EXHIBIT 1 

Case: 1:11-cv-09309 Document #: 14-1 Filed: 07/25/11 Page 1 of 182 PageID #:750
~~5z .11

NIRO, HALLER & NIRO

RAYMOND P. NlRO

TIMOTHY J. HAUER

WIlLIAM I.. NInO

JOSEPH N. HOSTENY, ill

ROBERT A. VITALE,.JR.

PAUL K. VICKREY

DEAND.NlRO

RAYMOND P. NIRO. JR.

PATRICK F. SOLON

ARTI:IUR A. GASEY

CIlRlSI'OPHER J. LEE

DAVID J. SHEIKH

VASlLJOS O. OOSSAS

RICHARD B. MEGLEY. JR.

MATnIEW G. McANDREWS

PAUL C. GIDBONS

181 WEST MADISON STREET-SUITE 4600

CmCAGO, 1LLlN018 60602

TELEPHONE (312) 236 - 0733

FACSIMILE (312) 236-3137

April 27, 2011

GREGORY P. CA$Il\fER

DINA M. HAYES

FREDERICK C. LANEY

DAVID J. MAHALEK

KARA L SZPONDOWSKl

ROBERT A. CONLEY

LAURA A. KENNEALLY

TAHm ARSUWWlCZ

BRIAN E. HAAN

JOSEPH A. CUUG

ANNA B. FOWERS

CHRISTOPHER W. NIRO

DANIEL R. fo'"ERRJ

GABRIEL I. OPATKEN

OLIVER D. YANG

o.. co~

JOKN C. JANKA

VIA CERTIFIED MAIL

Mr. Leigh Perkins Sr.

Chairman

The Orvis Company, Inc.

178 Conservation Way

Sunderland, VT 05250

Writer's E-mail: mmcandrcws@nshn.com

Writer's Direct: (312) 377-3291

Re: Innovatio IP Ventures. LLC

Dear Mr. Perkins:

We represent Innovatio IP Ventures, LLC ("Innovatio") in the licensing and enforcement

ofits patent portfolio, which has broad application in the field of wireless local area network

("WLAN") technology (popularly referred to as "Wi-Fi"), including the emerging field of

wireless "mesh" networking. The Innovatio portfolio currently includes 31 issued United States

patents (collectively, "the Innovatio Patents"). The issued Innovatio Patents are:

U.S. Patent No. 5,295,154

U.S. Patent No. 5,428,636

U.S. Patent No. 5,504,746

U.S. Patent No. 5,546,397

U.S. Patent No. 5,673,031

U.S. Patent No.5,740,366

U.S. Patent No. 5,844,893

U.S. Patent No. 5,940,771

U.S. Patent No. 6,046,992

U.S. Patent No. 6,374,311

U.S. Patent No. 6,665,536

U.S. Patent No. 6,697,415

U.S. Patent No. 6,714,559

U.S. Patent No. 6,826,165

U.S. Patent No. 7,013,138

U.S. Patent No. 7,107,052

U.S. Patent No. 7,386,002

U.S. Patent No. 7,457,646

U.S. Patent No. 7,483,397

U.S. Patent No. 7,535,921

U.S. Patent No. 7,536,167

U.S. Patent No. 7,548,553

U.S. Patent No. 7,552,246

U.S. Patent No. 7,558,557

U.S. Patent No. 7,710,907

U.S. Patent No. 7,710,935

U.S. Patent No. 7,826,818

U.S. Patent No. 7,856,003

U.S. Patent No. 7,873,343

U.S. Patent No. 7,916,747

U.S. Patent No. 7,917,145

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The Orvis Company, Inc.

April 27, 201 I

Page 2 of 4

The newest members of the Innovatio portfolio, U.S. Patent Nos. 7,916,747 and

7,917,145, issued just recently on March 29, 20 I\. We encourage you to obtain copies ofthe

Innovatio Patents, which you can download free of charge from the United States Patent and

Trademark Office's website at www.uspto.gov or the free online service "PAT2PDF" at

www.pat2pdf.org.

Our purpose in writing is threefold. First, we wish to specifically acquaint The Orvis

Company, Inc. ("Orvis") with the Innovatio Patents, which are controlling patents in the area of

WLAN (e.g., Wi-Fi) and mesh networking technologies. In this regard, we have identified the

Innovatio Patents above and asked that you obtain copies ofthose patents for your review and

analysis. Further, as discussed in greater detail below, this notifies Orvis ofits likely

infringement of the Innovatio Patents. And, [mally, we write to offer Orvis a license with highly

favorable terms under the Innovatio Patents. The general terms ofInnovatio's licensing offer are

summarized in the last section ofthis letter below.

The Methods and Systems at Issue

Although an exhaustive analysis ofinfringement ofthe Innovatio Patents by Orvis is

beyond the scope of this letter, the following generally summarizes its likely areas of

infringement

1. WLANs Used in Business Operations

Orvis infringes numerous of the Innovatio Patents to the extent it operates WLANs

deployed in any manufacturing, distribution, retail, inventory management, warehousing,

industrial monitoring or control, "smart energy," or corporate office environments. Claims of the

Innovatio Patents cover, among other things, WLANs that use the IEEE 802.11 communication

protocols. The operation and use of any such systems by Orvis would constitute infringement of,

by way of example and not limitation, claims of at least the following Innovatio Patents:

U.S. Patent No. 5,546,397

U.S. Patent No. 5,740,366

US. Patent No. 5,844,893

U.S. Patent No. 5,940,771

U.S. Patent No. 6,374,311

U.S. Patent No. 6,665,536

U.S. Patent No. 6,697,415

US. Patent No. 6,714,559

US. Patent No. 7,013,138

U.S. Patent No. 7,386,002

U.S. Patent No. 7,457,646

US. Patent No. 7,535,921

U.S. Patent No. 7,536,167

US. Patent No. 7,548,553

U.S. Patent No. 7,558,557

U.S. Patent No. 7,710,907

U.S. Patent No. 7,826,818

U.S. Patent No. 7,873,343

U.S. Patent No. 7,916,747

US. Patent No. 7,917,145

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The Orvis Company, Inc.

April 27, 2011

Page 3 of4

To the extent Orvis has implemented mesh networking technology in any ofthe

envirornnents identified above, it likely infringes claims ofthe 20 Innovatio Patents identified

immediately above as well as, by way of example and not limitation, claims of at least the

following additional Innovatio Patents:

U.S. Patent No. 5,295,154

U.S. Patent No. 5,428,636

U.S. Patent No. 5,504,746

U.S. Patent No. 6,046,992

U.S. Patent No. 6,826,165

U.S. Patent No. 7,483,397

2. WLANs Providing User-Level "Hotspot" Services to the Pnblic

Orvis further infringes numerous of the Innovatio Patents to the extent it operates

WLANs at its retail locations, which networks provide Orvis customers and/or employees

wireless network access. Locations that provide this type ofservice are frequently (but not

always) referred to as "hotspots." Certain companies charge users for use oftheir hotspot; others

provide hotspot connectivity free ofcharge as a value-added service.

The operation and use of any such hotspot-type systems by Orvis would constitute

infringement, including contributing to or inducing infringing operation or use by others, of, by

way of example and not limitation, claims of at least the following Innovatio Patents:

U.S. Patent No. 5,546,397

U.S. Patent No. 5,740,366

U.S. Patent No. 5,844,893

U.S. Patent No. 5,940,771

U.S. Patent No. 6,374,311

U.S. Patent No. 6,665,536

U.S. Patent No. 6,697,415

U.S. Patent No. 6,714,559

U.S. Patent No. 7,013,138

U.S. Patent No. 7,386,002

U.S. Patent No. 7,457,646

U.S. Patent No. 7,535,921

U.S. Patent No. 7,536,167

U.S. Patent No. 7,548,553

U.S. Patent No. 7,558,557

U.S. Patent No. 7,710,907

U.S. Patent No. 7,826,818

U.S. Patent No. 7,873,343

U.S. Patent No. 7,916,747

U.S. Patent No. 7,917,145

Innovatio's Proposed License

Innovatio proposes that the most reasonable, practical, and economical course of action is

for the parties to amicably and promptly resolve issues relating to the use ofInnovatio Patents

through a suitable negotiated licensing arrangement. To that end, and to encourage the continued

use ofInnovatio's essential patented technology in the marketplace, Innovatio proposes granting

Orvis an upfront, paid-up license for its use under all of 31 ofthe issued Innovatio Patents. The

amount ofInnovatio's paid-up license fee will be determined by the specific nature and extent of

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.. 1_"

The Orvis Company, Inc.

April 27, 2011

Page 4 of 4

the use ofWLAN (e.g., Wi-Fi) and meshing networking technologies by Orvis covered by the

Innovatio Patents. Innovatio will also discount the license fee if the parties are able to finalize a

suitable license within the next 30 days.

Please contact me at your earliest possible convenience to discuss this important matter,

and thank you in advance for considering Innovatio's licensing proposal. I can be reached at

direct dial (312) 377-3292 or e-mail addressmmcandrews@nshn.com.

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EXHIBIT 2 

Case: 1:11-cv-09309 Document #: 14-1 Filed: 07/25/11 Page 6 of 182 PageID #:755
Enterprise networking equipment markets down 

in 1Q11 

Boston, MASSACHUSETTS, June 10, 2011—Market research firm Infonetics Research 

today released excerpts from 3 first quarter 2011 (1Q11) enterprise networking market share 

reports: Ethernet Switches, Wireless LAN Equipment and WiFi Phones and Enterprise 

Routers.

ANALYST NOTE

"Enterprise network equipment sales fell across the board in the first quarter of 2011, partially 

due to seasonality, partially due to hiccups in the economic recovery as public sector 

spending dries up. But not all segments are faring equally: wireless LAN equipment is proving 

resilient, with global revenue up 17% from this time last year. Enterprises and SMBs are 

building out their wireless infrastructure to lay the foundation for a new generation of devices, 

particularly tablets, that can only connect wirelessly to the network," notes Matthias 

Machowinski, directing analyst for enterprise networks and video at Infonetics Research. 

ETHERNET SWITCH MARKET HIGHLIGHTS

After a growth streak throughout 2010 that propelled the enterprise Ethernet switching 

market to record levels, worldwide revenue was down 12% sequentially to $4.2 billion in 

1Q11, and 9% lower year-over-year (from 1Q10)

•

Weakness in the public sector vertical due to sun-setting stimulus programs and pressure 

on government budgets contributed to the decline, and will be a drag on market growth 

for the rest of the year

•

Almost every vendor posted negative revenue results in 1Q11 compared with 4Q10, with 

#1 Cisco down 14%, #2 HP down 3%, and #3 Juniper down 23%

•

Only 3 vendors--Avaya, Force10, and Adtran--bucked the downward trend, each posting 

global Ethernet switch revenue gains ranging from 1.5% (Avaya) to 24% (Adtran)

•

WIRELESS LAN MARKET HIGHLIGHTS 

After a record fourth quarter at the end of 2010, worldwide WLAN equipment revenue 

decreased 8% in 1Q11, to $698 million, due to ASP pressure, a seasonal decline in 

APAC, and slowing public sector sales 

•

Global WLAN equipment revenue is up a healthy 17% year-over-year (1Q10 to 1Q11), 

continuing a trend of strong double-digit YoY growth for 6 quarters in a row

•

In 4Q10, 802.11n access points APs outnumbered legacy a/b/g APs for the first time, and 

the march toward 802.11n continues: in 1Q11, 11n APs were up 4% sequentially, while 

legacy APs declined 9%

•

ENTERPRISE ROUTER MARKET HIGHLIGHTS 

Worldwide enterprise router sales totaled $797 million in 1Q11, down 14% sequentially 

and down 3% from a year ago in 1Q10, marked by declining mid-range router sales and 

strong low-end sales 

•

All major world regions saw sequential declines in enterprise router sales in 1Q11, and 

only Asia Pacific and Central and Latin America posted increases year-over-year (from 

1Q10), lifted by the financial sector, and, counter to the worldwide trend, the public sector

•

• Cisco is the biggest enterprise router vendor by far (77% of revenue)

HP moved into second place for the first time (6% revenue share), lifted by their 

exposure to the Chinese market

•

REPORT SYNOPSES

Infonetics' quarterly Ethernet switch report tracks Adtran, Alcatel-Lucent, Alaxala, Arista, 

Avaya, Blade, Brocade, Cisco, D-Link, Enterasys, Extreme, Force10, Hitachi Cable, HP, 

H3C, Huawei, Juniper, Linksys, NETGEAR, LG-Ericsson, and others. The report provides 

market size, market share, forecasts through 2015, and analysis for fixed configuration and 

chassis Ethernet switches by port type (100M, 1G copper/fiber, 10G copper/fiber; PoE, nonPoE). In addition, fixed Ethernet switches are tracked by layer (L2, L3) and management 

(unmanaged, web managed, fully managed). 

Infonetics' quarterly wireless LAN and WiFi phones report provides market size, market 

share, analysis, and forecasts through 2015 for dependent, independent, and outdoor access 

points, WLAN controllers, and enterprise single-mode WiFi phones. Companies tracked 

include Alcatel-Lucent, Aruba, BelAir, Buffalo, Cisco, D-Link, Enterasys, Extreme, Meru, 

Motorola, NETGEAR, Polycom, HP, H3C, Proxim, Ruckus, LG-Ericsson, Trapeze, Xirrus, 

and others. 

Infonetics' quarterly enterprise router report tracks Adtran, Alcatel-Lucent, Avaya, Cisco, HP, 

H3C, Huawei, Juniper, OneAccess, and others. The report provides worldwide and regional 

market share, market size, forecasts, and analysis for high-end, mid-range, branch, and lowend/SOHO routers, including port detail (T1/E1/J1, T3/E3/J3, OC3/STM1, OC12/STM4 and 

other ports). 

CLIENT CONFERENCE CALL

Wireless LAN Equipment and WiFi Phones telebriefing: Wednesday, June 15 at 12:00 

PM Eastern

•

• Ethernet Switches telebriefing: Thursday, June 23 at 11:00 AM Eastern

SALES

• Larry Howard, Vice President: larry@infonetics.com, +1 (408) 583-3335

• Scott Coyne, Senior Account Director, scott@infonetics.com, +1 (408) 583-3395

@Infonetics: Seasonal lull hits security markets in 1Q11; threats continue to rise Page 1 of 2

http://www.infonetics.com/pr/2011/1Q11-Ethernet-Switch-WLAN-and-Enterprise-Router-... 6/20/2011

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George Stojsavljevic, Senior Account Director (EMEA), george@infonetics.com, +44-

755-488-1623

•

RECENT AND UPCOMING ENTERPRISE NETWORKING RESEARCH

To download report prospectuses, tables of contents, highlights, etc., log in to 

http://www.infonetics.com/login and go to RESEARCH, then ENTERPRISE NETWORKING.

• Network attached storage (NAS) appliance market to double by 2015

• High speed network port market to hit $52 billion in 2015 (1G, 10G, 40G, 100G)

• Total Enterprise and Service Provider Routers Pivot

• Total Enterprise and Carrier Ethernet Switches Pivot

• Total Enterprise Network Equipment Pivot 

• 1G/10G/40G/100G Networking Ports 

• Ethernet Switch Vendor Leadership: North American Enterprise Survey 

• 10G/40G/100G & Desktop 1G Strategies & Traffic Drivers: N.A. Enterprise Survey

Infonetics Research (www.infonetics.com) is an international market research and consulting 

firm serving the communications industry since 1990. A leader in defining and tracking 

emerging and established technologies in all world regions, Infonetics helps clients plan, 

strategize, and compete more effectively. 

Follow Infonetics on Twitter for the latest headlines: http://twitter.com/infonetics. 

@Infonetics: Seasonal lull hits security markets in 1Q11; threats continue to rise Page 2 of 2

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Data Chart Page 1 of 1

http://www.infonetics.com/pr/chartpopup.asp?id=2011/charts/ms11_SW_1q11_chart.jpg 6/20/2011

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Data Chart Page 1 of 1

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Data Chart Page 1 of 1

http://www.infonetics.com/pr/chartpopup.asp?id=2011/charts/ms11_rtr_1q11_chart.jpg 6/20/2011

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EXHIBIT 3 

Case: 1:11-cv-09309 Document #: 14-1 Filed: 07/25/11 Page 12 of 182 PageID #:761
IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS 

INNOVATIO IP VENTURES, LLC, 

Plaintiff, 

v. 

ABP CORPORATION; ACCOR 

NORTH AMERICA; CARIBOU 

COFFEE CO., INC.; CBC 

RESTAURANT CORP.; COSI, INC.; 

DOMINICK’S SUPERMARKETS, 

INC.; KIMPTON HOTEL & 

RESTAURANT GROUP, LLC; LQ 

MANAGEMENT LLC; MEIJER, INC. 

and PANERA BREAD COMPANY, 

Defendants. 

 Civil Action No. 11-cv-1638 

 JURY TRIAL DEMANDED 

COMPLAINT FOR PATENT INFRINGEMENT

 Plaintiff Innovatio IP Ventures, LLC (“Innovatio”), by and through its 

undersigned counsel, alleges as follows: 

THE PARTIES

1. Plaintiff Innovatio is a corporation organized under the laws of the 

State of Delaware and has a place of business at 22 West Washington Street, Suite 

1500, Chicago, Illinois 60602. 

2. On information and belief, Defendant ABP Corporation is a 

corporation organized under the laws of the State of Delaware, has a principal 

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place of business at 1 Au Bon Pain Way, Boston, Massachusetts 02210, and has 

about 18 locations in Illinois, including locations within this District. 

3. On information and belief, Defendant Accor North America is a 

corporation organized under the laws of the State of Delaware, has a principal 

place of business at 4001 International Parkway, Carrollton, Texas 75007, and has 

about 28 locations in Illinois, including locations within this District. 

4. On information and belief, Defendant Caribou Coffee Co., Inc. is a 

corporation organized under the laws of the State of Minnesota, has a principal 

place of business at 3900 Lake Breeze Avenue North, Brooklyn Center, Minnesota 

55430, and has about 59 locations in Illinois, including locations within this 

District. 

5. On information and belief, Defendant CBC Restaurant Corp. is a 

corporation organized under the laws of the State of California, has a principal 

place of business at 12700 Park Central Drive, Suite 1300, Dallas, Texas 75251, 

and has about 34 locations in Illinois, including locations within this District. 

6. On information and belief, Defendant Cosi, Inc. is a corporation 

organized under the laws of the State of Delaware, has a principal place of business 

at 1751 Lake Cook Road, Suite 600, Deerfield, Illinois 60015, and has about 15 

locations in Illinois, including locations within this District. 

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7. On information and belief, Defendant Dominick’s Supermarkets, Inc. 

is a corporation organized under the laws of the State of Delaware, has a principal 

place of business at 711 Jorie Blvd., Oak Brook, Illinois 60523, and has about 80 

locations in Illinois, including locations within this District. 

8. On information and belief, Defendant Kimpton Hotel & Restaurant 

Group, LLC is a corporation organized under the laws of the State of Delaware, 

has a principal place of business at 222 Kearney Street, Suite 200, San Francisco, 

California 94108, and has about 4 locations in Illinois, including locations within 

this District. 

9. On information and belief, Defendant LQ Management LLC is a 

corporation organized under the laws of the State of Delaware, has a principal 

place of business at 909 Hidden Ridge, Suite 600, Irving, Texas 75038, and has at 

least 13 locations within this District. 

10. On information and belief, Defendant Meijer, Inc. is a corporation 

organized under the laws of the State of Michigan, has a principal place of business 

at 2929 Walker Avenue NW, Grand Rapids, Michigan 49544, and has about 17 

locations in Illinois, including locations within this District. 

11. On information and belief, Defendant Panera Bread Company is a 

corporation organized under the laws of the State of Delaware, has a principal 

place of business at 6710 Clayton Road, Richmond Heights, Missouri 63117, and 

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has about 103 locations in Illinois, including locations within this District. The 

Defendants identified in paragraphs 2-11 above are hereinafter referred to 

collectively as “Defendants.” 

JURISDICTION AND VENUE

12. This action arises under the Patent Laws of the United States, 35 

U.S.C. § 1 et seq. This Court has jurisdiction over the subject matter of this action 

under 28 U.S.C. §§ 1331 and 1338(a). 

13. This Court has personal jurisdiction over the Defendants. 

14. Venue for this action is proper in this district pursuant to 28 U.S.C. §§ 

1391 and 1400(b). 

PATENTS-IN-SUIT

15. On March 30, 2004, the USPTO duly and legally issued U.S. Patent 

No. 6,714,559 (“the ‘559 Patent”) titled “Redundant Radio Frequency Network 

Having A Roaming Terminal Communication Protocol.” A copy of the ‘559 

Patent is attached as Exhibit A. 

16. On June 10, 2008, the USPTO duly and legally issued U.S. Patent No. 

7,386,002 (“the ‘002 Patent”) titled “Redundant Radio Frequency Network Having 

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A Roaming Terminal Communication Protocol.” A copy of the ‘002 Patent is 

attached as Exhibit B. 

17. On May 19, 2009, the USPTO duly and legally issued U.S. Patent No. 

7,535,921 (“the ‘921 Patent”) titled “Redundant Radio Frequency Network Having 

A Roaming Terminal Communication Protocol.” A copy of the ‘921 Patent is 

attached as Exhibit C. 

18. On June 16, 2009, the USPTO duly and legally issued U.S. Patent No. 

7,548,553 (“the ‘553 Patent”) titled “Redundant Radio Frequency Network Having 

A Roaming Terminal Communication Protocol.” A copy of the ‘553 Patent is 

attached as Exhibit D. 

19. On April 14, 1998, the USPTO duly and legally issued U.S. Patent No. 

5,740,366 (“the ‘366 Patent”) titled “Communication Network Having Plurality Of 

Bridging Nodes Which Transmit A Beacon To Terminal Nodes In Power Saving 

State That It Has Messages Awaiting Delivery.” A copy of the ‘366 Patent is 

attached as Exhibit E. 

20. On August 17, 1999, the USPTO duly and legally issued U.S. Patent 

No. 5,940,771 (“the ‘771 Patent”) titled “Network Supporting Roaming, Sleeping 

Terminals.” A copy of the ‘771 Patent is attached as Exhibit F. 

21. On April 16, 2002, the USPTO duly and legally issued U.S. Patent No. 

6,374,311 (“the ‘311 Patent”) titled “Communication Network Having A Plurality 

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Of Bridging Nodes Which Transmit A Beacon To Terminal Nodes In Power 

Saving State That It Has Messages Awaiting Delivery.” A copy of the ‘311 Patent 

is attached as Exhibit G. 

22. On November 25, 2008, the USPTO duly and legally issued U.S. 

Patent No. 7,457,646 (“the ‘646 Patent”) titled “Radio Frequency Local Area 

Network.” A copy of the ‘646 Patent is attached as Exhibit H. 

23. On August 13, 1996, the United States Patent and Trademark Office 

(“USPTO”) duly and legally issued U.S. Patent No. 5,546,397 (“the ‘397 Patent”) 

titled “High Reliability Access Point For Wireless Local Area Network.” A copy 

of the ‘397 Patent is attached as Exhibit I. 

24. On December 1, 1998, the USPTO duly and legally issued U.S. Patent 

No. 5,844,893 (“the ‘893 Patent”) titled “System For Coupling Host Computer 

Means With Base Transceiver Units On A Local Area Network.” A copy of the 

‘893 Patent is attached as Exhibit J. 

25. On December 16, 2003, the USPTO duly and legally issued U.S. 

Patent No. 6,665,536 (“the ‘536 Patent”) titled “Local Area Network Having 

Multiple Channel Wireless Access.” A copy of the ‘536 Patent is attached as 

Exhibit K. 

26. On February 24, 2004, the USPTO duly and legally issued U.S. Patent 

No. 6,697,415 (“the ‘415 Patent”) titled “Spread Spectrum Transceiver Module 

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Utilizing Multiple Mode Transmission.” A copy of the ‘415 Patent is attached as 

Exhibit L. 

27. On March 14, 2006, the USPTO duly and legally issued U.S. Patent 

No. 7,013,138 (“the ‘138 Patent”) titled “Local Area Network Having Multiple 

Channel Wireless Access.” A copy of the ‘138 Patent is attached as Exhibit M. 

28. On May 4, 2010, the USPTO duly and legally issued U.S. Patent No. 

7,710,907 (“the ‘907 Patent”) titled “Local Area Network Having Multiple 

Channel Wireless Access.” A copy of the ‘907 Patent is attached as Exhibit N. 

The fourteen patents identified in paragraphs 15-28 are hereinafter referred to 

collectively as the “WLAN Patents.” 

29. Innovatio owns all rights, title, and interest in and to, and has standing 

to sue for infringement of, the WLAN Patents, including the right to sue for and 

collect past damages. 

COUNT ONE 

INFRINGEMENT OF THE ‘559 PATENT

30. Innovatio repeats and realleges the allegations of the preceding 

paragraphs 1 - 29 as if fully set forth herein. 

31. Defendants have infringed and continue to infringe at least one claim 

of the ‘559 Patent, either literally or by the doctrine of equivalents, either directly, 

contributorily, by inducement or otherwise, in violation of 35 U.S.C. § 271, by 

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using one or more wireless local area network (“WLAN”) products, systems and/or 

networks that infringe one or more of the method claims of the ‘559 Patent. 

COUNT TWO 

INFRINGEMENT OF THE ‘002 PATENT

32. Innovatio repeats and realleges the allegations of the preceding 

paragraphs 1 - 29 as if fully set forth herein. 

33. Defendants have infringed and continue to infringe at least one claim 

of the ‘002 Patent, either literally or by the doctrine of equivalents, either directly, 

contributorily, by inducement or otherwise, in violation of 35 U.S.C. § 271, by 

using one or more WLAN products, systems and/or networks that infringe one or 

more of the method claims of the ‘002 Patent. 

COUNT THREE 

INFRINGEMENT OF THE ‘921 PATENT

34. Innovatio repeats and realleges the allegations of the preceding 

paragraphs 1 - 29 as if fully set forth herein. 

35. Defendants have infringed and continue to infringe at least one claim 

of the ‘921 Patent, either literally or by the doctrine of equivalents, either directly, 

contributorily, by inducement or otherwise, in violation of 35 U.S.C. § 271, by 

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using one or more WLAN products, systems and/or networks that infringe one or 

more of the method claims of the ‘921 Patent. 

COUNT FOUR 

INFRINGEMENT OF THE ‘553 PATENT

36. Innovatio repeats and realleges the allegations of the preceding 

paragraphs 1 - 29 as if fully set forth herein. 

37. Defendants have infringed and continue to infringe at least one claim 

of the ‘553 Patent, either literally or by the doctrine of equivalents, either directly, 

contributorily, by inducement or otherwise, in violation of 35 U.S.C. § 271, by 

using one or more WLAN products, systems and/or networks that infringe one or 

more of the method claims of the ‘553 Patent. 

COUNT FIVE 

INFRINGEMENT OF THE ‘366 PATENT

38. Innovatio repeats and realleges the allegations of the preceding 

paragraphs 1 - 29 as if fully set forth herein. 

39. Plaintiffs believe that a reasonable opportunity for further 

investigation or discovery will likely show that Defendants have infringed and 

continue to infringe at least one claim of the ‘366 Patent, either literally or by the 

doctrine of equivalents, either directly, contributorily, by inducement or otherwise, 

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in violation of 35 U.S.C. § 271, by using one or more WLAN products, systems 

and/or networks that infringe one or more of the claims of the ‘366 Patent. 

COUNT SIX 

INFRINGEMENT OF THE ‘771 PATENT

40. Innovatio repeats and realleges the allegations of the preceding 

paragraphs 1 - 29 as if fully set forth herein. 

41. Plaintiffs believe that a reasonable opportunity for further 

investigation or discovery will likely show that Defendants have infringed and 

continue to infringe at least one claim of the ‘771 Patent, either literally or by the 

doctrine of equivalents, either directly, contributorily, by inducement or otherwise, 

in violation of 35 U.S.C. § 271, by using one or more WLAN products, systems 

and/or networks that infringe one or more of the claims of the ‘771 Patent. 

COUNT SEVEN 

INFRINGEMENT OF THE ‘311 PATENT

42. Innovatio repeats and realleges the allegations of the preceding 

paragraphs 1 - 29 as if fully set forth herein. 

43. Plaintiffs believe that a reasonable opportunity for further 

investigation or discovery will likely show that Defendants have infringed and 

continue to infringe at least one claim of the ‘311 Patent, either literally or by the 

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doctrine of equivalents, either directly, contributorily, by inducement or otherwise, 

in violation of 35 U.S.C. § 271, by using one or more WLAN products, systems 

and/or networks that infringe one or more of the claims of the ‘311 Patent. 

COUNT EIGHT 

INFRINGEMENT OF THE ‘646 PATENT

44. Innovatio repeats and realleges the allegations of the preceding 

paragraphs 1 - 29 as if fully set forth herein. 

45. Plaintiffs believe that a reasonable opportunity for further 

investigation or discovery will likely show that Defendants have infringed and 

continue to infringe at least one claim of the ‘646 Patent, either literally or by the 

doctrine of equivalents, either directly, contributorily, by inducement or otherwise, 

in violation of 35 U.S.C. § 271, by using one or more WLAN products, systems 

and/or networks that infringe one or more of the method claims of the ‘646 Patent. 

COUNT NINE 

INFRINGEMENT OF THE ‘397 PATENT

46. Innovatio repeats and realleges the allegations of the preceding 

paragraphs 1 - 29 as if fully set forth herein. 

47. Plaintiffs believe that a reasonable opportunity for further 

investigation or discovery will likely show that Defendants have infringed and 

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continue to infringe at least one claim of the ‘397 Patent, either literally or by the 

doctrine of equivalents, either directly, contributorily, by inducement or otherwise, 

in violation of 35 U.S.C. § 271, by using one or more WLAN products, systems 

and/or networks that infringe one or more of the claims of the ‘397 Patent. 

COUNT TEN 

INFRINGEMENT OF THE ‘893 PATENT

48. Innovatio repeats and realleges the allegations of the preceding 

paragraphs 1 - 29 as if fully set forth herein. 

49. Plaintiffs believe that a reasonable opportunity for further 

investigation or discovery will likely show that Defendants have infringed and 

continue to infringe at least one claim of the ‘893 Patent, either literally or by the 

doctrine of equivalents, either directly, contributorily, by inducement or otherwise, 

in violation of 35 U.S.C. § 271, by using one or more WLAN products, systems 

and/or networks that infringe one or more of the claims of the ‘893 Patent. 

COUNT ELEVEN 

INFRINGEMENT OF THE ‘536 PATENT

50. Innovatio repeats and realleges the allegations of the preceding 

paragraphs 1 - 29 as if fully set forth herein. 

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51. Plaintiffs believe that a reasonable opportunity for further 

investigation or discovery will likely show that Defendants have infringed and 

continue to infringe at least one claim of the ‘536 Patent, either literally or by the 

doctrine of equivalents, either directly, contributorily, by inducement or otherwise, 

in violation of 35 U.S.C. § 271, by using one or more WLAN products, systems 

and/or networks that infringe one or more of the claims of the ‘536 Patent. 

COUNT TWELVE 

INFRINGEMENT OF THE ‘415 PATENT

52. Innovatio repeats and realleges the allegations of the preceding 

paragraphs 1 - 29 as if fully set forth herein. 

53. Plaintiffs believe that a reasonable opportunity for further 

investigation or discovery will likely show that Defendants have infringed and 

continue to infringe at least one claim of the ‘415 Patent, either literally or by the 

doctrine of equivalents, either directly, contributorily, by inducement or otherwise, 

in violation of 35 U.S.C. § 271, by using one or more WLAN products, systems 

and/or networks that infringe one or more of the claims of the ‘415 Patent. 

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COUNT THIRTEEN 

INFRINGEMENT OF THE ‘138 PATENT

54. Innovatio repeats and realleges the allegations of the preceding 

paragraphs 1 - 29 as if fully set forth herein. 

55. Plaintiffs believe that a reasonable opportunity for further 

investigation or discovery will likely show that Defendants have infringed and 

continue to infringe at least one claim of the ‘138 Patent, either literally or by the 

doctrine of equivalents, either directly, contributorily, by inducement or otherwise, 

in violation of 35 U.S.C. § 271, by using one or more WLAN products, systems 

and/or networks that infringe one or more of the claims of the ‘138 Patent. 

COUNT FOURTEEN 

INFRINGEMENT OF THE ‘907 PATENT

56. Innovatio repeats and realleges the allegations of the preceding 

paragraphs 1 - 29 as if fully set forth herein. 

57. Plaintiffs believe that a reasonable opportunity for further 

investigation or discovery will likely show that Defendants have infringed and 

continue to infringe at least one claim of the ‘907 Patent, either literally or by the 

doctrine of equivalents, either directly, contributorily, by inducement or otherwise, 

in violation of 35 U.S.C. § 271, by using one or more WLAN products, systems 

and/or networks that infringe one or more of the claims of the ‘907 Patent. 

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PRAYER FOR RELIEF 

 WHEREFORE, Innovatio respectfully requests entry of judgment in its 

favor and the following relief, including: 

 A. That Defendants be adjudged to have infringed one or more claims of 

each of the WLAN Patents; 

B. That Defendants and all related entities and their officers, agents, 

employees, representatives, servants, successors, assigns and all persons in active 

concert or participation with any of them, directly or indirectly, be preliminarily 

and permanently enjoined from using, or contributing or inducing the use of, any 

WLAN product, system or network that infringes any WLAN Patent; 

 C. That Defendants account for damages sustained by Innovatio as a 

result of Defendants’ infringement of the WLAN Patents, including both pre- and 

post-judgment interest and costs as fixed by this Court under 35 U.S.C. § 284; and 

 D. That the Court grant Innovatio such other and further relief as the 

Court may deem just and proper. 

 

JURY DEMAND

 Innovatio demands a trial by jury on all issues so triable. 

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 Respectfully submitted, 

Dated: March 8, 2011 /s/ Matthew G. McAndrews 

 Matthew G. McAndrews 

 

 Raymond P. Niro, Jr. 

 Brian E. Haan 

 Gabriel I. Opatken 

 NIRO, HALLER & NIRO 

 181 West Madison St., Suite 4600 

 Chicago, Illinois 60602 

 Telephone: (312) 236-0733 

 Facsimile: (312) 236-3137 

 E-mail: rnirojr@nshn.com 

 E-mail: mmcandrews@nshn.com

 E-mail: bhaan@nshn.com 

 E-mail: gopatken@nshn.com 

 Attorneys for Plaintiff,

 INNOVATIO IP VENTURES, LLC 

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EXHIBIT 4 

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UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION 

 

INNOVATIO IP VENTURES, LLC, 

 Plaintiff, 

 v. 

ABP CORPORATION, et al., 

 Defendants. 

) 

) 

) 

) 

) 

) 

) 

) 

) 

) 

) 

Civil Action No. 1:11-cv-01638 

District Judge Edmond E. Chang 

Magistrate Judge Sidney I. Schenkier 

JURY TRIAL DEMANDED 

DEFENDANTS’ AMENDED MOTION TO STAY THIS MATTER PENDING 

RESOLUTION OF CISCO SYSTEMS, INC. AND MOTOROLA SOLUTIONS, INC. v. 

INNOVATIO IP VENTURES, LLC, CASE NO. 1:11-CV-00425 (D. DEL.)

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-iiTable of Contents

Page

I. INTRODUCTION..............................................................................................................1

II. FACTUAL BACKGROUND ............................................................................................4

A. The Parties, The Patents-In-Suit And The Present Action ......................................4

B. Innovatio Files Three More Lawsuits Against Other Customer Targets .................6

C. In Parallel With Its Lawsuits, Innovatio Demands That Numerous Other 

Customer Targets License Its Patents ......................................................................7

D. Cisco And Motorola’s Declaratory Judgment Suit Against Innovatio ....................7

III. ARGUMENT ......................................................................................................................8

A. This Case Should Be Stayed Under The Customer Suit Doctrine ...........................8

1. A Stay Is Proper Because The Defendants In This Action Are 

Purchasers As Opposed To Suppliers Of The Accused Products ................8

2. A Stay Under The Customer Suit Exception Should Apply To Both 

Defendants That Are Customers Of Cisco And Motorola As Well 

As Other Purchasers Of Accused Wi-Fi Equipment ..................................10

B. This Court Also May Exercise Its Inherent Power To Stay This Case In 

The Interests Of Judicial Economy ........................................................................13

1. Entry Of A Stay Will Not Prejudice Innovatio ..........................................13

2. Entry Of A Stay Will Reduce The Burden Of Litigation On The 

Courts And The Parties ..............................................................................14

3. Entry Of A Stay Will Simplify The Issues In Question And 

Streamline Trial .........................................................................................14

IV. CONCLUSION ................................................................................................................15

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-iiiTable of Authorities

Page(s)

Card Activation Techs. v. 7-Eleven, Inc., 

No. 10-cv-4984, 2011 WL 663960 (N.D. Ill. Feb. 10, 2011) ........................................... 13 

Card Activation Techs. v. Pier 1 Imps., Inc., 

No. 09-cv-2021, 2009 WL 2956926 (N.D. Ill. Sep. 14, 2009) ............................. 10, 11, 12 

Clark v. Lacy, 

376 F.3d 682 (7th Cir. 2004) ............................................................................................ 11 

Commissariat A L'Energie Atomique v. Dell Comp. Corp., 

No. 04-cv-1999, 2004 WL 1554382 (D. Del. May 13, 2004) ...................................... 8, 15 

Delphi Corp. v. Auto. Techs. Int’l, Inc., 

No. 08-cv-11048, 2008 WL 2941116 (E.D. Mich. July 25, 2008) ..................................... 9 

Honeywell Int’l Inc. v. Audiovox Commc’ns. Corp., 

No. 04-cv-1337, 2005 WL 2465898 (D. Del. May 18, 2005) .......................................... 12 

In re Cygnus Telecomms. Tech. LLC, 

536 F.3d 1343 (Fed. Cir. 2008)......................................................................................... 11 

In re Papst Licensing GmbH & Co. KG Litig., 

– F.Supp.2d –, 2011 WL 350427 (D.D.C. Feb. 2, 2011) .................................................... 8 

Kahn v. Gen. Motors Corp., 

889 F.2d 1078 (Fed. Cir. 1989)........................................................................................... 8 

Katz v. Lear Siegler, Inc., 

909 F.2d 1459 (Fed. Cir. 1990)............................................................................... 8, 10, 12 

Landis v. N. Am. Co., 

299 U.S. 248 (1936) .................................................................................................... 12, 13 

T. J. Smith & Nephew, Ltd. v. Ferris Corp., 

No. 86-cv-5461, 1987 U.S. Dist. LEXIS 1603 (N.D. Ill. Feb. 27, 1987) ........................... 9 

Tap Pharm. Prods., Inc. v. Atrix Labs., Inc., 

No. 03-cv-7822, 2004 WL 422697 (N.D. Ill. Mar. 3, 2004) ............................................ 14 

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Accor North America, Caribou Coffee Co., Inc., Cosi, Inc., Dominick’s Supermarkets, 

Inc., LQ Management LLC, Meijer, Inc., and Panera Bread Company (“Defendants”) 

respectfully move this Court to stay this case pending the resolution of a separate action brought 

by the suppliers of products at issue in this action, Cisco Systems, Inc. and Motorola Solutions, 

Inc. v. Innovatio IP Ventures, LLC, Case No. 1:11-cv-00425 (D. Del.).1 As set forth below, this 

case should be stayed pursuant to the customer suit doctrine and to promote judicial efficiency. 

I. INTRODUCTION 

This is a case in which a patent holder, in hopes of obtaining a litigation advantage, has 

sued those least capable of defending against its infringement claims – a group of end-user 

defendants that do not design, make, or sell the products accused of infringement. Plaintiff 

Innovatio IP Ventures, LLC (“Innovatio”) is a patent holding company whose business is 

acquiring, licensing and litigating patents. Shortly after acquiring the seventeen patents-in-suit, 

Innovatio began a widespread campaign of asserting the patents against products having 

standardized wireless functionality commonly referred to as “Wi-Fi.” Innovatio’s strategy 

included (1) filing this action against ten defendants; (2) filing a second action in the District of 

Nevada (the “Nevada Action”) against another defendant; (3) filing two additional actions in the 

Middle District of Florida (the “Florida Actions”) against eight other defendants; and (4) 

initiating a substantial letter-writing campaign demanding that numerous other companies take 

licenses to the patents-in-suit. Innovatio did not, however, file suit against any company that 

actually makes or sells the accused wireless products. Rather, Innovatio sued completely 

 

1 To address the issues raised by the Court’s June 17, 2011 Order (ECF No. 131), the 

Defendants have modified the introduction and factual background sections and added an 

argument section to this amended brief. See Section III.A.2 infra. 

 

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unrelated businesses such as bakeries, cafés, hotels, and grocery stores that merely buy the 

accused products from third-party suppliers such as Cisco Systems, Inc. and Motorola Solutions, 

Inc. This is a common tactic of patent holding companies, to sue multiple end-users who have 

no real knowledge of the accused products and are the least capable of understanding and 

defending the accused technologies, in order to secure many small settlements that add up to far 

more than the actual value, if any, of the patented invention. 

After being served with the complaint, several of the Defendants – as well as the 

defendants in the Nevada Action, Florida Actions, and the numerous other licensing targets – 

turned to their suppliers to defend the wireless products at issue in this action. In response, Cisco 

and Motorola, two large suppliers that supply six out of the seven Defendants in this action with 

at least some of their wireless access point products, filed a declaratory judgment action in the 

District of Delaware for non-infringement and invalidity of the seventeen patents-in-suit, to 

resolve in one proceeding the issues raised by Innovatio with respect to their products (the 

“Supplier Action”). Cisco and Motorola stepped up to protect their customers and products 

against infringement claims and in response to indemnity demands from their customers relating 

to Innovatio’s claims.2 

To address precisely these circumstances, Courts fashioned the “customer suit doctrine” 

to protect end-users such as the bakeries, cafés, hotels and grocery stores in this action from 

being forced to defend products that are not their own. Applying that doctrine, courts stay 

infringement actions against customers while the suppliers of the products at issue resolve patent 

disputes over their products. In the context of this action, the benefits of this approach are 

 

2 See, e.g., Ex. 1, Compl. for Declaratory J. in Cisco Sys., Inc. and Motorola Solutions, Inc. v. 

Innovatio IP Ventures, LLC, Case No. 1:11-cv-00425 (D. Del.) ¶¶ 15-16. 

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significant. A stay would allow those with the actual technical knowledge of the accused 

wireless products to defend them, as opposed to end-users such as bakeries and cafés that have 

nothing to do with the design, development or sale of the products. The suppliers have 

substantial interests in defending their products and possess the technical information to do so. 

As such, for both customers and non-customers it is essential that the suppliers have an 

opportunity to defend their products, as they are by far best able and most motivated to evaluate 

the technical issues, produce technical discovery, and raise defenses as compared to the endusers in this case. A stay would also serve efficiency interests and reduce the risk of inconsistent 

claim constructions and other outcomes on the same patents and products, as it would allow the 

suppliers to resolve in one proceeding a patentee’s allegations against the supplier’s products 

instead of through piecemeal litigation against customers who have no involvement in the design 

or manufacture of the accused products or technologies. This is particularly significant in this 

case, where Innovatio alleges that every accused product with standardized Wi-Fi functionality 

infringes the patents-in-suit in the same manner, regardless of who supplies the particular 

product. In such circumstances, the supplier proceedings often resolve the infringement issues 

for all end-users, not just their own customers. 

At bottom, as the courts have found in fashioning the customer suit doctrine, it makes 

much more sense for the Supplier Action to proceed first, to allow those with actual knowledge 

of the standardized technologies an opportunity to construe the claims and assert defenses. By 

contrast, it is inefficient to force the bakery, café, hotel and grocery store chains in this case to 

attempt to address the same issues that two large suppliers of the accused wireless products are 

handling. Because this action is a classic case of a patent holding company suing end customers 

instead of the manufacturers of the accused products, Defendants respectfully request that this 

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action be stayed pursuant to the customer suit doctrine pending the resolution of the Supplier 

Action. 

II. FACTUAL BACKGROUND 

A. The Parties, The Patents-In-Suit And The Present Action 

Innovatio was incorporated in February 2011, shortly before it acquired the patents-insuit and filed this action. Innovatio is a patent holding company, focused on acquiring, licensing 

and litigating patents for royalties. See, e.g., Ex. 1 ¶ 4. According to Innovatio, the patents are 

applicable to wireless products having certain standardized wireless functionality. In particular, 

Innovatio’s allegations are directed at the IEEE 802.11 standards, or “Wi-Fi.”3 Innovatio alleges 

any wireless product practicing 802.11 standards infringes the patents-in-suit. See Ex. 2, Apr. 27 

2011 Letter from M. McAndrews to L. Perkins at 2 (“Claims of the Innovatio Patents cover, 

among other things, WLANs that use the IEEE 802.11 communication protocols. The operation 

and use of any such systems by [customer] would constitute infringement... .”). According to 

Innovatio, every accused product that follows the 802.11 standards allegedly infringes its patents 

in the same manner, regardless of who supplies the particular product. See id.

On March 8, 2011, Innovatio filed this suit against the Defendants alleging infringement 

of fourteen patents related to their use of “WLAN products, systems and/or networks.” See 

Compl., Mar. 8, 2011, ECF No. 1. On April 6, 2011, the Court granted Innovatio’s motion to 

amend the complaint, adding three additional patents. See Min. Entry, Apr. 6, 2011, ECF No. 

29. The Defendants are bakeries and cafés (Cosi, Inc., Panera Bread Company, and Caribou 

Coffee Co., Inc.), hotels (Accor North America, LQ Management LLC), and grocery stores 

 

3 IEEE stands for the Institute of Electrical and Electronic Engineers and is a professional 

association and standards-setting organization. IEEE 802.11 is a set of standards relating to 

wireless communications. 

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(Dominick’s Supermarkets, Inc., Meijer, Inc.). See, e.g., Ex. 3, Osbeck Decl. ¶ 3; Ex. 4, Enright 

Decl. ¶ 3; Ex. 5, Sandquist Decl. ¶ 3; Ex. 6, Breyer Decl. ¶ 3; Ex. 7, Pitchai Decl. ¶ 3; Ex. 8, 

Gilbertson Decl. ¶ 3; Ex. 9 Burgess Decl. ¶ 3. They do not make or sell or have any role in the 

design or manufacture of “WLAN products, systems and/or networks.” See Ex. 3 ¶¶ 3, 6; Ex. 4 

¶¶ 3, 6; Ex. 5 ¶¶ 3, 5; Ex. 6 ¶¶ 3, 6; Ex. 7 ¶¶ 3-4; Ex. 8 ¶¶ 3, 5; Ex. 9 ¶¶ 3, 6. The Defendants 

also lack technical documents that describe, or witnesses with knowledge about, the design or 

development of the wireless products at issue. See Ex. 3 ¶ 7; Ex. 4 ¶ 7; Ex. 5 ¶ 6; Ex. 6 ¶ 7; Ex. 

7 ¶¶ 6-8; Ex. 8 ¶ 6; Ex. 9 ¶ 7. Thus, substantially all of the documents and testimony that 

Defendants will need to address Innovatio’s claims directed to the accused products is possessed 

by third parties. See Ex. 3 ¶ 7; Ex. 4 ¶ 7; Ex. 5 ¶ 6; Ex. 6 ¶ 7; Ex. 7 ¶¶ 6-8; Ex. 8 ¶ 6; Ex. 9 ¶ 7. 

Cisco and Motorola participated in the development of the 802.11 standards, and design, 

market and sell wireless products at issue in this case.4 See, e.g., Ex. 1 ¶ 15; Ex. 10, Highlighted 

802.11 Working Grp. Membership List. According to an independent third-party provider of 

market research, Cisco and Motorola comprise over 50% of worldwide wireless LAN equipment 

sales. See, e.g., Ex. 11, Infonetics Research Report at 4 (Year-Over-Year Wireless LAN 

Equipment Vendor Market Share Standings). In the present action, Cisco and Motorola supply 

accused products to six of the seven Defendants—Meijer, Cosi, Dominick’s, Panera, LQ, and 

Caribou Coffee. See Ex. 3 ¶ 4; Ex. 4 ¶ 4; Ex. 5 ¶ 4; Ex. 6 ¶ 4; Ex. 7 ¶ 5; Ex. 8 ¶ 4. Thus far, 

three of the Defendants have confirmed that they have a substantial number of Cisco or Motorola 

wireless access points in their networks (Meijer, Dominick’s and Cosi). 

 

4 The accused products include components that Cisco and Motorola purchase from other third 

parties, such as wireless chips. 

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B. Innovatio Files Three More Lawsuits Against Other Customer Targets 

On May 13, 2011, Innovatio filed a second lawsuit in the United States District Court for 

the District of Nevada. See Ex. 12, Compl. for Patent Infringement in Innovatio IP Ventures, 

LLC v. MEI-GSR Holdings LLC, Case No. 3:11-cv-00343 (D. Nev.). On June 3, 2011, Innovatio 

filed a third lawsuit in the United States District Court for the Middle District of Florida. See Ex. 

13, Compl. for Patent Infringement in Innovatio IP Ventures, LLC v. Rosen 7600, Inc. et al., 

Case No. 6:11-cv-00930 (M.D. Fla.). On June 15, 2011, Innovatio filed a fourth lawsuit in the 

Middle District of Florida. See Ex. 14, Compl. for Patent Infringement in Innovatio IP Ventures, 

LLC v. B&B Corporate Holdings, Inc., Case No. 8:11-cv-01325 (M.D. Fla.). In the Nevada and 

Florida Actions, Innovatio claims that other alleged users of WLAN products infringe the same 

17 patents at issue in this case. See Ex. 12 ¶¶ 7-23; Ex. 13 ¶¶ 19-35; Ex. 14 ¶¶ 6-22. As with 

the present action, Innovatio’s infringement allegations are directed at products with 

standardized 802.11 functionality. See Ex. 12 ¶¶ 25-58; Ex. 13 ¶¶ 45-84; Ex. 14 ¶¶ 26-65. Like 

the Defendants in the present action, the defendants in the Nevada lawsuit (MEI-GSR Holdings) 

and Florida lawsuits (Rosen 7600, Inc., Rosen 9939, Inc., Rosen Centre, Inc., Rosen Hotels & 

Resorts, Inc., Rosen International, Inc., Rosen Plaza, Inc., Rosen Vista, Inc. (the “Rosen 

defendants”) and B&B Corporate Holdings, Inc. (“B&B”)) do not make wireless products. 

Instead, MEI-GSR runs a casino and hotel in Reno, Nevada, the Rosen defendants run hotels and 

resorts near Orlando, Florida, and B&B runs convenience stores near Orlando, Florida. See, e.g.,

Ex. 12 ¶ 6; Ex. 13 ¶¶ 2-8; Ex. 14 ¶ 2. MEI-GSR Holdings, the Rosen defendants, and B&B are 

all Cisco customers. 

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C. In Parallel With Its Lawsuits, Innovatio Demands That Numerous Other 

Customer Targets License Its Patents 

Innovatio also is engaging in a widespread letter-writing campaign targeted at purchasers 

of wireless products with standardized 802.11 functionality. In its letters, Innovatio accuses the 

customers of “likely infringement” of 31 patents, including the 17 that are asserted in this case. 

Notably, Innovatio demands immediate payment by the customers, within 30 days: 

[A]s discussed in greater detail below, this notifies [customer] of its likely 

infringement of the Innovatio Patents. * * * Innovatio proposes granting 

[customer] an upfront, paid-up license for its use under all of 31 of the issued 

Innovatio Patents. The amount of Innovatio’s paid-up license fee will be 

determined by the specific nature and extent of the use of WLAN (e.g., Wi·Fi) 

and meshing networking technologies by [customer] covered by the Innovatio 

Patents. Innovatio will also discount the license fee if the parties are able to 

finalize a suitable license within the next 30 days.

See, e.g., Ex. 2 at 2-4 (emphasis added). As of the filing of this motion, dozens of companies 

uninvolved in the supply of wireless products have received such letters. 

D. Cisco And Motorola’s Declaratory Judgment Suit Against Innovatio 

The defendants in this action and the Nevada and Florida Actions, along with numerous 

other customer targets, contacted their wireless product suppliers to defend and indemnify them 

and the suppliers’ products. These requests for assistance and indemnity go beyond the 

defendants in the pending actions, and continue to grow on a daily basis as more and more 

customers receive licensing demands from Innovatio. Cisco and Motorola responded to 

Innovatio’s growing threats against their products and customers by filing the Supplier Action 

seeking a declaratory judgment that the asserted patents are invalid and are not infringed. Cisco 

and Motorola brought their action in Delaware because Innovatio and Motorola are incorporated 

there. See, e.g., Ex. 1 ¶¶ 3-4. 

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III. ARGUMENT 

A. This Case Should Be Stayed Under The Customer Suit Doctrine 

1. A Stay Is Proper Because The Defendants In This Action Are 

Purchasers As Opposed To Suppliers Of The Accused Products 

This action should be stayed pursuant to the customer suit doctrine. Under the 

“customer-suit doctrine,” courts stay infringement suits against customers to permit litigation 

brought by the manufacturer who produced the allegedly infringing product to proceed. Katz v. 

Lear Siegler, Inc., 909 F.2d 1459, 1464 (Fed. Cir. 1990); In re Papst Licensing GmbH & Co. KG 

Litig., – F.Supp.2d – , 2011 WL 350427, *8 (D.D.C. Feb. 2, 2011). “Underlying the customer 

suit doctrine is the preference that infringement determinations should be made in suits involving 

the true defendant, the party that controls the product’s design, rather than suits involving 

secondary parties such as customers of the manufacturer.” In re Papst Licensing, 2011 WL 

350427, at *8. The customer suit doctrine is routinely applied to stay customer suits in one 

forum while manufacturers of the products at issue resolve the dispute in another forum. See, 

e.g., Katz, 909 F.2d at 1464; see also Card Activation Techs. v. Pier 1 Imps., Inc., No. 09-cv2021, 2009 WL 2956926, at *2 (N.D. Ill. Sep. 14, 2009) (granting motion to stay customer suit); 

Honeywell Int’l Inc. v. Audiovox Commc’ns. Corp., No. 04-cv-1337, 2005 WL 2465898, at *4 

(D. Del. May 18, 2005) (same); Commissariat A L'Energie Atomique v. Dell Comp. Corp., No. 

03-cv-484, 2004 WL 1554382, at *2 (D. Del. May 13, 2004) (same). The doctrine “guard[s] 

against possibility of abuse” in circumstances such as those presented here, where customers 

removed from the actual alleged infringement issues have been targeted by a patent holder. 

Kahn v. Gen. Motors Corp., 889 F.2d 1078, 1081 (Fed. Cir. 1989). This Court previously has 

applied the doctrine in similar circumstances to those here to stay an infringement suit against 

customers where the manufacturer of the allegedly infringing products had filed an action in the 

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District of Delaware seeking a declaratory judgment that the asserted patents were invalid. See 

Card Activation Techs., Inc., 2009 WL 2956926, at *2. This Court found a stay was warranted 

because “a finding of invalidity would moot a number of cases pending against [the 

manufacturer’s customers]” and because the manufacturer “would undoubtedly be a necessary 

participant in [the customer] case, at the very least, for purposes of discovery.” Id. at *4. 

This case falls squarely within the customer suit doctrine. The bakeries, cafés, hotels and 

grocery stores in this case do not design or supply wireless products. See Section II.A supra. 

They purchase them from suppliers like Cisco and Motorola. Unlike Defendants, Cisco and 

Motorola possess technical documents and witnesses involved in the design, marketing and sale 

of the accused wireless access point products. Defendants do not have access to these materials, 

nor do they possess the technical, licensing, and chip information necessary to defend against 

Innovatio’s claims. As this Court has recognized, in such circumstances manufacturers of 

accused equipment, like Cisco and Motorola, are in the best position to effectively defend against 

assertions that their products infringe: 

[T]he manufacturer is clearly in the best position to either defend against a 

claim of infringement or to affirmatively assert invalidity of the holder’s patent. 

Presumably it is the manufacturer who has the more detailed knowledge regarding 

the claim of infringement, the expertise in the area, and the primary interest in the 

outcome of the litigation. 

T. J. Smith & Nephew, Ltd. v. Ferris Corp., No. 86-cv-5461, 1987 U.S. Dist. LEXIS 1603, at *3-

4 (N.D. Ill. Feb. 27, 1987) (emphasis added); see also Delphi Corp. v. Auto. Techs. Int’l, Inc., 

No. 08-cv-11048, 2008 WL 2941116, at *4-5 (E.D. Mich. July 25, 2008) (“At the root of the 

preference for a manufacturer’s declaratory judgment action is the recognition that, in reality, the 

manufacturer is the true defendant in the customer suit” and as “a matter of judicial economy, 

global settlement is preferred over piecemeal litigation.”) (internal citation omitted). 

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Cisco and Motorola have substantial interests in defending their products against 

Innovatio’s claims. Cisco and Motorola have numerous customers outside of the Defendants 

who purchase the accused wireless access point products from them, and employ many personnel 

involved in the design, marketing, and sale of those accused products. See Ex. 1 ¶¶ 8, 15. 

Additionally, Cisco and Motorola are members of the IEEE, and their employees participated in 

the development of the 802.11 standards. See Section II.A supra. As such, Cisco and Motorola 

have a great interest in defending against Innovatio’s claims, to protect their customers and 

products against adverse rulings, and globally resolve the issues raised by Innovatio. Card 

Activation Techs., 2009 WL 2956926, at *2 (citing Katz, 909 F.2d at 1464) (“[I]t is a simple fact 

of life that a manufacturer must protect its customers, either as a matter of contract, or good 

business, or in order to avoid the damaging impact of an adverse ruling against its products.”). 

The Defendants do not share Cisco’s and Motorola’s interests in resolving these issues 

globally for all of Innovatio’s current and future targets. To the contrary, each Defendant has a 

greater interest in settling the particular claims asserted against it, leaving the merits of this 

action to be determined, and thousands of other claims (and potential claims) unresolved. See, 

e.g., Delphi Corp., 2008 WL 2941116, at *4 (“[A] customer that did not have final responsibility 

for designing, developing or manufacturing a component of its production would have less 

incentive [than its manufacturer] to vigorously defend it against patent suits... .”). Under such 

circumstances, Cisco’s and Motorola’s suit should take precedence. 

2. A Stay Under The Customer Suit Exception Should Apply To Both 

Defendants That Are Customers Of Cisco And Motorola As Well As 

Other Purchasers Of Accused Wi-Fi Equipment 

A stay of this case against all Defendants will serve the interest of judicial economy. 

With respect to the six Defendants that are customers of Cisco and Motorola—Meijer, Cosi, 

Dominick’s, Panera, LQ, and Caribou Coffee (see Section II.A supra)—the Supplier Action 

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necessarily will exhaust Innovatio’s claims against Cisco’s and Motorola’s products, and as such 

there will be unnecessary duplication of work concerning claim construction, infringement, 

invalidity and other patent issues with respect to those six Defendants. See Clark v. Lacy, 376 

F.3d 682, 687 (7th Cir. 2004) (“Our Court has held that this sort of redundancy counsels in favor 

of a stay.”); Card Activation Techs., 2009 WL 2956926, at *4. 

With respect to the remaining Defendant that is not a Cisco or Motorola customer, 

because Innovatio’s claims are directed against products operating in accordance with the 802.11 

standards, Innovatio’s technical application of its patent claims to the accused wireless products 

will likely be the same for Cisco, Motorola and every other supplier. See Ex. 2 at 2 (“Claims of 

the Innovatio Patents cover, among other things, WLANs that use the IEEE 802.11 

communication protocols.”); Ex. 3 ¶ 5; Ex. 4 ¶ 5; Ex. 5 ¶ 4; Ex. 6 ¶ 5; Ex. 7 ¶¶ 4, 5; Ex. 8 ¶ 4; 

Ex. 9 ¶ 5. As such, a judgment of noninfringement in the Supplier Action could globally resolve 

the issues in this action. Likewise, judgment of invalidity in the Delaware action will resolve 

this action as well. See e.g., In re Cygnus Telecomms. Tech. LLC, 536 F.3d 1343, 1349 (Fed. 

Cir. 2008) (“It is a firmly established principle that a judgment of a patent invalidity in one case 

can collaterally estop the patent owner from contesting invalidity in a subsequent case, as long as 

the patent owner had a full and fair opportunity to litigate the validity of the patent in the first 

case.”) (internal citation omitted). Additionally, Cisco and Motorola assert license and 

exhaustion defenses in their lawsuit based in part on their purchases of parts from their suppliers 

that, on information and belief, are licensed to the Innovatio portfolio. Because the accused 

products provided by other suppliers could also include these potentially licensed parts, the 

license and exhaustion defenses asserted by Cisco and Motorola also could resolve or 

substantially narrow the issues in this action. 

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Moreover, as Innovatio continues to file individual lawsuits and serially issue licensing 

demands against Cisco’s and Motorola’s customers, the efficiencies associated with resolving all 

of those disputes in the Supplier Action become more and more pronounced. The burdens on 

defendants to defend products they do not make or sell is great. Because Innovatio’s claims are 

directed to a technical standard, and in view of the overlap in the non-infringement, invalidity, 

licensing and other issues, the Supplier Action will at a minimum likely narrow the issues in this 

action, alleviating the burdens on the Court and Defendants as they attempt to defend products 

that are not their own. 

Courts regularly stay customer proceedings in favor of supplier actions even where there 

is not a complete identity of parties or products at issue. As this Court previously recognized, 

such concerns are “always present” in considering the customer suit doctrine, but yet do “not 

provide a principled reason for denying a stay”: 

In this case, [manufacturer] seeks a declaratory judgment of invalidity. To the 

extent that [manufacturer] is successful in the Delaware Case, the lawsuit will 

conclusively decide the validity of the [patent-in-suit] and thus moot the instant 

patent infringement action. Indeed, a finding of invalidity would moot a number 

of cases pending against [manufacturer’s] customers... Although [patent 

holder] correctly notes that the Delaware Case is not certain to resolve all issues 

between [patent holder] and [customer], this argument assumes that [patent 

holder] is successful in Delaware. Such a concern is always present in 

considering the customer suit exception it – does not provide a principled 

reason for denying a stay... . 

Card Activation Techs., 2009 WL 2956926 at *4 (rejecting argument that stay of customer suit 

should be denied because customers were the only alleged direct infringers of asserted method or 

process claims); see also Landis v. N. Am. Co., 299 U.S. 248, 254 (1936) (rejecting suggestion 

that “the parties to the two causes must be shown to be the same and the issues identical.”); Katz, 

909 F.2d at 1464 (“Although there may be additional issues involving the defendants in the 

[customer] action, their prosecution will be advanced if [patent holder] is successful on the major 

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premises being litigated in Massachusetts [forum for manufacturer lawsuit], and may well be 

mooted if he is unsuccessful.”). 

B. This Court Also May Exercise Its Inherent Power To Stay This Case In The 

Interests Of Judicial Economy 

The Court also may exercise its inherent power to stay this case in the interests of judicial 

economy. District courts have inherent power to stay proceedings in the interest of “economy of 

time and effort for itself, for counsel, and for litigants.” Landis, 299 U.S. at 254. In determining 

whether to exercise this inherent power, courts evaluate three factors: “(i) whether a stay will 

unduly prejudice or tactically disadvantage the non-moving party, (ii) whether a stay will 

simplify the issues in question and streamline the trial, and (iii) whether a stay will reduce the 

burden of litigation on the parties and on the court.” See, e.g., Tap Pharm. Prods, Inc. v. Atrix 

Labs, Inc., No. 03-cv-7822, 2004 WL 422697, at *1 (N.D. Ill. Mar. 3, 2004). 

1. Entry Of A Stay Will Not Prejudice Innovatio 

A stay will not prejudice Innovatio. Innovatio does not compete with any of the bakeries, 

cafés, hotels, or grocery stores it sued, but is merely a patent holding company whose only 

interest is in licensing its patents for money. A stay will not shorten or suspend the statutory 

damages period, which is triggered by the filing of the complaint. See 35 U.S.C. § 286. 

Innovatio in fact will be able to seek much broader relief in the Supplier Action than is available 

in this case, as the Supplier Action involves all of Cisco’s and Motorola’s products. Innovatio 

also has little invested in the progress of this case so far: this case was filed only a few months 

ago and is still in its very early stages. No discovery responses have been exchanged; only initial 

disclosures have been served. “As neither side has yet to begin the process of developing this 

case, there is no apparent prejudice or tactical disadvantage that the Plaintiff would be forced to 

endure if a stay were granted.” Card Activation Techs., Inc. v. 7-Eleven, Inc., No. 10-cv-4984, 

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2011 WL 663960, at *2 (N.D. Ill. Feb. 10, 2011); Tap Pharm. Prods, Inc., 2004 WL 422697, at 

*1 (N.D. Ill. Mar. 3, 2004) (“Since the litigation is at such an early stage... I find they will not be 

unduly prejudiced by a stay.”). 

Innovatio’s only “harm” is that a stay will disrupt its plan to collect settlements from 

companies who are unfamiliar with the accused technology and do not have the resources to 

defend against Innovatio’s claims. That, however, is not a harm recognized by the courts and 

does not outweigh the significant prejudice that these unknowledgeable customers and their 

suppliers will suffer in the absence of a stay. 

2. Entry Of A Stay Will Reduce The Burden Of Litigation On The 

Courts And The Parties 

As discussed above, a stay of this action will avoid unnecessarily duplicative litigation 

and its associated burdens on the courts and the parties. The fact and expert discovery phases of 

the case would be particularly burdensome in this case if it were to go forward because the 

Defendants do not possess the technical information necessary to defend against Innovatio’s 

infringement claims and would need to turn to Cisco, Motorola and other third parties for that 

information. See Ex. 3 ¶ 7; Ex. 4 ¶ 7; Ex. 5 ¶ 6; Ex. 6 ¶ 7; Ex. 7 ¶¶ 6-8; Ex. 8 ¶ 6; Ex. 9 ¶ 7. A 

stay also avoids the risk of inconsistent claim constructions and other substantive outcomes. 

This factor strongly favors a stay. See Pfizer, Inc. v. Apotex, Inc., 640 F.Supp.2d 1006, 1008 

(N.D. Ill. 2009). 

3. Entry Of A Stay Will Simplify The Issues In Question And Streamline 

Trial 

Entry of a stay will simplify and streamline the issues and may render all disputes in this 

case moot. As discussed above, Cisco and Motorola products comprise a substantial portion of 

the wireless access point products at issue in this case, and thus resolution of Innovatio’s claims 

relating to those products will streamline the number of accused products at issue in this case. 

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Moreover, because Innovatio’s claims are directed at a technical standard and are allegedly the 

same for all accused wireless products (see Section II.A supra), a noninfringement finding in the 

Supplier Action should resolve all of Innovatio’s claims, regardless of supplier. See, e.g., 

Commissariat A L’Energie Atomique, 2004 WL 1554382, at *3 (“If, for example, [patent 

holder’s] patents were found invalid or the manufacturers would [sic] found to be not infringing, 

then there would be no need to proceed against the OEM/distributors or retailers, thus conserving 

judicial resources and expense to the parties.”). Likewise, if Cisco and Motorola are successful 

on their invalidity claims, the issues in this suit will be completely resolved as well. Finally, if 

Cisco and Motorola are successful in their licensing and exhaustion defenses, the issues in this 

suit will be fully or mostly resolved. Accordingly, this third factor also favors a stay. 

IV. CONCLUSION 

For the reasons stated above, the Defendants respectfully request that this Court stay this 

suit pending the outcome of Cisco and Motorola’s declaratory judgment action in Delaware. 

 

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Dated: July 6, 2011 Respectfully submitted, 

 

 /s/ Amanda J. Hollis 

 

Adam R. Alper (Pro Hac Vice) 

KIRKLAND & ELLIS LLP

555 California Street 

San Francisco, California 94104 

415.439.1400 (Telephone) 

adam.alper@kirkland.com 

Amanda J. Hollis (#6279821) 

KIRKLAND & ELLIS LLP 

300 North LaSalle 

Chicago, Illinois 60654 

312.862.2000 (Telephone) 

amanda.hollis@kirkland.com 

 

 

Attorneys for Defendants Cosi, Inc., Dominick’s 

Supermarkets, Inc., and Meijer, Inc.

 

/s/ Kevin John O’Shea (with consent) 

 

Kevin John O’Shea (#6270380) 

GREENBERG TRAURIG LLP 

77 West Wacker Drive 

Chicago, Illinois 60601 

312.456.8400 (Telephone) 

osheak@gtlaw.com 

 

 

Attorney for Defendants Cosi, Inc. and Panera 

Bread Company 

 

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 /s/ Robert David Donoghue (with consent) 

 

Robert David Donoghue (#6273840) 

Daniel Long Farris (#6292794) 

HOLLAND AND KNIGHT LLP 

131 South Dearborn, 30th floor 

Chicago, Illinois 60603 

312.578.6553 (Telephone) 

david.donoghue@hklaw.com 

daniel.farris@hklaw.com 

 

 

Attorneys for Defendants Accor North America and 

Meijer, Inc. 

/s/ Vaibhav P. Kadaba (with consent) 

 

Jennifer L Colvin (#6274731) 

Matthew James Straub (#6273117) 

Daniel Oscar Canales (#6296027) 

OGLETREE, DEAKINS, NASH, SMOAK 

& STEWART, P.C. 

155 North Wacker Drive, Suite 4300 

Chicago, Illinois 60606 

312.673.7800 (Telephone) 

jennifer.colvin@ogletreedeakins.com 

matthew.straub@odnss.com 

daniel.canales@ogletreedeakins.com 

 

 

Matias Ferrario (Pro Hac Vice) 

Taylor Higgins Ludlam (Pro Hac Vice)

Vaibhav P. Kadaba (Pro Hac Vice)

KILPATRICK TOWNSEND 

& STOCKTON LLP 

1001 West Fourth Street 

Winston Salem, North Carolina 27101 

336.607.7300 (Telephone) 

mferrario@kilpatricktownsend.com 

taludlam@kilpatricktownsend.com 

wkadaba@kilpatrickstockton.com 

 

 

Attorneys for Defendants Caribou Coffee Co., Inc. 

and Panera Bread Company 

 

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 /s/ Steven L. Baron (with consent) 

 

Steven L. Baron (#6200868)

Steven P. Mandell (#6183729)

Sharon Renae Albrecht (#6288927)

MANDELL MENKES LLC 

333 West Wacker Drive, Suite 300 

Chicago, Illinois 60606 

312.251.1000 (Telephone) 

sbaron@mandellmenkes.com 

smandell@mandellmenkes.com 

salbrecht@mandellmenkes.com 

 

 

Attorneys for Defendant Dominick’s Supermarkets, 

Inc. 

/s/ Neil J. McNabnay (with consent) 

 

Neil J. McNabnay (Pro Hac Vice)

Enrique D Duarte (Pro Hac Vice) 

FISH & RICHARDSON P.C. 

1717 Main Street, Suite 5000 

Dallas, Texas 75201 

214.747.5070 (Telephone) 

mcnabnay@fr.com 

duarte@fr.com 

 

 

Joel David Bertocchi (#6227292) 

HINSHAW & CULBERTSON LLP 

222 North LaSalle Street, Suite 300 

Chicago, Illinois 60601 

(312) 704 3130 (Telephone) 

jbertocchi@hinshawlaw.com 

 

 Attorneys for Defendant LQ Management LLC 

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CERTIFICATE OF SERVICE

I hereby certify that on July 6, 2011 a true and correct copy of the foregoing document, 

DEFENDANTS’ AMENDED MOTION TO STAY THIS MATTER PENDING 

RESOLUTION OF CISCO SYSTEMS, INC. AND MOTOROLA SOLUTIONS, INC. v. 

INNOVATIO IP VENTURES, LLC, CASE NO. 1:11-CV-00425 (D. DEL.), was 

electronically filed with the Court via the CM/ECF system which sent notification of such filing 

to all Counsel of Record. Copies of documents required to be served by Fed.R.Civ.P. 5(a) have 

been served. 

Dated: July 6, 2011 /s/ Amanda J. Hollis

Amanda J. Hollis (#6279821) 

KIRKLAND & ELLIS LLP 

300 North LaSalle 

Chicago, Illinois 60654 

312.862.2000 (Telephone) 

amanda.hollis@kirkland.com 

 

Attorney for Defendants Cosi, Inc., 

Dominick’s Supermarkets, Inc., and Meijer, 

Inc.

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EXHIBIT 5 

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Complaint 

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Michael D. Rounds (4734) 

Adam K. Yowell (11748) 

WATSON ROUNDS 

5371 Kietzke Lane 

Reno, NV 89511 

Telephone: (775) 324-4100 

Facsimile: (775) 333-8171 

E-Mail: mrounds@watsonrounds.com 

E-Mail: ayowell@watsonrounds.com

Matthew G. McAndrews (of counsel) 

Raymond P. Niro, Jr. (of counsel)

NIRO, HALLER & NIRO 

181 West Madison Street, Suite 4600 

Chicago, Illinois 60602 

Telephone: (312) 236-0733 

Fax: (312) 236-3137 

E-mail: mmcandrews@nshn.com

E-mail: rnirojr@nshn.com

Attorneys for Plaintiff, 

INNOVATIO IP VENTURES, LLC 

UNITED STATES DISTRICT COURT 

DISTRICT OF NEVADA 

INNOVATIO IP VENTURES, LLC, 

 Plaintiff, 

 v. 

MEI-GSR HOLDINGS LLC dba GRAND 

SIERRA RESORT AND CASINO, 

 

 Defendant. 

Case No.: 3:11-cv-343

ORIGINAL COMPLAINT FOR PATENT 

INFRINGEMENT 

(JURY DEMAND) 

 For its Original Complaint for Patent Infringement, Plaintiff Innovatio IP Ventures, LLC 

(“Innovatio”), by and through its undersigned counsel, alleges as follows: 

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JURISDICTION AND VENUE

1. This action arises under the Patent Laws of the United States, 35 U.S.C. § 1 et 

seq. This Court has jurisdiction over the subject matter of this action under 28 U.S.C. §§ 1331 

and 1338(a). 

2. This Court has personal jurisdiction over the Grand Sierra. 

3. Venue for this action is proper in this district pursuant to 28 U.S.C. §§ 1391 and 

1400(b). 

THE PARTIES

4. Plaintiff Innovatio is a corporation organized under the laws of the State of 

Delaware and has a place of business at 22 West Washington Street, Suite 1500, Chicago, 

Illinois 60602. 

5. On information and belief, MEI-GSR Holdings LLC dba Grand Sierra Resort and 

Casino (“Grand Sierra”) is a limited liability company organized under the laws of the State of 

Nevada, and maintains a principal place of business at 2500 East Second Street, Reno, NV 

89595. 

6. On information and belief, MEI-GSR Holdings LLC operates the Grand Sierra 

Resort and Casino at 2500 East Second Street, Reno, NV 89595. 

PATENTS-IN-SUIT

7. On March 30, 2004, the United States Patent and Trademark Office (“the 

USPTO”) duly and legally issued U.S. Patent No. 6,714,559 (“the ‘559 Patent”) titled 

“Redundant Radio Frequency Network Having A Roaming Terminal Communication Protocol.” 

A copy of the ‘559 Patent is attached as Exhibit A. 

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8. On June 10, 2008, the USPTO duly and legally issued U.S. Patent No. 7,386,002 

(“the ‘002 Patent”) titled “Redundant Radio Frequency Network Having A Roaming Terminal 

Communication Protocol.” A copy of the ‘002 Patent is attached as Exhibit B. 

9. On May 19, 2009, the USPTO duly and legally issued U.S. Patent No. 7,535,921 

(“the ‘921 Patent”) titled “Redundant Radio Frequency Network Having A Roaming Terminal 

Communication Protocol.” A copy of the ‘921 Patent is attached as Exhibit C. 

10. On June 16, 2009, the USPTO duly and legally issued U.S. Patent No. 7,548,553 

(“the ‘553 Patent”) titled “Redundant Radio Frequency Network Having A Roaming Terminal 

Communication Protocol.” A copy of the ‘553 Patent is attached as Exhibit D. 

11. On April 14, 1998, the USPTO duly and legally issued U.S. Patent No. 5,740,366 

(“the ‘366 Patent”) titled “Communication Network Having Plurality Of Bridging Nodes Which 

Transmit A Beacon To Terminal Nodes In Power Saving State That It Has Messages Awaiting 

Delivery.” A copy of the ‘366 Patent is attached as Exhibit E. 

12. On August 17, 1999, the USPTO duly and legally issued U.S. Patent No. 

5,940,771 (“the ‘771 Patent”) titled “Network Supporting Roaming, Sleeping Terminals.” A 

copy of the ‘771 Patent is attached as Exhibit F. 

13. On April 16, 2002, the USPTO duly and legally issued U.S. Patent No. 6,374,311 

(“the ‘311 Patent”) titled “Communication Network Having A Plurality Of Bridging Nodes 

Which Transmit A Beacon To Terminal Nodes In Power Saving State That It Has Messages 

Awaiting Delivery.” A copy of the ‘311 Patent is attached as Exhibit G. 

14. On November 25, 2008, the USPTO duly and legally issued U.S. Patent No. 

7,457,646 (“the ‘646 Patent”) titled “Radio Frequency Local Area Network.” A copy of the ‘646 

Patent is attached as Exhibit H. 

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15. On August 13, 1996, the United States Patent and Trademark Office (“USPTO”) 

duly and legally issued U.S. Patent No. 5,546,397 (“the ‘397 Patent”) titled “High Reliability 

Access Point For Wireless Local Area Network.” A copy of the ‘397 Patent is attached as 

Exhibit I. 

16. On December 1, 1998, the USPTO duly and legally issued U.S. Patent No. 

5,844,893 (“the ‘893 Patent”) titled “System For Coupling Host Computer Means With Base 

Transceiver Units On A Local Area Network.” A copy of the ‘893 Patent is attached as Exhibit 

J. 

17. On December 16, 2003, the USPTO duly and legally issued U.S. Patent No. 

6,665,536 (“the ‘536 Patent”) titled “Local Area Network Having Multiple Channel Wireless 

Access.” A copy of the ‘536 Patent is attached as Exhibit K. 

18. On February 24, 2004, the USPTO duly and legally issued U.S. Patent No. 

6,697,415 (“the ‘415 Patent”) titled “Spread Spectrum Transceiver Module Utilizing Multiple 

Mode Transmission.” A copy of the ‘415 Patent is attached as Exhibit L. 

19. On March 14, 2006, the USPTO duly and legally issued U.S. Patent No. 

7,013,138 (“the ‘138 Patent”) titled “Local Area Network Having Multiple Channel Wireless 

Access.” A copy of the ‘138 Patent is attached as Exhibit M. 

20. On May 4, 2010, the USPTO duly and legally issued U.S. Patent No. 7,710,907 

(“the ‘907 Patent”) titled “Local Area Network Having Multiple Channel Wireless Access.” A 

copy of the ‘907 Patent is attached as Exhibit N. 

21. On March 29, 2011, the USPTO duly and legally issued U.S. Patent No. 

7,916,747 (“the ‘747 Patent”) titled “Redundant Radio Frequency Network Having A Roaming 

Terminal Communication Protocol.” A copy of the ‘747 Patent is attached as Exhibit O. 

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22. On January 18, 2011, the USPTO duly and legally issued U.S. Patent No. 

7,873,343 (“the ‘343 Patent”) titled “Communication Network Terminal With Sleep Capability.” 

A copy of the ‘343 Patent is attached as Exhibit P. 

23. On May 19, 2009, the USPTO duly and legally issued U.S. Patent No. 7,536,167 

(“the ‘167 Patent”) titled “Network Supporting Roaming, Sleeping Terminals.” A copy of the 

‘167 Patent is attached as Exhibit Q. The seventeen patents identified in Paragraphs 10-26 are 

hereinafter referred to collectively as the “WLAN Patents.” 

24. Innovatio owns all rights, title, and interest in and to, and has standing to sue for 

infringement of, the WLAN Patents, including the right to sue for and collect past damages. 

COUNT ONE 

INFRINGEMENT OF THE ‘559 PATENT

25. Innovatio repeats and realleges the allegations of the preceding Paragraphs 1 - 24 

as if fully set forth herein. 

26. Grand Sierra has infringed and continues to infringe one or more claims of the 

‘559 Patent in violation of 35 U.S.C. § 271(a) by using, in this judicial district, wireless local 

area network (“WLAN”) products to provide wireless network access to its customers, guests, 

employees, and/or the public, and/or in its business operations, where such WLAN products 

practice the methods of, by way of example and not limitation, at least claims 6, 7, and 8 of the 

‘559 Patent. 

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COUNT TWO 

INFRINGEMENT OF THE ‘002 PATENT

27. Innovatio repeats and realleges the allegations of the preceding Paragraphs 1 - 26 

as if fully set forth herein. 

28. Grand Sierra has infringed and continues to infringe one or more claims of the 

‘002 Patent in violation of 35 U.S.C. § 271(a) by using, in this judicial district, WLAN products 

to provide wireless network access to its customers, guests, employees, and/or the public, and/or 

in its business operations, where such WLAN products practice the methods of, by way of 

example and not limitation, at least claims 14-16, 18, and 19 of the ‘002 Patent. 

COUNT THREE 

INFRINGEMENT OF THE ‘921 PATENT

29. Innovatio repeats and realleges the allegations of the preceding Paragraphs 1 - 28 

as if fully set forth herein. 

30. Grand Sierra has infringed and continues to infringe one or more claims of the 

‘921 Patent in violation of 35 U.S.C. § 271(a) by using, in this judicial district, WLAN products 

to provide wireless network access to its customers, guests, employees, and/or the public, and/or 

in its business operations, where such WLAN products practice the methods of, by way of 

example and not limitation, at least claims 1, 2, 5, 7, and 8 of the ‘921 Patent. 

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COUNT FOUR 

INFRINGEMENT OF THE ‘553 PATENT

31. Innovatio repeats and realleges the allegations of the preceding Paragraphs 1 - 30 

as if fully set forth herein. 

32. Grand Sierra has infringed and continues to infringe one or more claims of the 

‘553 Patent in violation of 35 U.S.C. § 271(a) by using, in this judicial district, WLAN products 

to provide wireless network access to its customers, guests, employees, and/or the public, and/or 

in its business operations, where such WLAN products practice the methods of, by way of 

example and not limitation, at least claims 10-12, 17, 19, and 20 of the ‘553 Patent. 

COUNT FIVE 

INFRINGEMENT OF THE ‘366 PATENT

33. Innovatio repeats and realleges the allegations of the preceding Paragraphs 1 - 32 

as if fully set forth herein. 

34. Innovatio believes that a reasonable opportunity for further investigation or 

discovery will likely show that Grand Sierra has infringed and continues to infringe one or more 

claims of the ‘366 Patent in violation of 35 U.S.C. § 271(a) by using, in this judicial district, 

WLANs to provide wireless network access to its customers, guests, employees, and/or the 

public, and/or in its business operations, where such WLANs infringe, by way of example and 

not limitation, at least claims 5-7, 9-17, 19-24, 26-29, and 32 of the ‘366 Patent. 

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COUNT SIX 

INFRINGEMENT OF THE ‘771 PATENT

35. Innovatio repeats and realleges the allegations of the preceding Paragraphs 1 - 34 

as if fully set forth herein. 

36. Innovatio believes that a reasonable opportunity for further investigation or 

discovery will likely show that Grand Sierra has infringed and continues to infringe one or more 

claims of the ‘771 Patent in violation of 35 U.S.C. § 271(a) by using, in this judicial district, 

WLANs to provide wireless network access to its customers, guests, employees, and/or the 

public, and/or in its business operations, where such WLANs infringe, by way of example and 

not limitation, at least claims 1-7 of the ‘771 Patent. 

COUNT SEVEN 

INFRINGEMENT OF THE ‘311 PATENT

37. Innovatio repeats and realleges the allegations of the preceding Paragraphs 1 - 36 

as if fully set forth herein. 

38. Innovatio believes that a reasonable opportunity for further investigation or 

discovery will likely show that Grand Sierra has infringed and continues to infringe one or more 

claims of the ‘311 Patent in violation of 35 U.S.C. § 271(a) by using, in this judicial district, 

WLANs to provide wireless network access to its customers, guests, employees, and/or the 

public, and/or in its business operations, where such WLANs infringe, by way of example and 

not limitation, at least claims 20-24, 26-30, 32-37, 39-41, 43-51, 53-56, 60, and 64 of the ‘311 

Patent. 

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COUNT EIGHT 

INFRINGEMENT OF THE ‘646 PATENT

39. Innovatio repeats and realleges the allegations of the preceding Paragraphs 1 - 38 

as if fully set forth herein. 

40. Innovatio believes that a reasonable opportunity for further investigation or 

discovery will likely show that Grand Sierra has infringed and continues to infringe one or more 

claims of the ‘646 Patent in violation of 35 U.S.C. § 271(a) by using, in this judicial district, 

WLAN products to provide wireless network access to its customers, guests, employees, and/or 

the public, and/or in its business operations, where such WLAN products practice the methods 

of, by way of example and not limitation, at least claims 14-17, 19-22, 26-35, 39-40, 43-45, 47, 

49-51, 53-56, 59-64, 66-69, 71-73, 79, 82-89, 91-94, 98-104, 107, 108, 111, 112, 114-123, 125-

128, 130, 135-137, 143, and 144 of the ‘646 Patent. 

COUNT NINE 

INFRINGEMENT OF THE ‘397 PATENT

41. Innovatio repeats and realleges the allegations of the preceding Paragraphs 1 - 40 

as if fully set forth herein. 

42. Innovatio believes that a reasonable opportunity for further investigation or 

discovery will likely show that Grand Sierra has infringed and continues to infringe one or more 

claims of the ‘397 Patent in violation of 35 U.S.C. § 271(a) by using, in this judicial district, 

WLAN products to provide wireless network access to its customers, guests, employees, and/or 

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the public, and/or in its business operations, where such WLAN products infringe, by way of 

example and not limitation, at least claims 1-5 of the ‘397 Patent. 

COUNT TEN 

INFRINGEMENT OF THE ‘893 PATENT

43. Innovatio repeats and realleges the allegations of the preceding Paragraphs 1 - 42 

as if fully set forth herein. 

44. Innovatio believes that a reasonable opportunity for further investigation or 

discovery will likely show that Grand Sierra has infringed and continues to infringe one or more 

claims of the ‘893 Patent in violation of 35 U.S.C. § 271(a) by using, in this judicial district, 

WLANs to provide wireless network access to its customers, guests, employees, and/or the 

public, and/or in its business operations, where such WLANs infringe, by way of example and 

not limitation, at least claims 7-11 of the ‘893 Patent. 

COUNT ELEVEN 

INFRINGEMENT OF THE ‘536 PATENT

45. Innovatio repeats and realleges the allegations of the preceding Paragraphs 1 - 44 

as if fully set forth herein. 

46. Innovatio believes that a reasonable opportunity for further investigation or 

discovery will likely show that Grand Sierra has infringed and continues to infringe one or more 

claims of the ‘536 Patent in violation of 35 U.S.C. § 271(a) by using, in this judicial district, 

WLAN products to provide wireless network access to its customers, guests, employees, and/or 

the public, and/or in its business operations, where such WLAN products infringe, by way of 

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example and not limitation, at least claims 1, 5, 8, 10, 11, 13-17, 19, 20, and 49 of the ‘536 

Patent. 

COUNT TWELVE 

INFRINGEMENT OF THE ‘415 PATENT

47. Innovatio repeats and realleges the allegations of the preceding Paragraphs 1 - 46 

as if fully set forth herein. 

48. Innovatio believes that a reasonable opportunity for further investigation or 

discovery will likely show that Grand Sierra has infringed and continues to infringe one or more 

claims of the ‘415 Patent in violation of 35 U.S.C. § 271(a) by using, in this judicial district, 

WLAN products to provide wireless network access to its customers, guests, employees, and/or 

the public, and/or in its business operations, where such WLAN products infringe, by way of 

example and not limitation, at least claims 11, 12, and 15 of the ‘415 Patent. 

COUNT THIRTEEN 

INFRINGEMENT OF THE ‘138 PATENT

49. Innovatio repeats and realleges the allegations of the preceding Paragraphs 1 - 48 

as if fully set forth herein. 

50. Innovati believes that a reasonable opportunity for further investigation or 

discovery will likely show that Grand Sierra has infringed and continues to infringe one or more 

claims of the ‘138 Patent in violation of 35 U.S.C. § 271(a) by using, in this judicial district, 

WLAN products to provide wireless network access to its customers, guests, employees, and/or 

the public, and/or in its business operations, where such WLAN products infringe, by way of 

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example and not limitation, at least claims 1, 5, 8, 10, 11, 13-15, 17, 18, 21, 24, 26, 28, and 36 of 

the ‘138 Patent. 

COUNT FOURTEEN 

INFRINGEMENT OF THE ‘907 PATENT

51. Innovatio repeats and realleges the allegations of the preceding Paragraphs 1 - 50 

as if fully set forth herein. 

52. Innovatio believes that a reasonable opportunity for further investigation or 

discovery will likely show that Grand Sierra has infringed and continues to infringe one or more 

claims of the ‘907 Patent in violation of 35 U.S.C. § 271(a) by using, in this judicial district, 

WLAN products to provide wireless network access to its customers, guests, employees, and/or 

the public, and/or in its business operations, where such WLAN products infringe, by way of 

example and not limitation, at least claims 1, 7, 10, 12, 13, 15-17, 20, 21, 23, 24, 30, 33, 35, 36, 

38, 39, 40, 43, 44, and 46-50 of the ‘907 Patent. 

COUNT FIFTEEN 

INFRINGEMENT OF THE ‘747 PATENT

53. Innovatio repeats and realleges the allegations of the preceding Paragraphs 1 - 52 

as if fully set forth herein. 

54. Innovatio believes that a reasonable opportunity for further investigation or 

discovery will likely show that Grand Sierra has infringed and continues to infringe one or more 

claims of the ‘747 Patent in violation of 35 U.S.C. § 271(a) by using, in this judicial district, 

WLAN products to provide wireless network access to its customers, guests, employees, and/or 

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the public, and/or in its business operations, where such WLAN products infringe, by way of 

example and not limitation, at least claims 1-3, 5-8, 11, 13, 16, 17, and 20-25 of the ‘747 Patent. 

COUNT SIXTEEN 

INFRINGEMENT OF THE ‘343 PATENT

55. Innovatio repeats and realleges the allegations of the preceding Paragraphs 1 - 54 

as if fully set forth herein. 

56. Innovatio believes that a reasonable opportunity for further investigation or 

discovery will likely show that Grand Sierra has infringed and continues to infringe one or more 

claims of the ‘343 Patent in violation of 35 U.S.C. § 271(a) by using, in this judicial district, 

WLAN products to provide wireless network access to its customers, guests, employees, and/or 

the public, and/or in its business operations, where such WLAN products infringe, by way of 

example and not limitation, at least claims 1-6, 8-12, 15-20, 22, 23, 25, 28-30, 31-36, 38-42, 45-

50, 52, 53, 55, and 58-60 of the ‘343 Patent. 

COUNT SEVENTEEN 

INFRINGEMENT OF THE ‘167 PATENT

57. Innovatio repeats and realleges the allegations of the preceding Paragraphs 1 - 56 

as if fully set forth herein. 

58. Innovatio believe that a reasonable opportunity for further investigation or 

discovery will likely show that Grand Sierra has infringed and continues to infringe one or more 

claims of the ‘167 Patent in violation of 35 U.S.C. § 271(a) by using, in this judicial district, 

WLAN products to provide wireless network access to its customers, guests, employees, and/or 

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the public, and/or in its business operations, where such WLAN products practice the methods 

of, by way of example and not limitation, at least claims 73-77, 79-83, 85, 89-97, 100, 102-107, 

109-113, 115, 119-127, 130, 132-134, and 203 of the ‘167 Patent. 

PRAYER FOR RELIEF 

 WHEREFORE, Innovatio respectfully requests entry of judgment in its favor and the 

following relief, including: 

 A. That Grand Sierra be adjudged to have infringed one or more claims of each of 

the WLAN Patents; 

B. That Grand Sierra and all related entities and their officers, agents, employees, 

representatives, servants, successors, assigns and all persons in active concert or participation 

with any of them, directly or indirectly, be preliminarily and permanently enjoined from using, 

or contributing or inducing the use of, any WLAN product, system or network that infringes any 

WLAN Patent; 

 C. That Grand Sierra account for damages sustained by Innovatio as a result of 

Grand Sierra’s infringement of the WLAN Patents, including both pre- and post-judgment 

interest and costs as fixed by this Court under 35 U.S.C. § 284; and 

 D. That the Court grant Innovatio such other and further relief as the Court may 

deem just and proper. 

 

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DEMAND FOR JURY TRIAL

 YOU, And EACH OF YOU, WILL PLEASE TAKE NOTICE that Plaintiff Innovatio 

demands a trial by jury on all issues so triable. 

DATED this 13th day of May, 2011. Respectfully submitted, 

 /s/ Michael D. Rounds 

Michael D. Rounds (4734) 

Adam K. Yowell (11748) 

WATSON ROUNDS 

5371 Kietzke Lane 

Reno, NV 89511-2083 

Telephone: (775) 324-4100 

Facsimile: (775) 333-8171 

E-Mail: mrounds@watsonrounds.com 

E-Mail: ayowell@watsonrounds.com

 Matthew G. McAndrews (of counsel) 

Raymond P. Niro, Jr. (of counsel)

NIRO, HALLER & NIRO 

181 West Madison Street, Suite 4600 

Chicago, Illinois 60602 

Telephone: (312) 236-0733 

Fax: (312) 236-3137 

E-mail: mmcandrews@nshn.com

E-mail: rnirojr@nshn.com

Attorneys for Plaintiff, 

INNOVATIO IP VENTURES, LLC 

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EXHIBIT 6 

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•, )

IN THE UNITED STATES DISTRICT COURT

FOR THE MIDDLE DISTRICT OF FLORIDA

ORLANDO DIVISION

INNOVATIO IP VENTURES, LLC,

Plaintiff,

v.

Civil Action No.: (0: I("CV - ((30 -<SXGL--:SS

q~

ROSEN 7600, INC.; ROSEN 9939, INC.;

ROSEN CENTRE, INC.; ROSEN HOTELS

& RESORTS, INC.; ROSEN INTERNATIONAL,

INC.; ROSEN PLAZA, INC.; and ROSEN

VISTA, INC.,

Defendants.

"-

.~

/ ;g

~'I

VI

ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT . w

JURY TRIAL AND INJUNCTIVE RELIEF REQUEST

For its original complaint for patent infringement, Plaintiff Innovatio IP Ventures, LLC

("Innovatio"), by and through its undersigned counsel, alleges as follows:

THE PARTIES

1. Plaintiff Innovatio is a limited liability company organized under the laws of the

State of Delaware and has a place of business at 22 West Washington Street, Suite 1500,

Chicago, Illinois 60602.

2. On information and belief, Defendant Rosen 7600, Inc. ("Rosen 7600") is a

corporation organized under the laws ofthe State of Florida and has a principal place of business

at 9840 International Drive, Orlando, Florida 32819.

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3. On information and belief, Defendant Rosen 9939, Inc. ("Rosen 9939") is a

corporation organized under the laws ofthe State of Florida and has a principal place of business

at 9840 International Drive, Orlando, Florida 32819.

4. On information and belief, Defendant Rosen Centre, Inc. ("Rosen Centre") is a

corporation organized under the laws ofthe State of Florida and has a principal place of business

at 9840 International Drive, Orlando, Florida 32819.

5. On information and belief, Defendant Rosen Hotels & Resorts, Inc. ("Rosen

Hotels") is a corporation organized under the laws of the State of Florida and has a principal

place ofbusiness at 9840 International Drive, Orlando, Florida 32819.

6. On information and belief, Defendant Rosen International, Inc. ("Rosen

International") is a corporation organized under the laws of the State of Florida and has a

principal place ofbusiness at 9840 International Drive, Orlando, Florida 32819.

7. On information and belief, Defendant Rosen Plaza, Inc. ("Rosen Plaza") is a

corporation organized under the laws ofthe State of Florida and has a principal place of business

at 9840 International Drive, Orlando, Florida 32819.

8. On information and belief, Defendant Rosen Vista, Inc. ("Rosen Vista") is a

corporation organized under the laws ofthe State of Florida and has a principal place of business

at 9840 International Drive, Orlando, Florida 32819.

9. The Defendants identified in paragraphs 2-8 above are hereinafter referred to

collectively as the "Rosen Defendants."

2

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JURISDICTION AND VENUE

10. This action arises under the Patent Laws of the United States, 35 U.S.C. § I et

seq. This Court has jurisdiction over the subject matter of this action under 28 U.S.C. §§ 1331

and 1338(a).

II. On information and belief Defendant Rosen 7600 conducts business within this

State and/or judicial district; has committed a tortuous act within this State and/or judicial district,

including acts of infringement; and, engages in substantial and not isolated activity within this

State and/or judicial district.

12. On information and belief Defendant Rosen 9939 conducts business within this

State and/or judicial district; has committed a tortuous act within this State and/or judicial district,

including acts of infringement; and, engages in substantial and not isolated activity within this

State and/orjudicial district.

13. On information and belief Defendant Rosen Centre conducts business within this

State and/orjudicial district; has committed a tortuous act within this State and/or judicial district,

including acts of infringement; and, engages in substantial and not isolated activity within this

State and/orjudicial district.

14. On information and belief Defendant Rosen Hotels conduct business within this

State and/or judicial district; has committed a tortuous act within this State and/or judicial district,

including acts of infringement; and, engages in substantial and not isolated activity within this

State and/or judicial district.

15. On information and belief Defendant Rosen International conducts business

within this State and/or judicial district; has committed a tortuous act within this State and/or

3

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judicial district, including acts of infringement; and, engages in substantial and not isolated

activity within this State and/orjudicial district.

16. On information and belief Defendant Rosen Plaza conducts business within this

State and/or judicial district; has committed a tortuous act within this State and/orjudicial district,

including acts of infringement; and, engages in substantial and not isolated activity within this

State and/or judicial district.

17. On information and belief Defendant Rosen Vista conducts business within this

State and/or judicial district; has committed a tortuous act within this State and/orjudicial district,

including acts of infringement; and, engages in substantial and not isolated activity within this

State and/orjudicial district.

18. Venue for this action is proper in the Middle District of Florida under 28 U.S.c.

§§ 1391(b) and (c), and 28 U.S.C. § 1400(b), and in this Division pursuant to Local Rule 1.02 of

the United States District Court for the Middle District of Florida.

PATENTS-IN-SUIT

19. On March 30, 2004, the United States Patent and Trademark Office ("the

USPTO") duly and legally issued U.S. Patent No.6,714,559 ("the '559 Patent") titled

"Redundant Radio Frequency Network Having A Roaming Terminal Communication Protocol."

A copy ofthe '559 Patent is attached as Exhibit A.

20. On June 10,2008, the USPTO duly and legally issued U.S. Patent No. 7,386,002

("the '002 Patent") titled "Redundant Radio Frequency Network Having A Roaming Terminal

Communication Protocol." A copy ofthe '002 Patent is attached as Exhibit B.

4

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21. On May 19,2009, the USPTO duly and legally issued U.S. Patent No. 7,535,921

("the '921 Patent") titled "Redundant Radio Frequency Network Having A Roaming Terminal

Communication Protocol." A copy ofthe '921 Patent is attached as Exhibit C.

22. On June 16, 2009, the USPTO duly and legally issued U.S. Patent No. 7,548,553

("the '553 Patent") titled "Redundant Radio Frequency Network Having A Roaming Terminal

Communication Protocol." A copy ofthe '553 Patent is attached as Exhibit D.

23. On April 14, 1998, the USPTO duly and legally issued U.S. Patent No. 5,740,366

("the '366 Patent") titled "Communication Network Having Plurality Of Bridging Nodes Which

Transmit A Beacon To Terminal Nodes In Power Saving State That It Has Messages Awaiting

Delivery." A copy ofthe '366 Patent is attached as Exhibit E.

24. On August 17, 1999, the USPTO duly and legally issued U.S. Patent No.

5,940,771 ("the '771 Patent") titled "Network Supporting Roaming, Sleeping Terminals." A

copy ofthe' 771 Patent is attached as Exhibit F.

25. On April 16,2002, the USPTO duly and legally issued U.S. Patent No. 6,374,311

("the '311 Patent") titled "Communication Network Having A Plurality Of Bridging Nodes

Which Transmit A Beacon To Terminal Nodes In Power Saving State That It Has Messages

Awaiting Delivery." A copy ofthe '311 Patent is attached as Exhibit G.

26. On November 25, 2008, the USPTO duly and legally issued U.S. Patent No.

7,457,646 ("the '646 Patent") titled "Radio Frequency Local Area Network." A copy ofthe '646

Patent is attached as Exhibit H.

27. On August 13, 1996, the United States Patent and Trademark Office ("USPTO")

duly and legally issued U.S. Patent No. 5,546,397 ("the '397 Patent") titled "High Reliability

5

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Access Point For Wireless Local Area Network." A copy of the '397 Patent is attached as

Exhibit I.

28. On December I, 1998, the USPTO duly and legally issued U.S. Patent No.

5,844,893 ("the '893 Patent") titled "System For Coupling Host Computer Means With Base

Transceiver Units On A Local Area Network." A copy ofthe '893 Patent is attached as Exhibit J.

29. On December 16, 2003, the USPTO duly and legally issued U.S. Patent No.

6,665,536 ("the '536 Patent") titled "Local Area Network Having Multiple Channel Wireless

Access." A copy ofthe '536 Patent is attached as Exhibit K.

30. On February 24, 2004, the USPTO duly and legally issued U.S. Patent No.

6,697,415 ("the '415 Patent") titled "Spread Spectrum Transceiver Module Utilizing Multiple

Mode Transmission." A copy ofthe '415 Patent is attached as Exhibit L.

31. On March 14, 2006, the USPTO duly and legally issued U.S. Patent No.

7,013,138 ("the '138 Patent") titled "Local Area Network Having Multiple Channel Wireless

Access." A copy ofthe' 138 Patent is attached as Exhibit M.

32. On May 4, 2010, the USPTO duly and legally issued U.S. Patent No. 7,710,907

("the '907 Patent") titled "Local Area Network Having Multiple Channel Wireless Access." A

copy ofthe '907 Patent is attached as Exhibit N.

33. On March 29, 2011, the USPTO duly and legally issued U.S. Patent No.

7,916,747 ("the '747 Patent") titled "Redundant Radio Frequency Network Having A Roaming

Terminal Communication Protocol." A copy ofthe '747 Patent is attached as Exhibit O.

6

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34. On January 18, 20 II, the USPTO duly and legally issued U.S. Patent No.

7,873,343 ("the '343 Patent") titled "Communication Network Tenninal With Sleep Capability."

A copy ofthe '343 Patent is attached as Exhibit P.

35. On May 19, 2009, the USPTO duly and legally issued U.S. Patent No. 7,536,167

("the '167 Patent") titled "Network Supporting Roaming, Sleeping Tenninals." A copy of the

, 167 Patent is attached as Exhibit Q.

36. The seventeen patents identified in paragraphs 19-35 are hereinafter referred to

collectively as the "WLAN Patents."

37. Innovatio owns all rights, title, and interest in and to, and has standing to sue for

infringement of, the WLAN Patents, including the right to sue for and collect past damages.

ROSEN DEFENDANTS' KNOWLEDGE OF THE WLAN PATENTS

38. Defendant Rosen 7600 has been aware of and on actual notice of the WLAN

Patents since about May 3, 20 II, at which time Defendant Rosen 7600 was notified by letter of

the existence of and perceived infringement ofthe WLAN Patents.

39. Defendant Rosen 9939 has been aware of and on actual notice of the WLAN

Patents since about May 3, 2011, at which time Defendant Rosen 9939 was notified by letter of

the existence of and perceived infringement ofthe WLAN Patents.

40. Defendant Rosen Centre has been aware of and on actual notice of the WLAN

Patents since about May 3, 20 II, at which time Defendant Rosen Centre was notified by letter of

the existence of and perceived infringement ofthe WLAN Patents.

7

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41. Defendant Rosen Hotels has been aware of and on actual notice of the WLAN

Patents since about May 4, 2011, at which time Defendant Rosen Hotels was notified by letter of

the existence of and perceived infringement ofthe WLAN Patents.

42. Defendant Rosen International has been aware of and on actual notice of the

WLAN Patents about May 4, 2011, at which time Defendant Rosen International was notified by

letter ofthe existence of and perceived infringement ofthe WLAN Patents.

43. Defendant Rosen Plaza has been aware of and on actual notice of the WLAN

Patents since about May 3, 2011, at which time Defendant Rosen Plaza was notified by letter of

the existence of and perceived infringement ofthe WLAN Patents.

44. Defendant Rosen Vista has been aware of and on actual notice of the WLAN

Patents since about May 3, 2011, at which time Defendant Rosen Vista was notified by letter of

the existence of and perceived infringement ofthe WLAN Patents.

COUNT ONE

INFRINGEMENT OF THE '559 PATENT

45. Innovatio repeats and realleges the allegations ofthe preceding paragraphs I - 44

as iffully set forth herein.

46. The Rosen Defendants have infringed and continue to infringe one or more claims

of the '559 Patent in violation of 35 U.S.c. § 271(a) by using in this judicial district WLAN

products to provide wireless network access to their customers, employees, and/or the public,

and/or in their business operations, where such WLAN products practice the methods of, by way

of example and not limitation, at least claims 6, 7, and 8 ofthe'559 Patent.

8

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COUNT TWO

INFRINGEMENT OF THE '002 PATENT

47. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 44

as iffully set forth herein.

48. The Rosen Defendants have infringed and continue to infringe one or more claims

of the '002 Patent in violation of 35 U.S.c. § 271 (a) by using in this judicial district WLAN

products to provide wireless network access to their customers, employees, and/or the public,

and/or in their business operations, where such WLAN products practice the methods of, by way

of example and not limitation, at least claims 14-16, 18, and 19 ofthe '002 Patent.

COUNT THREE

INFRINGEMENT OF THE '921 PATENT

49. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 44

as iffully set forth herein.

50. The Rosen Defendants have infringed and continue to infringe one or more claims

of the '921 Patent in violation of 35 U.S.C. § 271(a) by using in this judicial district WLAN

products to provide wireless network access to their customers, employees, and/or the public,

and/or in their business operations, where such WLAN products practice the methods of, by way

of example and not limitation, at least claims I, 2, 5, 7, and 8 ofthe '921 Patent.

COUNT FOUR

INFRINGEMENT OF THE '553 PATENT

51. Innovatio repeats and realleges the allegations of the preceding paragraphs I - 44

as iffully set forth herein.

9

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52. The Rosen Defendants have infringed and continue to infringe one or more claims

of the '553 Patent in violation of 35 U.S.c. § 271(a) by using in this judicial district, WLAN

products to provide wireless network access to their customers, employees, and/or the public,

and/or in their business operations, where such WLAN products practice the methods of, by way

of example and not limitation, at least claims 10-12, 17, 19, and 20 ofthe '553 Patent.

COUNT FIVE

INFRINGEMENT OF THE '366 PATENT

53. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 44

as iffully set forth herein.

54. Innovatio believes that a reasonable opportunity for further investigation or

discovery will likely show that the Rosen Defendants have infringed and continue to infringe one

or more claims of the '366 Patent in violation of 35 U.S.c. § 271 (a) by using in this judicial

district, WLANs to provide wireless network access to their customers, employees, and/or the

public, and/or in their business operations, where such WLANs infringe, by way of example and

not limitation, at least claims 5-7, 9-17, 19-24, 26-29, and 32 ofthe '366 Patent.

55. Innovatio further believes that a reasonable opportunity for further investigation

or discovery will likely show that the Rosen Defendants have, with specific knowledge of the

'366 Patent, induced and contributed to the direct infringement by others of one or more claims

of the '366 Patent in violation of35 U.S.C. §§ 271(b) and (c) by making available to the Rosen

Defendants' customers, employees, and or the public in this judicial district WLANs, where such

customers, employees, and/or the public cause the systems of, by way of example and not

limitation, at least claims 5-7, 9-17, 19-24, 26-29, and 32 of the '366 Patent as a whole to

10

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perfonn the claimed processing of such systems, and where such customers, employees, and/or

the public obtain the benefit of, and directly infringe by, using the claimed systems.

COUNT SIX

INFRINGEMENT OF THE '771 PATENT

56. Innovatio repeats and realleges the allegations of the preceding paragraphs I - 44

as if fully set forth herein.

57. Innovatio believes that a reasonable opportunity for further investigation or

discovery will likely show that the Rosen Defendants have infringed and continue to infringe one

or more claims of the '771 Patent in violation of 35 U.S.C. § 271(a) by using in this judicial

district WLANs to provide wireless network access to their customers, employees, and/or the

public, and/or in their business operations, where such WLANs infringe, by way of example and

not Iimitation, at least claims 1-7 ofthe '771 Patent.

58. Innovatio further believes that a reasonable opportunity for further investigation

or discovery will likely show that the Rosen Defendants have, with specific knowledge of the

'771 Patent, induced and contributed to the direct infringement by others of one or more claims

of the '771 Patent in violation of35 U.S.c. §§ 271(b) and (c) by making available to the Rosen

Defendants' customers, employees, and or the public in this judicial district WLANs, where such

customers, employees, and/or the public cause the systems of, by way of example and not

limitation, at least claims 1-7 of the '771 Patent as a whole to perfonn the claimed processing of

such systems, and where such customers, employees, and/or the public obtain the benefit of, and

directly infringe by, using the claimed systems.

11

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COUNT SEVEN

INFRINGEMENT OF THE '311 PATENT

59. Innovatio repeats and realleges the allegations of the preceding paragraphs I - 44

as iffully set forth herein.

60. Innovatio believes that a reasonable opportunity for further investigation or

discovery will likely show that the Rosen Defendants have infringed and continue to infringe one

or more claims of the '311 Patent in violation of 35 U.S.C. § 271(a) by using in this judicial

district WLANs to provide wireless network access to their customers, employees, and/or the

public, and/or in their business operations, where such WLANs infringe, by way of example and

not limitation, at least claims 20-24, 26-30, 32-37, 39-41, 43-51,53-56,60, and 64 of the '311

Patent.

61. Innovatio further believes that a reasonable opportunity for further investigation

or discovery will likely show that the Rosen Defendants have, with specific knowledge of the

'311 Patent, induced and contributed to the direct infringement by others of one or more claims

of the '311 Patent in violation of35 U.S.c. §§ 271(b) and (c) by making available to the Rosen

Defendants' customers, employees, and or the public in this judicial district WLANs, where such

customers, employees, and/or the public cause the systems of, by way of example and not

limitation, at least claims 20-24, 26-30, 32-37, 39-41, 43-51, 53-56, 60, and 64 ofthe '311 Patent

as a whole to perform the claimed processing of such systems, and where such customers,

employees, and/or the public obtain the benefit of, and directly infringe by, using the claimed

systems.

12

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COUNT EIGHT

INFRINGEMENT OF THE '646 PATENT

62. Innovatio repeats and realleges the allegations ofthe preceding paragraphs I - 44

as if fully set forth herein.

63. Innovatio believes that a reasonable opportunity for further investigation or

discovery will likely show that the Rosen Defendants have infringed and continue to infringe one

or more claims of the '646 Patent in violation of 35 U.S.C. § 271(a) by using in this judicial

district WLAN products to provide wireless network access to their customers, employees,

and/or the public, and/or in their business operations, where such WLAN products practice the

methods of, by way of example and not limitation, at least claims 14-17, 19-22, 26-35, 39-40,

43-45,47,49-51,53-56,59-64,66-69,71-73,79, 82-89, 91-94, 98-104,107,108, III, 112, 114-

123, 125-128, 130, 135-137, 143, and 144 ofthe '646 Patent.

COUNT NINE

INFRINGEMENT OF THE '397 PATENT

64. Innovatio repeats and realleges the allegations of the preceding paragraphs I - 44

as iffully set forth herein.

65. Innovatio believes that a reasonable opportunity for further investigation or

discovery will likely show that the Rosen Defendants have infringed and continue to infringe one

or more claims of the '397 Patent in violation of 35 U.S.C. § 271(a) by using in this judicial

district WLAN products to provide wireless network access to their customers, employees,

and/or the public, and/or in their business operations, where such WLAN products infringe, by

way of example and not limitation, at least claims 1-5 ofthe '397 Patent.

13

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COUNT TEN

INFRINGEMENT OF THE '893 PATENT

66. Innovatio repeats and realieges the allegations of the preceding paragraphs I - 44

as iffully set forth herein.

67. Innovatio believes that a reasonable opportunity for further investigation or

discovery will likely show that the Rosen Defendants have infringed and continue to infringe one

or more claims of the '893 Patent in violation of 35 U.S.C. § 271(a) by using in this judicial

district WLANs to provide wireless network access to their customers, employees, and/or the

public, and/or in their business operations, where such WLANs infringe, by way of example and

not limitation, at least claims 7-1 I ofthe'893 Patent.

68. Innovatio further believes that a reasonable opportunity for further investigation

or discovery will likely show that the Rosen Defendants have, with specific knowledge of the

'893 Patent, induced and contributed to the direct infringement by others of one or more claims

of the '893 Patent in violation of35 U.S.c. §§ 271(b) and (c) by making available to the Rosen

Defendants' customers, employees, and or the public in this judicial district WLANs, where such

customers, employees, and/or the public cause the systems of, by way of example and not

limitation, at least claims 7-11 ofthe'893 Patent as a whole to perform the claimed processing of

such systems, and where such customers, employees, and/or the public obtain the benefit of, and

directly infringe by, using the claimed systems.

14

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COUNT ELEVEN

INFRINGEMENT OF THE 4536 PATENT

69. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 44

as iffully set forth herein.

70. Innovatio believes that a reasonable opportunity for further investigation or

discovery will likely show that the Rosen Defendants have infringed and continue to infringe one

or more claims of the '536 Patent in violation of 35 U.S.c. § 271(a) by using in this judicial

district WLAN products to provide wireless network access to their customers, employees,

and/or the public, and/or in their business operations, where such WLAN products infringe, by

way of example and not limitation, at least claims 1, 5, 8, 10, 11, 13-17, 19, 20, and 49 of the

'536 Patent.

71. Innovatio further believes that a reasonable opportunity for further investigation

or discovery will likely show that the Rosen Defendants have, with specific knowledge of the

'536 Patent, induced and contributed to the direct infringement by others of one or more claims

of the '536 Patent in violation of35 U.S.c. §§ 271(b) and (c) by making available to the Rosen

Defendants' customers, employees, and or the public in this judicial district WLANs, where such

customers, employees, and/or the public cause the systems of, by way of example and not

limitation, at least claims 20 and 49 of the '536 Patent as a whole to perform the claimed

processing ofsuch systems, and where such customers, employees, and/or the public obtain the

benefit of, and directly infringe by, using the claimed systems.

15

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COUNT TWELVE

INFRINGEMENT OF THE '415 PATENT

72. Innovatio repeats and realleges the allegations of the preceding paragraphs I - 44

as iffully set forth herein.

73. Innovatio believes that a reasonable opportunity for further investigation or

discovery will likely show that the Rosen Defendants have infringed and continue to infringe one

or more claims of the '415 Patent in violation of 35 U.S.c. § 271(a) by using in this judicial

district WLAN products to provide wireless network access to their customers, employees,

and/or the public, and/or in their business operations, where such WLAN products infringe, by

way of example and not limitation, at least claims II, 12, and 15 ofthe'415 Patent.

COUNT THIRTEEN

INFRINGEMENT OF THE '138 PATENT

74. Innovatio repeats and realleges the allegations of the preceding paragraphs I - 44

as iffully set forth herein.

75. Innovatio believes that a reasonable opportunity for further investigation or

discovery will likely show that the Rosen Defendants have infringed and continue to infringe one

or more claims of the '138 Patent in violation of 35 U.S.c. § 271(a) by using in this judicial

district WLAN products to provide wireless network access to their customers, employees,

and/or the public, and/or in their business operations, where such WLAN products infringe, by

way of example and not limitation, at least claims I, 5, 8, 10, 11, 13-15, 17, 18, 21, 24, 26, 28,

and 36 ofthe '138 Patent.

16

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76. Innovatio further believes that a reasonable opportunity for further investigation

or discovery will likely show that the Rosen Defendants have, with specific knowledge of the

'138 Patent, induced and contributed to the direct infringement by others of one or more claims

ofthe '138 Patent in violation of35 U.S.c. §§ 271(b) and (c) by making available to the Rosen

Defendants' customers, employees, and or the public in this judicial district WLANs, where such

customers, employees, and/or the public cause the systems of, by way of example and not

limitation, at least claims 15, 17, 18, 21, 24, 26, 28, and 36 of the '138 Patent as a whole to

perform the claimed processing of such systems, and where such customers, employees, and/or

the public obtain the benefit of, and directly infringe by, using the claimed systems.

COUNT FOURTEEN

INFRINGEMENT OF THE '907 PATENT

77. Innovatio repeats and realieges the allegations of the preceding paragraphs 1 - 44

as iffully set forth herein.

78. Innovatio believes that a reasonable opportunity for further investigation or

discovery will likely show that the Rosen Defendants have infringed and continue to infringe one

or more claims of the '907 Patent in violation of 35 U.S.C. § 271 (a) by using in this judicial

district WLAN products to provide wireless network access to their customers, employees,

and/or the public, and/or in their business operations, where such WLAN products infringe, by

way of example and not limitation, at least claims 1,7,10,12,13,15-17,20,21,23,24,30,33,

35,36,38,39,40,43,44, and 46-50 ofthe '907 Patent.

17

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COUNT FIFTEEN

INFRINGEMENT OF THE '747 PATENT

79. Innovatio repeats and realieges the allegations of the preceding paragraphs I - 44

as iffully set forth herein.

80. Innovatio believes that a reasonable opportunity for further investigation or

discovery will likely show that the Rosen Defendants have infringed and continue to infringe one

or more claims of the '747 Patent in violation of 35 V.S.c. § 271(a) by using in this judicial

district WLAN products to provide wireless network access to their customers, employees,

and/or the public, and/or in their business operations, where such WLAN products infringe, by

way of example and not limitation, at least claims 1-3,5-8, II, 13, 16, 17, and 20-25 ofthe '747

Patent.

COUNT SIXTEEN

INFRINGEMENT OF THE '343 PATENT

81. Innovatio repeats and realieges the allegations of the preceding paragraphs I - 44

as iffully set forth herein.

82. Innovatio believes that a reasonable opportunity for further investigation or

discovery will likely show that the Rosen Defendants have infringed and continue to infringe one

or more claims of the '343 Patent in violation of 35 V.S.C. § 271(a) by using in this judicial

district WLAN products to provide wireless network access to their customers, employees,

and/or the public, and/or in their business operations, where such WLAN products infringe, by

way of example and not limitation, at least claims 1-6, 8-12, 15-20, 22, 23, 25, 28-30, 31-36, 38-

42,45-50,52,53,55, and 58-60 ofthe '343 Patent.

18

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COUNT SEVENTEEN

INFRINGEMENT OF THE '167 PATENT

83. Innovatio repeats and realieges the allegations of the preceding paragraphs I - 44

as iffully set forth herein.

84. Innovatio believes that a reasonable opportunity for further investigation or

discovery will likely show that the Rosen Defendants have infringed and continue to infringe one

or more claims of the '167 Patent in violation of 35 U.S.C. § 271 (a) by using in this judicial

district WLAN products to provide wireless network access to their customers, employees,

and/or the public, and/or in their business operations, where such WLAN products practice the

methods of, by way of example and not limitation, at least claims 73-77, 79-83, 85, 89-97, 100,

102-107, 109-113, 115, 119-127, 130, 132-134, and 203 ofthe '167 Patent.

PRAYER FOR RELIEF

WHEREFORE, Innovatio respectfully requests entry of judgment in its favor and the

following relief, including:

A. That the Rosen Defendants be adjudged to have infringed one or more claims of

each ofthe WLAN Patents;

B. That the Rosen Defendants and all related entities and their officers, agents,

employees, representatives, servants, successors, assigns and all persons in active concert or

participation with any of them, directly or indirectly, be preliminarily and permanently enjoined

from using, or contributing or inducing the use of, any WLAN product, system or network that

infringes any WLAN Patent;

19

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C. That the Rosen Defendants account for damages sustained by Innovatio as a result

of the Rosen Defendants' infringement of the WLAN Patents, including both pre- and postjudgment interest and costs as fixed by this Court under 35 U.S.c. § 284;

D. That this case be deemed exceptional under 35 U.S.c. § 285, thereby entitling

Innovatio to an additional award ofreasonable attorney fees; and

D. That the Court grant Innovatio such other and further relief as the Court may

deem just and proper.

JURY DEMAND

Innovatio demands a trial by jury on all issues so triable.

Dated this 3rd day ofJune, 20 II.

Respectfully submitted,

Beusse Wolter Sanks

Mora & Maire, P.A.

390 North Orange Avenue

Suite 2500

Orlando, Florida 3280 I

Telephone: (407) 926-7706

Facsimile: (407) 926-7720

E-mail: rwolter@iplawfl.com

Attorneys for Plaintiff

INNOVATIO IP VENTURES, LLC

RI:tttII

Florida Bar No: 0906344

20

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21

OfCounsel:

Matthew G. McAndrews

Raymond P. Niro, Jr.

Brian E. Haan

Gabriel I. Opatken

NIRO, I-IALLER & NIRO

181 West Madison St., Suite 4600

Chicago, Illinois 60602

Telephone: (312) 236-0733

Facsimile: (312) 236-3137

E-mail: mmcandrews@nshn.com

E-mail: mirojr@nshn.com

E-mail: bhaan@nshn.com

E-mail: gopatkcn@nshn.com

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EXHIBIT 7 

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IN THE UNITED STATES DISTRICT COURT

FOR THE MIDDLE DISTRICT OF FLORIDA

TAMPA DIVISION

INNOVATIO IP VENTURES, LLC,

Plaintiff,

v.

B & B CORPORATE HOLDINGS, INC.,

Defendant.

Civil Action No.: _

/

ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT

JURy TRIAL AND INJUNCTIVE RELIEF REQUEST

For its original complaint for patent infringement, Plaintiff Innovatio IP Ventures, LLC

("Innovatio"), by and through its undersigned counsel, alleges as follows:

THE PARTIES

1. Plaintiff Innovatio is a limited liability company organized under the laws of the

State of Delaware and has a place of business at 22 West Washington Street, Suite 1500,

Chicago, Illinois 60602.

2. On information and belief, Defendant B & B Corporate Holdings, Inc. ("B & B")

is a corporation organized under the laws of the State of Florida and has a principal place of

business at 927 U.S. Highway 301 South, Tampa, Florida 33619.

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JURISDICTION AND VENUE

3. This action arises under the Patent Laws of the United States, 35 U.S.C. § 1 et

seq. This Court has jurisdiction over the subject matter of this action under 28 U.S.C. §§ 1331

and 1338(a).

4. On information and belief Defendant B & B conducts business within this State

and/or judicial district; has committed a tortuous act within this State and/or judicial district,

including acts of infringement; and, engages in substantial and not isolated activity within this

State and/or judicial district.

5. Venue for this action is proper in the Middle District of Florida under 28 U.S.C.

§§ 1391(b) and (c), and 28 U.S.c. § 1400(b), and in this Division pursuant to Local Rule 1.02 of

the United States District Court for the Middle District ofFlorida.

PATENTS-IN-SUIT

6. On March 30, 2004, the United States Patent and Trademark Office ("the

USPTO") duly and legally issued U.S. Patent No. 6,714,559 ("the '559 Patent") titled

"Redundant Radio Frequency Network Having A Roaming Terminal Communication Protocol."

A copy ofthe '559 Patent is attached as Exhibit A.

7. On June 10,2008, the USPTO duly and legally issued U.S. Patent No. 7,386,002

("the '002 Patent") titled "Redundant Radio Frequency Network Having A Roaming Terminal

Communication Protocol." A copy ofthe '002 Patent is attached as Exhibit B.

8. On May 19,2009, the USPTO duly and legally issued U.S. Patent No. 7,535,921

("the '921 Patent") titled "Redundant Radio Frequency Network Having A Roaming Terminal

Communication Protocol." A copy ofthe '921 Patent is attached as Exhibit C.

2

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9. On June 16,2009, the USPTO duly and legally issued U.S. Patent No. 7,548,553

("the '553 Patent") titled "Redundant Radio Frequency Network Having A Roaming Terminal

Communication Protocol." A copy ofthe '553 Patent is attached as Exhibit D.

10. On April 14, 1998, the USPTO duly and legally issued U.S. Patent No. 5,740,366

("the '366 Patent") titled "Communication Network Having Plurality OfBridging Nodes Which

Transmit A Beacon To Terminal Nodes In Power Saving State That It Has Messages Awaiting

Delivery." A copy ofthe '366 Patent is attached as Exhibit E.

11. On August 17, 1999, the USPTO duly and legally issued U.S. Patent No.

5,940,771 ("the '771 Patent") titled "Network Supporting Roaming, Sleeping Terminals." A

copy ofthe '771 Patent is attached as Exhibit F.

12. On April 16,2002, the USPTO duly and legally issued U.S. Patent No. 6,374,311

("the '311 Patent") titled "Communication Network Having A Plurality Of Bridging Nodes

Which Transmit A Beacon To Terminal Nodes In Power Saving State That It Has Messages

Awaiting Delivery." A copy ofthe '311 Patent is attached as Exhibit G.

13. On November 25, 2008, the USPTO duly and legally issued U.S. Patent No.

7,457,646 ("the '646 Patent") titled "Radio Frequency Local Area Network." A copy ofthe '646

Patent is attached as Exhibit H.

14. On August 13, 1996, the United States Patent and Trademark Office ("USPTO")

duly and legally issued U.S. Patent No. 5,546,397 ("the '397 Patent") titled "High Reliability

Access Point For Wireless Local Area Network." A copy of the '397 Patent is attached as

Exhibit I.

3

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15. On December 1, 1998, the USPTO duly and legally issued U.S. Patent No.

5,844,893 ("the '893 Patent") titled "System For Coupling Host Computer Means With Base

Transceiver Units On A Local Area Network." A copy ofthe '893 Patent is attached as Exhibit 1.

16. On December 16, 2003, the USPTO duly and legally issued U.S. Patent No.

6,665,536 ("the '536 Patent") titled "Local Area Network Having Multiple Channel Wireless

Access." A copy ofthe '536 Patent is attached as Exhibit K.

17. On February 24, 2004, the USPTO duly and legally issued U.S. Patent No.

6,697,415 ("the '415 Patent") titled "Spread Spectrum Transceiver Module Utilizing Multiple

Mode Transmission." A copy ofthe '415 Patent is attached as Exhibit L.

18. On March 14, 2006, the USPTO duly and legally issued U.S. Patent No.

7,013,138 ("the' 138 Patent") titled "Local Area Network Having Multiple Channel Wireless

Access." A copy ofthe '138 Patent is attached as Exhibit M.

19. On May 4, 2010, the USPTO duly and legally issued U.S. Patent No. 7,710,907

("the '907 Patent") titled "Local Area Network Having Multiple Channel Wireless Access." A

copy ofthe '907 Patent is attached as Exhibit N.

20. On March 29, 2011, the USPTO duly and legally issued U.S. Patent No.

7,916,747 ("the '747 Patent") titled "Redundant Radio Frequency Network Having A Roaming

Terminal Communication Protocol." A copy ofthe '747 Patent is attached as Exhibit O.

21. On January 18, 2011, the USPTO duly and legally issued U.S. Patent No.

7,873,343 ("the '343 Patent") titled "Communication Network Terminal With Sleep Capability."

A copy ofthe '343 Patent is attached as Exhibit P.

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22. On May 19,2009, the USPTO duly and legally issued U.S. Patent No. 7,536,167

("the '167 Patent") titled "Network Supporting Roaming, Sleeping Terminals." A copy of the

'167 Patent is attached as Exhibit Q.

23. The seventeen patents identified in paragraphs 19-35 are hereinafter referred to

collectively as the "WLAN Patents."

24. Innovatio owns all rights, title, and interest in and to, and has standing to sue for

infringement of, the WLAN Patents, including the right to sue for and collect past damages.

DEFENDANT B &B'S KNOWLEDGE OF THE WLAN PATENTS

25. Defendant B & B has been aware of and on actual notice of the WLAN Patents

since about April 27, 2011, at which time Defendant B & B was notified by letter of the

existence of and perceived infringement ofthe WLAN Patents.

COUNT ONE

INFRINGEMENT OF THE '559 PATENT

26. Innovatio repeats and realleges the allegations ofthe preceding paragraphs 1 - 25

as iffully set forth herein.

27. Defendant B & B has infringed and continue to infringe one or more claims ofthe

'559 Patent in violation of 35 U.S.c. § 271(a) by using in this judicial district WLAN products to

provide wireless network access to their customers, employees, and/or the public, and/or in their

business operations, where such WLAN products practice the methods of, by way of example

and not limitation, at least claims 6, 7, and 8 ofthe '559 Patent.

5

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COUNT TWO

INFRINGEMENT OF THE '002 PATENT

28. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 25

as iffully set forth herein.

29. Defendant B & B has infringed and continue to infringe one or more claims ofthe

'002 Patent in violation of 35 U.S.C. § 271(a) by using in this judicial district WLAN products to

provide wireless network access to their customers, employees, and/or the public, and/or in their

business operations, where such WLAN products practice the metho~s of, by way of example

and not limitation, at least claims 14-16, 18, and 19 ofthe '002 Patent.

COUNT THREE

INFRINGEMENT OF THE '921 PATENT

30. Innovatio repeats and realleges the allegations ofthe preceding paragraphs 1 - 25

as iffully set forth herein.

31. Defendant B & B has infringed and continue to infringe one or more claims ofthe

'921 Patent in violation of35 U.S.C. § 271(a) by using in this judicial district WLAN products to

provide wireless network access to their customers, employees, and/or the public, and/or in their

business operations, where such WLAN products practice the methods of, by way of example

and not limitation, at least claims 1,2,5, 7, and 8 ofthe '921 Patent.

COUNT FOUR

INFRINGEMENT OF THE '553 PATENT

32. Innovatio repeats and realleges the allegations ofthe preceding paragraphs 1 - 25

as iffully set forth herein.

6

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33. Defendant B & B has infringed and continue to infringe one or more claims ofthe

'553 Patent in violation of 35 U.S.C. § 271(a) by using in this judicial district, WLAN products

to provide wireless network access to their customers, employees, and/or the public, and/or in

their business operations, where such WLAN products practice the methods of, by way of

example and not limitation, at least claims 10-12, 17, 19, and 20 ofthe '553 Patent.

COUNT FIVE

INFRINGEMENT OF THE '366 PATENT

34. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 25

as iffully set forth herein.

35. Innovatio believes that a reasonable opportunity for further investigation or

discovery will likely show that Defendant B & B has infringed and continues to infringe one or

more claims ofthe '366 Patent in violation of 35 U.S.C. § 271(a) by using in this judicial district,

WLANs to provide wireless network access to their customers, employees, and/or the public,

and/or in their business operations, where such WLANs infringe, by way of example and not

limitation, at least claims 5-7, 9-17,19-24,26-29, and 32 ofthe '366 Patent.

36. Innovatio further believes that a reasonable opportunity for further investigation

or discovery will likely show that Defendant B & B has, with specific knowledge of the '366

Patent, induced and contributed to the direct infringement by others of one or more claims ofthe

'366 Patent in violation of 35 U.S.C. §§ 271(b) and (c) by making available to Defendant B &

B's customers, employees, and or the public in this judicial district WLANs, where such

customers, employees, and/or the public cause the systems of, by way of example and not

limitation, at least claims 5-7, 9-17, 19-24,26-29, and 32 of the '366 Patent as a whole to

7

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perform the claimed processing of such systems, and where such customers, employees, and/or

the public obtain the benefit of, and directly infringe by, using the claimed systems.

COUNT SIX

INFRINGEMENT OF THE '771 PATENT

37. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 25

as iffully set forth herein.

38. Innovatio believes that a reasonable opportunity for further investigation or

discovery will likely show that Defendant B & B has infringed and continues to infringe one or

more claims ofthe '771 Patent in violation of35 U.S.C. § 271(a) by using in this judicial district

WLANs to provide wireless network access to their customers, employees, and/or the public,

and/or in their business operations, where such WLANs infringe, by way of example and not

limitation, at least claims 1-7 ofthe '771 Patent.

39. Innovatio further believes that a reasonable opportunity for further investigation

or discovery will likely show that Defendant B & B has, with specific knowledge of the '771

Patent, induced and contributed to the direct infringement by others of one or more claims ofthe

'771 Patent in violation of 35 U.S.C. §§ 271(b) and (c) by making available to Defendant B &

B's customers, employees, and or the public in this judicial district WLANs, where such

customers, employees, and/or the public cause the systems of, by way of example and not

limitation, at least claims 1-7 ofthe '771 Patent as a whole to perform the claimed processing of

such systems, and where such customers, employees, and/or the public obtain the benefit of, and

directly infringe by, using the claimed systems.

8

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COUNT SEVEN

INFRINGEMENT OF THE '311 PATENT

40. Innovatio repeats and realleges the allegations ofthe preceding paragraphs 1 - 25

as iffully set forth herein.

41. Innovatio believes that a reasonable opportunity for further investigation or

discovery will likely show that Defendant B & B has infringed and continues to infringe one or

more claims ofthe '311 Patent in violation of35 U.S.c. § 271(a) by using in this judicial district

WLANs to provide wireless network access to their customers, employees, and/or the public,

and/or in their business operations, where such WLANs infringe, by way of example and not

limitation, at least claims 20-24, 26-30, 32-37, 39-41,43-51,53-56,60, and 64 ofthe '311 Patent.

42. Innovatio further believes that a reasonable opportunity for further investigation

or discovery will likely show that Defendant B & B has, with specific knowledge of the '311

Patent, induced and contributed to the direct infringement by others of one or more claims ofthe

'311 Patent in violation of 35 V.S.c. §§ 271(b) and (c) by making available to Defendant B &

B's customers, employees, and or the public in this judicial district WLANs, where such

customers, employees, and/or the public cause the systems of, by way of example and not

limitation, at least claims 20-24,26-30,32-37,39-41,43-51,53-56,60, and 64 ofthe '311 Patent

as a whole to perform the claimed processing of such systems, and where such customers,

employees, and/or the public obtain the benefit of, and directly infringe by, using the claimed

systems.

9

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COUNT EIGHT

INFRINGEMENT OF THE '646 PATENT

43. Innovatio repeats and realleges the allegations ofthe preceding paragraphs 1 - 25

as iffully set forth herein.

44. Innovatio believes that a reasonable opportunity for further investigation or

discovery will likely show that Defendant B & B has infringed and continues to infringe one or

more claims ofthe '646 Patent in violation of35 U.S.C. § 271(a) by using in this judicial district

WLAN products to provide wireless network access to their customers, employees, and/or the

public, and/or in their business operations, where such WLAN products practice the methods of,

by way of example and not limitation, at least claims 14-17, 19-22,26-35,39-40,43-45,47,49-

51,53-56,59-64,66-69,71-73,79,82-89,91-94,98-104, 107, 108, 111, 112, 114-123, 125-128,

130, 135-137, 143, and 144 ofthe '646 Patent.

COUNT NINE

INFRINGEMENT OF THE '397 PATENT

45. Innovatio repeats and realleges the allegations ofthe preceding paragraphs 1 - 25

as iffully set forth herein.

46. Innovatio believes that a reasonable opportunity for further investigation or

discovery will likely show that Defendant B & B has infringed and continues to infringe one or

more claims ofthe '397 Patent in violation of 35 U.S.c. § 271(a) by using in this judicial district

WLAN products to provide wireless network access to their customers, employees, and/or the

public, and/or in their business operations, where such WLAN products infringe, by way of

example and not limitation, at least claims 1-5 ofthe '397 Patent.

10

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COUNT TEN

INFRINGEMENT OF THE '893 PATENT

47. Innovatio repeats and realleges the allegations ofthe preceding paragraphs 1 - 25

as iffully set forth herein.

48. Innovatio believes that a reasonable opportunity for further investigation or

discovery will likely show that Defendant B & B has infringed and continues to infringe one or

more claims ofthe '893 Patent in violation of35 U.S.C. § 27l(a) by using in this judicial district

WLANs to provide wireless network access to their customers, employees, and/or the public,

and/or in their business operations, where such WLANs infringe, by way of example and not

limitation, at least claims 7-11 ofthe'893 Patent.

49. Innovatio further believes that a reasonable opportunity for further investigation

or discovery will likely show that Defendant B & B has, with specific knowledge of the '893

Patent, induced and contributed to the direct infringement by others of one or more claims ofthe

'893 Patent in violation of 35 U.S.C. §§ 27l(b) and (c) by making available to Defendant B &

B's customers, employees, and or the public in this judicial district WLANs, where such

customers, employees, and/or the public cause the systems of, by way of example and not

limitation, at least claims 7-11 ofthe' 893 Patent as a whole to perform the claimed processing of

such systems, and where such customers, employees, and/or the public obtain the benefit of, and

directly infringe by, using the claimed systems.

COUNT ELEVEN

INFRINGEMENT OF THE '536 PATENT

50. Innovatio repeats and realleges the allegations ofthe preceding paragraphs 1 - 44

as iffully set forth herein.

11

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51. Innovatio believes that a reasonable opportunity for further investigation or

discovery will likely show that Defendant B & B has infringed and continues to infringe one or

more claims ofthe '536 Patent in violation of35 u.S.C. § 271(a) by using in this judicial district

WLAN products to provide wireless network access to their customers, employees, and/or the

public, and/or in their business operations, where such WLAN products infringe, by way of

example and not limitation, at least claims 1, 5, 8, 10, 11, 13-17, 19, 20, and 49 of the '536

Patent.

52. Innovatio further believes that a reasonable opportunity for further investigation

or discovery will likely show that Defendant B & B has, with specific knowledge of the '536

Patent, induced and contributed to the direct infringement by others of one or more claims ofthe

'536 Patent in violation of 35 U.S.C. §§ 271(b) and (c) by making available to Defendant B &

B's customers, employees, and or the public in this judicial district WLANs, where such

customers, employees, and/or the public cause the systems of, by way of example and not

limitation, at least claims 20 and 49 of the '536 Patent as a whole to perform the claimed

processing of such systems, and where such customers, employees, and/or the public obtain the

benefit of, and directly infringe by, using the claimed systems.

COUNT TWELVE

INFRINGEMENT OF THE '415 PATENT

53. Innovatio repeats and realleges the allegations ofthe preceding paragraphs 1 - 25

as iffully set forth herein.

54. Innovatio believes that a reasonable opportunity for further investigation or

discovery will likely show that Defendant B & B has infringed and continues to infringe one or

12

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more claims ofthe '415 Patent in violation of35 U.S.C. § 27l(a) by using in this judicial district

WLAN products to provide wireless network access to their customers, employees, and/or the

public, and/or in their business operations, where such WLAN products infringe, by way of

example and not limitation, at least claims 11, 12, and 15 ofthe '415 Patent.

COUNT THIRTEEN

INFRINGEMENT OF THE '138 PATENT

55. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 25

as iffully set forth herein.

56. Innovatio believes that a reasonable opportunity for further investigation or

discovery will likely show that Defendant B & B has infringed and continues to infringe one or

more claims ofthe '138 Patent in violation of 35 U.S.C. § 27l(a) by using in this judicial district

WLAN products to provide wireless network access to their customers, employees, and/or the

public, and/or in their business operations, where such WLAN products infringe, by way of

example and not limitation, at least claims 1,5,8, 10, 11, 13-15, 17, 18,21,24,26,28, and 36 of

the' 138 Patent.

57. Innovatio further believes that a reasonable opportunity for further investigation

or discovery will likely show that Defendant B & B has, with specific knowledge of the' 138

Patent, induced and contributed to the direct infringement by others of one or more claims ofthe

'138 Patent in violation of 35 U.S.C. §§ 27l(b) and (c) by making available to Defendant B &

B's customers, employees, and or the public in this judicial district WLANs, where such

customers, employees, and/or the public cause the systems of, by way of example and not

limitation, at least claims 15, 17, 18, 21, 24, 26, 28, and 36 of the '138 Patent as a whole to

13

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perfonn the claimed processing of such systems, and where such customers, employees, and/or

the public obtain the benefit of, and directly infringe by, using the claimed systems.

COUNT FOURTEEN

INFRINGEMENT OF THE '907 PATENT

58. Innovatio repeats and realleges the allegations ofthe preceding paragraphs 1 - 44

as iffully set forth herein.

59. Innovatio believes that a reasonable opportunity for further investigation or

discovery will likely show that Defendant B & B has infringed and continues to infringe one or

more claims ofthe '907 Patent in violation of 35 U.S.c. § 271(a) by using in this judicial district

WLAN products to provide wireless network access to their customers, employees, and/or the

public, and/or in their business operations, where such WLAN products infringe, by way of

example and not limitation, at least claims 1, 7, 10, 12, 13, 15-17,20,21,23,24,30,33,35,36,

38,39,40,43,44, and 46-50 ofthe '907 Patent.

COUNT FIFTEEN

INFRINGEMENT OF THE '747 PATENT

60. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 25

as iffully set forth herein.

61. Innovatio believes that a reasonable opportunity for further investigation or

discovery will likely show that Defendant B & B has infringed and continues to infringe one or

more claims ofthe '747 Patent in violation of 35 U.S.C. § 271(a) by using in this judicial district

WLAN products to provide wireless network access to their customers, employees, and/or the

public, and/or in their business operations, where such WLAN products infringe, by way of

example and not limitation, at least claims 1-3,5-8, 11, 13, 16, 17, and 20-25 ofthe '747 Patent.

14

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COUNT SIXTEEN

INFRINGEMENT OF THE '343 PATENT

62. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 25

as iffully set forth herein.

63. Innovatio believes that a reasonable opportunity for further investigation or

discovery will likely show that Defendant B & B has infringed and continues to infringe one or

more claims ofthe '343 Patent in violation of35 U.S.C. § 271(a) by using in this judicial district

WLAN products to provide wireless network access to their customers, employees, and/or the

public, and/or in their business operations, where such WLAN products infringe, by way of

example and not limitation, at least claims 1-6,8-12,15-20,22,23,25,28-30,31-36,38-42,45-

50,52, 53, 55, and 58-60 ofthe '343 Patent.

COUNT SEVENTEEN

INFRINGEMENT OF THE '167 PATENT

64. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 25

as iffully set forth herein.

65. Innovatio believes that a reasonable opportunity for further investigation or

discovery will likely show that Defendant B & B has infringed and continues to infringe one or

more claims ofthe '167 Patent in violation of 35 U.S.C. § 271(a) by using in this judicial district

WLAN products to provide wireless network access to their customers, employees, and/or the

public, and/or in their business operations, where such WLAN products practice the methods of,

by way of example and not limitation, at least claims 73-77, 79-83, 85, 89-97, 100, 102-107,

109-113, 115, 119-127, 130, 132-134, and 203 ofthe '167 Patent.

15

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PRAYER FOR RELIEF

WHEREFORE, Innovatio respectfully requests entry of judgment in its favor and the

following relief, including:

A. That Defendant B & B Corporate Holdings, Inc. be adjudged to have infringed

one or more claims of each ofthe WLAN Patents;

B. That Defendant B & B Corporate Holdings, Inc. and all related entities and their

officers, agents, employees, representatives, servants, successors, assigns and all persons in

active concert or participation with any of them, directly or indirectly, be preliminarily and

permanently enjoined from using, or contributing or inducing the use of, any WLAN product,

system or network that infringes any WLAN Patent;

C. That Defendant B & B Corporate Holdings, Inc. account for damages sustained

by Innovatio as a result of Defendant B & B's infringement of the WLAN Patents, including

both pre- and post-judgment interest and costs as fixed by this Court under 35 U.S.c. § 284;

D. That this case be deemed exceptional under 35 U.S.c. § 285, thereby entitling

Innovatio to an additional award ofreasonable attorney fees; and

D. That the Court grant Innovatio such other and further relief as the Court may

deem just and proper.

16

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JURY DEMAND

Innovatio demands a trial by jury on all issues so triable.

Dated this 14th day ofJune, 2011.

Respectfully submitted,

Beusse Wolter Sanks

Mora & Maire, P.A.

390 North Orange Avenue

Suite 2500

Orlando, Florida 32801

Telephone: (407) 926-7706

Facsimile: (407) 926-7720

E-mail: rwolter@iplawfl.com

Attorneys for Plaintiff

INNOVATIO IP VENTURES, L

fi;r ROB . WOLTER

FI a Bar No: 0906344

OfCounsel:

Matthew G. McAndrews

Raymond P. Niro, Jr.

Brian E. Haan

Gabriel I. Opatken

NIRO, HALLER & NIRO

181 West Madison St., Suite 4600

Chicago, Illinois 60602

Telephone: (312) 236-0733

Facsimile: (312) 236-3137

E-mail: mmcandrews@nshn.com

E-mail: rnirojr@nshn.com

E-mail: bhaan@nshn.com

E-mail: gopatken@nshn.com

17

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EXHIBIT 8 

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IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS 

INNOVATIO IP VENTURES, LLC, 

Plaintiff, 

v. 

BEST WESTERN RIVER NORTH HOTEL, 

L.L.C. d/b/a BEST WESTERN PLUS RIVER 

NORTH HOTEL; 

PACIFIC TAI, INC. d/b/a BEST WESTERN 

GRANT PARK HOTEL; 

OAKHILL MANAGEMENT, INC. d/b/a BEST 

WESTERN CHICAGOLAND – 

COUNTRYSIDE; 

HILLSIDE HOSPITALITY INC. d/b/a BEST 

WESTERN CHICAGO HILLSIDE; 

EVANSTON NORTHSHORE HOTEL 

PARTNERS, L.L.C. d/b/a BEST WESTERN 

UNIVERSITY PLAZA; 

SHREE NAM CORPORATION d/b/a BEST 

WESTERN PLUS OAKBROOK INN; 

HOSTMARK HOSPITALITY GROUP, INC. 

d/b/a BEST WESTERN AT O’HARE; 

MORTON GROVE HOSPITALITY, INC. d/b/a 

BEST WESTERN MORTON GROVE INN; 

MAHARISHI HOSPITALITY INC. d/b/a BEST 

WESTERN DES PLAINES INN; 

BELTWAY HOSPITALITY LLC d/b/a BEST 

WESTERN CLOCK TOWER RESORT; 

SAM PATEL, an individual, d/b/a BEST 

WESTERN PLUS CHICAGO SOUTHLAND; 

JOY PATEL, an individual, d/b/a BEST 

WESTERN NAPERVILLE INN; 

ANTHONY KLOK, an individual, d/b/a BEST 

WESTERN PLUS HAWTHORNE 

TERRACE; 

JOHN DOE NO. 1 d/b/a BEST WESTERN INN & 

SUITES – MIDWAY AIRPORT; 

JOHN DOE NO. 2 d/b/a BEST WESTERN 

ROMEOVILLE INN; 

JOHN DOE NO. 3 d/b/a BEST WESTERN 

MONEE INN; 

JOHN DOE NO. 4 d/b/a BEST WESTERN INN 

Civil Action No. 1:11-cv-4668 

JURY TRIAL DEMANDED 

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2

OF ST. CHARLES HOTEL; 

JOHN DOE NO. 5 d/b/a BEST WESTERN 

JOLIET INN & SUITES; 

JOHN DOE NO. 6 d/b/a BEST WESTERN 

GURNEE HOTEL & SUITES; 

JOHN DOE NO. 7 d/b/a BEST WESTERN INN & 

SUITES AT MARKET SQUARE; 

JOHN DOE NO. 8 d/b/a BEST WESTERN 

DEKALB INN & SUITES; 

JOHN DOE NO. 9 d/b/a BEST WESTERN 

LEGACY INN & SUITES BELOIT; 

JOHN DOE NO. 10 d/b/a BEST WESTERN 

OGLESBY INN; and 

JOHN DOE NO. 11 d/b/a BEST WESTERN 

PLUS TIMBER CREEK INN & SUITES; 

Defendants. 

ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT

 For its Original Complaint for Patent Infringement, Plaintiff Innovatio IP Ventures, LLC 

(“Innovatio”), by and through its undersigned counsel, alleges as follows: 

THE PARTIES

1. Plaintiff Innovatio is a limited liability company organized under the laws of the 

State of Delaware and has a place of business at 22 West Washington Street, Suite 1500, 

Chicago, Illinois 60602. 

2. On information and belief, Defendant Best Western River North Hotel, L.L.C. is a 

limited liability company organized under the laws of the State of Illinois, having a principal 

place of business at 125 W. Ohio Street, Chicago, IL 60654, and operating a hotel under the 

name of “Best Western Plus River North Hotel” at 125 W. Ohio Street, Chicago, IL 60654 

(“Best Western River North”). 

3. On information and belief, Defendant Pacific Tai, Inc. is a corporation organized 

under the laws of the State of Illinois, having a principal place of business at 1100 S. Michigan 

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Avenue, Chicago, IL 60605, and operating a hotel under the name of “Best Western Grant Park 

Hotel” at 1100 S. Michigan Avenue, Chicago, IL 60605 (“Best Western Grant Park”). 

4. On information and belief, Defendant Oakhill Management, Inc. is a corporation 

organized under the laws of the State of Illinois, having a principal place of business at 6406 

Joliet Road, Suite 212, Countryside, IL 60525, and operating a hotel under the name of “Best 

Western Chicagoland – Countryside” at 6251 Joliet Road, Countryside, IL 60525 (“Best Western 

Chicagoland”). 

5. On information and belief, Defendant Hillside Hospitality Inc. is a corporation 

organized under the laws of the State of Illinois, having a principal place of business at 8110 

Koehler Drive, Orland Park, IL 60462, and operating a hotel under the name of “Best Western 

Chicago Hillside” at 4400 Frontage Road, Hillside, IL 60162 (“Best Western Hillside”). 

6. On information and belief, Defendant Evanston Northshore Hotel Partners, L.L.C. 

is a limited liability company organized under the laws of the State of Illinois, having a principal 

place of business at 1501 Sherman Avenue, Evanston, IL 60201, and operating a hotel under the 

name of “Best Western University Plaza” at 1501 Sherman Avenue, Evanston, IL 60201 (“Best 

Western University Plaza”). 

7. On information and belief, Defendant Shree Nam Corporation is a corporation 

organized under the laws of the State of Illinois, having a principal place of business at 669 

Pasquinelli Drive, Westmont, IL 60559, and operating a hotel under the name of “Best Western 

Plus Oakbrook Inn” at 669 Pasquinelli Drive, Westmont, IL 60559 (“Best Western Oakbrook”). 

8. On information and belief, Defendant Hostmark Hospitality Group, Inc. is a 

corporation organized under the laws of the State of Illinois, having a principal place of business 

at 1300 E. Woodfield Road, Suite 400, Schaumburg, IL 60173, and operating a hotel under the 

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name of “Best Western at O’Hare” at 10300 W. Higgins Road, Rosemont, IL 60018 (“Best 

Western O’Hare”). 

9. On information and belief, Defendant Morton Grove Hospitality, Inc. is a 

corporation organized under the laws of the State of Illinois, having a principal place of business 

at 1300 Beckett Circle, Schaumburg, IL 60173, and operating a hotel under the name of “Best 

Western Morton Grove Inn” at 9424 Waukegan Road, Morton Grove, IL 60053 (“Best Western 

Morton Grove”). 

10. On information and belief, Defendant Maharishi Hospitality Inc. is a corporation 

organized under the laws of the State of Delaware, having a principal place of business at 3219 

Tallgrass Drive, Naperville, IL 60564, and operating a hotel under the name of “Best Western 

Des Plaines Inn” at 1231 Lee Street, Des Plaines, IL, 60018 (“Best Western Des Plaines”). 

11. On information and belief, Defendant Beltway Hospitality LLC is a limited 

liability company organized under the laws of the State of Texas, having a principal place of 

business at 6833 W. Sam Houston Parkway, Suite 202, Houston, TX 77072, and operating a 

hotel under the name of “Best Western Clock Tower Resort” at 7801 E. State Street, Rockford, 

IL 61108 (“Best Western Clock Tower”). 

12. On information and belief, Defendant Sam Patel owns and operates a hotel under 

the name of “Best Western Plus Chicago Southland” at 4375 Frontage Road, Oak Forest, IL 

60452 (“Best Western Southland”). 

13. On information and belief, Defendant Joy Patel owns and operates a hotel under 

the name of “Best Western Naperville Inn” at 1617 Naperville Wheaton Road, Naperville, IL 

60563 (“Best Western Naperville”). 

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14. On information and belief, Defendant Anthony Klok owns and operates a hotel 

under the name of “Best Western Plus Hawthorne Terrace” at 3434 North Broadway Street, 

Chicago, IL 60657 (“Best Western Hawthorne”). 

15. On information and belief, Defendant John Doe No. 1 owns and operates a hotel 

under the name of “Best Western Inn & Suites – Midway Airport” at 8220 S. Cicero Avenue, 

Burbank, IL 60459 (“Best Western Midway”). 

16. On information and belief, Defendant John Doe No. 2 owns and operates a hotel 

under the name of “Best Western Romeoville Inn” at 1280 West Normantown Road, Romeoville, 

IL 60446 (“Best Western Romeoville”). 

17. On information and belief, Defendant John Doe No. 3 owns and operates a hotel 

under the name of “Best Western Monee Inn” at 5815 W. Monee-Manhattan Road, Monee, IL 

60449 (“Best Western Monee”). 

18. On information and belief, Defendant John Doe No. 4 owns and operates a hotel 

under the name of “Best Western Inn of St. Charles Hotel” at 1635 E. Main Street, Saint Charles, 

IL 60174 (“Best Western St. Charles”). 

19. On information and belief, Defendant John Doe No. 5 owns and operates a hotel 

under the name of “Best Western Joliet Inn & Suites” at 4380 Enterprise Drive, Joliet, IL 60431 

(“Best Western Joliet”). 

20. On information and belief, Defendant John Doe No. 6 owns and operates a hotel 

under the name of “Best Western Gurnee Hotel & Suites” at 5430 Grand Avenue, Gurnee, IL 

60031 (“Best Western Gurnee”). 

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21. On information and belief, Defendant John Doe No. 7 owns and operates a hotel 

under the name of “Best Western Plus – The Inn and Suites at Market Square” at 2723 Sheridan 

Road, Zion, IL 60099 (“Best Western Market Square”). 

22. On information and belief, Defendant John Doe No. 8 owns and operates a hotel 

under the name of “Best Western DeKalb Inn & Suites” at 1212 W. Lincoln Highway, DeKalb, 

IL 60115 (“Best Western DeKalb”). 

23. On information and belief, Defendant John Doe No. 9 owns and operates a hotel 

under the name of “Best Western Legacy Inn & Suites Beloit” at 5910 Technology Drive, South 

Beloit, IL 61080 (“Best Western Beloit”). 

24. On information and belief, Defendant John Doe No. 10 owns and operates a hotel 

under the name of “Best Western Oglesby Inn” at 900 Holiday Inn Street, Oglesby, IL 61348 

(“Best Western Oglesby”). 

25. On information and belief, Defendant John Doe No. 11 owns and operates a hotel 

under the name of “Best Western Plus Timber Creek Inn & Suites” at 3300 Drew Avenue, 

Sandwich, IL 60548 (“Best Western Timber Creek”). 

26. The Defendants identified in paragraphs 2-25 above are hereinafter referred to 

collectively as “the Best Western Defendants.” 

JURISDICTION AND VENUE 

27. This action arises under the Patent Laws of the United States, 35 U.S.C. § 1 et 

seq. This Court has jurisdiction over the subject matter of this action under 28 U.S.C. §§ 1331 

and 1338(a). 

28. This Court has personal jurisdiction over the Best Western Defendants. 

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29. Venue for this action is proper in this district pursuant to 28 U.S.C. §§ 1391 and 

1400(b). 

THE PATENTS-IN-SUIT 

30. On March 30, 2004, the United States Patent and Trademark Office (“the 

USPTO”) duly and legally issued U.S. Patent No. 6,714,559 (“the ‘559 Patent”) titled 

“Redundant Radio Frequency Network Having A Roaming Terminal Communication Protocol.” 

A copy of the ‘559 Patent is attached as Exhibit A. 

31. On June 10, 2008, the USPTO duly and legally issued U.S. Patent No. 7,386,002 

(“the ‘002 Patent”) titled “Redundant Radio Frequency Network Having A Roaming Terminal 

Communication Protocol.” A copy of the ‘002 Patent is attached as Exhibit B. 

32. On May 19, 2009, the USPTO duly and legally issued U.S. Patent No. 7,535,921 

(“the ‘921 Patent”) titled “Redundant Radio Frequency Network Having A Roaming Terminal 

Communication Protocol.” A copy of the ‘921 Patent is attached as Exhibit C. 

33. On June 16, 2009, the USPTO duly and legally issued U.S. Patent No. 7,548,553 

(“the ‘553 Patent”) titled “Redundant Radio Frequency Network Having A Roaming Terminal 

Communication Protocol.” A copy of the ‘553 Patent is attached as Exhibit D. 

34. On April 14, 1998, the USPTO duly and legally issued U.S. Patent No. 5,740,366 

(“the ‘366 Patent”) titled “Communication Network Having Plurality Of Bridging Nodes Which 

Transmit A Beacon To Terminal Nodes In Power Saving State That It Has Messages Awaiting 

Delivery.” A copy of the ‘366 Patent is attached as Exhibit E. 

35. On August 17, 1999, the USPTO duly and legally issued U.S. Patent No. 

5,940,771 (“the ‘771 Patent”) titled “Network Supporting Roaming, Sleeping Terminals.” A 

copy of the ‘771 Patent is attached as Exhibit F. 

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36. On April 16, 2002, the USPTO duly and legally issued U.S. Patent No. 6,374,311 

(“the ‘311 Patent”) titled “Communication Network Having A Plurality Of Bridging Nodes 

Which Transmit A Beacon To Terminal Nodes In Power Saving State That It Has Messages 

Awaiting Delivery.” A copy of the ‘311 Patent is attached as Exhibit G. 

37. On November 25, 2008, the USPTO duly and legally issued U.S. Patent No. 

7,457,646 (“the ‘646 Patent”) titled “Radio Frequency Local Area Network.” A copy of the ‘646 

Patent is attached as Exhibit H. 

38. On August 13, 1996, the United States Patent and Trademark Office (“USPTO”) 

duly and legally issued U.S. Patent No. 5,546,397 (“the ‘397 Patent”) titled “High Reliability 

Access Point For Wireless Local Area Network.” A copy of the ‘397 Patent is attached as 

Exhibit I. 

39. On December 1, 1998, the USPTO duly and legally issued U.S. Patent No. 

5,844,893 (“the ‘893 Patent”) titled “System For Coupling Host Computer Means With Base 

Transceiver Units On A Local Area Network.” A copy of the ‘893 Patent is attached as Exhibit J. 

40. On December 16, 2003, the USPTO duly and legally issued U.S. Patent No. 

6,665,536 (“the ‘536 Patent”) titled “Local Area Network Having Multiple Channel Wireless 

Access.” A copy of the ‘536 Patent is attached as Exhibit K. 

41. On February 24, 2004, the USPTO duly and legally issued U.S. Patent No. 

6,697,415 (“the ‘415 Patent”) titled “Spread Spectrum Transceiver Module Utilizing Multiple 

Mode Transmission.” A copy of the ‘415 Patent is attached as Exhibit L. 

42. On March 14, 2006, the USPTO duly and legally issued U.S. Patent No. 

7,013,138 (“the ‘138 Patent”) titled “Local Area Network Having Multiple Channel Wireless 

Access.” A copy of the ‘138 Patent is attached as Exhibit M. 

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43. On May 4, 2010, the USPTO duly and legally issued U.S. Patent No. 7,710,907 

(“the ‘907 Patent”) titled “Local Area Network Having Multiple Channel Wireless Access.” A 

copy of the ‘907 Patent is attached as Exhibit N. 

44. On March 29, 2011, the USPTO duly and legally issued U.S. Patent No. 

7,916,747 (“the ‘747 Patent”) titled “Redundant Radio Frequency Network Having A Roaming 

Terminal Communication Protocol.” A copy of the ‘747 Patent is attached as Exhibit O. 

45. On January 18, 2011, the USPTO duly and legally issued U.S. Patent No. 

7,873,343 (“the ‘343 Patent”) titled “Communication Network Terminal With Sleep Capability.” 

A copy of the ‘343 Patent is attached as Exhibit P. 

46. On May 19, 2009, the USPTO duly and legally issued U.S. Patent No. 7,536,167 

(“the ‘167 Patent”) titled “Network Supporting Roaming, Sleeping Terminals.” A copy of the 

‘167 Patent is attached as Exhibit Q. 

47. The seventeen patents identified in paragraphs 30-46 are hereinafter referred to 

collectively as the “WLAN Patents.” 

48. Innovatio owns all rights, title, and interest in and to, and has standing to sue for 

infringement of, the WLAN Patents, including the right to sue for and collect past damages. 

COUNT ONE 

INFRINGEMENT OF THE ‘559 PATENT 

49. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 48 

as if fully set forth herein. 

50. The Best Western Defendants have infringed and continue to infringe one or more 

claims of the ‘559 Patent in violation of 35 U.S.C. § 271(a) by using, in this judicial district, 

wireless local area network products (“WLAN Products”) to provide wireless network access to 

their customers, guests, employees, and/or the public, and/or in their business operations, where 

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such WLAN Products practice the methods of, by way of example and not limitation, at least 

claims 6, 7, and 8 of the ‘559 Patent. 

COUNT TWO 

INFRINGEMENT OF THE ‘002 PATENT 

51. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 48 

as if fully set forth herein. 

52. The Best Western Defendants have infringed and continue to infringe one or more 

claims of the ‘002 Patent in violation of 35 U.S.C. § 271(a) by using, in this judicial district, 

WLAN Products to provide wireless network access to their customers, guests, employees, 

and/or the public, and/or in their business operations, where such WLAN Products practice the 

methods of, by way of example and not limitation, at least claims 14-16, 18, and 19 of the ‘002 

Patent. 

COUNT THREE 

INFRINGEMENT OF THE ‘921 PATENT 

53. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 48 

as if fully set forth herein. 

54. The Best Western Defendants have infringed and continue to infringe one or more 

claims of the ‘921 Patent in violation of 35 U.S.C. § 271(a) by using, in this judicial district, 

WLAN Products to provide wireless network access to their customers, guests, employees, 

and/or the public, and/or in their business operations, where such WLAN Products practice the 

methods of, by way of example and not limitation, at least claims 1, 2, 5, 7, and 8 of the ‘921 

Patent. 

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COUNT FOUR 

INFRINGEMENT OF THE ‘553 PATENT 

55. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 48 

as if fully set forth herein. 

56. The Best Western Defendants have infringed and continue to infringe one or more 

claims of the ‘553 Patent in violation of 35 U.S.C. § 271(a) by using, in this judicial district, 

WLAN Products to provide wireless network access to their customers, guests, employees, 

and/or the public, and/or in their business operations, where such WLAN Products practice the 

methods of, by way of example and not limitation, at least claims 10-12, 17, 19, and 20 of the 

‘553 Patent. 

COUNT FIVE 

INFRINGEMENT OF THE ‘366 PATENT 

57. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 48 

as if fully set forth herein. 

58. Innovatio believes that a reasonable opportunity for further investigation or 

discovery will likely show that the Best Western Defendants have infringed and continue to 

infringe one or more claims of the ‘366 Patent in violation of 35 U.S.C. § 271(a) by using, in this 

judicial district, WLAN Products to provide wireless network access to their customers, guests, 

employees, and/or the public, and/or in their business operations, where such WLAN Products 

infringe, by way of example and not limitation, at least claims 5-7, 9-17, 19-24, 26-29, and 32 of 

the ‘366 Patent. 

COUNT SIX 

INFRINGEMENT OF THE ‘771 PATENT 

59. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 48 

as if fully set forth herein. 

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60. Innovatio believes that a reasonable opportunity for further investigation or 

discovery will likely show that the Best Western Defendants have infringed and continue to 

infringe one or more claims of the ‘771 Patent in violation of 35 U.S.C. § 271(a) by using, in this 

judicial district, WLAN Products to provide wireless network access to their customers, guests, 

employees, and/or the public, and/or in their business operations, where such WLAN Products 

infringe, by way of example and not limitation, at least claims 1-7 of the ‘771 Patent. 

COUNT SEVEN 

INFRINGEMENT OF THE ‘311 PATENT 

61. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 48 

as if fully set forth herein. 

62. Innovatio believes that a reasonable opportunity for further investigation or 

discovery will likely show that the Best Western Defendants have infringed and continue to 

infringe one or more claims of the ‘311 Patent in violation of 35 U.S.C. § 271(a) by using, in this 

judicial district, WLAN Products to provide wireless network access to their customers, guests, 

employees, and/or the public, and/or in their business operations, where such WLAN Products 

infringe, by way of example and not limitation, at least claims 20-24, 26-30, 32-37, 39-41, 43-51, 

53-56, 60, and 64 of the ‘311 Patent. 

COUNT EIGHT 

INFRINGEMENT OF THE ‘646 PATENT 

63. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 48 

as if fully set forth herein. 

64. Innovatio believes that a reasonable opportunity for further investigation or 

discovery will likely show that the Best Western Defendants have infringed and continue to 

infringe one or more claims of the ‘646 Patent in violation of 35 U.S.C. § 271(a) by using, in this 

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judicial district, WLAN Products to provide wireless network access to their customers, guests, 

employees, and/or the public, and/or in their business operations, where such WLAN Products 

practice the methods of, by way of example and not limitation, at least claims 14-17, 19-22, 26-

35, 39-40, 43-45, 47, 49-51, 53-56, 59-64, 66-69, 71-73, 79, 82-89, 91-94, 98-104, 107, 108, 111, 

112, 114-123, 125-128, 130, 135-137, 143, and 144 of the ‘646 Patent. 

COUNT NINE 

INFRINGEMENT OF THE ‘397 PATENT 

65. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 48 

as if fully set forth herein. 

66. Innovatio believes that a reasonable opportunity for further investigation or 

discovery will likely show that the Best Western Defendants have infringed and continue to 

infringe one or more claims of the ‘397 Patent in violation of 35 U.S.C. § 271(a) by using, in this 

judicial district, WLAN Products to provide wireless network access to their customers, guests, 

employees, and/or the public, and/or in their business operations, where such WLAN Products 

infringe, by way of example and not limitation, at least claims 1-5 of the ‘397 Patent. 

COUNT TEN 

INFRINGEMENT OF THE ‘893 PATENT 

67. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 48 

as if fully set forth herein. 

68. Innovatio believes that a reasonable opportunity for further investigation or 

discovery will likely show that the Best Western Defendants have infringed and continue to 

infringe one or more claims of the ‘893 Patent in violation of 35 U.S.C. § 271(a) by using, in this 

judicial district, WLAN Products to provide wireless network access to their customers, guests, 

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employees, and/or the public, and/or in their business operations, where such WLAN Products 

infringe, by way of example and not limitation, at least claims 7-11 of the ‘893 Patent. 

COUNT ELEVEN 

INFRINGEMENT OF THE ‘536 PATENT 

69. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 48 

as if fully set forth herein. 

70. Innovatio believes that a reasonable opportunity for further investigation or 

discovery will likely show that the Best Western Defendants have infringed and continue to 

infringe one or more claims of the ‘536 Patent in violation of 35 U.S.C. § 271(a) by using, in this 

judicial district, WLAN Products to provide wireless network access to their customers, guests, 

employees, and/or the public, and/or in their business operations, where such WLAN Products 

infringe, by way of example and not limitation, at least claims 1, 5, 8, 10, 11, 13-17, 19, 20, and 

49 of the ‘536 Patent. 

COUNT TWELVE 

INFRINGEMENT OF THE ‘415 PATENT 

71. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 48 

as if fully set forth herein. 

72. Innovatio believes that a reasonable opportunity for further investigation or 

discovery will likely show that the Best Western Defendants have infringed and continue to 

infringe one or more claims of the ‘415 Patent in violation of 35 U.S.C. § 271(a) by using, in this 

judicial district, WLAN Products to provide wireless network access to their customers, guests, 

employees, and/or the public, and/or in their business operations, where such WLAN Products 

infringe, by way of example and not limitation, at least claims 11, 12, and 15 of the ‘415 Patent. 

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COUNT THIRTEEN 

INFRINGEMENT OF THE ‘138 PATENT 

73. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 48 

as if fully set forth herein. 

74. Innovatio believes that a reasonable opportunity for further investigation or 

discovery will likely show that the Best Western Defendants have infringed and continue to 

infringe one or more claims of the ‘138 Patent in violation of 35 U.S.C. § 271(a) by using, in this 

judicial district, WLAN Products to provide wireless network access to their customers, guests, 

employees, and/or the public, and/or in their business operations, where such WLAN Products 

infringe, by way of example and not limitation, at least claims 1, 5, 8, 10, 11, 13-15, 17, 18, 21, 

24, 26, 28, and 36 of the ‘138 Patent. 

COUNT FOURTEEN 

INFRINGEMENT OF THE ‘907 PATENT 

75. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 48 

as if fully set forth herein. 

76. Innovatio believes that a reasonable opportunity for further investigation or 

discovery will likely show that the Best Western Defendants have infringed and continue to 

infringe one or more claims of the ‘907 Patent in violation of 35 U.S.C. § 271(a) by using, in this 

judicial district, WLAN Products to provide wireless network access to their customers, guests, 

employees, and/or the public, and/or in their business operations, where such WLAN Products 

infringe, by way of example and not limitation, at least claims 1, 7, 10, 12, 13, 15-17, 20, 21, 23, 

24, 30, 33, 35, 36, 38, 39, 40, 43, 44, and 46-50 of the ‘907 Patent. 

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COUNT FIFTEEN 

INFRINGEMENT OF THE ‘747 PATENT 

77. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 48 

as if fully set forth herein. 

78. Innovatio believes that a reasonable opportunity for further investigation or 

discovery will likely show that the Best Western Defendants have infringed and continue to 

infringe one or more claims of the ‘747 Patent in violation of 35 U.S.C. § 271(a) by using, in this 

judicial district, WLAN Products to provide wireless network access to their customers, guests, 

employees, and/or the public, and/or in their business operations, where such WLAN Products 

infringe, by way of example and not limitation, at least claims 1-3, 5-8, 11, 13, 16, 17, and 20-25 

of the ‘747 Patent. 

COUNT SIXTEEN 

INFRINGEMENT OF THE ‘343 PATENT 

79. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 48 

as if fully set forth herein. 

80. Innovatio believes that a reasonable opportunity for further investigation or 

discovery will likely show that the Best Western Defendants have infringed and continue to 

infringe one or more claims of the ‘343 Patent in violation of 35 U.S.C. § 271(a) by using, in this 

judicial district, WLAN Products to provide wireless network access to their customers, guests, 

employees, and/or the public, and/or in their business operations, where such WLAN Products 

infringe, by way of example and not limitation, at least claims 1-6, 8-12, 15-20, 22, 23, 25, 28-30, 

31-36, 38-42, 45-50, 52, 53, 55, and 58-60 of the ‘343 Patent. 

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COUNT SEVENTEEN 

INFRINGEMENT OF THE ‘167 PATENT 

81. Innovatio repeats and realleges the allegations of the preceding paragraphs 1 - 48 

as if fully set forth herein. 

82. Innovatio believe that a reasonable opportunity for further investigation or 

discovery will likely show that the Best Western Defendants have infringed and continue to 

infringe one or more claims of the ‘167 Patent in violation of 35 U.S.C. § 271(a) by using, in this 

judicial district, WLAN Products to provide wireless network access to their customers, guests, 

employees, and/or the public, and/or in their business operations, where such WLAN Products 

practice the methods of, by way of example and not limitation, at least claims 73-77, 79-83, 85, 

89-97, 100, 102-107, 109-113, 115, 119-127, 130, 132-134, and 203 of the ‘167 Patent. 

PRAYER FOR RELIEF 

 WHEREFORE, Innovatio respectfully requests entry of judgment in its favor and the 

following relief, including: 

 A. That the Best Western Defendants be adjudged to have infringed one or more 

claims of each of the WLAN Patents; 

B. That the Best Western Defendants and all related entities and their officers, agents, 

employees, representatives, servants, successors, assigns and all persons in active concert or 

participation with any of them, directly or indirectly, be preliminarily and permanently enjoined 

from using, or contributing or inducing the use of, any WLAN Product, system or network that 

infringes any WLAN Patent; 

 C. That the Best Western Defendants account for damages sustained by Innovatio as 

a result of the Best Western Defendants’ infringement of the WLAN Patents, including both preand post-judgment interest and costs as fixed by this Court under 35 U.S.C. § 284; and 

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 D. That the Court grant Innovatio such other and further relief as the Court may 

deem just and proper. 

JURY DEMAND

 Innovatio demands a trial by jury on all issues so triable. 

Dated: July 11, 2011 Respectfully submitted, 

 /s/ Matthew G. McAndrews 

 Matthew G. McAndrews 

 Raymond P. Niro, Jr. 

 Brian E. Haan 

 Gabriel I. Opatken 

 NIRO, HALLER & NIRO 

 181 West Madison St., Suite 4600 

 Chicago, Illinois 60602 

 Telephone: (312) 236-0733 

 Facsimile: (312) 236-3137 

 E-mail: mmcandrews@nshn.com

 E-mail: rnirojr@nshn.com 

 E-mail: bhaan@nshn.com 

 E-mail: gopatken@nshn.com 

 Attorneys for Plaintiff,

 INNOVATIO IP VENTURES, LLC 

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EXHIBIT 9 

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UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION 

 

INNOVATIO IP VENTURES, LLC, 

 Plaintiff, 

 v. 

ABP CORPORATION, et al., 

 Defendants. 

) 

) 

) 

) 

) 

) 

) 

) 

) 

) 

) 

REDACTED VERSION

Civil Action No. 1:11-cv-01638 

District Judge Edmond E. Chang 

Magistrate Judge Sidney I. Schenkier 

JURY TRIAL DEMANDED 

DEFENDANTS’ MOTION TO STAY THIS MATTER PENDING RESOLUTION OF 

CISCO SYSTEMS, INC. AND MOTOROLA SOLUTIONS, INC. v. INNOVATIO IP 

VENTURES, LLC, CASE NO. 1:11-CV-00425 (D. DEL.)

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-iiTable of Contents

Page

I. INTRODUCTION..............................................................................................................1

II. FACTUAL BACKGROUND ............................................................................................3

A. The Parties, The Patents-In-Suit And The Present Action ......................................3

B. Innovatio Files Two More Lawsuits Against Other Customer Targets ...................5

C. In Parallel With Its Lawsuits, Innovatio Demands That Numerous Other 

Customer Targets License Its Patents ......................................................................6

D. Cisco And Motorola’s Declaratory Judgment Suit Against Innovatio ....................6

III. ARGUMENT ......................................................................................................................7

A. This Case Should Be Stayed Under The Customer Suit Doctrine ...........................7

B. This Court Also May Exercise Its Inherent Power To Stay This Case In 

The Interests Of Judicial Economy ........................................................................11

1. Entry Of A Stay Will Not Prejudice Innovatio ..........................................12

2. Entry Of A Stay Will Reduce The Burden Of Litigation On The 

Courts And The Parties ..............................................................................13

3. Entry Of A Stay Will Simplify The Issues In Question And 

Streamline Trial .........................................................................................13

IV. CONCLUSION ................................................................................................................14

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-iiiTable of Authorities

Page(s)

Card Activation Tech. v. 7-Eleven, Inc., 

No. 10-cv-4984, 2011 WL 663960 (N.D. Ill. Feb. 10, 2011) ........................................... 12 

Card Activation Tech. v. Pier 1 Imps., Inc., 

No. 09-cv-2021, 2009 WL 2956926 (N.D. Ill. Sep. 14, 2009) ......................... 9, 10, 11, 12 

Clark v. Lacy, 

376 F.3d 682 (7th Cir. 2004) ............................................................................................ 10 

Commissariat A L'Energie Atomique v. Dell Comp. Corp., 

No. 04-cv-1999, 2004 WL 1554382 (D. Del. May 13, 2004) ...................................... 7, 13 

Delphi Corp. v. Auto. Techs. Int’l, Inc., 

No. 08-cv-11048, 2008 WL 2941116 (E.D. Mich. July 25, 2008) ..................................... 8 

Glenayre Elecs., Inc. v. Jackson, 

443 F.3d 851 (Fed. Cir. 2006)........................................................................................... 13 

Honeywell Int’l Inc. v. Audiovox Commc’ns. Corp., 

No. 04-cv-1337, 2005 WL 2465898 (D. Del. May 18, 2005) .......................................... 11 

In re Cygnus Telecomms. Tech. LLC, 

536 F.3d 1343 (Fed. Cir. 2008)......................................................................................... 10 

In re Papst Licensing GmbH & Co. KG Litig., 

– F.Supp.2d –, 2011 WL 350427 (D.D.C. Feb. 2, 2011) .................................................... 7 

Kahn v. Gen. Motors Corp., 

889 F.2d 1078 (Fed. Cir. 1989)........................................................................................... 7 

Katz v. Lear Siegler, Inc., 

909 F.2d 1459 (Fed. Cir. 1990)................................................................................. 7, 9, 11 

Landis v. N. Am. Co., 

299 U.S. 248 (1936) .................................................................................................... 11, 12 

Pfizer, Inc. v. Apotex, Inc., 

640 F.Supp.2d 1006 (N.D. Ill. 2009) .......................................................................... 12, 13 

T. J. Smith & Nephew, Ltd. v. Ferris Corp., 

No. 86-cv-5461, 1987 U.S. Dist. LEXIS 1603 (N.D. Ill. Feb. 27, 1987) ........................... 8 

Tap Pharm. Prods., Inc. v. Atrix Labs., Inc., 

No. 03-cv-7822, 2004 WL 422697 (N.D. Ill. Mar. 3, 2004) ............................................ 12 

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Accor North America, Caribou Coffee Co., Inc., Cosi, Inc., Dominick’s Supermarkets, 

Inc., LQ Management LLC, Meijer, Inc., and Panera Bread Company (“Defendants”) 

respectfully move this Court to stay this case pending the resolution of a separate action brought 

by the suppliers of products at issue in this action, Cisco Systems, Inc. and Motorola Solutions, 

Inc. v. Innovatio IP Ventures, LLC, Case No. 1:11-cv-00425 (D. Del.). As set forth below, this 

case should be stayed pursuant to the customer suit doctrine and to promote judicial efficiency. 

I. INTRODUCTION 

Plaintiff Innovatio IP Ventures, LLC (“Innovatio”) is a patent holding company whose 

business is acquiring, licensing and litigating patents. Shortly after acquiring the seventeen 

patents-in-suit, Innovatio began a widespread campaign asserting the patents against certain 

wireless products referred to as “wireless local area network” or “WLAN” products. Innovatio’s 

strategy included (1) filing this action against ten defendants; (2) filing a second action in the 

District of Nevada (the “Nevada Action”) against another defendant; (3) filing a third action in 

the Middle District of Florida (the “Florida Action”) against seven other defendants; and (4) 

initiating a substantial letter-writing campaign demanding that numerous other companies take 

licenses to the patents-in-suit, all targeting the same accused wireless products. Innovatio did 

not, however, file suit against any company that actually makes or sells the accused wireless 

products. Rather, Innovatio sued completely unrelated businesses such as bakeries, cafés, hotels, 

and grocery stores who are mere users of the accused technology. This is a common practice of 

patent licensing companies to assert patents against end users as opposed to the manufacturers of 

the accused products in order to attempt to inflate their ultimate recovery. 

The wireless products at issue are purchased by the Defendants from third-party suppliers 

such as Cisco Systems, Inc. and Motorola Solutions, Inc. (“Suppliers”). Although the 

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Defendants offer wireless internet access to their employees and/or customers,1 the products at 

issue are not Defendants’, and Defendants do not possess technical information relating to the 

development and functionality of the accused products. The Suppliers make and sell the accused 

products in the case, and possess technical, marketing and sales documents, materials and 

witnesses pertinent to those products. 

After being served with the complaint, the Defendants – as well as the defendants in the 

Nevada Action, Florida Action, and the numerous other licensing targets – turned to their 

suppliers to defend the wireless products at issue in this action. In response Cisco and Motorola, 

the largest suppliers, filed a declaratory judgment action for non-infringement and invalidity of 

the seventeen patents-in-suit, to resolve in one proceeding the issues raised by Innovatio with 

respect to their products. Cisco and Motorola stepped up, to protect their customers and products 

against infringement claims and in response to indemnity demands from their customers relating 

to Innovatio’s claims.2 This declaratory judgment action currently is pending in the District of 

Delaware, where Innovatio is incorporated (the “Supplier Action”). The Supplier Action is 

broader than this action because it not only includes the accused products purchased by the 

Defendants in this case, but covers all of Cisco and Motorola’s wireless products that have been 

placed in issue by Innovatio’s other lawsuits in Nevada and Florida and the numerous licensing 

demands issued by Innovatio to Cisco and Motorola’s many other customers. In addition, Cisco 

and Motorola assert license and exhaustion defenses in their lawsuit based in part on their 

purchases of parts from their suppliers that, on information and belief, are licensed to the 

 

1 For example, Cosi, Inc. offers free Wi-Fi to its customers at its bakery-cafés.

2 See, e.g., Ex. 1, Compl. for Declaratory J. in Cisco Sys., Inc. and Motorola Solutions, Inc. v. Innovatio IP 

Ventures, LLC, Case No. 1:11-cv-00425 (D. Del.) ¶¶ 15-16.

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Innovatio portfolio.3 Because Cisco and Motorola are suppliers of the accused products, they are 

in the best position to determine which of the accused products includes licensed parts. 

Courts have fashioned the “customer suit doctrine” to deal with situations such as this 

one, where a patentee sues end users instead of the manufacturers of the accused devices. 

Applying that doctrine, courts stay infringement actions against customers while the suppliers of 

the products at issue resolve the disputes over their products. A stay allows those with the actual 

technical knowledge of the accused products to defend them. A stay also serves efficiency 

interests and reduces the risk of inconsistent outcomes on the same patents and products, as it 

allows the suppliers to resolve in one proceeding a patentee’s allegations against the supplier’s 

products instead of through piecemeal litigation against customers. Because this action is a 

classic case of a patent holding company suing end users instead of the manufacturers of the 

accused products, Defendants respectfully request that this action be stayed pursuant to the 

customer suit doctrine pending the resolution of the Supplier Action in Delaware. 

II. FACTUAL BACKGROUND 

A. The Parties, The Patents-In-Suit And The Present Action 

Innovatio was incorporated in February 2011, shortly before it acquired the patents-insuit and filed this action. Innovatio is a patent holding company, focused on acquiring, licensing 

and litigating patents for royalties. See, e.g., Ex. 1 at ¶ 4. According to Innovatio, the patents are 

applicable to wireless products having certain standardized wireless functionality. In particular, 

Innovatio’s allegations are directed at the IEEE 802.11 standards, or “Wi-Fi.”4 According to 

 

3 For example, on information and belief, Broadcom Corporation (which sold the patents to Innovatio) is licensed 

to the portfolio. Cisco and Motorola each use Broadcom parts in their accused products. 

4 IEEE stands for the Institute of Electrical and Electronic Engineers and is a professional association and 

standards-setting organization. IEEE 802.11 is a set of standards relating to wireless communications. 

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Innovatio, any wireless product practicing 802.11 standards allegedly infringes the patents-insuit. See Ex. 2, (“Claims of the 

Innovatio Patents cover, among other things, WLANs that use the IEEE 802.11 communication 

protocols. The operation and use of any such systems by [customer] would constitute 

infringement...”). According to Innovatio, every accused product that follows the 802.11 

standards allegedly infringes its patents in the same manner, regardless of who supplies the 

particular product. See id.

On March 8, 2011, Innovatio filed this suit against the Defendants alleging infringement 

of fourteen patents related to their use of “WLAN products, systems and/or networks.” See 

Compl., Mar. 8, 2011, ECF No. 1. On April 6, 2011, the Court granted Innovatio’s motion to 

amend the complaint, adding three additional patents. See Min. Entry, Apr. 6, 2011, ECF No. 

29. None of the Defendants has any role in the design or manufacture of “WLAN products, 

systems and/or networks.” These companies are bakeries and cafés (Cosi, Inc., Panera Bread 

Company, and Caribou Coffee Co., Inc.), hotels (Accor North America, LQ Management LLC), 

and grocery stores (Dominick’s Supermarkets, Inc., Meijer, Inc.). See, e.g., Ex. 3, Compilation 

of Defs.’ “About Us” Web Pages. This is a common tactic of patent holding companies to sue 

multiple end users who have no real knowledge of the accused products in order to secure many 

small settlements that add up to far more than the actual value, if any, of the patented invention 

while the companies that actually make the accused products are faced with mounting indemnity 

demands. 

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Cisco and Motorola participated in the development of the 802.11 standards, and design, 

market and sell the accused wireless products at issue in this case.5 See, e.g., 1st Am. Compl., 

Apr. 6, 2011, ECF No. 31 at ¶¶ 43-82; Ex. 4, Highlighted 802.11 Working Grp. Membership 

List. Cisco and Motorola are two of the largest suppliers of these products. According to an 

independent third-party provider of market research, Cisco and Motorola together currently have 

over market share in enterprise wireless LAN sales in North America. See, e.g., Ex. 5, Feb. 

2011 Dell’Oro Grp. Report on WLAN Market Shares. 

B. Innovatio Files Two More Lawsuits Against Other Customer Targets 

On May 13, 2011, Innovatio filed a second lawsuit in the United States District Court for 

the District of Nevada. See Ex. 6, Compl. for Patent Infringement in Innovatio IP Ventures, LLC 

v. MEI-GSR Holdings LLC, Case No. 3:11-cv-00343 (D. Nev.). On June 3, 2011, Innovatio filed 

a third lawsuit in the United States District Court for the Middle District of Florida. See Ex. 7, 

Compl. for Patent Infringement in Innovatio IP Ventures, LLC v. Rosen 7600, Inc. et al., Case 

No. 6:2011-cv-00930 (M.D. Fla.). In the Nevada and Florida Actions, Innovatio claims that 

other alleged users of WLAN products infringe the same 17 patents at issue in this case. See Ex. 

6 at ¶¶ 7-23; Ex. 7 at ¶¶ 19-35. As with the present action, Innovatio’s infringement allegations 

are directed at products with standardized 802.11 functionality. See Ex. 6 at ¶¶ 25-58; Ex. 7 at 

¶¶ 45-84. Like the defendants in the present action, the defendants in the Nevada lawsuit (MEIGSR Holdings) and Florida lawsuit (Rosen 7600, Inc., Rosen 9939, Inc., Rosen Centre, Inc., 

Rosen Hotels & Resorts, Inc., Rosen International, Inc., Rosen Plaza, Inc., Rosen Vista, Inc. (the 

“Rosen defendants”)) do not make wireless products. Instead, MEI-GSR runs a casino and hotel 

 

5 The accused products include components that Cisco and Motorola purchase from other third parties, such as 

wireless chips. 

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in Reno, Nevada and the Rosen defendants run hotels and resorts near Orlando, Florida. See id. 

MEI-GSR Holdings and the Rosen defendants are Cisco customers. 

C. In Parallel With Its Lawsuits, Innovatio Demands That Numerous Other 

Customer Targets License Its Patents 

Innovatio also is engaging in a widespread letter-writing campaign targeted at purchasers 

of wireless products with standardized 802.11 functionality. In its letters, Innovatio accuses the 

customers of “likely infringement” of 31 patents, including the 17 that are asserted in this case. 

Notably, Innovatio demands immediate payment by the customers, within 30 days: 

[A]s discussed in greater detail below, this notifies [customer] of its likely 

infringement of the Innovatio Patents. * * * Innovatio proposes granting 

[customer] an upfront, paid-up license for its use under all of 31 of the issued 

Innovatio Patents. The amount of Innovatio’s paid-up license fee will be 

determined by the specific nature and extent of the use of WLAN (e.g., Wi·Fi) 

and meshing networking technologies by [customer] covered by the Innovatio 

Patents. Innovatio will also discount the license fee if the parties are able to 

finalize a suitable license within the next 30 days.

See, e.g., Ex. 2 (emphasis added). As of the filing of this motion, dozens of companies 

uninvolved in the supply of wireless products have received such letters. 

D. Cisco And Motorola’s Declaratory Judgment Suit Against Innovatio 

The defendants in this action and the Nevada and Florida Actions, along with numerous 

other customer targets, contacted their wireless product suppliers to defend and indemnify them 

and the suppliers’ products. These requests for assistance and indemnity go beyond the 

defendants in the pending actions, and continue to grow on a daily basis as more and more 

customer targets receive licensing demands from Innovatio. 

Cisco and Motorola responded to Innovatio’s growing threats against their products and 

customers by filing the Supplier Action seeking a declaratory judgment that the asserted patents 

are invalid and are not infringed. Cisco and Motorola brought their action in Delaware because 

Innovatio and Motorola are incorporated there. Ex. 1 at ¶ 3-4. 

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III. ARGUMENT 

A. This Case Should Be Stayed Under The Customer Suit Doctrine 

This action should be stayed pursuant to the customer suit doctrine. Under the 

“customer-suit doctrine,” courts stay infringement suits against customers to permit litigation 

brought by the manufacturer who produced the allegedly infringing product to proceed. Katz v. 

Lear Siegler, Inc., 909 F.2d 1459, 1464 (Fed. Cir. 1990); In re Papst Licensing GmbH & Co. KG 

Litig., – F.Supp.2d – , 2011 WL 350427, *8 (D.D.C. Feb. 2, 2011). “Underlying the customer 

suit doctrine is the preference that infringement determinations should be made in suits involving 

the true defendant, the party that controls the product’s design, rather than suits involving 

secondary parties such as customers of the manufacturer.” In re Papst Licensing, 2011 WL 

350427, at *8. The customer suit doctrine is routinely applied to stay customer suits in one 

forum while manufacturers of the products at issue resolve the dispute in another forum. See, 

e.g., Katz, 909 F.2d at 1464; see also Card Activation Techs. v. Pier 1 Imps., Inc., No. 09-cv2021, 2009 WL 2956926, at *2 (N.D. Ill. Sep. 14, 2009) (granting motion to stay customer suit); 

Honeywell Int’l Inc. v. Audiovox Commc’ns. Corp., No. 04-cv-1337, 2005 WL 2465898, at *4 

(D. Del. May 18, 2005) (same); Commissariat A L'Energie Atomique v. Dell Comp. Corp., No. 

03-cv-484, 2004 WL 1554382, at *2 (D. Del. May 13, 2004) (same). The doctrine “guard[s] 

against possibility of abuse” in circumstances such as those presented here, where end users 

unrelated to the actual alleged infringement issues have been targeted by a patent holder. Kahn 

v. Gen. Motors Corp., 889 F.2d 1078, 1081 (Fed. Cir. 1989). This Court previously has applied 

the doctrine in similar circumstances to those here to stay an infringement suit against customers 

where the manufacturer of the allegedly infringing products had filed an action in the District of 

Delaware seeking a declaratory judgment that the asserted patents were invalid. See Card 

Activation Techs., Inc., 2009 WL 2956926, at *2. This Court found a stay was warranted 

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because “a finding of invalidity would moot a number of cases pending against [the 

manufacturer’s customers]” and because the manufacturer “would undoubtedly be a necessary 

participant in [the customer] case, at the very least, for purposes of discovery.” Id. at 4. 

This case falls squarely within the customer suit doctrine. The bakeries, cafés, hotels and 

grocery stores in this case do not design or supply wireless products. See Section II.A supra. 

Defendants do not design, make, or sell the accused products; they purchase them from suppliers 

like Cisco and Motorola. Unlike Defendants, Cisco and Motorola possess technical documents 

and witnesses involved in the design, marketing and sale of the accused products. Defendants do 

not have access to these materials, nor do they possess the technical, licensing, and chip 

information necessary to defend against Innovatio’s claims. As this Court has recognized, in 

such circumstances manufacturers of accused equipment, like Cisco and Motorola, are in the best 

position to effectively defend against assertions that their products infringe: 

[T]he manufacturer is clearly in the best position to either defend against a 

claim of infringement or to affirmatively assert invalidity of the holder’s patent. 

Presumably it is the manufacturer who has the more detailed knowledge regarding 

the claim of infringement, the expertise in the area, and the primary interest in the 

outcome of the litigation. 

T. J. Smith & Nephew, Ltd. v. Ferris Corp., No. 86-cv-5461, 1987 U.S. Dist. LEXIS 1603, at *3-

4 (N.D. Ill. Feb. 27, 1987) (emphasis added); see also Delphi Corp. v. Auto. Techs. Int’l, Inc., 

No. 08-cv-11048, 2008 WL 2941116, at *4-5 (E.D. Mich. July 25, 2008) (“At the root of the 

preference for a manufacture’s declaratory judgment action is the recognition that, in reality, the 

manufacturer is the true defendant in the customer suit” and as “a matter of judicial economy, 

global settlement is preferred over piecemeal litigation.”) (internal citation omitted). 

Unlike the Defendants, Cisco and Motorola have substantial interests in defending their 

products against Innovatio’s claims. Cisco and Motorola have numerous customers outside of 

the Defendants who purchase the accused wireless products from them, and employ many 

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personnel involved in the design, marketing, and sale of the accused products. See Ex. 1 at ¶¶ 8, 

15. Additionally, Cisco and Motorola are members of the IEEE, and participated in the 

development of the 802.11 standards. See Section II.A supra. As such, Cisco and Motorola 

have a substantially greater interest in defending against Innovatio’s claims, to protect their 

customers and products against adverse rulings, and globally resolve the issues raised by 

Innovatio. Card Activation Techs., 2009 WL 2956926, at *2 (citing Katz, 909 F.2d at 1464) 

(“[I]t is a simple fact of life that a manufacturer must protect its customers, either as a matter of 

contract, or good business, or in order to avoid the damaging impact of an adverse ruling against 

its products.”). By contrast, the defendants in this action focus on completely different products 

and services, and had nothing to do with the development of the 802.11 standards. See Section 

II.A supra. As such, Cisco and Motorola’s interest takes precedence. See Katz, 909 F.2d at 

1464. 

Moreover, the Defendants do not share Cisco and Motorola’s interest in resolving these 

issues globally for all of Innovatio’s current and future targets. To the contrary, each Defendant 

has a greater interest in settling the particular claims asserted against it, leaving the merits of this 

action to be determined, and thousands of other claims (and potential claims) unresolved. Cisco 

and Motorola, on the other hand, have a substantial interest in resolving the merits, thus 

resolving Innovatio’s claims against all of their customers. See, e.g., Delphi Corp., 2008 WL 

2941116, at *4 (“[A] customer that did not have final responsibility for designing, developing or 

manufacturing a component of its production would have less incentive [than its manufacturer] 

to vigorously defend it against patent suits...”). 

A stay of this case also will serve the interest of judicial economy. The identical set of 

patents is at issue in this case and the Delaware case, and Cisco and Motorola are the suppliers of 

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wireless equipment to a number of the defendants in this case. Because the Supplier Action will 

necessarily exhaust Innovatio’s claims against Cisco and Motorola’s customers in this action, 

there will be unnecessary duplication of work concerning claim construction, infringement, 

invalidity and other patent issues if the pending actions are permitted to proceed. See Clark v. 

Lacy, 376 F.3d 682, 687 (7th Cir. 2004) (“Our Court has held that this sort of redundancy 

counsels in favor of a stay.”); Card Activation Techs, 2009 WL 2956926, at * 4. This is 

significant given that Cisco and Motorola products comprise a substantial portion of the market 

for wireless access points. See Section II.A supra. 

Moreover, because Innovatio’s claims are directed against products operating in 

accordance with the 802.11 standards, Innovatio’s technical application of its patent claims to the 

accused wireless products will likely be the same for Cisco, Motorola and every other supplier. 

See Ex. 2 (“Claims of the Innovatio Patents cover, among other things, WLANs that use the 

IEEE 802.11 communication protocols.”). As such, a judgment of noninfringement in the 

Supplier Action could globally resolve the issues in this action. Likewise, resolution of validity 

issues in the Delaware action could resolve this action as well. See e.g., In re Cygnus 

Telecomms. Tech. LLC, 536 F.3d 1343, 1349 (Fed. Cir. 2008) (internal citation omitted) (“It is a 

firmly established principle that a judgment of a patent invalidity in one case can collaterally 

estop the patent owner from contesting invalidity in a subsequent case, as long as the patent 

owner had a full and fair opportunity to litigate the validity of the patent in the first case.”). 

Further, the license and exhaustion defenses asserted by Cisco and Motorola also could fully 

resolve the issues in this action. Moreover, as Innovatio continues to file individual lawsuits and 

serially issue licensing demands against Cisco and Motorola’s customers, the efficiencies 

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associated with resolving all of those disputes in the Supplier Action become more and more 

pronounced. 

Courts regularly stay customer proceedings in favor of supplier actions even where there 

is not a complete identity of parties or products at issue. Landis v. N. Am. Co., 299 U.S. 248, 254 

(1936) (“[W]e find ourselves unable to assent to the suggestion that before proceedings in one 

suit may be stayed to abide the proceedings in another, the parties to the two causes must be 

shown to be the same and the issues identical.”); Card Activation Techs, 2009 WL 2956926, at 

*3 (rejecting argument that stay of customer suit should be denied because customers were the 

only alleged direct infringers of asserted method or process claims). As this Court has 

previously recognized, such concerns are “always present” in considering the customer suit 

doctrine, but yet do “not provide a principled reason for denying a stay”: 

In this case, [manufacturer] seeks a declaratory judgment of invalidity. To the 

extent that [manufacturer] is successful in the Delaware Case, the lawsuit will 

conclusively decide the validity of the [patent-in-suit] and thus moot the instant 

patent infringement action. Indeed, a finding of invalidity would moot a number 

of cases pending against [manufacturer's] customers... Although [patent 

holder] correctly notes that the Delaware Case is not certain to resolve all issues 

between [patent holder] and [customer], this argument assumes that [patent 

holder] is successful in Delaware. Such a concern is always present in 

considering the customer suit exception--it does not provide a principled reason 

for denying a stay... . 

Id. at *4; see also Katz, 909 F.2d at 1464 (“Although there may be additional issues involving 

the defendants in the [customer] action, their prosecution will be advanced if [patent holder] is 

successful on the major premises being litigated in Massachusetts [forum for manufacturer 

lawsuit], and may well be mooted if he is unsuccessful.”). 

B. This Court Also May Exercise Its Inherent Power To Stay This Case In The 

Interests Of Judicial Economy 

The Court also may exercise its inherent power to stay this case in the interests of judicial 

economy. District courts have inherent power to stay proceedings in the interest of “economy of 

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time and effort for itself, for counsel, and for litigants.” Landis v. N. Am. Co., 

299 U.S. 248, 254 (1936). In determining whether to exercise this inherent power, courts 

evaluate three factors: “(i) whether a stay will unduly prejudice or tactically disadvantage the 

non-moving party, (ii) whether a stay will simplify the issues in question and streamline the trial, 

and (iii) whether a stay will reduce the burden of litigation on the parties and on the court.” Tap 

Pharm. Prods, Inc. v. Atrix Labs, Inc., No. 03-cv-7822, 2004 WL 422697, at *1 (N.D. Ill. Mar. 3, 

2004); see also Card Activation Techs. v. 7-Eleven, Inc., No. 10-cv-4984, 2011 WL 663960, at 

*1 (N.D. Ill. Feb. 10, 2011); Pfizer, Inc. v. Apotex, Inc., 640 F.Supp.2d 1006, 1007 (N.D. Ill. 

2009). 

1. Entry Of A Stay Will Not Prejudice Innovatio 

A stay will not prejudice Innovatio. This case was filed a little over two months ago and 

is still in its very early stages. No discovery responses have been exchanged; only initial 

disclosures have been served. “As neither side has yet to begin the process of developing this 

case, there is no apparent prejudice or tactical disadvantage that the Plaintiff would be forced to 

endure if a stay were granted.” Card Activation Techs., Inc., 2011 WL 663960, at *2; see also 

Tap Pharm. Prods, Inc., 2004 WL 422697, at *1 (N.D. Ill. Mar. 3, 2004) (“Since the litigation is 

at such an early stage ... I find they will not be unduly prejudiced by a stay.”). Moreover, 

Innovatio will be permitted to pursue its claims of infringement against the accused products in 

the Supplier Action in Delaware, where Innovatio chose to incorporate. See, e.g., Card 

Activation Techs., 2009 WL 2956926, at *4 (“[A]s [plaintiff] is a Delaware corporation, 

litigating in Delaware will not prejudice it.”). 

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2. Entry Of A Stay Will Reduce The Burden Of Litigation On The 

Courts And The Parties 

As discussed above, a stay of this action will avoid unnecessarily duplicative litigation 

and its associated burdens on the courts and the parties. The fact and expert discovery phases of 

the cases will be particularly unnecessary here, where the Defendants do not possess the 

technical information necessary to defend against Innovatio’s infringement claims and will need 

to turn to Cisco, Motorola and other third parties for that information. This factor strongly favors 

a stay. Pfizer, 640 F. Supp. 2d at 1008. 

3. Entry Of A Stay Will Simplify The Issues In Question And Streamline 

Trial 

Entry of a stay will simplify and streamline the issues and may render all disputes in this 

case moot. As discussed above, Cisco and Motorola products comprise a substantial portion of 

the market for wireless access points, and thus resolution of Innovatio’s claims relating to those 

products will greatly streamline the number of accused products at issue in this case. See 

Glenayre Elecs., Inc. v. Jackson, 443 F.3d 851, 866 (Fed. Cir. 2006), cert denied, 549 U.S. 1030, 

127 S.Ct. 582, 166 L.Ed.2d 429 (2006) (Where a patentee “has already received actual damages 

for the manufacture and sale of infringing devices which explicitly were a measure of the royalty 

for full rights in the patent,” the patentee may not collect again from an additional defendant.). 

Moreover, because Innovatio’s claims are directed at a technical standard and are likely the same 

for all accused wireless products (see Section II.A supra), a noninfringement finding in the 

Supplier Action could resolve all of Innovatio’s claims, regardless of supplier. See, e.g., 

Commissariat A L'Energie Atomique, 2004 WL 1554382, at *3 (“If, for example, [patent 

holder’s] patents were found invalid or the manufacturers would [sic] found to be not infringing, 

then there would be no need to proceed against the OEM/distributors or retailers, thus conserving 

judicial resources and expense to the parties.”). Likewise, if Cisco and Motorola are successful 

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14 

on their invalidity claims, the issues in this suit will be completely resolved as well. Finally, if 

Cisco and Motorola are successful in their licensing and exhaustion defenses, the issues in this 

suit will be fully or mostly resolved. Accordingly, this third factor also favors a stay. 

IV. CONCLUSION 

For the reasons stated above, the Defendants respectfully request that this Court stay 

Innovatio’s customer suit against the Defendants pending the outcome of Cisco and Motorola’s 

declaratory judgment action against Innovatio: Cisco Systems, Inc. and Motorola Solutions, Inc. 

v. Innovatio IP Ventures, LLC, Case No. 1:11-cv-00425 (D. Del.). 

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15 

Dated: June 15, 2011 Respectfully submitted, 

 

 /s/ Amanda J. Hollis 

 

Adam R. Alper (Pro Hac Vice) 

KIRKLAND & ELLIS LLP

555 California Street 

San Francisco, California 94104 

415.439.1400 

adam.alper@kirkland.com 

Amanda J. Hollis (#6279821) 

KIRKLAND & ELLIS LLP 

300 North LaSalle 

Chicago, Illinois 60654 

312.862.2000 (Telephone) 

amanda.hollis@kirkland.com 

 

 

Attorneys for Defendants Cosi, Inc., Dominick’s 

Supermarkets, Inc., and Meijer, Inc.

 

/s/ Kevin John O’Shea (with consent) 

 

Kevin John O’Shea (#6270380) 

GREENBERG TRAURIG LLP 

77 West Wacker Drive 

Chicago, Illinois 60601 

312.456.8400 (Telephone) 

osheak@gtlaw.com 

 

 

Attorney for Defendants Cosi, Inc. and Panera 

Bread Company 

 

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16 

 /s/ Robert David Donoghue (with consent) 

 

Robert David Donoghue (#6273840) 

Daniel Long Farris (#6292794) 

HOLLAND AND KNIGHT LLP 

131 South Dearborn, 30th floor 

Chicago, Illinois 60603 

312.578.6553 (Telephone) 

david.donoghue@hklaw.com 

daniel.farris@hklaw.com 

 

 

Attorneys for Defendants Accor North America and 

Meijer, Inc. 

 

/s/ Vaibhav P. Kadaba (with consent) 

 

Jennifer L Colvin (#6274731) 

Matthew James Straub (#6273117) 

Daniel Oscar Canales (#6296027) 

OGLETREE, DEAKINS, NASH, SMOAK 

& STEWART, P.C. 

155 North Wacker Drive, Suite 4300 

Chicago, Illinois 60606 

312.673.7800 (Telephone) 

jennifer.colvin@ogletreedeakins.com 

matthew.straub@odnss.com 

daniel.canales@ogletreedeakins.com 

 

 

Matias Ferrario (Pro Hac Vice) 

Taylor Higgins Ludlam (Pro Hac Vice)

Vaibhav P. Kadaba (Pro Hac Vice)

KILPATRICK TOWNSEND 

& STOCKTON LLP 

1001 West Fourth Street 

Winston Salem, North Carolina 27101 

336.607.7300 (Telephone) 

mferrario@kilpatricktownsend.com 

taludlam@kilpatricktownsend.com 

wkadaba@kilpatrickstockton.com 

 

 

Attorneys for Defendants Caribou Coffee Co., Inc. 

and Panera Bread Company 

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17 

 /s/ Steven L. Baron (with consent) 

 

Steven L. Baron (#6200868)

Steven P. Mandell (#6183729)

Sharon Renae Albrecht (#6288927)

MANDELL MENKES LLC 

333 West Wacker Drive, Suite 300 

Chicago, Illinois 60606 

312.251.1000 (Telephone) 

sbaron@mandellmenkes.com 

smandell@mandellmenkes.com 

salbrecht@mandellmenkes.com 

 

 

Attorneys for Defendant Dominick’s Supermarkets, 

Inc. 

 

/s/ Neil J. McNabnay (with consent) 

 

Neil J. McNabnay (Pro Hac Vice)

Enrique D Duarte (Pro Hac Vice) 

FISH & RICHARDSON P.C. 

1717 Main Street, Suite 5000 

Dallas, Texas 75201 

214.747.5070 (Telephone) 

mcnabnay@fr.com 

duarte@fr.com 

 

 

Joel David Bertocchi (#6227292) 

HINSHAW & CULBERTSON LLP 

222 North LaSalle Street, Suite 300 

Chicago, Illinois 60601 

(312) 704 3130 (Telephone) 

jbertocchi@hinshawlaw.com 

 

 Attorneys for Defendant LQ Management LLC 

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18 

CERTIFICATE OF SERVICE

I hereby certify that on June 15, 2011 a true and correct copy of the foregoing document, 

DEFENDANTS’ MOTION TO STAY THIS MATTER PENDING RESOLUTION OF 

CISCO SYSTEMS, INC. AND MOTOROLA SOLUTIONS, INC. v. INNOVATIO IP 

VENTURES, LLC, CASE NO. 1:11-CV-00425 (D. Del.), was electronically filed with the 

Court via the CM/ECF system which sent notification of such filing to all Counsel of Record. In 

addition, I hereby certify that an unredacted version of the foregoing document and all exhibits 

filed under seal were sent via electronic mail on June 15, 2011 to all Counsel of Record. 

Dated: June 15, 2011 /s/ Amanda J. Hollis

Amanda J. Hollis (#6279821) 

KIRKLAND & ELLIS LLP 

300 North LaSalle 

Chicago, Illinois 60654 

312.862.2000 (Telephone) 

amanda.hollis@kirkland.com 

 

Attorney for Defendants Cosi, Inc., 

Dominick’s Supermarkets, Inc., and Meijer, 

Inc.

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EXHIBIT 10 

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UNITED STATES DISTRICT COURT

FOR THE Northern District of Illinois − CM/ECF LIVE, Ver 4.2

Eastern Division

Innovatio IP Ventures, LLC

Plaintiff,

v. Case No.: 1:11−cv−01638

Honorable Edmond E. Chang

Accor North America, et al.

Defendant.

NOTIFICATION OF DOCKET ENTRY

This docket entry was made by the Clerk on Friday, July 8, 2011:

 MINUTE entry before Honorable Edmond E. Chang: With regard to Defendants'

motion to stay [137], Plaintiff shall respond on or before 07/20/11. Defendants may reply

on or before 07/26/11. Motion hearing is continued to coincide with the previously set

status hearing of 08/03/11, but the time is reset to 9 a.m. Mailed notice(slb, )

ATTENTION: This notice is being sent pursuant to Rule 77(d) of the Federal Rules of

Civil Procedure or Rule 49(c) of the Federal Rules of Criminal Procedure. It was

generated by CM/ECF, the automated docketing system used to maintain the civil and

criminal dockets of this District. If a minute order or other document is enclosed, please

refer to it for additional information.

For scheduled events, motion practices, recent opinions and other information, visit our

web site at www.ilnd.uscourts.gov.

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EXHIBIT 11 

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Order Form (01/2005)

United States District Court, Northern District of Illinois

Name of Assigned Judge

or Magistrate Judge Edmond E. Chang Sitting Judge if Otherthan Assigned Judge

CASE NUMBER 11 C 1638 DATE 6/17/2011

CASE

TITLE

Innovatio IP Ventures, LLC vs. ABP Corporation, et al.

DOCKET ENTRY TEXT

Defendants' motion to file [127] under seal and motion to stay [125] are denied without prejudice. 

O[ For further details see text below.] Notices mailed by Judicial staff.

STATEMENT

Defendants ask to file under seal a letter written by Plaintiff to a non-party (Exhibit 2 to R. 125). The

asserted basis for sealing the letter is that the non-party customer has not consented to disclosure of its

identity. That basis does not satisfy the limited grounds available to justify secrecy in court filings. Baxter

Int'l v. Abbott Laboratories, 297 F.3d 544, 546-47 (7th Cir. 2002); Union Oil v. Leavell, 220 F.3d 562, 567-

68 (7th Cir. 2000). Similarly, Defendants ask to file under seal a report (Exhibit 5 to R. 125) that describes

the market share of Cisco and Motorola in the allegedly infringing products. In support of sealing,

Defendants argue, "According to the License Agreement associated with the purchase of the report, however,

the Defendants are not permitted to distribute the report publicly." R. 127 at ¶ 4. The motion does not cite a

specific provision of the License Agreement. Id. Various provisions do seem to bar distribution outside the

licensed location (paragraph 2 of the license) and even bar access to licensee's outside counsel (paragraph 3). 

But the Court cannot determine (a) why the underlying information is a trade secret or otherwise entitled to

secrecy under controlling Seventh Circuit decisions or (b) how the disclosure of the information to even the

Court (and opposing counsel, and perhaps even Defendants' counsel) would be consistent with the License

Agreement. The latter concern is not necessarily one that the Court would enforce on its own (as opposed to

being a matter between the Dell'Oro Group and its licensees), but it does call into question whether the

information is entitled to secrecy when made part of a court filing. The motion to file under seal is thus

denied without prejudice.

 In light of the denial of the motion to file under seal, the Court will not consider the motion to stay in its

present form, and thus the stay motion is denied without prejudice to refiling (a) a motion to file under seal

that actually justifies sealing Exhibits 2 and 5 under Seventh Circuit law; (b) the stay motion with no

redactions; or © a revised version of the stay motion that does not rely on Exhibits 2 and 5 (it might well be

that Defendants can take this latter course). Finally, the Court notes that it would be helpful in a refiled stay

motion for Defendants to establish, perhaps by affidavits, whether Cisco or Motorola supplied all, some

portion, or none of the allegedly infringing products used by Defendants on a defendant-by-defendant basis. 

11C1638 Innovatio IP Ventures, LLC vs. ABP Corporation, et al. Page 1 of 2

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STATEMENT

The point of that information is to permit the Court to determine whether only some portion (if any) of the

case should be stayed, apportioned by either defendant or product or otherwise. The Court understands that a

successful invalidity argument by Cisco/Motorola could apply across-the-board regardless of whether those

two companies supplied the products used by Defendants, but the information would be useful in any event. 

11C1638 Innovatio IP Ventures, LLC vs. ABP Corporation, et al. Page 2 of 2

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EXHIBIT 12 

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Case 1:07-cv-00671-SLR Document 25 Filed 04/17/08 Page 1 of 5 PageID #: 397

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE

CISCO SYSTEMS INC.,

SCIENTIFIC-ATLANTA INC.,

ARRIS GROUP INC., and

THOMSON INC.,

Plaintiffs,

v.

GPNE CORP.,

Defendant.

)

)

)

)

)

)

)

) Civ. No. 07-671-SLR

)

)

)

)

MEMORANDUM ORDER

At Wilmington this 17th day of April, 2008, having reviewed defendant's motion

to transfer and the papers filed in connection therewith;

IT IS ORDERED that said motion (0.1. 13) is denied, for the reasons that follow:

1. Background. In October 2007, plaintiffs Cisco Systems, Inc. ("Cisco") (a

California corporation having its headquarters in San Jose, California) and ScientificAtlanta, Inc. ("SA") (a wholly-owned subsidiary of Cisco with its headquarters in

Lawrenceville, Georgia) filed the above captioned action against defendant GPNE

Corporation ("GPNE") (a Delaware corporation having its principal place of business in

Honolulu, Hawaii) seeking declaratory relief with respect to U.S. Patent Nos. 6,282,406

(the '''2,406 patent"), 7,200,406 (the '''0,406 patent"), and 7,209,748 (the "'748 patent").

(0.1. 1) By amended complaint filed in December 2007, plaintiffs ARRIS Group, Inc.

("ARRIS") (a Delaware corporation with its principal place of business in Suwanee,

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Georgia) and Thomson, Inc. ("Thomson") (a Delaware corporation with its principal

place of business in Indianapolis, Indiana) were added. (0.1. 7) In January 2008,

defendant GPNE filed its answer and counterclaims of patent infringement as to all

three of the patents in suit. (0.1. 12) GPNE also filed a motion to transfer the case to

the Eastern District of Texas, based on the "first-filed" theory. (0.1. 13)

2. More specifically, on January 31, 2007, GPNE filed two patent infringement

cases in the Eastern District of Texas. The first, filed against Time Warner Inc.,

Comcast Cable Communications LLC and Charter Communications, Inc., was settled

and dismissed in November 2007 without the benefit of any substantive rulings by the

court. (0.1. 17, ex. M) The second, filed against Samsung Telecommunications

America ("Samsung"), L.P., LG Electronics Mobilecomm U.S.A., Inc., and HTC America

Inc., remains pending only against Samsung, relates only to the '2,406 patent, and

involves different technology than that at issue. Nevertheless, GPNE argues that

transfer is warranted because "[t]he Eastern District of Texas was the first court to

obtain possession of the subject matter in dispute in this action - specifically, the

infringement of the '2,406 patent." (0.1. 21 at 2)

3. Standard of review. Under 28 U.S.C. § 1404(a), a district court may transfer

any civil action to any other district where the action might have been brought for the

convenience of parties and witnesses and in the interests of justice. Congress intended

through § 1404 to place discretion in the district court to adjudicate motions to transfer

according to an individualized, case-by-case consideration of convenience and the

interests of justice. Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988);

Affymetrix, Inc. v. Synteni, Inc., 28 F. Supp. 2d 192, 208 (D. Del. 1998).

2

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4. The burden of establishing the need to transfer rests with the movant "to

establish that the balance of convenience of the parties and witnesses strongly favors

the defendants." Bergman v. Brainin, 512 F. Supp. 972, 973 (D. Del. 1981) (citing

Shutte v. Armco Steel Corp., 431 F.2d 22, 25 (3d Cir. 1970)). "Unless the balance is

strongly in favor of a transfer, the plaintiff's choice of forum should prevail." ADE Corp.

v. KLA-Tencor Corp., 138 F. Supp. 2d 565,567-68 (D. Del. 2001); Shutte, 431 F.2d at

25. The deference afforded plaintiffs choice of forum will apply as long as a plaintiff

has selected the forum for some legitimate reason. C.R. Bard, Inc. v. Guidant Corp.,

997 F. Supp. 556, 562 (D. Del. 1998); Cypress Semiconductor Corp. v. Integrated

Circuit Systems, Inc., No. Civ. A. 01-199, 2001 WL 1617186, at *2 (D. Del. Nov. 28,

2001); Continental Cas. Co. v. American Home Assurance Co., 61 F. Supp. 2d 128,

131 (D. Del. 1999). Although transfer of an action is usually considered as less

inconvenient to a plaintiff if the plaintiff has not chosen its "'home turf or a forum where

the alleged wrongful activity occurred, the plaintiff's choice of forum is still of paramount

consideration, and the burden remains at all times on the defendants to show that the

balance of convenience and the interests of justice weigh strongly in favor of transfer."

In re M.L.-Lee Acquisition Fund II. L.P., 816 F. Supp. 973, 976 (D. Del. 1993).

5. The Third Circuit Court of Appeals has indicated that the analysis for transfer

is very broad. Jumara v. State Farm Ins. Co., 55 F.3d 873,879 (3d Cir. 1995).

Although emphasizing that "there is no definitive formula or list of factors to consider,"

id., the Court has identified potential factors it characterized as either private or pLlblic

interests. The private interests include: "(1) plaintiffs forum preference as manifested

in the original choice; (2) defendant's preference; (3) whether the claim arose

3

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elsewhere; (4) the convenience of the parties as indicated by their relative physical and

financial condition; (5) the convenience of the witnesses but only to the extent that the

witnesses may actually be unavailable for trial in one of the fora; and (6) location of

books and records (similarly limited to the extent that the files could not be produced in

the alternative forum)." lit. (citations omitted). The public interests include: "(1) the

enforceability of the judgment; (2) practical considerations that could make the trial

easy, expeditious or inexpensive; (3) the relative administrative difficulty in the two fora

resulting from court congestion; (4) the local interest in deciding local controversies at

home; (5) the public policies of the fora; and (6) the familiarity of the trial judge with the

applicable state law in diversity cases." lit. (citations omitted).

6. With respect to the "first-filed rule," this rule was adopted more than fifty years

ago by the Third Circuit Court of Appeals and described as follows: "In all cases of

[federal] concurrent jurisdiction, the court which first ha[d] possession of the subject

must decide it." Crosley Corp. v. Hazeltine Corp., 122 F.2d 925, 929 (3d Cir. 1941)

(quoting Smith v. Mciver, 22 U.S. (9 Wheat.) 532 (1824)). Consequently, the second

filed action should be stayed or transferred to the court where the first-filed action is

pending. Peregrine Corp. v. Peregrine Indus., Inc., 769 F. Supp. 169, 171 (ED. Pa.

1991); Dippold-Harmon Enterprises, Inc. v. Lowe's Companies, Inc., No. Civ. A. 01-532,

2001 WL 1414868 (D. Del. Nov. 13,2001). The rule "encourages sound judicial

administration and promotes comity among federal courts of equal rank." E.E.O.C. v.

University of Pennsylvania, 850 F.2d 969, 971 (3d Cir. 1988). The decision to transfer

or stay the second action is within the discretion of the trial court. lit. at 972, 977.

However, "invocation of the rule will usually be the norm, not the exception. Courts

4

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must be presented with exceptional circumstances before exercising their discretion to

depart from the first-filed rule." kL. at 979.

7. Analysis. I have never before been confronted with a case in which the firstfiled rule has been invoked for cases in which neither the parties nor the patents at

issue are identical. Indeed, I find remarkable the assertion that a court obtains

"possession of the subject matter" of a patent as soon as a single case involving that

patent is filed in that jurisdiction. Needless to say, I find these arguments less than

compelling. Also remarkable is the fact that parties are still basing motions to transfer

on the "convenience" of the parties, when it is undeniable that national corporations can

and do operate their businesses via electronic communications; litigation is not

substantially different and should not be treated as such. Consistent with the rationale I

have employed for at least the last 10 years, that absent a truly regional defendant or

critical witnesses that cannot be compelled to attend trial, Delaware (especially for

Delaware corporations such as GPNE) is at least as convenient as any other forum.

8. Conclusion. For the reasons stated above, defendant's motion to transfer is

denied.

Unitedk-&~ States Dis Ict Judge

5

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EXHIBIT 13 

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IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS 

INNOVATIO IP VENTURES, LLC, 

Plaintiff, 

v. 

ACCOR NORTH AMERICA; CARIBOU 

COFFEE CO., INC.; COSI, INC.; 

DOMINICK’S SUPERMARKETS, INC.; LQ 

MANAGEMENT LLC; MEIJER, INC. and 

PANERA BREAD COMPANY, 

Defendants. 

Civil Action No. 1:11-cv-1638 

District Judge Edmond E. Chang 

Magistrate Judge Sidney I. Schenkier 

 

PLAINTIFF’S MEMORANDUM IN OPPOSITION TO DEFENDANTS’ AMENDED 

MOTION TO STAY THIS MATTER PENDING RESOLUTION OF CISCO SYSTEMS, 

INC. AND MOTOROLA SOLUTIONS, INC. V. INNOVATIO IP VENTURES, LLC, CASE 

NO. 1:11-CV-00425 (D. DEL.)

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i 

TABLE OF CONTENTS 

I. INTRODUCTION .....................................................................................................................1

II. FACTUAL BACKGROUND ....................................................................................................3

A. Status of the Present Suit ...............................................................................................3

B. Cisco’s and Motorola’s Later-Filed Declaratory Judgment Suit ...................................3

C. Cisco’s and Motorola’s Involvement in the Current Suit ..............................................4

III. DEFENDANTS CANNOT ESTABLISH THAT A STAY IS WARRANTED .......................4

A. Innovatio Enjoys a Presumptive Right to Have Its Dispute Heard in Illinois ...............4

B. The Customer Suit Exception Does Not Apply to the Current Proceeding ...................6

1. Innovatio Has Ample Justification for Proceeding Against Defendants ...........6

2. The Delaware Action Will Not Resolve Most Issues Before This Court ..........8

a. The Delaware Action Will Not Resolve Issues of Infringement 

Regarding Non-Cisco or Non-Motorola Products .................................9

b. The Delaware Action Will Not Resolve Issues of Infringement 

of Combination Claims ........................................................................12

c. The Delaware Action, In Its Current Form, Will Likely Not 

Resolve The Issue of Damages ............................................................12

d. It Is Unlikely That The Delaware Action Will Resolve Issues 

Of Invalidity .........................................................................................13

e. Defendants Have Not Agreed to be Bound by the Delaware 

Court’s Decision ..................................................................................14

C. The Interest of Judicial Economy Weighs Against a Stay ...........................................14

IV. CONCLUSION ........................................................................................................................15

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ii 

TABLE OF AUTHORITIES

Cases

A.P.T., Inc. v. Quad Environmental Techs., 

698 F. Supp. 718 (N.D. Ill. 1988)..................................................................................................... 6 

Air Prods. and Chems., Inc. v. MG Nitrogen Services., Inc., 

133 F. Supp.2d 354 (D. Del 2001) ................................................................................................... 7 

Broadcom Corp. v. International Trade Comm’n, 

542 F.3d 894 (Fed. Cir. 2008) ........................................................................................................ 12 

Chase Manhattan Bank, USA v. Freedom Card, Inc., 

265 F. Supp.2d 445 (D. Del. 2003) .................................................................................................. 6 

Cherdak v. The Stride Rite Corp., 

396 F. Supp.2d 602 (D. Md. 2005) .................................................................................................. 9 

Cherokee Nation v. United States, 

124 F.3d 1413 (Fed. Cir. 1997) ...................................................................................................... 15 

Codex Corp. v. Milgo Elect. Corp., 

553 F.2d 735 (1st Cir. 1977) ............................................................................................................ 6 

Emerson Elect. Co. v. Black & Decker Mfg., 

606 F.2d 234 (8th Cir. 1979) ............................................................................................................ 6 

Genentech, Inc. v. Eli Lilly and Co., 

998 F.2d 931 (Fed. Cir. 1993) .......................................................................................................... 4 

IP Innovation L.L.C. v. Dell Computer Corp., 

2004 U.S. Dist. LEXIS 6129 (N.D. Ill Apr. 8, 2004) ..................................................................... 14 

Itex, Inc. v. Mount Vernon Mills, Inc., 

2010 U.S. Dist. LEXIS 93987 (N.D. Ill. Sept. 9, 2010) ................................................................. 15 

Kahn v. General Motors Corp., 

889 F.2d 1078 (Fed. Cir. 1989) ................................................................................................ 4, 6, 9 

Katz v. Siegler, 

909 F.2d 1459 (Fed. Cir. 1990) ........................................................................................................ 8 

Kerotest Mfg. Co. v. C-O-Two Fire Equip. Co., 

342 U.S. 180 (1952) ......................................................................................................................... 6 

Landis v. North Am. Co., 

299 U.S. 248 (1936) ....................................................................................................................... 14 

Microsoft Corp. v. Commonwealth Scientific and Indus. Research Org., 

2007 WL 4376104 (E.D. Tex. 2007)................................................................................................ 7 

Teleconference Sys. v. Proctor & Gamble Pharm., 

676 F. Supp.2d 312 (D. Del. 2009) .................................................................................................. 9 

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iii 

Statutes

35 U.S.C. § 271 ..................................................................................................................................... 2 

35 U.S.C. § 282 (2010) ....................................................................................................................... 13 

Rules

Patent Local Rule 2.1(b)(1) ................................................................................................................... 9 

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I. INTRODUCTION 

Plaintiff Innovatio IP Ventures, LLC (“Innovatio”) owns a substantial number of patents 

related to wireless local area networks (“WLANs”), commonly referred to as “Wi-Fi.” 

Defendants admit that they use Wi-Fi networks in connection with their business. Innovatio 

seeks compensation for Defendants’ infringement of seventeen Innovatio patents. 

Cisco Systems, Inc. (“Cisco”) and Motorola Solutions, Inc. (“Motorola”) are two of many 

companies that manufacture wireless network equipment. Cisco and Motorola have filed an 

action in Delaware seeking a judgment that: (1) their products do not infringe the Innovatio 

patents; and (2) the Innovatio patents are invalid. Defendants have moved to stay this case 

pending resolution of the later-filed Delaware action. Defendants’ motion rests on three major 

assumptions. Because those assumptions are not well-founded, their motion should be denied. 

First, contrary to Defendants’ argument, the Delaware action will not resolve many of the 

issues in this action. The Delaware action will not resolve any issues of infringement as to the 

significant number of accused devices manufactured by companies other than Cisco or Motorola, 

nor will it resolve any issues of infringement as to the dozens of asserted combination claims, 

regardless of whose equipment is used. For the few infringement issues that may be addressed, 

the Delaware action, in its current form, may not resolve the issue of damages because the 

Defendants, who significantly benefit from their infringement, are not parties to the Delaware 

action. And, because many of the asserted patents have already survived (directly or indirectly) 

the scrutiny of prior assertion, a Federal Circuit appeal and/or a PTO reexamination proceeding, 

it is highly unlikely that the Delaware court will invalidate all of more than 340 asserted claims. 

Simply put, the Delaware action will resolve few, if any, of the issues currently before this Court. 

Second, contrary to Defendants’ argument, Innovatio’s patents are not limited to essential 

features of the 802.11 WLAN standard. While Innovatio has indeed asserted standard-essential 

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claims, a majority of its asserted claims cover optional features and/or WLAN implementations. 

Each equipment manufacturer must decide which of these optional features to include in its 

products. Even if the equipment is capable of operating in accordance with an optional feature, 

the user nevertheless determines whether to actually utilize that feature, and how to implement 

the wireless network. Because each product and each network is different, a determination in 

Delaware as to whether certain products or networks infringe will have little, if any, impact on 

the determination as to other products or networks, including those of Defendants. 

Finally, contrary to Defendants’ argument, the Defendants, not the equipment 

manufacturers, are the “real parties in interest.” 35 U.S.C. § 271 creates a cause of action for 

infringement against “whoever” makes, uses or sells a patented invention – there is no statutory 

basis for ordering the priority of suit based on the nature of the infringer. Defendants derive 

substantial benefit from offering WLAN services to their customers and/or using WLAN for 

their business purposes. Moreover, the issue of infringement will hinge on: (1) the WLAN 

equipment used by the Defendants; (2) how such equipment is used and configured in the 

infringing networks; and (3) the benefits obtained by Defendants as a result of their 

infringement. This information will likely be exclusively in Defendants’ possession or control. 

Staying this suit serves no legitimate purpose. A stay will almost certainly result in 

duplicative litigation, as Innovatio and Defendants will still have to proceed with this action 

regardless of the outcome in the Delaware action. Staying this case will also prejudice Innovatio 

by delaying its ability to timely enforce its patent rights. On the other hand, denying a stay 

makes it more likely that the Delaware court will grant Innovatio’s pending motion to dismiss 

the Delaware action. This will allow the parties to resolve all issues in a single case in the most 

convenient forum for resolving the dispute. Defendants’ motion to stay should be denied. 

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II. FACTUAL BACKGROUND 

A. Status of the Present Suit 

In March 2011, Innovatio filed this patent infringement suit, alleging that ten defendants1

infringe Innovatio’s WLAN patents. The parties have exchanged initial disclosures and 

Innovatio has served its first set of discovery requests. To date, Defendants have admitted that 

they provide Wi-Fi network access to their customers or otherwise use wireless networks in 

connection with their business. Defendants have also identified and/or produced documents 

identifying the various manufacturers of Defendants’ WLAN equipment, including SonicWALL, 

Hewlett-Packard, Colubris Networks, Aruba Networks, Motorola and Cisco. In addition, 

Innovatio is about to serve its initial infringement contentions, which include more than 2,400 

pages of detailed description identifying how each Defendant infringes more than 340 asserted 

claims. Defendants are scheduled to serve their invalidity contentions in about six weeks. 

B. Cisco’s and Motorola’s Later-Filed Declaratory Judgment Suit 

After Innovatio filed this suit, Cisco and Motorola allege that they received requests for 

indemnification from a few of the Defendants in this action and/or other parties to whom 

Innovatio has sent notice letters. Neither Cisco nor Motorola has ever admitted, acknowledged, 

or provided any evidence that either of them is actually obligated to indemnify its customers for 

all, or even part, of the customer’s liability to Innovatio. Nevertheless, on May 13, 2011, nearly 

two months after Innovatio filed its suit in Illinois, Cisco and Motorola filed the Delaware action. 

Neither Cisco nor Motorola allege (nor could they allege) that Innovatio has directly accused 

either party of infringement. Rather, the only basis alleged for bringing this suit was Cisco’s and 

Motorola’s alleged obligations to indemnify their customers. 

 

1

 Innovatio has settled with three of the Defendants, leaving seven Defendants in the case. 

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 On July 7, Innovatio filed a motion requesting, among other things, that the Delaware 

action be dismissed under the first-to-file rule or under Rule 12(b)(7) for failing to join necessary 

parties. The Delaware action has not progressed beyond the initial pleading stage. 

C. Cisco’s and Motorola’s Involvement in the Current Suit 

Since filing the Delaware action, Cisco and Motorola have been actively involved in the 

present action. One of the firms representing Cisco and Motorola in the Delaware case (Kirkland 

& Ellis) is also representing at least Cosi, Dominick’s and Meijer in this action. (See Ex. A to 

the Declaration of Matthew G. McAndrews (“McAndrews Decl.”); June 15 Hrg. Tr. at pp. 8-9.) 

At least one Defendant (Cosi) has refused to participate in settlement discussions without Cisco 

and Motorola being involved. (See id. at Ex. B; June 10 e-mail from Hollis to McAndrews.) 

III. DEFENDANTS CANNOT ESTABLISH THAT A STAY IS WARRANTED 

A. Innovatio Enjoys a Presumptive Right to Have Its Dispute Heard in Illinois 

When two cases involving substantially the same parties and issues are pending before 

two different federal courts, it is in the interest of justice to permit the parties to proceed before 

only one court. In determining which of the two courts should resolve the issue, the Federal 

Circuit has a well-established “general rule” that the forum of the first-filed action is favored 

unless there is “sound reason that would make it unjust or inefficient to continue the first-filed 

action.” Genentech, Inc. v. Eli Lilly and Co., 998 F.2d 931, 937-38 (Fed. Cir. 1993); see also 

Kahn v. General Motors Corp., 889 F.2d 1078, 1081-82 (Fed. Cir. 1989) (holding “presumptive 

right of the first litigant to choose the forum weigh[s] heavily in [that litigant’s] favor” and that 

right should be disturbed “only to prevent wrong or injustice.”). Because this action preceded 

the Delaware action, and because the issues in dispute in Delaware are also before this Court (but 

not vice versa), Innovatio has a presumptive right to have this Court decide its infringement case, 

unless so proceeding would result in an injustice or wrong. 

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Judicial economy strongly supports having this matter heard in Illinois. Defendants have 

hundreds of locations (including for some, their corporate headquarters) in Illinois.2

 The issue of 

infringement will hinge on information regarding Defendants’ WLAN equipment and how such 

equipment is used and configured in the infringing networks. Such information will likely be in 

Illinois. According to the patents, many of the inventors reside in Iowa, just a few hours from 

Chicago. Moreover, Defendants have identified the prosecuting attorneys as being persons of 

interest to their case. These attorneys reside in the Chicago area. On the contrary, there are only 

tenuous ties to Delaware, and at least two of the current Defendants are likely not subject to the 

jurisdiction of the Delaware court.3

 As such, Illinois is the epicenter of this dispute. 

In addition, as will be explained below, the Delaware action will resolve only a fraction 

of the issues currently before this Court. Moreover, none of the Defendants have agreed to be 

bound by the decision of the Delaware Court. Thus, it is almost certain that staying the present 

suit in favor of the later-filed Delaware action will result in duplicative litigation. 

Finally, the current action has advanced significantly farther than the Delaware action. 

Here, the parties have exchanged initial disclosures, and Innovatio has served discovery requests. 

The parties are scheduled to serve their infringement and invalidity contentions soon. Thus, the 

parties have made, and are continuing to make, significant progress in this action. In contrast, 

the Delaware case is still in its infancy, as the parties are still in the midst of briefing Innovatio’s 

 

2

 Motorola’s headquarters are also in the Northern District of Illinois. (Ex. D to McAndrews Decl.; Del. 

Compl., at ¶ 3.) Accordingly, it would have been more convenient for it to file its complaint in Illinois, 

its home forum, or seek to intervene in the pending Illinois action. Instead Motorola and Cisco filed their 

action in Delaware, where many of the Illinois defendants do not have any locations, where certain of the 

Illinois defendants are not subject to jurisdiction, and where none of the relevant witnesses reside. 

3

 Caribou Coffee Co., Inc. is a Minnesota corporation with a principal place of business in Minnesota, 

while Meijer, Inc. is a Michigan corporation with a principal place of business in Michigan. Neither 

Caribou Coffee nor Meijer have any locations in Delaware. And, both Caribou and Meijer have admitted 

to using wireless products manufactured by entities other than Cisco or Motorola. 

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motion to dismiss the Delaware action.4

 Each of these factors weighs heavily in favor of 

proceeding in Illinois. Defendants’ motion should be denied for this reason alone. 

B. The Customer Suit Exception Does Not Apply to the Current Proceeding 

As noted, absent exceptional circumstances, where proceedings involving similar parties 

and issues are pending in different courts, the first filed case should have priority. See Kahn, 889 

F.2d at 1081. Courts have tailored a narrow exception to this rule when a patentee files a suit 

against a customer, which is simply a reseller of the accused goods, while the manufacturer of 

the accused goods files a second suit, seeking a judgment that the accused products do not 

infringe. In this scenario, courts may invoke the “customer suit exception” to stay the first-filed 

customer suit. However, this exception is not applicable to the present case. 

1. Innovatio Has Ample Justification for Proceeding Against Defendants 

As this Court has noted, the customer suit should not be stayed if the patentee has a 

legitimate purpose for proceeding against the customer instead of the manufacturer: 

[C]ourts give priority to the manufacturer’s suit because all the necessary and real parties 

are before the court. However, where the patentee has a separate interest in litigating 

against the customer, the “real party in interest” rationale for giving priority to the 

manufacturer's lawsuit is inapplicable. In these situations courts do not apply the 

customer suit exception.

A.P.T., Inc. v. Quad Environmental Techs., 698 F. Supp. 718, 721 (N.D. Ill. 1988) (emphasis 

added); see also Emerson Elect. Co. v. Black & Decker Mfg., 606 F.2d 234 (8th Cir. 1979) 

(denying to apply customer suit exception where patentee had a reasonable basis for maintaining 

its action against the customer); Codex Corp. v. Milgo Elect. Corp., 553 F.2d 735, 738 n.6 (1st 

 

4

 Delaware courts adhere to the first-to-file rule. See, e.g., Chase Manhattan Bank, USA v. Freedom 

Card, Inc., 265 F. Supp.2d 445, 448 (D. Del. 2003) (citations omitted). Denying Defendants’ motion to 

stay may increase the chance that the Delaware court grants Innovatio’s motion to dismiss, thereby 

allowing resolution of all of the issues in dispute in a single case and in the most convenient forum for the 

parties. See Kerotest Mfg. Co. v. C-O-Two Fire Equip. Co., 342 U.S. 180 (1952) (staying manufacturer’s 

later-filed action in Delaware because it would not resolve all issues in the first-filed Illinois action). 

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Cir. 1977). This is especially true where the manufacturer makes only a component of the 

infringing good, making the end customer the direct infringer. See Microsoft Corp. v. 

Commonwealth Scientific and Indus. Research Org., 2007 WL 4376104 at **2-3 (E.D. Tex. 

2007) (holding that the customer suit exception was inapplicable where manufacturer supplied 

only a part of the infringing device); Air Prods. and Chems., Inc. v. MG Nitrogen Services., Inc.,

133 F. Supp.2d 354, 357 (D. Del. 2001) (same). 

Defendants admit to operating and using wireless networks in connection with their 

business. Defendants have derived significant financial benefit, for example, by charging 

customers to use their wireless networks, by luring customers into their premises by offering free 

wireless network access, or by advertising on their networks. Likewise, these businesses realize 

significant efficiency gains in their business by, for example, using wireless devices for taking 

customer’s orders or wireless networks for inventory purposes. Thus, to be fully compensated 

for the infringement, Innovatio will likely have to proceed against the customers. While a 

majority of Defendants’ infringing networks do not use any Cisco or Motorola products, even in 

these networks that do use Cisco or Motorola products, such products are only one component of 

the overall wireless network. Because Innovatio has a substantial interest in proceeding against 

Defendants, the customer suit exception does not apply for this reason alone. 

Defendants argue that Cisco and Motorola should defend these infringement claims 

because they were involved in the design and development of the accused products and the 

802.11 standard. While peripherally interesting, this argument does not establish that either 

party is essential or even convenient for the resolution of Innovatio’s claims against Defendants. 

This dispute focuses on (1) the identification and configuration of Defendants’ WLAN 

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equipment; and (2) the benefits received by Defendants through the use of such equipment and 

networks. Information regarding Cisco’s or Motorola’s design or marketing efforts is irrelevant.5

 

Defendants have also suggested that Cisco or Motorola should defend against these 

claims because these entities may be liable to indemnify their customers. However, at no point 

has either Cisco or Motorola admitted that they will, in fact, indemnify their customers.6

 Until 

Cisco and Motorola identify something more than a purely speculative future exposure, this 

Court should give no weight to Defendants’ argument. Defendants’ motion to stay should be 

denied for this reason as well.7

2. The Delaware Action Will Not Resolve Most Issues Before This Court 

The primary question in evaluating the customer suit exception “is whether the issues and 

parties are such that the disposition of one case would be dispositive of the other.” Katz v. 

Siegler, 909 F.2d 1459, 1463 (Fed. Cir. 1990). It does not make sense to stay the customer suit if 

there will be significant issues to still be litigated after the manufacturer suit. As the Federal 

Circuit noted in denying a prior attempt by Motorola to invoke the customer suit exception: 

[I]n those cases in which a customer suit exception has been held to favor the forum of 

the second-filed action, the second action would resolve all charges against the 

customers in the stayed suit, including liability for damages. Such undertaking is 

absent in the case at bar. Were Kahn to prevail against Motorola on the issues raised in 

Illinois, he would still have to relitigate the question of infringement against General 

Motors, and perhaps also of validity. 

 

5

 In addition, Defendants note that the accused Cisco and Motorola products contain wireless chips that 

these companies purchase from third parties. Thus, in the event that detailed technical information is 

needed, it is possible that neither Cisco nor Motorola will have the relevant information. 

6

 In response to one indemnification request, Cisco stated that the party seeking indemnification “must 

determine for itself whether it believes it needs to separately resolve this issue with Innovatio.” (See Ex. 

C to McAndrews Decl.; letter from Cisco to Rosen Hotels & Resorts dated May 23, 2011.) While Cisco 

also suggests that this action would resolve all issues with respect to Cisco’s products (a point that 

Innovatio contests), at a minimum this letter is further proof that the “customers” or network providers 

may still be liable for infringement even after the Delaware action is resolved. 

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 Defendants also note that Cisco has asserted that certain products contain chips from companies such as 

Broadcom, which are licensed to the Innovatio patents. Not only is Innovatio not seeking damages for 

such products, but Defendants have not explained why they cannot assert the same defense, if applicable. 

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Kahn, 889 F.2d 1078, 1081-82 (Fed. Cir. 1989) (emphasis added). Other courts, have reached 

similar conclusions. See Teleconference Sys. v. Proctor & Gamble Pharm., 676 F. Supp.2d 312, 

321 (D. Del. 2009) (denying Cisco’s motion to stay Delaware customer suit where Cisco’s suit 

would not substantially streamline issues); see also Cherdak v. The Stride Rite Corp., 396 F. 

Supp.2d 602, 605 (D. Md. 2005) (refusing to apply doctrine unless “second action would resolve 

all charges against the customers in the stayed suit.”) (citations omitted; emphasis in original). 

Courts also consider whether the customers agree to be bound by the decision in the 

manufacturer’s suit, which insures that duplicative litigation will not be necessary. See id.

(holding customer suit exception not applicable where Cisco’s customers did not agree to be 

bound, and thus, Cisco’s manufacture suit would not be “outcome determinative.”) 

a. The Delaware Action Will Not Resolve Issues of Infringement 

Regarding Non-Cisco or Non-Motorola Products 

One typical wireless network configuration includes a wireless router that is connected to 

the Internet. The wireless router acts as an access point, which communicates with a terminal 

(e.g., a laptop), allowing the user to wirelessly access the Internet. Innovatio’s Complaint 

identified more than 340 asserted claims, including apparatus, system and method claims related 

to access points, terminals, and, importantly, combinations including the two. 

There are dozens, if not hundreds, of entities that manufacture and sell wireless access 

points and terminals for use in wireless networks. Innovatio has requested that Defendants 

produce a complete listing, by make and model, of the wireless products that Defendants use in 

their infringing networks. Despite numerous requests, Defendants have yet to produce that 

information.8

 Defendants have, however, admitted to using wireless routers from numerous 

 

8

 Patent Local Rule 2.1(b)(1) requires Defendants to produce documents sufficient to show the 

construction and operation of all accused products. In their Initial Disclosures, many of the Defendants 

alleged that they did not have such information because they did not manufacture or install the (cont.) 

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different manufacturers, including SonicWALL, Hewlett-Packard, Colubris Networks, Aruba 

Networks, Motorola and Cisco. (See Exs. E-K to McAndrews Decl.) Of the seven remaining 

Defendants, only two (Cosi and Meijer) appear to use mostly Cisco/Motorola products. Based 

on Defendants’ moving papers (including Exs. 3-9 thereto), the remaining five Defendants use a 

small percentage of Cisco or Motorola products in their restaurants, hotels or retail stores: 

• While Dominick’s may use Motorola devices in its warehouses, the 700+ wireless 

devices used in Dominick’s grocery stores are manufactured by Aruba Networks or HP. Less 

than 25% of Dominick’s wireless equipment is manufactured by Motorola. 

• Panera has admitted to using wireless devices from HP, Nomadix and Cisco. Despite the 

Court’s request for such information, Panera has yet to identify what percentage of its wireless 

equipment is from Cisco. 

• LQ Management has admitted that approximately one-quarter of the wireless products 

used at LQ’s corporate office and La Quinta Inn hotel properties are from Cisco or Motorola. 

LQ has not identified what percentage of Cisco/Motorola products are in the corporate office as 

opposed to in its hotels. 

• Caribou has admitted that it has purchased Motorola products for its Support Center and 

that “less than 2% of Caribou’s overall wireless access points” are from Motorola. Caribou has 

not identified whether any of its coffee shops have Motorola equipment. 

• Accor has admitted that it purchases its wireless products from third-party vendors. To 

date, Accor has not provided any indication that it has purchased or used any Cisco or Motorola 

product in connection with its business. 

 

Rather than continuing to wait for a complete list of the accused products from the 

Defendants, Innovatio visited about 80 of the Defendants’ locations in the Chicagoland area to 

test the equipment being used at these locations. Innovatio’s investigation confirmed the limited 

information provided to date by Defendants, namely that an overwhelming majority (~80%) of 

Defendants’ locations do not use any wireless network equipment from either Cisco or 

 

products. Nevertheless, Defendants could have (and should have) at least identified the make and model 

of the accused routers and terminals, which are within the confines of the Defendants’ premises. 

Innovatio also requested this information in a first set of discovery requests. Defendants’ responses were 

due on July 11. Certain Defendants requested a three-week extension to serve their responses. As for the 

responses that Innovatio received, none included a complete list of Defendant’s WLAN equipment. 

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Motorola. (See Ex. M to McAndrews Decl.; chart summarizing certain equipment used by 

Defendants.) Because these non-Cisco and non-Motorola products are not before the Delaware 

court, the Delaware action will not resolve whether these products infringe. The customer suit 

exception does not apply for this reason alone. 

Faced with the realization that most of their products are not before the Delaware court, 

Defendants have nevertheless argued that a decision in Delaware will resolve all infringement 

issues as to all products, regardless of manufacturer, because Innovatio’s claims are directed to 

the “802.11 standard” and are the same for all parties. This position is unfounded because it 

ignores that the 802.11 standard defines both features that are mandatory to practice the standard 

and features that are optional. (See McAndrews Decl. at ¶¶ 19-20; providing examples from 

802.11 standard.) While Innovatio has asserted mandatory claims, it has also asserted many 

claims that cover optional features, as well as WLAN implementations. (See id.) 

The individual device manufacturer must determine which, if any, of the optional features 

to include in a wireless device. Likewise, the end user must determine which optional features to 

activate and use in its wireless networks, and how to implement those networks. The fact that a 

Cisco product has a feature does not mean that the same feature will be present in another 

manufacturer’s device. Also, the fact that a feature is present in a Cisco device does not mean 

that the end user has activated the feature. Thus, a finding in the manufacturers’ suit as to 

whether a Cisco or Motorola product infringes a claim covering an optional feature has little 

impact regarding infringement by another manufacturer’s product or the end user’s network. 

Because the Delaware action will not resolve the issue of infringement as to numerous nonCisco/Motorola products, particularly as to claims covering optional features or WLAN 

implementations, the customer suit exception does not apply to this case. 

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b. The Delaware Action Will Not Resolve Issues of Infringement 

of Combination Claims 

In addition to not resolving infringement issues as to non-Cisco/Motorola equipment, the 

Delaware action will not resolve any issues as to the infringement of the asserted combination 

claims, regardless of whose equipment is used. Given that it is the Defendants who have put the 

wireless networks as a whole into service, including having configured/operated those networks 

and obtained the benefit from such networks, Innovatio will have to proceed against these 

Defendants for direct infringement of the asserted combination claims. 

Defendants may argue that the Delaware action can address whether Cisco/Motorola are 

liable for indirect infringement by inducing others to infringe. Even this decision, though, will 

not be dispositive of whether the Defendants directly infringe. See, e.g., Broadcom Corp. v. 

International Trade Comm’n, 542 F.3d 894, 898 (Fed. Cir. 2008) (affirming holding that 

manufacturer did not induce infringement despite prior finding that network operators may have 

directly infringed). Because the Delaware action will not completely resolve issues related to the 

combination claims, the customer suit exception does not apply for this reason as well. 

c. The Delaware Action, In Its Current Form, Will Likely Not 

Resolve The Issue of Damages 

Finally, even for the relative few liability issues that may be addressed by the Delaware 

court (i.e., infringement of only the standard-essential apparatus claims and only as to the 

Cisco/Motorola products used by Defendants), the Delaware court may not be able to award 

damages sufficient to fully compensate Innovatio. As previously noted, Defendants have 

significantly benefitted from operating and using the infringing networks. Thus, Innovatio can 

only be fully compensated if any damages award includes compensation for the benefits of the 

inventions obtained by the Defendants. Cisco and Motorola do not have information in their 

possession regarding the extent of such benefits, nor have they admitted liability to the full extent 

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of such amounts. Thus, unless: (1) Cisco and Motorola admit that they are responsible for any 

damages awarded as a result of their customer’s use of the infringing products; or (2) Cisco’s and 

Motorola’s customers are joined to the Delaware action, it will be impossible for the Delaware 

court to award damages adequate to fully compensate Innovatio for Defendants’ infringement. 

d. It Is Unlikely That The Delaware Action Will Resolve Issues Of 

Invalidity 

All issued patents enjoy a presumption of validity. See 35 U.S.C. § 282 (2010). A 

finding in Delaware that all asserted claims are invalid would dispose of Innovatio’s claims 

against Defendants. Cisco and Motorola, however, must invalidate more than 340 claims in the 

seventeen asserted patents to get that result. These patents cover different aspects of wireless 

networks. The patents stem from several different families with different inventors and priority 

dates. Thus, even in the unlikely event that Cisco or Motorola uncover an invalidating reference, 

it is unlikely that a single reference will invalidate the entire portfolio. In addition, four of the 

patents currently asserted have been previously asserted against other major, sophisticated 

players in the wireless space, including Agere, Qualcomm and ST Micro. These defendants 

vigorously searched for prior art, which was submitted to the PTO and was considered during the 

prosecution of the children cases off these four patents. Several of these children cases have 

since issued as patents and are among the patents currently asserted by Innovatio. 

Moreover, one patent has survived an appeal and PTO reexamination, with both the 

Federal Circuit and PTO confirming the validity of this patent. The arguments raised during 

those proceedings were also considered during the prosecution of children cases claiming 

priority to this patent. Thus, many of the asserted patents have survived (directly or indirectly) 

the scrutiny of the Federal Circuit and PTO (twice). The likelihood that Cisco and Motorola can 

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invalidate hundreds of “battle-tested” claims in seventeen asserted patents is extremely low. 

Thus, it is unlikely that the Delaware action will completely resolve the issue of validity either. 

e. Defendants Have Not Agreed to be Bound by the Delaware 

Court’s Decision 

Defendants are presumably aware that courts consider whether a customer agrees to be 

bound by the outcome in the manufacturer’s suit when deciding whether to apply the customer 

suit exception. Nevertheless, to date, none of the Defendants has agreed to be bound by the 

outcome of the Delaware action, further undermining their argument that this case should be 

stayed. See IP Innovation L.L.C. v. Dell Computer Corp., 2004 U.S. Dist. LEXIS 6129 (N.D. 

Ill. Apr. 8, 2004) (“Neither does it promote judicial economy to await for ultimate resolution of 

the manufacturer case when there is no agreement from IP Innovation or Dell to be bound by the 

outcome of the issues in the manufacturer suit, enabling later disputes over subjects such as 

collateral estoppel, patent validity, and the party responsible for the manufacture of the products 

at issue.”). The customer suit exception does not apply for this reason as well. 

C. The Interest of Judicial Economy Weighs Against a Stay 

Courts have the inherent authority to stay cases in the interest of justice. However, 

where, as here, the non-movant will be prejudiced, the party seeking a stay “must make out a 

clear case of hardship or inequity in being required to go forward.” Landis v. North Am. Co., 

299 U.S. 248, 254 (1936). Defendants have not, and cannot, meet this burden. 

First, a stay will not reduce the burden of litigation on the parties or the court. Illinois is 

the epicenter of this dispute, with key information and witnesses being in, or near, Illinois. The 

only tie to Delaware is that Innovatio is incorporated there. Moreover, the Delaware action can 

only resolve a small fraction of the issues before this Court. Thus, if this case is stayed, it is 

almost certain that Innovatio and Defendants will have to proceed with a duplicative action 

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15 

before this Court regardless of the outcome of the Delaware action. On the other hand, denying 

the requested stay will increase the likelihood that the Delaware court grants Innovatio’s pending 

motion to dismiss, resulting in a single case in the most convenient forum for the parties. 

Second, the Delaware action will not simplify the issues in dispute. The Delaware action 

will not address any of the asserted combination claims, nor will it address the vast majority of 

the wireless products used by Defendants from manufacturers other than Cisco and Motorola. 

Because each manufacturer and network operator decides on the features to implement, a ruling 

in Delaware will have little, if any, impact on this action. And while Defendants argue that the 

Delaware action may resolve issues of validity (a point that Innovatio disputes), this Court has 

declined to stay patent cases simply because the issue of validity is being addressed in another 

case, particularly where, as here, the patent’s validity had already been tested. See Itex, Inc. v. 

Mount Vernon Mills, Inc., 2010 U.S. Dist. LEXIS 93987 at *7 (N.D. Ill. Sept. 9, 2010) (holding 

it was “overly speculative to stay this case based on the possibility that the [other] defendants 

will overcome the presumption of patent validity” where patent had survived reexamination). 

Finally, Innovatio will be severely prejudiced by a stay. Innovatio would be forced to 

spend significant resources litigating a suit in Delaware that resolves few, if any, issues, all the 

while Defendants and other entities continue to infringe Innovatio’s patents. Given that the 

Delaware case is still in its infancy, and taking into consideration the time for an appeal, it could 

be years before this case would resume. This would prejudice Innovatio, as witness’s memories 

will have likely faded, infringing equipment and networks changed and/or been discarded and 

documents lost or destroyed. See, e.g., Cherokee Nation v. United States, 124 F.3d 1413, 1418 

(Fed. Cir. 1997). Thus, the Court should decline to exercise its authority to stay this suit. 

IV. CONCLUSION 

For the foregoing reasons, Innovatio requests that Defendants’ motion be denied.

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 Respectfully submitted, 

Dated: July 20, 2011 /s/ Matthew G. McAndrews 

 Matthew G. McAndrews 

 Raymond P. Niro, Jr. 

 Brian E. Haan 

 Gabriel I. Opatken 

 NIRO, HALLER & NIRO 

 181 West Madison St., Suite 4600 

 Chicago, Illinois 60602 

 Telephone: (312) 236-0733 

 Facsimile: (312) 236-3137 

 E-mail: mmcandrews@nshn.com 

 E-mail: rnirojr@nshn.com 

 E-mail: bhaan@nshn.com 

 E-mail: gopatken@nshn.com 

 Attorneys for Plaintiff,

 INNOVATIO IP VENTURES, LLC 

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17 

CERTIFICATE OF SERVICE 

The undersigned hereby certifies that on July 20, 2011 the foregoing PLAINTIFF’S 

MEMORANDUM IN OPPOSITION TO DEFENDANTS’ AMENDED MOTION TO 

STAY THIS MATTER PENDING RESOLUTION OF CISCO SYSTEMS, INC. AND 

MOTOROLA SOLUTIONS, INC. V. INNOVATIO IP VENTURES, LLC, CASE NO. 

1:11-CV-00425 (D. DEL.) was filed with the Clerk of Court using the CM/ECF system, which 

will then send a notification of such filing to the following counsel of record. 

Matias Ferrario 

Kilpatrick Townsend & Stockton LLP 

1001 West Fourth Street 

Winston Salem, NC 27101 

mferrario@kilpatricktownsend.com 

Vaibhav P. Kadab 

Kilpatrick Townsend & Stockton LLP 

1100 Peachtree Street, Suite 2800 

Atlanta, GA 30309 

wkadaba@kilpatricktownsend.com 

Taylor H. Ludlam 

Kilpatrick Townsend & Stockton LLP 

3737 Glenwood Ave., Suite 400 

Raleigh, NC 27612 

taludlam@kilpatricktownsend.com 

Daniel O. Canales 

Jennifer L. Colvin 

Matthew J. Straub 

Ogletree, Deakins, Nash, 

Smoak & Stewart, P.C. 

155 N. Wacker Dr.. Suite 4300 

Chicago, Illinois 60606 

Daniel.canales@ogletreedeakins.com

Jennifer.colvin@ogletreedeakins.com

Matthew.straub@ogletreedeakins.com

Attorneys for Caribou Coffee Co., Inc. 

R. David Donoghue 

Daniel L. Farris 

Holland & Knight LLP 

131 S. Dearborn St., 30th Floor 

Chicago, Illinois 60603 

david.donoghue@hklaw.com

daniel.farris@hklaw.com

Attorneys for Accor North America 

Matias Ferrario 

Kilpatrick Townsend & Stockton LLP 

1001 West Fourth Street 

Winston Salem, NC 27101 

mferrario@kilpatricktownsend.com

Vaibhav P. Kadab 

Kilpatrick Townsend & Stockton LLP 

1100 Peachtree Street, Suite 2800 

Atlanta, GA 30309 

wkadaba@kilpatricktownsend.com

Taylor H. Ludlam 

Kilpatrick Townsend & Stockton LLP 

3737 Glenwood Ave., Suite 400 

Raleigh, NC 27612 

taludlam@kilpatricktownsend.com 

Daniel O. Canales 

Jennifer L. Colvin 

Matthew J. Straub 

Ogletree, Deakins, Nash, 

Smoak & Stewart, P.C. 

155 N. Wacker Dr.. Suite 4300 

Chicago, Illinois 60606 

Daniel.canales@ogletreedeakins.com

Jennifer.colvin@ogletreedeakins.com

Matthew.straub@ogletreedeakins.com

Kevin J. O’Shea 

Greenberg Traurig, LLP 

77 West Wacker Drive 

Chicago, Illinois 60601 

osheak@gtlaw.com

Attorneys for Defendant Panera 

Bread Company 

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Amanda J. Hollis 

Kirkland & Ellis LLP 

300 North LaSalle 

Chicago, IL 60654 

Amanda.hollis@kirkland.com

Adam R. Alper 

Kirkland & Ellis LLP 

55 California Street 

San Francisco, CA 94104 

Steven P. Mandell 

Steven L. Baron 

Sharon R. Albrecht 

Mandell Menkes LLC 

333 W. Wacker Drive, Suite 300 

Chicago, Illinois 60606 

smandell@mandellmenkes.com 

sbaron@mandellmenkes.com

salbrecht@mandellmenkes.com

Attorneys for Dominick’s Supermarkets, Inc. 

Enrique D. Duarte 

Fish & Richardson P.C. 

500 Arguello Street, Suite 500 

Redwood City, CA 94063 

Duarte@fr.com 

Neil J. McNabnay 

Fish & Richardson P.C. 

1717 Main Street, Suite 5000 

Dallas, Texas 75201 

mcnabnay@fr.com 

Joel D. Bertocchi 

Hinshaw & Culbertson, LLP 

222 North LaSalle Street, Suite 300 

Chicago, Illinois 60601 

jbertocchi@hinshawlaw.com 

Attorneys for LQ Management, LLC

Amanda J. Hollis 

Kirkland & Ellis LLP 

300 North LaSalle 

Chicago, IL 60654 

Amanda.hollis@kirkland.com

Adam R. Alper 

Kirkland & Ellis LLP 

55 California Street 

San Francisco, CA 94104 

James G. Goggin 

Verrill Dana, LLP 

1 Portland Square 

Portland, ME 04112 

jgoggin@verrilldana.com 

Kevin J. O’Shea 

Greenberg Traurig, LLP 

77 West Wacker Drive 

Chicago, Illinois 60601 

osheak@gtlaw.com

Attorneys for Cosi, Inc. 

Amanda J. Hollis 

Kirkland & Ellis LLP 

300 North LaSalle 

Chicago, IL 60654 

Amanda.hollis@kirkland.com

Adam R. Alper 

Kirkland & Ellis LLP 

55 California Street 

San Francisco, CA 94104 

R. David Donoghue 

Daniel L. Farris 

Holland & Knight LLP 

131 S. Dearborn St., 30th Floor 

Chicago, Illinois 60603 

david.donoghue@hklaw.com

daniel.farris@hklaw.com

Attorneys for Meijer, Inc.

 

/s/ Matthew G. McAndrews 

Attorney for Plaintiff, 

 INNOVATIO IP VENTURES, LLC

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