WiFi format.
m. The Accused Product each have an electronic device with a USB port, an Ethernet
port, and a telephone port are all located on a single side of a rigid housing.
14. NetTalk has complied with 35 U.S.C. § 287 to the extent required by law.
15. NetTalk previously notified Obihai of the ‘800 patent and Obihai’s infringement of
the same. Obihai, therefore, has actual knowledge of the ‘800 patent and its conduct giving rise to
NetTalk’s claim of infringement of the ‘800 patent. Notwithstanding, Obihai’s infringement has
persisted. Accordingly, Obihai’s ongoing infringement of the ‘800 patent has been willful.
VI. COUNT II – INFRINGMENT OF U.S. PATENT NO. 9,491,304
16. NetTalk repeats and re-alleges the allegations in preceding paragraphs as though
fully set forth herein.
17. Obihai has infringed and continues to infringe the ‘304 patent by, at least, offering
for sale and, on information and belief, importing into and selling throughout the United States,
including within this judicial district, its Accused Products, which, according to information
previously published on Obihai’s website, “bridge mobile, fixed line and Internet telephone
services.”
18. On information and belief, all models of the Obihai ATAs offered for sale on
Obihai’s website infringe the ‘304 patent.
19. Obihai has infringed and continues to infringe at least claims 1-3, 6, 7, 10, 13, 14,
15, and 17 of the ‘304 patent within the meaning of 35 U.S.C. § 271(b) by inducing its customers
to use the Obihai ATAs in the United States. Obihai specifically intended the end-users of the
Obihai ATAs to infringe at least claims 1-3, 6, 7, 10, 13, 14, 15, and 17 of the ‘304 patent knowing
that its customers’ use of the Obihai ATAs in the United States constituted infringement of at least
claims 1-3, 6, 7, 10, 13, 14, 15, and 17 of the ‘304 patent.
20. Obihai has infringed and continues to infringe at least claims 1-3, 6, 7, 10, 13, 14,
15, and 17 of the ‘304 patent within the meaning of 35 U.S.C. § 271(c) through the foregoing
activities including, among other things, importing, offering for sale, and selling the Obihai ATAs
and by instructing, aiding, assisting, authorizing, advertising, marketing, promoting, providing for,
and/or encouraging the offer for sale, sale, and use of the Obihai ATAs, which constitute a material
part of the patented invention of the ‘304 patent, which Obihai knew are especially made or adapted
for use in an infringement of the ‘304 patent, and which are not a staple article of commerce suitable
for substantial non-infringing use. The direct infringers for Obihai’s contributory infringement
under 35 U.S.C. § 271(c) include, without limitation, Obihai’s end-users of the Obihai ATAs.
21. Subject to additional information obtained during discovery, the Court’s
construction of any patent claim terms about whose meaning the parties disagree, and the detailedinfringement contentions NetTalk will make pursuant to this district’s Local Patent Rules (see, e.g.,
LPR 3-1), the Accused Products infringe the asserted claims as follows:
a. The Accused Products are especially made for and adapted to be part of a VoIP
telephone system that allows users to “make and receive phone calls and faxes as
well as bridge mobile, fixed line and Internet telephone services.” The Accused
Products communicate with publicly switched telephone networks such that users
of the Accused Products can call other telephone handset users over the internet,
and the Defendant’s advertising and product manuals instruct customers how to
utilize the publicly switched telephone networks via the Accused Products. See
https://web.archive.org/web/20140401011830/http://www.obihai.com/partner/obi3
b. The Accused Products include an electronic device configured to connect to the
internet via two independent paths. The first path utilizes a USB connection on the
electronic device to wirelessly connect to a modem connected to the internet. The
second path utilizes an Ethernet port on the electronic device, an Ethernet cord, and
a router to connect to the internet. As shown below, the Defendant’s user manuals
and advertising instruct customers how to utilize Ethernet cords and routers with
the Accused Products.
See also http://www.obihai.com/wifi
c. The Accused Products include an electronic device with a rigid housing, a central
processor, a non-transitory storage medium, memory, and a network interface card.
d. The Accused Products include an electronic device with a USB port, an Ethernet
Port, and a telephone port specifically configured to be used with an analogtelephone receiving and transmitting sound signals. The USB, Ethernet, and
telephone ports are all located on a single side of the rigid housing. As shown
below, the Defendant’s advertising and user manuals direct users to connect an
analog telephone to the Obihai ATAs.
e. The Accused Products include an electronic device configured to communicate with
the internet via two distinct configurations; the first configuration utilizing the USB
port of the electronic device and the first path while the second configuration utilizes
the Ethernet port, an Ethernet cord, and the second path. The Defendant’s
advertising and user manuals instruct users to utilize one of the two communication
paths.
First Route to Internet via USB port and ObiWiFi Adapter
Second Route to Internet via Ethernet Port and Ethernet Cord f. The Accused Products include an electronic device configured to communicate with
the internet via the two distinct paths, and the configurations are selectable by a user
without connecting the electronic device to a computer.
Selecting Connection via Ethernet
See https://www.youtube.com/watch?v=iydg5lY1UA8&feature=youtu.be
Selecting Connection via WiFi
See https://www.youtube.com/watch?v=2h_U_dEqHR8
g. The Accused Products include an electronic device that automatically detects the
configuration selected by the user and auto-configures itself to utilize the selected
configuration so that users may communicate, via the internet, with other telephone
handsets over a publicly switched telephone network using either communication
path without the electronic device being directly connected to the publicly switchedtelephone network. If both the USB and Ethernet ports are enabled by a user, the
Accused Products auto-configure themselves to utilize the Ethernet ports.
h. The Accused Products include an electronic device that is configured to connect via
a communications path that includes both a router and a modem. The Defendant’s
advertising and user manuals direct users to create a communication path from the
Obihai ATAs to the internet that includes both a router and a modem.
See https://www.itp4you.com/InstallationGuide-Obi.pdf
i. The Accused Products include an electronic device that is configured to wirelessly
connect to a modem via an ObiWiFi adapter.
j. The Accused Products are configured to connect to the Obihai computer network.
The Obihai computer network includes a webpage where users are able to login
with their phone numbers and passwords.
k. The Accused products include electronic devices that transmit Internet Protocol data
through the USB port when the first communication path is utilized and Internet
Protocol through the Ethernet Port when the second communication path is utilized.
22. NetTalk has complied with 35 U.S.C. § 287 to the extent required by law.
23. NetTalk previously notified Obihai of the ‘304 patent and Obihai’s infringement of
the same. Obihai, therefore, has actual knowledge of the ‘304 patent and its conduct giving rise to
NetTalk’s claim of infringement of the ‘304 patent. Notwithstanding, Obihai’s infringement has
persisted. Accordingly, Obihai’s ongoing infringement of the ‘304 patent has been willful.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff NetTalk respectfully asks this Court to enter judgment against
Defendant Obihai, and against its subsidiaries, successors, parents, affiliates, officers, directors,
agents, servants, employees, and all persons in active concert or participation with Obihai, granting
the following relief:
A. The entry of judgment in favor of NetTalk and against Obihai;
B. An award of damages adequate to compensate NetTalk for the infringement
that has occurred, and in no event less than a reasonable royalty as permitted by 35 U.S.C.
§ 284, together with prejudgment interest; andC. Such other relief that NetTalk is entitled to under law, and any other and
further relief that this Court or a jury may deem just and proper.
Respectfully submitted,
Dated: February 23, 2018 Matthew G. McAndrews
Kyle D. Wallenberg
NIRO McANDREWS, LLC
200 West Madison Street, Suite 2040
Chicago, IL 60606
[phone]
Fax: [phone]
[e-mail]
[e-mail]
(pending pro hac vice admission)
Panagiotis Prountzos
THE LAW OFFICES OF
PANAGIOTIS PROUNTZOS
333 W Portal Ave, Suite A
San Francisco, California 94127
[phone]
Fax: [phone]
[e-mail]
/s/ Panagiotis Prountzos
Panagiotis Prountzos
Attorneys for Plaintiff,
Net Talk.com, Inc.
DEMAND FOR TRIAL BY JURY
NetTalk demands a trial by jury on all issues presented in this Complaint.
Dated: February 23, 2018 Matthew G. McAndrews
Kyle D. Wallenberg
NIRO McANDREWS, LLC
200 West Madison Street, Suite 2040
Chicago, IL 60606
[phone]
Fax: [phone]
[e-mail]
[e-mail]
(pending pro hac vice admission)
Panagiotis Prountzos