Case 9:10-cv-81410-KLR Document 60 Entered on FLSD Docket 04/29/2011 Page 1 of 9
UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF FLORIDA
PERSONAL VOICE FREEDOM, LLC
Plaintiff, Civil Action NO.: 9:10-CV-81410-KLR v.
YMAX CORPORATION, YMAX COMMUNICATIONS CORP., MAGICJACK LP, JURY DEMANDED TIGER JET NETWORK, INC., and VOCALTEC COMMUNICATIONS, LTD. Defendants.
THIRD AMENDED COMPLAINT FOR PATENT INFRINGEMENT
This is an action for patent infringement in which Plaintiff Personal Voice Freedom, LLC
(“PVF”) sues Defendants, YMax Corporation, YMax Communications Corp., MagicJack LP,
TigerJet Network, Inc. and VocalTec Communications, Ltd. (collectively, “Defendants”) and
alleges as follows:
THE PARTIES
1. Plaintiff Personal Voice Freedom, LLC is a Delaware limited liability company,
having an address at 2711 Centerville Rd., Ste 120, Wilmington, DE 19808.
2. On information and belief, Defendant YMax Corporation is a corporation
organized and existing under the laws of Delaware, having its principal place of business at 5700
Georgia Avenue, West Palm Beach, Florida 33405.
3. On information and belief, Defendant YMax Communications Corp. is a
corporation organized and existing under the laws of Delaware, having its principal place of
business at 5700 Georgia Avenue, West Palm Beach, Florida 33405. Case 9:10-cv-81410-KLR Document 60 Entered on FLSD Docket 04/29/2011 Page 2 of 9
4. On information and belief, Defendant MagicJack LP is a limited partnership
organized and existing under the laws of Delaware, having its principal place of business at 5700
Georgia Avenue, West Palm Beach, Florida 33405.
5. On information and belief, Defendant Tiger Jet Network, Inc. is a corporation
organized and existing under the laws of California, having its principal place of business at 1270
Oakmead Parkway, Suite 212, Sunnyvale, California 94085.
6. On information and belief, Defendant. VocalTec Communications, Ltd. is a
corporation organized and existing under the laws of Israel having its principal U.S. place of
business at 5700 Georgia Ave. West Palm Beach, Florida 33405.
7. On information and belief, YMax Communications Corp. and Tiger Jet Network,
Inc. are wholly owned subsidiaries of YMax Corporation. YMax Corporation is a limited partner
of MagicJack LP.
8. On information and belief, YMax Corporation and VocalTec Communications,
Ltd. have merged and YMax Corporation is now a wholly-owned subsidiary of VocalTec
Communications, Ltd.
JURISDICTION
9. This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and
1338(a) because this action arises under the patent laws of the United States, Title 35, United
States Code, including 35 U.S.C. § 271 et seq. The Court has personal jurisdiction over each of
the Defendants consistent with the Florida Long Arm Statute, Fla. Stat. § 48.193, and due
process. Each Defendant has transacted business in this District and/or, on information and
belief, has committed tortious acts within Florida and this District via acts of infringement or
induced or contributed others to commit acts of infringement in this District. On information and
belief, each Defendant also has operated, conducted, engaged in, or carried on a business or
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business venture in Florida and this District or has an office or agency in Florida and this
District. On information and belief, each Defendant also has engaged in substantial and not
isolated activity in Florida and this District, including regularly doing or soliciting business,
engaging in other persistent courses of conduct, and/or deriving substantial revenue from goods
and services provided to individuals in Florida and this District. Each Defendant also has a
registered agent in Florida for the purposes of, inter alia, accepting service of process and thus
each lacks any objection to this Court‟s exercise of personal jurisdiction. The exercise of
jurisdiction over each of the Defendants thus would not offend traditional notions of fair play
and substantial justice and each Defendant has established minimum contacts with this forum.
VENUE
10. Venue is proper in this district pursuant to 28 U.S.C. §§ 1331, 1338(a), 1391(b),
(c) and (d) and 1400(b).
INFRINGEMENT OF U.S. PATENT NO. 7,336,654 B2
11. On February 26, 2008, United States Patent No. 7,336,654 (“the „654 patent”)
was duly and legally issued to inventors Robb Barkley, Mark Baker, and Douglas F. Bender for
Portable VOIP Service Access Module. A true and correct copy of the „654 patent is attached
hereto as Exhibit A. PVF is the owner of the „654 patent and owns all rights in the „654 patent,
including the right to sue for infringement of the „654 patent, and collect damages, including past
damages, for infringement of the „654 patent.
12. On information and belief, each of the Defendants has directly infringed and
continues to directly infringe the „654 patent. The infringing acts of each of the Defendants
include making, using, offering to sell, and/or selling the magicJack USB device (including the
magicJack devices identified in Defendants‟ response to Interrogatory 1 of Plaintiff‟s First Set of
Interrogatories to all Defendants) and magicJack related VoIP services. Further, each of the
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Defendants have directly infringed and continues to directly infringe the „654 patent, on
information and belief, by making and using the magicJack Plus device in connection with its
impending release. magicJack Plus can “work[] like the original magicJack, by simply plugging
the device into a PC through the USB plug” according to a Defendant press release. On
information and belief, Defendants have at least made and used the magicJack plus device in
connection with internal development and testing prior to its commercial release. On
information and belief, magicJack Plus was demonstrated (and therefore made and used) by
Defendants at the Consumer Electronics Show in Las Vegas, Nevada in January 2011. Each of
the Defendants is individually liable to Plaintiff for infringement of the „654 patent pursuant to
35 U.S.C. § 271(a).
13. On information and belief, each of Defendants has induced and is now actively
inducing infringement of the „654 patent by knowingly, and with specific intent to encourage the
infringement, inducing at least end users of the magicJack USB device (including the magicJack
devices identified in Defendants‟ response to Interrogatory 1 of Plaintiff‟s First Set of
Interrogatories) and magicJack related VoIP services to make or use the magicJack USB device
(including the magicJack devices identified in Defendants‟ response to Interrogatory 1 of
Plaintiff‟s First Set of Interrogatories) and magicJack related VoIP services that Defendants
know or should know infringe one or more claims of the „654 patent. Defendants are thus liable
for inducing infringement of the „654 patent pursuant to 35 U.S.C. § 271(b). On information and
belief, Defendants have been on specific notice infringement of the „654 patent since the
issuance of the patent at least by virtue of the subject matter raised at meetings between Dan
Borislow and Paul Arena in late September to early October 2007 (shortly after the „654 patent
had been allowed) and subsequent communications between the then owner of the „654 patent
and Defendants (such allegations are further detailed in paragraphs 16-23 below and are hereby
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incorporated by reference as if fully set forth herein). On information and belief, Defendants
have acted with deliberate indifference of a known risk that an infringement was occurring
and/or have engaged in purposeful, culpable expressions and conduct to encourage infringement
by end users of the magicJack USB device (including the magicJack devices identified in
Defendants‟ response to Interrogatory 1 of Plaintiff‟s First Set of Interrogatories) and magicJack
related VoIP services.
14. On information and belief, each of the Defendants has contributed and is now
contributing to infringement of the „654 patent by offering to sell and selling within the United
States or importing into the United States the magicJack USB device (including the magicJack
devices identified in Defendants‟ response to Interrogatory 1 of Plaintiff‟s First Set of
Interrogatories) and magicJack related VoIP services knowing the same to be especially made or
especially adapted for use in infringing the „654 patent, and not a staple article or commodity
commerce suitable for substantial non-infringing uses (based at least on the April 22, 2011
testimony of Mary Kennon on behalf of Defendants at 123:9-24 (rough transcript)). Defendants
are thus liable for contributory infringement of the „654 patent pursuant to 35 U.S.C. § 271(c).
On information and belief, Defendants have been on specific notice infringement of the „654
patent since the issuance of the patent at least by virtue of the subject matter raised at meetings
between Dan Borislow and Paul Arena in late September to early October 2007 (shortly after the
„654 patent had been allowed) and subsequent communications between the then owner of the
„654 patent and Defendants (such allegations are further detailed in paragraphs 16-23 below and
are hereby incorporated by reference as if fully set forth herein).
15. Each of the Defendants‟ acts of infringement has caused damage to Plaintiff, and
Plaintiff is entitled to recover from Defendants the damages sustained by Plaintiff as a result of
the Defendants‟ wrongful acts in an amount subject to proof at trial.
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16. Upon information and belief, Defendants‟ infringement of the „654 patent is and
has been willful and deliberate, entitling Plaintiff to increased damages under 35 U.S.C. § 284
and to attorneys‟ fees and costs incurred in prosecuting this action under 35 U.S.C. § 285.
Defendants have acted despite an objectively high likelihood that their actions constituted
infringement of a valid patent. Defendants either knew or should have known of this objective
risk. At least the following facts support Plaintiff‟s claim of willful infringement.
17. The „654 patent was allowed on September 25, 2007.
18. On or about September 29, 2007 Dan Borislow contacted Paul Arena and, after
exchanging some background information, Mr. Borislow offered to come to Atlanta to meet with
Mr. Arena.
19. On September 30, 2007, Mr. Borislow confirmed he would arrive at 9 am the
morning of October 1, 2007.
20. On October 1, 2007 Mr. Borislow arrived at the i2 Telecom International, Inc.
offices in Roswell, Georgia at approximately 11 am. Mr. Arena and Mr. Borislow spoke at the
office for approximately and hour and a half and then went to lunch. During these meetings, the
„654 patent was discussed as was Mr. Borislow‟s alleged proposal to design-around the „654
patent, thus demonstrating that Mr. Borislow and Defendants were aware of an objectively high
risk that their contemplated design for the magicJack USB device and magicJack related VoIP
services would infringe the „654 patent when it issued. At that same lunch, Mr. Borislow and
Mr. Arena shook hands on a deal that contemplated an acquisition by YMAX Corporation or a
related entity of i2 Telecom International, Inc. This deal was never consummated.
21. On information and belief, Defendants never implemented Mr. Borislow‟s alleged
proposed design-around.
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22. On or around October 15, 2007, representatives of the then owner of the „654
patent discussed Defendants‟ need for a license to the „654 patent with Michael Goldstone, who
was acting on behalf of Defendants. On or around October 22, 2007, representatives of the then
owner of the „654 patent sent Mr. Goldstone a letter reflecting these discussions and proposing
two licensing options for Defendants to obtain a license to the „654 patent. Shortly thereafter,
Defendants rejected this proposal. Defendants expression of a desire to license the „654 patent
demonstrates that they were aware of an objectively high risk that their contemplated design for
the magicJack USB device and magicJack related VoIP services would infringe the „654 patent
when it issued.
23. In June 2009, Charles Eldering, acting on behalf of the then owner of the „654
patent, and Mr. Borislow had further conversations regarding the „654 patent and Defendants‟
need for a license to the patent. Defendants refused to take a license to the „654 patent even
though they had been aware of an objectively high risk that their magicJack USB device and
magicJack related VoIP services infringed the „654 patent for over a year and half.
JURY DEMAND
24. Plaintiff hereby demands a jury trial on all issues and claims so triable.
PRAYER FOR RELIEF WHEREFORE, Plaintiff prays for judgment and seek the following relief:
(a) For judgment that the „654 patent has been and/or continues to be infringed by each of the Defendants;
(b) For an accounting of all damages sustained by Plaintiff as the result of each of the Defendants‟ acts of infringement;
(d) For actual damages together with prejudgment interest, according to proof;
(e) For enhanced damages pursuant to 35 U.S.C. § 284;
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(f) For an award of attorneys‟ fees pursuant to 35 U.S.C. § 285 or as otherwise permitted by law;
(g) For all costs of suit; and
(h) For such other and further relief as the Court may deem just and proper.
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Dated: April 29, 20111 Respectfully submitted,
Danny L. Williams Lead Trial Counsel (Texas State Bar No. 21518050) J. Mike Amerson (Texas State Bar No. 01150025) Matthew R. Rodgers (Texas State Bar No. 24041802) WILLIAMS, MORGAN & AMERSON, P.C. 10333 Richmond Avenue, #1100 Houston, Texas 77042 Telephone:(713) 934-7000 Facsimile: (713) 934-7011 E-Mail: [email protected] E-Mail: [email protected] E-Mail: [email protected] Pro hac vice motions to be filed
-and-
By: /s/ Edward M. Mullins ___ Edward M. Mullins (Florida Bar No. 863920) Douglas J. Giuliano (Florida Bar No. 15282) ASTIGARRRAGA DAVIS MULLINS & GROSSMAN, P.A. 701 Brickell Avenue, 16th Floor Miami, Florida 33131 Telephone:(305) 372-8282 Facsimile: (305) 372-8202 E-Mail: [email protected] E-Mail: [email protected]
ATTORNEYS FOR PLAINTIFF
CERTIFICATE OF SERVICE
I hereby certify that a true and correct copy of the foregoing document was served on all counsel of record via Notice of Filing by CM-ECF this 29th day of April, 2011.
By: /s/ Douglas J. Giuliano Douglas J. Giuliano
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