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Apple has filed a complaint for Declaratory Judgement of Non-Infringement in California regarding an eye-tracking patent

1 cover Apple files complaint for Declaratory Judgement


Last week Apple filed a complaint for Declaratory Judgement against Chian Chiu Li, an individual residing in Fremont California who is set to file a patent infringement case against Apple using patent 11,016,564 titled "System and method for providing information." The patent relates to eye-tracking technologies. Apple filed a complaint for 'Declaratory Judgement of Non-Infringement of U.S. Patent 11,016,564 in the Northern District of California in an effort to stop the patent infringement case from proceeding.  


Nature of the Action


According to official court filing, Apple notes in-part that "This is an action for a declaratory judgment of non-infringement arising under the patent laws of the United States, Title 35 of the United States Code.


Apple has pioneered the design and manufacture of industry-defining consumer electronics for more than four decades. Apple’s commitment to innovation has led to some of the most popular products on the market during that span, including, for example, the Macintosh PC, iPod, MacBook, iPhone, iPad, Apple Watch, and AirPods. As a result of Apple’s dedication to innovation, the U.S. Patent and Trademark Office has awarded Apple thousands of patents protecting the technologies underlying its groundbreaking inventions.


On information and belief, Defendant is the sole owner of U.S. Patent No. 11,016,564 (“the ‘564 patent” or “Asserted Patent”). Defendant’s prior actions and statements have created a substantial controversy of sufficient immediacy and reality to warrant the issuance of a declaratory judgment of non-infringement as to whether Apple products infringe the Asserted Patent.


On April 5, 2022, Defendant filed a complaint for patent infringement against Apple in the Northern District of California. See Chian Chiu Li v. Apple Inc., Case No. 4:22-cv-2159 (Dkt.1) (hereinafter “Original Complaint”) (attached hereto as Exhibit A).


In the Original Complaint, Defendant alleged that Apple products, such as several versions of iPhone and iPad Pro, infringe the ‘564 patent. 


Specifically, Defendant alleged that Apple “directly infringes and continues to directly infringe at least claims 1, 4, 5, 8, 11, 12, 14, 18, and 20 of the ‘564 Patent . . . by, among other things, making, using, selling, offering to sell, and/or importing . . . infringing products include[ing] at least the following devices: (i) iPhone 13 Pro Max, iPhone 13 Pro, iPhone 13 mini, iPhone 13, iPhone 12 Pro Max, iPhone 12 Pro, iPhone 12 mini, iPhone 12, iPhone 11 Pro Max, iPhone 11 Pro, iPhone 11, iPhone XS Max, iPhone XS, iPhone XR, and iPhone X, and (ii) iPad Pro 12.9-inch (4th generation), iPad Pro 12.9-inch (3rd generation), iPad Pro 11-inch (2nd generation), and iPad Pro 11-inch (collectively, the ‘Accused Devices’). ” 


Defendant further alleged the “Unlock with Face ID” feature on the Accused Devices infringed each limitation of claim 1 of the Asserted Patent, as well as every limitation of claims 8 and 14. 


Defendant further alleged in the Original Complaint that Apple was “made aware of the ‘564 Patent on June 9, 2021 when [Mr. Li] sent Mr. Asa Wynn-Grant, Legal Counsel, IP Transactions at Apple and email and a claim chart showing Apple’s infringement of claims 1, 8, and 14 of the ‘564 Patent,” and therefore “Apple was given notice of its infringement of the ‘564 Patent at least as early as June 9, 2021.”


Indeed, as mentioned above, the parties’ history extends back beyond Defendant’s actual lawsuit. Defendant and Apple’s respective representatives exchanged correspondence over the course of several months prior to Defendant filing the Original Complaint. Apple maintained throughout the course of the parties’ communications that it did not infringe the ‘564 patent and explained why a license was unnecessary.


Both before filing the Original Complaint and in the Original Complaint, Defendant has maintained that Apple is not licensed and allegedly infringes the ‘564 patent.


Without prior notice to Apple, on May 17, 2022, Defendant voluntarily dismissed the Original Complaint without prejudice to refiling. Defendant provided no explanation or justification for his decision to voluntarily dismiss the Original Complaint without prejudice to refile here or in another district, and provided Apple no assurances that Apple was safe from a future suit involving the Asserted Patent and substantially identical infringement allegations.


Apple has a reasonable apprehension that Defendant will refile suit and assert that the Accused Devices infringe the ‘564 patent. Both the pre-suit communications between Apple and Defendant and Defendant’s dismissal of the Original Complaint without prior notice and without prejudice, demonstrates that it is highly likely that Defendant will again assert infringement of the ‘564 patent against Apple. In the meantime, the cloud of Defendant’s allegations and litigation hangs over Apple." [Emphasis here set by Patently Apple]


Apple is asking the court to declare that judgement be entered in favor of Apple against Defendant; Declare that Apple has not and does not infringe, either directly, contributorily, by inducement, or willfully, any claim of the ‘564 patent by making, using, selling, offering to sell, and/or importing the Accused Devices; Finding this to be an exceptional case under 35 U.S.C. § 285, and awarding Apple its reasonable attorney’s fees, and more.


10.0F2 - Patently Legal


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