UN I TED STATES DI STRICT COURT

NORTHERN DISTRICT OF FLORIDA

GLOBAL COMMUNICATIONS , INC .,
Pl a int iff. CASE NO .
v .
DIRECTV, Inc ., and
THE DIRECT'! GROUP , I nc .,
Defendants .
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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
(JURY TRIAL REQUESTED)
Plaintiff GLOBAL COMMUNICATIONS , INC . ( "GLOBAL COM" ) s ues
Defendants , DIRECTV, Inc . ( " DIRECTV" ) and the DIRECTV GROUP ,
Inc ., for br each of contrac t and infringement of certain patents
held by GLOBAL COM, and alleges:
THE PARTIES, JURISDICTION AND VENUE
1. GLOBAL COM is a Florida corporation ha ving its
principal pl ace of busines s in Tallahassee, Florida , and it is
the holder of certain patents as described in thi s Compl ai nt .
2 . Defendant DIRECTV, Inc . 15 a corporation having its
main place of business outside the State of Florida .
under a prior agreement b etvleen the Parties , jurisdiction and
venue for this claim is proper in thi s Court .
3 . Defendant DIRECTV GROUP , INC. is a corporation havi ng
its main place of business outside of the State of Florida .
HO\',1 ever, under a prior agreement betlo,een the Parties ,
jurisdict i on and venue fo r this claim is proper in this Co urt .
4 . Jurisdiction in this Court is proper for the following
reasons , among others : (1 ) tI,e s ui t involves cit izens of
different states and the amount in controversy excee ds $75 , 000
(28 U. S .C. 1332 ) and (2) the suit arises under the federal
patent laws (28 U. S . C. 1338(a) Venue in this Court is p r o p ~ r
because , among other reas ons , the events giving rise to this
caus e of action occurred i n the Northern Distri ct of Flor ida.
Furthermore , according to a prior agreement existi ng between the
parties , both j ur isd iction and venue are proper in th is court .
5. All condit ions precedent to bringing this suit have
been performed or have been waived .
GENERAL ALLEGATIONS
6 . GLOBAL COM wa s formed i n the 1980 ' s to develop
t e chnology and ha rdware relating to the home satellite
television market.
7 . GLOBAL COM has consistently sought to develop , pa t ent ,
and market new technology .
8 . The home satellite televi sion market began as
unautho rized intercepti on o f satellite b roadcasts i ntended for
network a ffiliates . In the late 1980 's the signals w ~ r e
scrambled, and a system Ivhere by s ubscriber s I"ould pa y for the
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use o f set- top descramblers was created . However , the subscriber
service was a "by product" of a technology that wa s not designed
for home use .
9 . In t he ea rly 1990 ' s s e vera l companie s sough t to
de velop a satel lite television s ys t em that was specifically
designed for home use . The first operational system was launched
by SkyPix in 1992 , to limi ted success .
10 . Around the same time period Hughes Communicat i ons ,
Inc . an established satellite c ommun i cations pr ovider
decided to enter the home sa telli t e t el e vi s ion market . Hughes
called its system " DirecTV." By 1994, Hughes had l.aunched t,./o
high-pov,ered Ku - band satellites designed specifically for its
DirecTV system.
11. The DirecTV s at e llite signal is received by a
r el ati -Jely small dish mount ed on o r ne ar the exterior of a
subscr ibe r ' s home . The d ish includes a focusing reflector that
concentrates the satellite' s signal to a feed horn . A lo,,-noise
blcck converter ("LNB") then selects a subset of the avail il ble
satellite signals a s directed by a television " set top box " and
feeds them i nto a coaxial cabl e . The c oaxial c able transmi t s
the signals t o the con tro lling set top box (al t ~ r n a t i tJeljl
referred to as an \' STB", or a "receiver " ) . The STB actually
decodes the signals and creates the video images displayed on
the user's television .
12 . The frequencies used for satellite communications
(typically in the 10 - 20 gigahertz range) are not suitable for
transmission over a coaxial cable between the di sh and the
receiver . They must be converted to much lo"er frequencie s
typically 950-1450 megahertz in a process that is commonly
referred to as " down converting ." Circuitry ass oc iated with the
LNB often performs the down converting . For this r eason, an LNB
is sometimes referred to as a low-noise block down converter.
13 . Early in the development of home satellite technology ,
GLOBAL COM realized a significant shortcoming in the systems
being developed . The sel ection of the subset of signals dOl-Jn
converted by an LNB is actually controlled by t h ~ set t o p box.
When a user selects a particular channel , the LNB has t o select
t he appropriate subset of data available on the feed horn fur
tha t channel .
14 . This arrangement created a one dish/one television
paradigm. Each dish had to be linked to a single rece i ver that
controlled it . Unlike the e xist ing cable systems , a user h,'ling
two or more televisions feeding from t he same dish ha d no
ability to independently select the channels f o r ea c h
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television . While a single dish could feed multiple
televisions , all televisions would recei ve the same program.
15 . The problem was even worse for multi-dwe lling units
("MDU ' s") such as apa rtment complexes and condominiums . t1 DU
owners had reached arrangements with cable providers to provide
independent service to each residential unit. In order to
prov ide such a service using a satellite system, a separate dish
had to be provided for each individual residential unit and each
dish had to have a clear line of sight to the satellite .
16 . GLOBAL COr-l foresaloJ the problems that dish satellite
television systems would encounter in seeking to displace cabl e
installations for homes loJith mUltiple television sets and for
Multi Dwelling Units . Even before the creation cf dedicated
home satellite systems , GLOBAL COM Has ., orking on a s olution to
this multi-receiver probl em.
17 . GLOBAL COM developed hardloJare specifically designed
for digital downlink satellite signals (as opposed to the analog
signals that had existed in the satellite communication Ho rld
prior to the early 1990 ' s) . As an example , GLOBAL COi-l ',':as the
first company to successful ly field a spectrum analyzer for
fi.eld technicians to use in installing and correctly o ri enting
digital dishes (its GS - l000 hardloJare) ,
5
18. By lat e 1994 t he home sat e ll ite t el evi sion market had
taken o ff .
persisted .
However , the single dish/singl e television problem
The problem stemmed from the inability to feed
multiple signal s f rom the LNB to the set top box on a single
c oaxi a l cabl e .
19. GLOBAL COM developed technology t o solve this problem.
On feb . 22 , 1995 , GLOBAL COM filed a patent application entitled
" Satellit e Broadcast Receiving and Distribution System" (U . S .
Patent Application No . 08/838 , 67 7) . This application discl osed
GLOBAL COM's " frequency stacking" technology I-Ihich allo\: s
mul tiple satellite signals to be sent over a single coaxial
cable .
20 . In the terminology used in U. S . patent prosecution,
the Feb . 1995 filing became a "parent" application for numerous
"child" applications which disclosed additional improveme rlts and
developments made by GLOBAL COM . The patents resulting from
these filings have become known as the "Single \hre l'atents " in
I-Iritten agreements between the Parties . They are referred to as
the Single Wire Patents because they pertain to various hardl-lare
and methods f or controlling and transmitt ing mUltiple sa tellite
signals over a single coaxial cable or optical fiber " I-lire . " The
technology embodied in the Single Wire Patents solved the one
dish/one televi s ion problem, among other problems .
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21 . Stated very simplistically, the Single Wire technology
" stacks" mUltiple signals on a single coaxial cable by using a
front - end "stacker ." The stacker is located on the input end of
the coa x ia l cable . The stacker assigns non - i n te r fer i r,y
frequency b l ocks to ea ch s i gnal that is to be fed onto tile
cable . It then c onve r ts each r a w s igna l to the desi r ed
frequen c y block before feeding it onto the cable . Mul tiple
signals are then fed down the same cable . They do not interfere
because they reside in different frequency bands . A particular
STB typically only removes and decodes a signal that has been
requested by a user.
22 . In early 1995 , GLOBAL COM made contact '.vith DIRECT\'.
GLOBAL COM repres ented that it had de ve loped a s olution t o the
one dish/one receiver p r oblem and o f fered to work Ivith DIRECTV
to integ rat e the solution into the existing system. Over t he
next several mo nths , GLOBAL COt-l provided te,:;hnical information
regarding its products to DIRECTV .
23 . In September of 1996 , GLOBAL COM began advertising its
Single Wire technology in Private Cable & ",'ire12ss C3b12
magazine . GLOBAL COM received numerous responses and began
discussing the licensing of its technology .
24 . Around the same time pe riod, GLOBAL :0[[, Heifner
Communications ( " HCI " ), and Foxcom began alpha testing GLOBAL
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COM's "Digital Wave " hardware with Foxcom' s SDTV fiber-optic
deli ve ry system. The combine d system all owe d MDU subscribers to
choose bet ween a traditional cab le system, a s atellite system, or
both (al l wi thin a single MDU e nvironment and using a single
c oaxial cable to each subscriber )
2 5 . In February of 1997 , GLOBAL C O ~ I , HCI , and Foxcom again
collaborated to demonstrate the Single Wire technology in an
integrat ed system. The system was demonstrated to Ec ho st a r ,
PrimeSta r , and DI RECTV . The same system \'Ias also d emonstrate:!
at the Satellite Broadcasting and Communications Association
( " SBCA" ) show in Las Vegas (March of 1997)
2C. In September of 1997 DIRECTV undert.oo k a deta i lerl
evaluation of the system developed by GLOBAL COM, HCI , and
Foxc om (the " combined Digital Wave system" ) . DIRECTV gained
access to and e\'aluated a f u lly operating system, including al l
the hard.,are . The persons involved in t.his test.ing \-Jere Dipak
Sha\'1 of DIRECTV, Ivan Moore of HCI , Mar Allon of Foxcom, and
Austin Coker of GLOBAL CDt1 .
27 . In Oct.ober of 1997 , Private Cable & Wireless Cable
magazine ran a cover story explaining the features of the
combined Digit.al Wave system. The magazirle ran additional
stories covering other facets of the Single Wire technology in
additiona l i ssues.
8
28 . Around the same time period, it ',las becoming apparent
that phone serv i ce provi ders having fiber optic neth'or ks would
soon be able to provide television progr amming as well . The
Single Wire technology offered advantages in this f i ~ l d as well .
Acc o r d ingl y, the combined Digital Wave system l'las submitt ed to
phone service prov iders such as So uth\-lestern Bell for
e valuation .
29. Throughout this time period GLOBAL COM c on tinued to
devel op t he Si ngle Wire technology . Additional patent
applications were filed regarding these developments .
30 . In the latter part of 1997 and earljl 1996 GLOBAL COH
personnel worked ',Iith DIRECTV engineers to complete an
operational system u s ing t h e Si ngle Wire technology .
31 . HCI and F'o xcom hod access to GLOBAL COW s technology
via its prior association \-lith GLOBAL COM . In 1998 , F'oxcom
entered into a contract \-lith California Amplifier, Inc . to
produc e the " stacked" LNB and dO\-ln con'.' erter harj\,are for the
Single Wire sys tem. Although this \-l a s done without GLOBAL
COt1M's knowledge or consent , the result \-las that the "stacked "
LNB technology became well kno\-ln in the industry .
32 . Ar ound this same time p er iod , PrimeSta r , F'o xcom and
"SNet (successor to HCI) installed a functioning s ystem - using
GLOBAL COM's patented technology in a 300-unit MDU in the
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Chicago area. A second l a rge MDU using the same technology was
installed in the San Francisco area.
33 . In the f all o f 1998, Hughes Network Sys tems (an
affiliate of DIRECTV) tested an integrated MDU solution
including GLOBAL COM' s Digital Wave system. As a result of the
success of these tests , Hughes showcased the system by feeding
live signals to multiple demo receivers showing DirecTV and
DirecPC services at the 1998 SBCA show in Nashv ille, Tennessee .
34 . In August of 1999, GLOBAL COM's Digital : ~ a v e product
"as selected as a Private Cable & Wireless Cable magazine's top
20 reader ' s choice award winner .
35 . By this time the original DirecTV brand 'dac oh'ned by
DirecT\" Inc . ("DIRECTV" ) , a subsidiary of Hughes Electronics
Corp . DIRECTV increased its market share by purchasing other
companies .
PrimeStar .
One of the biggest purchases was its acquisition of
36 . All satellite service providers seek to provide more
channels to the customers . Adding more chan nels generall y
requires adding more satellites . As a result of its
acquisitions and internal development , DIRECTV had at least
three satellites providing service .
37 . Each s atellite must be parked in its aI:n orbit , and
each must be offset somewhat from its neighbors . In order to
10
use a single dish to receive signals from multiple satel lites,
multiple feed horns are provided on a single dish . The feed
horns are angularly offset on the dish so that each is p o inted
(using a reflecti on of f the dish surface it s elf) towa rd a
different satel li te . This arrangement exacerbated the exist ing
problem of transferring the received data from the dish to t he
receiver.
38 . GLOBAL COM's single Hire technology al so provided a
solution to the problem of feeding signals from more than one
sat e llite through a single wire from a single dish .
39 . In 1998 and 1999 DIRECTV used GLOBAL COM' s Single Wire
technology . DIRECTV described GLOBAL COM's Digital Wave system
a s a very useful and reliable product .
40 . DIRECTV and its competitors offer sa t ellite broadcast
services t o subs cribing cus t omers. Ea ch o f thos e requires the
installation of equipment that contains parts and technology
covered by GLOBAL COM's Patents at the subscriber ' s location
("the infringing equipment") .
41. Since at least the early 2000 's, DI RECTV has not
actually manufactured any of the hardl,are used to r ecei ve anci
decode its satellite signals . Instead, DIRECTV relies upon
third-party manufacturers to make the hardHare. DIRECTV
11
promulgates specifications for the hardware and the third-party
manufacturers make the hardware according to the speci f ications .
42 . Since at least as earl y as 2006 , the hardware provided
to DIRECTV customers has been provided under the brand " DIRECTV"
ra t her than the brand of the third-party manufacturer that
act ual l y made i t . In fact , the same model of e qu i pment is
commonly made by sever al different manufact ur e rs (pu rs u;o,nt t o
the same specification) The identit y of the manufacturer is
not typically displayed on the hardware .
simply sa ys " DIRECTV . "
Instead, the hardViar e
43 . Each DIRECTV customer must possess and use hardwar e to
rece ive the DIRECTV satellite signals .
FIRST LAWSUIT AND 200 4 SETTLEMENT AGREEMENT
44 . In October of 1989 , GLOBAL COM fil e d a paten t
applicat ion covering a switching system intended f or use in
multi-d\.;elling units such as apa rtmen t buildings .
perta i ned to a re fr igerator-sized piece of equipme nt that could
be used to selectively provide older C- band satellite s ignal s
and other types of signals to apartment tenants . The application
h'a s granted as U. S . Patent No . 5 ,073 , 930 ("the ' 93() Pat ent " \ in
December of 1991 .
12
45 . In or around 2003 , GLOBAL COM became aware that
DIRECTV \,as ins t alling hardware that fell under its ' 930 Patsnt
in certain multi-dwel li ng uni t s .
46 . GLOBAL COM raised its concerns ,,ith DIRECTV but no
resolution was reached .
47 . In Ma rch of 2004, GLOBAL COM filed a complaint f o r
patent infringement against DIRECTV. This complaint was filed
in t he Northern District of Florida. It alleged infringement of
the '9 30 Patent only. No contenti on of infringement was made as
to the Single Wire Patents since - to GLOBAL COM's knO\,ledge -
there had been no infringement of any of the Single Wire Patents
as of that time .
43 . GLOBAL COM's contention that the '9 30 Patent had heen
infringed was ultimately settled by a written agreement bet",een
DIRECTV and GLOBAL COM (the "2004 Settlement Agreement") .
49 . The 2004 Settlement Agreement is a confidential
doc ument . It will be filed separately under seal .
50 . Although the 2004 lawsuit between GLOBAL COM and
DIRECTV only concerned the ' 930 Patent , the subject o f the
Single Wire Patents was discussed between the parties during the
formation of the 2004 Settlement Agreement .
51 . In the final vers ion of the 2004 Settlement Agr eement ,
DIRECTV is g iven an unequivocal license i n perpe tu ity to "he
13
' 930 Patent . In addition, a full and complete r elease is
provided to DIRECTV regarding the ' 930 Patent .
52. The 2004 Settlement Agreement also gave DIRECTV
certain other rights regarding the Single Wire Patents .
53 . At the time the 2004 Settlement Agreement >las f ormed,
both GLOBAL COM and DIRECTV were aware that DIRECTV manufactured
none of the receiving hardvlare used by its subscribers , a fact
that continues to be true at the time of filing this Complaint .
Instead, DIRECTV re l ied on , and continues to rely on , thi r d-
party manufacturers to manufacturer the necessary hardware .
These third-pa r ty manufacturers are defined as "DI RIXTV
SUPPORT ING PARTIES
u
in the 2004 Settlement Agreement .
54. Under the 2004 Settlement Agreement, a mechanism is
establi shed to create a license of the Single Wire Patents to a
DIRECTV SUPPORTING PARTY de si ring to use the Single Wire
technology in the manufacture of hard"la re fer cile DIRECT"
SY8tem. Specifically, GLOBAL COM is obligated to offer a
license under the Single Wire Patents to any DIRECTV SUPPORTING
PARTY , under commercially reasonable terms, limited by a defined
r0yalty cap .
55. At tile time the 2004 Settlement Agreement \vas formed ,
GLOBAL COM was not aware of any DIRECTV SUPPORTING PARTY
actually using any technology covered by the Single Wire
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Patents . Thus , the prov isions concerning the Single Wire
Patents concerned the governance of possible future activit y
rather than a resolution of any existing or past acti v ity.
56 . In spite of the limitations and r es t rictions impo s ed
by the 2004 Settlement Agreement , DIRECTV has engaged and
continues tc engage unlicensed third parti e s t c ma nufact u re
single wire equipment . A declaration of DIRECT'." s 'l ice
President of Supply Chain Management , attests to these fa ct s
( s ee Declaration of Thoma s H. McGeorge , attached a s Exh i bit A.)
57 . Under the 2004 Settlement Agreement, DIRECTV has n0
righ t to use a DIRECTV SUPPORTING Pl\RTY (a third-part y
manufacturer) to manufacture Single Wire Pa tent ha r J"a re fo r its
u se and benefit . Instead, the 20 04 Settlement Agreement c rea te s
a mechanism "'lhereby DIRECTV (or a DIRECTV SUPPORTING PARTY) is
able to negotiate within a defined framework in o rder t o obt a in
s uch a right.
58 . As will be set forth in subsequent paragraphs , DIRECTV
itself has acknowledged and ratified these pre v i si ons of the
2 00 4 Settl e ment Agreement .
CREATION OF 2007 LICENSE AGREEMENT UNDER THE
PROVISIONS OF THE 2004 SETTLEMENT AGREEMENT
59. In or around 2006 , GLOBAL COM bec ame a \.; ar e that o ne u f
the DIRECTV SUPPORTING PARTIES was manufacturing equipmp.nt it
believed fell under the Si ngle Wire Patents . Specificall y ,
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GLOBAL C01'1 became aware that National Ant enna Syst e ms ("NAS " )
wa s manufacturing an " MFH-l Ad vanced Satelli t e Distributicn
Syst em. " An image of this hardware is attached hereto 03
Ex hibit B.
60 . Li ke all the equipment s ol d f o r use in the DIRECT'l
s:: stem during recent years, the MFH- l Advanced Satellite
Dist r ibution System was sold under the label "DIRECTV . "
However , t he equipment \vas actually manufactu red by a DIRECTV
SUPPORTING PARTY (NAS) . A small label on the rear of some of
the MFH- l units identi fied the manufacturer as NAS .
this labe l is a t t a che d he reto as Exhibit C.
An image of
61 . GLOBAL COM and DIRECTV negotiated and executed a
license a g reement cove ring the Single Wire Patents under the
mechanisms de f ined in t he 200 4 Se ttleme nt Agreement . That
license agr e e men t ( " 2007 License Agreement " ) i s confidential .
I t will be filed separately under seal .
62 . The 2004 Settleme nt l\greemen t un::juestionably
extinguished any prior claims existing at the time it was signed
(as it included a full mutual release) . Under the terms of t he
2007 Lice nse Agreement, DI RECTV >!a s g ranted a license to make ,
ha ve made , use , sell , offer to sell, lease , o ffer to lease ,
impor t or otherwise engage i n a c tivity f a l ling under the ri g hts
16
covered by the Single ".)i re Patents from the time of the 2001
Settlement Agreemen t up through December 31, 2007.
63. The 2007 License Agreement explicit ly conveyed "have
made
u
right to DIRECTV (the right to have 3 third- party
manufacture products on its behalf). Thus, the License
Agreement cover ed DIRECTV SUPPORTING PARTIES (such as NAS) in
addit i on to DIRECTV it self. HO\-Jever , by its teems, th", license
cnly persisted through December 31, 2007 .
64 . The 2007 License Agreement \-Jas not renewed and no
further agreements have been reached between the parti ",s .
THE SINGLE WIRE PATENTS
65 . Several patent applications were filed covering the
Single Wire technology (he reina fter "Single Patents
U
) . iJost
o f these applications have nov! been issued as U. S . Patents (one
remains pending). The following table presents the relevant
information as to the ten issued Single Wire Patents :
Patent No . Filing Issue Appl . Reference
Date Date No. Name
5, 805 , 975 4/9/1997 9/8/1998 838 , 677 ' 975 Patent
6 , 122 , 482 12131/1997 9/19/2000 ' 482 Patent
6, 334 , 045 7/21/2000 12/25/2001 09/621 , 464 '04 5 Patent
6 , 397 , 038 9/18/2000 5/28/2002 09/664 ,4 43 ' 038 Patent
6, 917 , 783 12/17/2001 7/1212005 10 /01G , 119 '783
Patent
6, 947 , 702 1/23/2002 9/20 /2005; 10/052 , 344 ;
, 702
Patent
Reissue Reissue
17
5/3/2011 95/000 , 293
7 , 542 , 7l7 3/24/2005 6/2/2009 11/089 , 131 ' 717 Patent
7 , 826 , 791 12/10/2008 11/2/2010 12/314,439 ' 791 Patent
8,095 , 064 9/2/2010 1/10/ 2012 12/874 , 31d ' 064 Patent
8 , 165 , 520 5/13/2009 4/24/2010 12/464 , 969 ' 520 Patent
66 . GLOBAL COM is the owner by assignment of all the
Single Wire Patents.
67 . GLOBAL COM has previously sought to license its Single
Wire Pat ents to DIRECTV under the provis ions of the 20 04
Settlement Agreement . No new license has be en granted .
Following the e xpiration of the 2007 License Agreement bet'.,een
GLOBAL COM and DIRECTV , DIRECTV' s continued promotion , sale and
use of satellite systems incorporating the Single ,'lire Patents
has been wi t hou t the consent of GLOBAL COM .
68 . All conditions precedent have been performed,
satisfied or waived.
THE ACCUSED EQUIPMENT
69 . Installed systems receiving DIRECTV programming nO\1
routinely include a single wire multisvl itch , commonly referred
to as a \' SWiM" or \\ SWM. "
70 . Some installations include an outdoor dish unit
(" ODU" ) feeding a signal to one or more stand-alone single \,ire
mul t is",i tches . In other installations , the single \,lre
18
multiswitch in incorporated into the LNB assembly on the ODU.
In the latter case , the equipment is commonly referred to a s a
" SW[Vl - LNB . "
7l . Both a stand-alone SlvM and a SI-IM-LNB are cApable of
frequency-stacking mult i pl e signals on a si ngle coaxial cab le .
72 . In mos t applications , a SWM-compat ible set-top box
("STB") is needed t o take a dvan tage o f the cap1bilities of fered
by a SW1-l . Thus , most DIRECTV installations now include some
type of SWM and one or more SWM-compatible receive rs.
73 . The SWM-compatible accused equi pmen t infringes the
cla ims of the Single Wire Patents , including infringing the
following specific claims:
Patent Number Claim
6 , 947 , 702 32, 38
7 , 54 2, 7l7 15 , 16, 17 , 24 , 2 8 , 32
7 , 826 , 791 1 , 8 , 20 , 25 , 34 , 40
8 , 095 , 064 1
8 , 1 65 , 520 1 , 8 , 2O , 25 , 32
74 . GLOBAL COM has offered licenses to
manufact urers for Single Wire equipment but
manufacturers have refused to acquire such li ceflse .
19
the
the
DIRECTV
DIRECT'!
75 . GLOBAL COM has fulfilled all obligations precedent
neces sa ry to the filing of this suit.
COUNT I - BREACH OF CONTRACT
76 . Plai nti ff her eby incorporates by reference al l of the
allegations contained in paragraphs 1 through 75 a s s et forth
pri or to Count I .
77 . Plaintiff and Defendants are citizens of different
states and the a mount in controve rsy exceeds $ 75 , 0 00 , e:<clusive
of interests and cost s.
78 . The 2004 Settlement Agreement prov ides that DIRECTV
may negotiate for a license to have Single Wire e quipment
man ufactured. The 2004 Settlement Agreement further sets forth
parameters within wh ich that license can be purchased.
79 . Failing the acquisition of a license under the 2004
Settlement Agreement , DIRECTV does not have the authority to
have Single Wire equi pment manufactured .
SO . DIRECTV has not obtained a license as provided in the
2004 Settlement Agreement , and by having equipment manufactured
without such license is in breach of the 2004 Settlement
Agreement.
Sl . The breach of this 2004 Settlement Agr eement h ~ 5
caused damages to the Plaintiff .
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COUNT II - BREACH OF COVENANT OF
GOOD FAITH AND FAIR DEALING
82 . Plaintiff hereby incorporates by reference all of the
allegations contained in paragraphs 1 through 75 as set forth
prior to Count I .
83 . The 2004 Settlement Agreement has a pr ovis i on
specifically providing the application of Florida law.
84. Under Florida law, all contracts have an implied
covenant of good faith and fair dealing .
85 . DIRECTV's actions in f a iling to acquire a license , 'let
authorizing thi rd parties to manuf acture Single ('l ire equipment
in an attempt to ci rcumvent the 2004 Settlement Agreement and
its e xplicit contractual provi sions, const itutes a vi o lation of
the contract's implied covenant of good faith and fair dealing .
86 . By skirting the terms of the contract through its
actions , DIRECTV has caused GLOBAL COM to suffer damages .
COUNT III - INDUCEMENT TO INFRINGE AS TO DIRECTV
87. Plaintiff hereby incorporates by reference all of the
allegations contained in paragraphs 1 through 75 as set forth
prior t o Count I .
88. DIRECTV has created hardware and soft\lar e
s peci fications that determine the structure and operation of the
accused equipment . DIRECTV requires th6t the DIRECTV SUPPORTING
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PARTIES manufacturing the accused equipment adhere to these
specifications .
89 . DIRECTV has long been aware of the Single Wir e Patents
and the specific patents and claims recited in paragraph 7 3 ,
supra .
90 . DIRECTV knew, or reasonably should ha v e knOl;n, that
the specifications it promulgated vlOuld induce i nf r ingeme nt by
the DIRECTV SUPPORTING PARTIES that actually manufactured the
equipment.
91. In promulgating its specificati ons, DIRECT'! had the
specific intent to induce infringement by the DIRECTC SUPPORTING
PARTIES .
92 . In making and selling the a ccus ed equipment , the
DIRECTV SUPPORTING PARTIES have directly infringed the claims
recited i n paragraph 72, sup ra.
93. GLOBAL COM has been damaged by the acti ,) ns uf DIRECTV
3nd the DIRECTV SUPPORTING PARTIES .
94 . DIRECTV' s actions violate the provisions o f 35 U. S . C.
271 (b) .
95 . DI RECTV is alva re and ha s been allare of the existence
of the Single Wire Patents . DIRECTV's inducement of infringement
o f the Single Wire Patents has been and continues to he willful
a nd deliberate .
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96 . DIRECTV' s inducement of infringement of the Single
Wire Patents has caused and is causing irreparable harm to
GLOBAL COM . GLOBAL COM is entitled to damages In an amount to
be de t ermined at trial as a result of DIRECTV's inducement of
infringement, to entry of an injunction against furt.her
induc ement of infringement by DIRECTV,
damages .
and to trebling of
COUNT IV - DIRECT INFRINGEMENT AS TO DIRECTV
97 . Plaintiff hereby incorporates b y reference all of the
allegations contained in paragraphs 1 through 7 5 as set Iorth
prior 'to Count I .
9B . Although DIRECTV does not manllfacture the accused
equ ipment, it uses the accused equipment without authori ty.
Specifically, under the terms of the 2004 Settlement Agreement,
DIRECTV had no r ight to ha ve the accused equipment manufactured
by a DIRECTV SU PPORTING PARTY. The equipment manufactured
outside the authority prov ided in the 2004 Set tlement Agreement
is unauthorized equipment , and no purchase or othpr trar,saction
involving that equipment changes that fact . DIRECTV's use cf
that e quipment constitutes an unauthorized use under 35 U. S . C.
271 (a) . The accused equipment therefore infringes th," patent
claims set forth in paragraph 73 , supra .
23
99 . GLOBAL COM has been damaged by the act i ons of DIRECT'!
and the DIRECTV SUPPORTING PARTIES .
100 . DIRECTV' s actions violate the provisions of 35 U. S . C.
271 (a) .
101. DIRECTV is aware and has been aware of the existenc'2
of the Singl e Wire Pa tents . DI RECTV's inf ringe ment of t he Single
Wire Pa tent s has b een a nd c o nti nue s t o b e \.;il1ful and
deliberate .
102 . DIRECTV' s infringement of the Single \hre Patents has
callsed and is causing irreparable harm to GLOBAL GLOBAL
is entitled to damages in an amount to be determinerl at
trial as a result of DIRECTV' s infringement , to entry of an
injunct i on against further infringement by DIRECTV,
treb ling of dama g es.
COUNT V - CONTRI BUTORY INFRINGEMENT AS TO DIRECTV
and t o
10 3. Plainti ff hereb y i n corpora t es by r e ference all of the
allegations contained in pa r agraphs 1 throug h 75 as se t forth
prior to Count I .
104 . Defendant DIRECTV imports the accused equipment into
the United States. The accused equipment is especially made or
especially adapted f or use in t he infringement of the Single
"lire Patents . The a ccused e quipment in f ringes the se t
24
forth in Paragraph 73 , sup r a.
subs t a ntial non-infringing use
The accused equipme nt has no
105 . GLOBAL COM has been damaged by the actions of DIRECTV
and the DIRECTV SUPPORTING PARTIES .
106 . DIRECTV' s action s violate the p rov isions o f 35 U. S . C.
271 (c) .
107 . DIRECTV is al'lare and has been al-Iar e of the e x istence
of the Single Wi re Patents . DI RECTV ' s contributory infringeme nt
o f the Single Wi r e Patents has been and continues to be willful
and deliberate.
108 . DIRECTV' s contribut ory infringement of the Singl e Wire
Pa t ent s has caus ed and is causing irreparable harm to GLOBAL
C O ~ : . GLOBAL COM is entitled to damages in an amount to be
determined at trial as a result of DIRECTV ' s contri butcry
infringement ,
2ontributory
damages .
t o entry
infringement
o f
by
an injunc tion against fur ther
DIRECTV, and to trebling of
PRAYER FOR RELIEF - ALL COUNTS
WHEREFORE , GLOBAL COM prays for reli ef against the
Defendants and r equest that the Court enter j udgment against
DIRECTV and in f a vor of GLOBAL COM as f ollows :
A. Tha t the Court hol ds tha t DIRECTV ha s breached the
2004 Settlement Agreement including , but not limited
25
to , breaching the implied covenant of good fa i th a nd
fair d ea l ing .
8 . That the Court hold that DIRECTV has infringed, has
induced the infringement of , and/or has cont r ibuted to
the infringement of the ' 702 , ' 71 7 , ' 791, ' 064, and
' 520 Patents ;
C. That the Court enter a per manent injunction against
further inf ringement of , inducement of infrinyement
of , and/or cont r ibution to the infringement of the
' 702 , ' 717 , ' 791 , ' 064 , and ' 520 Patents by DIRECTV as
well as its of f icers, s ubsidiaries , empl o yees , and
affiliates;
D. That the Court order DIRECTV to pay compensatory
damages t o GLOBAL COM pursuant to 35 U. S.C .
E . That the Court fi nd DIRECTV guilty of \,illf ul
infringement of , inducement of infringement of , a nd/or
contribution to the infringe ment 0f th" ' 7 17 ,
' 791 , '064, and ' 520 Patents a nd enter an
trebling damages pursuant to 35 U. S . C. 285;
F. That the Court deem this an exceptional ca5e and awari
GLOBAL COM reasonable attorney fees and costs pursuanc
to 35 U.S. C. 285 ;
26
G. That the Court a"lard damages i n fa"or of GLOBAL COMil
and against DIRECTV based upon the causes of action
pleade d in this Complaint; and
H. Such other relief as the Court deems just and proper .
JURY TRIAL
GLOBAL COM he r eby request s a trial by j u ry p ursuant to
Fed . R. Civ . P. 38(b) on all issues so triabl e .
Dated : December 19 , 2012
/s/ John Wiley Hor ton
J . Wiley Ho r ton , Esq .
wiley@pennington1aw . com
PENNINGTON , MOORE , WILKINSON ,
BELL & DUNBAR, P.A .
215 S . Monroe St reet , 2 ~ Floor
Ta llahassee , FL 32301
850 222-3533 - office
850 222 - 2126 - fax
Co-Counsel for Plaintiff
AND
Guy M. Burns , Esq.
guyb@jpfirm. com
JOHNSON , POPE , BOKOR,
RUPPEL & BURNS , LLP
403 E. Madison St ree t, Suite 400
Tampa , FL 33602
813 225-25 00 - office
183 223 - 7118 - fax
Co-Counsel for Plaintiff
27
AND
Michael J . Brickman , Esq .
mbr i ckman@rpwb . com
James C. Bradley , Esq .
Nina H. Fields , Esq .
RICHARDSON , PATRICK,
WESTBROOK & BRICKMAN
1 74 East Bay Street
Charleston , SC 2940 1
843 727-6520 - office
850 222-2126 - f ax
Co-Counsel for Plaintiff
28