Motorola v. TiVo Feb. 28, 2011

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					      Case 5:11-cv-00053-DF -CMC Document 1                Filed 02/25/11 Page 1 of 17



                       IN THE UNITED STATES DISTRICT COURT
                        FOR THE EASTERN DISTRICT OF TEXAS
                               TEXARKANA DIVISION



MOTOROLA MOBILITY, INC. and
GENERAL INSTRUMENT CORPORATION
                                                   Civil Action No. _____________
                       Plaintiffs,

vs.

TIVO INC.,                                         JURY TRIAL DEMANDED

                        Defendant.


                      COMPLAINT FOR PATENT INFRINGEMENT
                         AND DECLARATORY JUDGMENT

       Plaintiffs Motorola Mobility, Inc. (“Motorola Mobility”) and General Instrument

Corporation (“General Instrument”) (collectively “Plaintiffs”) file this Complaint For Patent

Infringement and Declaratory Judgment against Defendant TiVo Inc. (“TiVo”), and in support of

their Complaint allege as follows:

                                       INTRODUCTION

       1.      General Instrument, a subsidiary of Motorola Mobility, owns multiple patents that

disclose and claim fundamental inventions related to digital video recorders (“DVRs”), which

are now ubiquitous in American households. These fundamental DVR patents include patents

for inventions from the mid 1990s by a group of former General Instrument engineers who went

on to found Imedia Corporation (“Imedia”). General Instrument subsequently acquired all of the

assets of Imedia, including the Imedia DVR patents. Among the patents the Imedia engineers

were awarded for their inventions are United States Patent Nos. 5,949,948 (“the ’948 Patent”);
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6,304,714 (“the ’714 Patent”); and 6,356,708 (“the ’708 Patent”) (collectively “the Imedia

Patents”).

          2.   The Imedia Patents were filed with the Patent Office beginning in April 1995.

More than two years later, TiVo was founded and began to develop a DVR product. In July

1998, more than three years after the Imedia Patents were first filed with the Patent Office, TiVo

filed a patent application for what it dubbed a “Multimedia Time Warping System.” From that

1998 application, TiVo obtained United States Patent Nos. 6,233,389 (“the ’389 Patent”) and

7,529,465 (“the ’465 Patent) (collectively “the TiVo Patents”), among others. The TiVo Patents

disclose and claim the same technology the Imedia engineers invented years before.

          3.   TiVo currently is seeking to enforce its patents in this Court against Motorola

Mobility customer Verizon Communications, Inc. (“Verizon”). In TiVo Inc. v. Verizon Comms.,

Inc., et al., 2:09-cv-257-DF (E.D. Tex.) (the “Verizon Lawsuit”), TiVo has accused various QIP

set-top boxes of infringing certain claims of the TiVo Patents. Motorola Mobility and General

Instrument supply the accused QIP set-top boxes to Verizon.

          4.   Therefore, Plaintiffs now bring this action to: (1) seek all available remedies for

TiVo’s willful infringement of the Imedia Patents; (2) obtain a declaratory judgment that the

claims of the TiVo Patents are anticipated and/or rendered obvious by the Imedia Patents and

Imedia inventions, thus rendering the TiVo Patents invalid; and (3) obtain a declaratory

judgment that the accused QIP set-top boxes do not infringe, directly or indirectly, literally or

under the doctrine of equivalents, claims 31 and 61 of the ’389 Patent or any claim of the ’465

Patent.




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                                           THE PARTIES

       5.      Motorola Mobility is a corporation organized and existing under the laws of the

State of Delaware, having a principal place of business at 600 North U.S. Highway 45,

Libertyville, Illinois 60048.

       6.      General Instrument is a corporation organized and existing under the laws of the

State of Delaware, having a principal place of business at 101 Tournament Drive, Horsham,

Pennsylvania 19044. General Instrument is a wholly-owned subsidiary of Motorola Mobility.

General Instrument designs and supplies the QIP set-top boxes that Motorola Mobility sells and

supplies to Verizon.

       7.      On information and belief, Defendant TiVo is a corporation organized and

existing under the laws of Delaware with a principal place of business at 2160 Gold Street,

Alviso, California 95002. TiVo can be served with process through its registered agent for

service, Corporation Service Company, d/b/a CSC Lawyers Incorporated, 211 E. 7th Street,

Suite 620, Austin, Texas 78701.

                                  JURISDICTION AND VENUE

       8.      The Court has subject matter jurisdiction over this action pursuant to 28 U.S.C.

§§ 1331 and 1338(a) because this action involves a claim arising under the patent laws of the

United States, 35 U.S.C. § 1, et seq., and under the Federal Declaratory Judgment Act, 28 U.S.C.

§§ 2201 and 2202.

       9.      Personal jurisdiction and venue are proper in this Court pursuant to 28 U.S.C.

§§ 1391, 1391 and/or 1400, because TiVo resides in this state and district and does business in

this state and district, has committed acts of infringement in this district, and has availed itself of

this forum by repeatedly commencing litigation in this district on the TiVo Patents.




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                                   FACTUAL BACKGROUND

A.     The Imedia Patents

       10.     On September 7, 1999, the United States Patent and Trademark Office duly and

lawfully issued the ’948 Patent, entitled “Method and Apparatus for Implementing Playback

Features for Compressed Video Data” to Dr. Edward A. Krause, Paul Shen and Dr. Adam S.

Tom. A true and correct copy of the ’948 Patent is attached to this Complaint as Exhibit A.

General Instrument owns the entire right, title and interest in and to the ’948 Patent. The ’948

Patent was filed on November 20, 1995.

       11.     On October 16, 2001, the United States Patent and Trademark Office duly and

lawfully issued the ’714 Patent, entitled “In-Home Digital Video Unit With Combine Archival

Storage and High-Access Storage” to Dr. Krause, Dr. Jerrold Heller, Dr. Tom and Mr. Shen. A

true and correct copy of the ’714 Patent is attached to this Complaint as Exhibit B. General

Instrument owns the entire right, title and interest in and to the ’714 Patent. The ’714 Patent

claims priority to application number 08/425,896, filed on April 21, 1995.

       12.     On March 12, 2002, the United States Patent and Trademark Office duly and

lawfully issued the ’708 Patent, entitled “Method and Apparatus for Implementing Playback

Features for Compressed Video Data” to Dr. Krause, Mr. Shen and Dr. Tom. A true and correct

copy of the ’708 Patent is attached to this Complaint as Exhibit C. General Instrument owns the

entire right, title and interest in and to the ’708 Patent. The ’708 Patent is a division of

application number 08/560,732, filed on November 20, 1995, now the ’948 Patent.

B.     The TiVo Patents

       13.     On May 15, 2001, the United States Patent and Trademark Office issued the ’389

Patent, entitled “Multimedia Time Warping System” to James M. Barton, Roderick James




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McInnis, Alan S. Moskowitz, Andrew Martin Goodman, Ching Tong Chow and Jean Swey Kao.

A true and correct copy of the ’389 Patent is attached to this Complaint as Exhibit D. TiVo has

alleged that it owns the ’389 Patent.

       14.     On May 5, 2009, the United States Patent and Trademark Office issued the ’465

Patent, entitled “System for Time Shifting Multimedia Content Streams” to James M. Barton,

Roderick James McInnis, Alan S. Moskowitz, Andrew Martin Goodman, Ching Tong Chow and

Jean Swey Kao. A true and correct copy of the ’465 Patent is attached to this Complaint as

Exhibit E. TiVo has alleged that it owns the ’465 Patent.

C.     General Instrument Is a Pioneer in Digital Television.

       15.     General Instrument is a pioneer in the field of communication systems and is

responsible for many groundbreaking innovations in television set-top box technology. In 1990,

General Instrument proposed the world’s first all-digital HDTV (high-definition television)

technical standard.

       16.     Until 1994, the inventors of the Imedia Patents were employed by General

Instrument developing technology that is still used in set-top boxes today, including those

supplied by General Instrument, Motorola Mobility, TiVo and others. For example, Dr. Krause

helped invent three patented technologies while at General Instrument that the MPEG LA

licensing organization determined were essential to the MPEG-2 compression standard. On

information and belief, TiVo subsequently licensed Dr. Krause’s patented inventions through the

MPEG LA licensing pool. As another example, in 1996 Dr. Krause was awarded an Emmy by

the Academy of Television Arts and Sciences for creating the DigiCipher system while working

at General Instrument. The winning DigiCipher technology was used to demonstrate digital TV

transmitted over satellite and cable channels.




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       17.     In early 2000, Motorola, Inc. and General Instrument merged, which positioned

Motorola as a leader in the convergence of voice, video and data technologies. General

Instrument is now a wholly-owned subsidiary of Motorola Mobility. The combined company

continues to focus on broadband solutions that deliver interactive television, the Internet and

telephone services over wired and wireless networks.

D.     The Imedia Engineers Invented the DVR in the Mid 1990s.

       18.     In March 1994, Dr. Krause, Dr. Tom and Mr. Shen left General Instrument to

found Imedia and were joined soon thereafter by Dr. Heller. Turning down an offer from

General Instrument to set up a separate division, the four engineers instead started their own

company in a spare room in Dr. Krause’s home in San Diego, California.

       19.     Imedia quickly became a success, developing innovative products that enabled

cable operators to select and customize their program lineup for viewer preferences, including

the highly successful Cherry Picker product. While at Imedia, the Imedia engineers conceived of

their DVR invention and filed a series of patent applications covering various aspects of their

invention. They marketed their DVR invention as the “Home Video Server,” which featured

digital random-access storage of television programming, full trick-mode playback, and easy-to-

use content manager that allowed selective capturing of television programs.

       20.     Each of the Imedia Patents was originally assigned to Imedia. In or about 1999,

Imedia was acquired by Terayon Communications Systems, Inc. (“Terayon”) for a reported $100

million. With the acquisition, the Imedia Patents were assigned to Terayon. Terayon later was

merged into General Instrument, making General Instrument the successor in interest to all right

and title to the Imedia patents.




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E.      TiVo Obtained Patents on its DVR Product and Sued the Industry.

        21.      On information and belief, in or around 1997, TiVo was founded and began to

develop its DVR product. In July 1998—more than three years after the Imedia Patents were

first filed—TiVo submitted a patent application for what it dubbed a “Multimedia Time Warping

System.” That application eventually matured into the ’389 Patent and ’465 Patent, among

others. The TiVo Patents disclose and claim the same technology the Imedia engineers invented

years earlier.

        22.      On January 5, 2004, TiVo filed a patent infringement lawsuit in the United States

District Court for the Eastern District of Texas against EchoStar Communications, Case No. 04-

cv-00001 (DF) (the “EchoStar Lawsuit”). In the EchoStar Lawsuit, TiVo asserted that EchoStar

infringed the ’389 Patent by making, using, offering to sell and/or selling digital recording

devices, digital video recording device software and/or personal television services falling within

the scope of one or more claims of the ’389 Patent.

        23.      On August 26, 2009, TiVo filed a patent infringement lawsuit in the Eastern

District of Texas against AT&T Inc., Case No. 09-cv-00259 (DF) (the “AT&T Lawsuit”). In the

AT&T Lawsuit, TiVo asserted that AT&T infringed the TiVo Patents by making, using, offering

for sale, selling and/or importing products and/or processes falling within the scope of one or

more claims of the TiVo Patents, including AT&T’s U-verse product and/or service.

        24.      On August 26, 2009, TiVo filed the Verizon Lawsuit. On February 2, 2010, TiVo

filed an amended complaint in the Verizon Lawsuit adding Verizon Services Corp. and Verizon

Corporate Resources Group, LLC as defendants (all defendants in the Verizon Lawsuit are

referred to collectively as “Verizon”). In the Verizon Lawsuit, TiVo asserted that Verizon’s

digital recording devices, digital video recording device software and personal television services




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infringed the TiVo Patents. On February 24, 2010, Verizon answered TiVo’s amended

complaint. On or about April 4, 2010, TiVo identified certain QIP set-top boxes as accused

instrumentalities in the Verizon Lawsuit.

       25.     On or about August 27, 2010, TiVo served a subpoena on Motorola, Inc. seeking

documents related to the design, operation and sale by Motorola, Inc. to Verizon of “all DVRs

manufactured or otherwise produced for or sold to Verizon by Motorola, including the following

models: Motorola QIP 27xx Series Standard-Definition Watch and Record DVR, Motorola

QIP6200/QIP64xx Series, and Motorola QIP7200 Series.” On October 8, 2010, Motorola, Inc.

served its objections to TiVo’s subpoena. On January 4, 2011, Motorola Mobility ceased being a

subsidiary of Motorola, Inc. On January 14, 2011, TiVo served a substitute subpoena on

Motorola Mobility, seeking documents related to the QIP set-top boxes. On February 2, 2011,

Motorola Mobility served its objections to TiVo’s substitute subpoena and produced various

documents. TiVo has requested production of Motorola source code related to the accused QIP

set-top boxes, and Motorola Mobility currently is in the process of meeting and conferring with

TiVo regarding producing that source code for inspection.

       26.     As a result of TiVo’s accusations of infringement and the Verizon Lawsuit,

Verizon has demanded that Motorola Mobility defend and/or indemnify Verizon against TiVo’s

claims of patent infringement related to the QIP set-top boxes. In light of TiVo’s aggressive

litigation history, TiVo’s accusations of infringement against QIP set-top boxes, TiVo’s requests

for detailed Motorola technical information related to the accused QIP set-top boxes and

Verizon’s indemnification demand, an actual controversy exists between Plaintiffs and TiVo

regarding questions of infringement and validity of the TiVo Patents.




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                                  FIRST CAUSE OF ACTION

                            (TiVo’s Infringement of the ’714 Patent)

       27.     Plaintiffs incorporate by reference the allegations in the preceding paragraphs.

       28.     General Instrument is the sole holder of the entire right, title and interest in the

’714 Patent.

       29.     TiVo has infringed and continues to infringe, directly and indirectly by

contributing to and inducing the infringement of others, one or more claims of the ’714 Patent by

making, using, importing, selling, and/or offering to sell DVR devices, DVR software, DVR

accessories and related services that are covered by the claims of the ’714 Patent.

       30.     On information and belief, TiVo has been on notice of and aware of the ’714

Patent since at least October 2005.

       31.     On information and belief, TiVo has actively induced, and continues to actively

induce, the infringement of one or more claims of the ’714 patent by, among other things,

instructing its customers to operate the accused products in a manner that infringes the claims of

the ’714 patent. TiVo intends that its customers will use its DVR devices, DVR software and

DVR accessories in a manner that infringes the ’714 patent.

       32.     On information and belief, TiVo has contributorily infringed and continues to

contributorily infringe the ’714 patent by offering to sell and/or selling within the United States

and/or importing into the United States one or more components of a machine, manufacture, or

combination covered by the ’714 patent that constitute a material part of the invention, which is

not a staple article or commodity of commerce suitable for substantial noninfringing use. On

information and belief, TiVo knows that the component and/or apparatus is especially made or

especially adapted for use in infringing the ’714 patent.




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       33.     On information and belief, TiVo has been on notice of and aware of the ’714

Patent since at least October 2005 and has nevertheless continued to infringe, despite an

objectively high likelihood that its actions constitute infringement of the ’714 patent.

Accordingly, TiVo’s infringement has been and continues to be willful.

       34.     As a result of TiVo’s infringement of the ’714 Patent, General Instrument is

suffering irreparable harm for which it has no adequate remedy at law. Unless enjoined by this

Court, this infringement will continue and will result in further irreparable harm to General

Instrument.

       35.     General Instrument is entitled to recover damages from TiVo not less than a

reasonable royalty adequate to compensate for the infringement.

                                SECOND CAUSE OF ACTION

                            (TiVo’s Infringement of the ’948 Patent)

       36.     Plaintiffs incorporate by reference the allegations in the preceding paragraphs.

       37.     General Instrument is the sole holder of the entire right, title and interest in the

’948 Patent.

       38.     TiVo has infringed and continues to infringe, directly and indirectly by

contributing to and inducing the infringement of others, one or more claims of the ’948 Patent by

making, using, importing, selling, and/or offering to sell DVR devices, DVR software, DVR

accessories and related services that are covered by the claims of the ’948 Patent.

       39.     On information and belief, TiVo has been on notice of and aware of the ’948

Patent since at least October 2005.

       40.     On information and belief, TiVo has actively induced, and continues to actively

induce, the infringement of one or more claims of the ’948 patent by, among other things,




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instructing its customers to operate the accused products in a manner that infringes the claims of

the ’948 patent. TiVo intends that its customers will use its DVR devices, DVR software and

DVR accessories in a manner that infringes the ’948 patent.

       41.     On information and belief, TiVo has contributorily infringed and continues to

contributorily infringe the ’948 patent by offering to sell and/or selling within the United States

and/or importing into the United States one or more components of a machine, manufacture, or

combination covered by the ’948 patent that constitute a material part of the invention, which is

not a staple article or commodity of commerce suitable for substantial noninfringing use. On

information and belief, TiVo knows that the component and/or apparatus is especially made or

especially adapted for use in infringing the ’948 patent.

       42.     On information and belief, TiVo has been on notice of and aware of the ’948

Patent since at least October 2005 and has nevertheless continued to infringe, despite an

objectively high likelihood that its actions constitute infringement of the ’948 patent.

Accordingly, TiVo’s infringement has been and continues to be willful.

       43.     As a result of infringement of the ’948 Patent, General Instrument is suffering

irreparable harm for which General Instrument has no adequate remedy at law. Unless enjoined

by this Court, this infringement will continue and will result in further irreparable harm to

General Instrument.

       44.     General Instrument is entitled to recover damages from TiVo not less than a

reasonable royalty adequate to compensate for the infringement.

                                 THIRD CAUSE OF ACTION

                            (TiVo’s Infringement of the ’708 Patent)

       45.     Plaintiffs incorporate by reference the allegations in the preceding paragraphs.




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          46.   General Instrument is the sole holder of the entire right, title and interest in the

’708 Patent.

          47.   TiVo has infringed and continues to infringe, directly and indirectly by

contributing to and inducing the infringement of others, one or more claims of the ’708 Patent by

making, using, importing, selling, and/or offering to sell DVR devices, DVR software, DVR

accessories and related services that are covered by the claims of the ’708 Patent.

          48.   On information and belief, TiVo has been on notice of and aware of the ’708

Patent.

          49.   On information and belief, TiVo has actively induced, and continues to actively

induce, the infringement of one or more claims of the ’708 patent by, among other things,

instructing its customers to operate the accused products in a manner that infringes the claims of

the ’708 patent. TiVo intends that its customers will use its DVR devices, DVR software and

DVR accessories in a manner that infringes the ’708 patent.

          50.   On information and belief, TiVo has contributorily infringed and continues to

contributorily infringe the ’708 patent by offering to sell and/or selling within the United States

and/or importing into the United States one or more components of a machine, manufacture, or

combination covered by the ’708 patent that constitute a material part of the invention, which is

not a staple article or commodity of commerce suitable for substantial noninfringing use. On

information and belief, TiVo knows that the component and/or apparatus is especially made or

especially adapted for use in infringing the ’708 patent.

          51.   On information and belief, TiVo has been on notice of and aware of the ’708

Patent and has nevertheless continued to infringe, despite an objectively high likelihood that its




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actions constitute infringement of the ’708 patent. Accordingly, TiVo’s infringement has been

and continues to be willful.

       52.     As a result of infringement of the ’708 Patent, General Instrument is suffering

irreparable harm for which General Instrument has no adequate remedy at law. Unless enjoined

by this Court, this infringement will continue and will result in further irreparable harm to

General Instrument.

       53.     General Instrument is entitled to recover damages from TiVo not less than a

reasonable royalty adequate to compensate for the infringement.

                                FOURTH CAUSE OF ACTION

                                  (Invalidity of the ’389 Patent)

       54.     Plaintiffs incorporate by reference the allegations in the preceding paragraphs.

       55.     Claims 31 and 61 of the ’389 Patent are invalid for failure to meet the

requirements of patentability under 35 U.S.C. §§ 102, 103 and/or 112.

       56.     As a result of the acts described in the foregoing paragraphs, there exists a

substantial and actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202, between

Plaintiffs and TiVo of sufficient immediacy and reality to warrant the issuance of a declaratory

judgment.

       57.     A judicial declaration is necessary and appropriate so that Plaintiffs may ascertain

their rights regarding claims 31 and 61 of the ’389 Patent.

                                  FIFTH CAUSE OF ACTION

                                  (Invalidity of the ’465 Patent)

       58.     Plaintiffs incorporate by reference the allegations in the preceding paragraphs.




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       59.     The claims of the ’465 Patent are invalid for failure to meet the requirements of

patentability under 35 U.S.C. §§ 102, 103 and/or 112.

       60.     As a result of the acts described in the foregoing paragraphs, there exists a

substantial and actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202, between

Plaintiffs and TiVo of sufficient immediacy and reality to warrant the issuance of a declaratory

judgment.

       61.     A judicial declaration is necessary and appropriate so that Plaintiffs may ascertain

their rights regarding the ’465 Patent.

                                  SIXTH CAUSE OF ACTION

                              (Noninfringement of the ’389 Patent)

       62.     Plaintiffs incorporate by reference the allegations in the preceding paragraphs.

       63.     The QIP set-top boxes do not infringe directly, indirectly, or otherwise, either

literally or equivalently, claim 31 or 61 of the ’389 Patent.

       64.     As a result of the acts described in the foregoing paragraphs, there exists a

substantial and actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202, between

Plaintiffs and TiVo of sufficient immediacy and reality to warrant the issuance of a declaratory

judgment.

       65.     A judicial declaration is necessary and appropriate so that Plaintiffs may ascertain

their rights regarding claims 31 and 61 of the ’389 Patent.

                                SEVENTH CAUSE OF ACTION

                              (Noninfringement of the ’465 Patent)

       66.     Plaintiffs incorporate by reference the allegations in the preceding paragraphs.




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       67.      The QIP set-top boxes do not infringe, directly, indirectly, or otherwise, either

literally or equivalently, any valid claim of the ’465 Patent.

       68.      As a result of the acts described in the foregoing paragraphs, there exists a

substantial and actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202, between

Plaintiffs and TiVo of sufficient immediacy and reality to warrant the issuance of a declaratory

judgment.

       69.      A judicial declaration is necessary and appropriate so that Plaintiffs may ascertain

their rights regarding the ’465 Patent.

                                 DEMAND FOR JURY TRIAL

       Plaintiffs demand trial by jury of all issues triable of right by a jury.

                                     PRAYER FOR RELIEF

       WHEREFORE, Plaintiffs ask this Court to enter judgment in its favor against TiVo and

grant the following relief:

       A.       Judgment that the ’714, ’948 and ’708 Patents are each valid, enforceable, and

infringed by TiVo;

       B.       A preliminary and permanent injunction enjoining TiVo, its officers, agents,

servants, employees, subsidiaries and affiliated companies, and those persons acting in active

concert or participation therewith, from engaging in the aforesaid unlawful acts of patent

infringement;

       C.       An award of damages arising out of each of TiVo’s acts of patent infringement,

together with pre-judgment and post-judgment interest;

       D.       Judgment that the damages be trebled in accordance with 35 U.S.C. § 284;

       E.       Judgment declaring that claims 31 and 61 of the ’389 Patent are invalid under 35




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U.S.C. §§ 102, 103 and/or 112;

        F.      Judgment declaring that each of the claims of the ’465 Patent are invalid under 35

U.S.C. §§ 102, 103 and/or 112;

        G.      Judgment declaring that neither claim 31 nor claim 61 of the ’389 Patent has been

infringed by Plaintiffs, directly or indirectly, literally or equivalently, by the making, using,

selling, offering to sell, and/or importing of QIP set-top boxes;

        H.      Judgment declaring that no valid claim of the ’465 Patent has been infringed by

Plaintiffs, directly or indirectly, literally or equivalently, by the making, using, selling, offering

to sell, and/or importing of QIP set-top boxes;

        I.      Declaring this case exceptional and awarding Plaintiffs their attorneys’ fees and

costs incurred in this action, pursuant to 35 U.S.C. § 285; and

        J.      Granting Plaintiffs such other, further and different relief as the Court may deem

just and proper.

Dated: February 25, 2011                     By: /s/ Brian Erickson
                                               John Allcock (pro hac vice app. pending)
                                               john.allcock@dlapiper.com
                                               Sean Cunningham (pro hac vice app. pending)
                                               sean.cunningham@dlapiper.com
                                               Erin Gibson (pro hac vice app. pending)
                                               erin.gibson@dlapiper.com
                                               DLA Piper LLP (US)
                                               401 B Street, Suite 1700
                                               San Diego, CA 92101
                                               Telephone: 619-699-2700
                                               Facsimile: 619-699-2701

                                                Wayne Harding
                                                Texas Bar No. 08978500
                                                wayne.harding@dlapiper.com
                                                Brian Erickson
                                                Texas Bar No. 24012594
                                                brian.erickson@dlapiper.com
                                                John Guaragna



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                             Texas Bar No. 24043308
                             john.guaragna@dlapiper.com
                             DLA Piper LLP (US)
                             401 Congress Avenue, Suite 2500
                             Austin, TX 78701-3799
                             Telephone: 512-457-7000
                             Facsimile: 512-457-7001

                             Attorneys for Plaintiffs
                             MOTOROLA MOBILITY, INC. and
                             GENERAL INSTRUMENT CORPORATION




                               17
 2JS 44 (Rev. 12/07)
                             Case 5:11-cv-00053-DF -CMC Document 1-1                          Filed 02/25/11 Page 1 of 2
                                                                              CIVIL COVER SHEET
 The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as provided
 by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the purpose of initiating
 the civil docket sheet. (SEE INSTRUCTIONS ON THE REVERSE OF THE FORM.)

 I. (a) PLAINTIFFS                                                                                              DEFENDANTS
MOTOROLA MOBILITY, INC. and                                                                                      TIVO INC.
GENERAL INSTRUMENT CORPORATION

      (b) County of Residence of First Listed Plaintiff               Lake County, IL                           County of Residence of First Listed Defendant
                                (EXCEPT IN U.S. PLAINTIFF CASES)                                                                                (IN U.S. PLAINTIFF CASES ONLY)
                                                                                                                        NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE
                                                                                                                               LAND INVOLVED.

      (c) Attorney’s (Firm Name, Address, and Telephone Number)                                                  Attorneys (If Known)
Brian K. Erickson, DLA Piper LLP (US), 401 Congress, Suite 2500, Austin,
Texas 78701; (512) 457-7000

 II. BASIS OF JURISDICTION                             (Place an “X” in One Box Only)               III. CITIZENSHIP OF PRINCIPAL PARTIES(Place an “X” in One Box for Plaintiff
                                                                                                             (For Diversity Cases Only)                                         and One Box for Defendant)
 u 1     U.S. Government                  u 3 Federal Question                                                                        PTF         DEF                                          PTF      DEF
           Plaintiff                            (U.S. Government Not a Party)                           Citizen of This State         u 1         u 1      Incorporated or Principal Place      u 4     u 4
                                                                                                                                                           of Business In This State

 u 2     U.S. Government                  u 4 Diversity                                                 Citizen of Another State          u 2     u    2   Incorporated and Principal Place     u 5      u 5
           Defendant                                                                                                                                          of Business In Another State
                                                   (Indicate Citizenship of Parties in Item III)
                                                                                                        Citizen or Subject of a           u 3     u    3   Foreign Nation                       u 6      u 6
                                                                                                          Foreign Country
 IV. NATURE OF SUIT                       (Place an “X” in One Box Only)
           CONTRACT                                              TORTS                                    FORFEITURE/PENALTY                          BANKRUPTCY                     OTHER STATUTES
 u   110 Insurance                        PERSONAL INJURY                  PERSONAL INJURY              u 610 Agriculture                   u 422 Appeal 28 USC 158           u   400 State Reapportionment
 u   120 Marine                       u    310 Airplane                 u 362 Personal Injury -         u 620 Other Food & Drug             u 423 Withdrawal                  u   410 Antitrust
 u   130 Miller Act                   u    315 Airplane Product               Med. Malpractice          u 625 Drug Related Seizure                28 USC 157                  u   430 Banks and Banking
 u   140 Negotiable Instrument                 Liability                u 365 Personal Injury -               of Property 21 USC 881                                          u   450 Commerce
 u   150 Recovery of Overpayment      u    320 Assault, Libel &               Product Liability         u 630 Liquor Laws                     PROPERTY RIGHTS                 u   460 Deportation
        & Enforcement of Judgment              Slander                  u 368 Asbestos Personal         u 640 R.R. & Truck                  u 820 Copyrights                  u   470 Racketeer Influenced and
 u   151 Medicare Act                 u    330 Federal Employers’             Injury Product            u 650 Airline Regs.                 u 830 Patent                              Corrupt Organizations
 u   152 Recovery of Defaulted                 Liability                      Liability                 u 660 Occupational                  u 840 Trademark                   u   480 Consumer Credit
         Student Loans                u    340 Marine                    PERSONAL PROPERTY                    Safety/Health                                                   u   490 Cable/Sat TV
         (Excl. Veterans)             u    345 Marine Product           u 370 Other Fraud               u 690 Other                                                           u   810 Selective Service
 u   153 Recovery of Overpayment               Liability                u 371 Truth in Lending                      LABOR                     SOCIAL SECURITY                 u   850 Securities/Commodities/
         of Veteran’s Benefits        u    350 Motor Vehicle            u 380 Other Personal            u 710 Fair Labor Standards          u 861 HIA (1395ff)                        Exchange
 u   160 Stockholders’ Suits          u    355 Motor Vehicle                  Property Damage                 Act                           u 862 Black Lung (923)            u   875 Customer Challenge
 u   190 Other Contract                        Product Liability        u 385 Property Damage           u 720 Labor/Mgmt. Relations         u 863 DIWC/DIWW (405(g))                  12 USC 3410
 u   195 Contract Product Liability   u    360 Other Personal                 Product Liability         u 730 Labor/Mgmt.Reporting          u 864 SSID Title XVI              u   890 Other Statutory Actions
 u   196 Franchise                             Injury                                                        & Disclosure Act               u 865 RSI (405(g))                u   891 Agricultural Acts
        REAL PROPERTY                       CIVIL RIGHTS                 PRISONER PETITIONS             u 740 Railway Labor Act               FEDERAL TAX SUITS               u   892 Economic Stabilization Act
 u   210 Land Condemnation            u    441 Voting                   u 510 Motions to Vacate         u 790 Other Labor Litigation        u 870 Taxes (U.S. Plaintiff       u   893 Environmental Matters
 u   220 Foreclosure                  u    442 Employment                     Sentence                  u 791 Empl. Ret. Inc.                      or Defendant)              u   894 Energy Allocation Act
 u   230 Rent Lease & Ejectment       u    443 Housing/                    Habeas Corpus:                     Security Act                  u 871 IRS—Third Party             u   895 Freedom of Information
 u   240 Torts to Land                        Accommodations            u 530 General                                                             26 USC 7609                         Act
 u   245 Tort Product Liability       u    444 Welfare                  u 535 Death Penalty                   IMMIGRATION                                                     u   900Appeal of Fee Determination
 u   290 All Other Real Property      u    445 Amer. w/Disabilities -   u 540 Mandamus & Other          u 462 Naturalization Application                                              Under Equal Access
                                              Employment                u 550 Civil Rights              u 463 Habeas Corpus -                                                         to Justice
                                      u    446 Amer. w/Disabilities -   u 555 Prison Condition               Alien Detainee                                                   u   950 Constitutionality of
                                              Other                                                     u 465 Other Immigration                                                       State Statutes
                                      u    440 Other Civil Rights                                            Actions




 V. ORIGIN                  (Place an “X” in One Box Only)                                                                                                                                    Appeal to District
 u 1 Original            u 2 Removed from                    u 3 Remanded from                     u 4 Reinstated or u 5 Transferred from u 6 Multidistrict
                                                                                                                         another district                                           u 7 Judge from
                                                                                                                                                                                        Magistrate
     Proceeding                 State Court                             Appellate Court                Reopened                               Litigation
                                                                                                                         (specify)                                                            Judgment
                                             Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
                                              35 U.S.C. Sec. 1 and 28 U.S.C. Secs. 2201 and 2202
 VI. CAUSE OF ACTION Brief description of cause:
                                              Complaint for Patent Infringement and Declaratory Judgment
 VII. REQUESTED IN     u CHECK IF THIS IS A CLASS ACTION       DEMAND $                                                                                 CHECK YES only if demanded in complaint:
      COMPLAINT:          UNDER F.R.C.P. 23                                                                                                             JURY DEMAND:         ✔ Yes
                                                                                                                                                                             u         u No
 VIII. RELATED CASE(S)
                        (See instructions):
       IF ANY                               JUDGE See attached                                                                                  DOCKET NUMBER

 DATE                                                                       SIGNATURE OF ATTORNEY OF RECORD
   02/25/2011                                                             /s/ Brian K. Erickson
 FOR OFFICE USE ONLY

     RECEIPT #                   AMOUNT                                        APPLYING IFP                                       JUDGE                           MAG. JUDGE
     Case 5:11-cv-00053-DF -CMC Document 1-1             Filed 02/25/11 Page 2 of 2



Related Cases:

TiVo v. Verizon Communications, Inc., et al, Case No. 2:09-cv-257- DF; Judge David Folsom

TiVo v. AT&T Inc., Case No. 2:09-cv-00259-DF; Judge David Folsom

Dish Network Corp., et al v. TiVo, Case No. 2:09-cv-00171; Judge David Folsom

TiVo v. EchoStar Communications, et al, Case No. 2:04-cv-00001; Judge David Folsom

EchoStar Communications v. TiVo Inc., et al, Case No. 5:05-cv-00081; Judge David Folsom

				
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