Mallfinder Network v. Peschke Et. Al

7/28/2019 Mallfinder Network v. Peschke Et. Al.

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IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF COLORADO

Civil Action No.

MALLFINDER NETWORK LLC, d/b/a

PlaceWise Media,

Plaintiff,

v.

GEORGE PESCHKE, an individual, andPESCHKE MAP TECHNOLOGIES LLC

Defendants.

COMPLAINT FOR DECLARATORY JUDGMENT AND DEMAND FOR JURY TRIAL

Plaintiff Mallfinder Network LLC, d/b/a PlaceWise Media (PlaceWise), through its

undersigned counsel, submits this Complaint for a declaratory judgment of non-infringement and

invalidity, and for its Complaint against Defendants George Peschke (Peschke) and Peschke

Map Technologies LLC (PMT), states as follows:

PARTIES

1. Plaintiff PlaceWise is a Colorado Limited Liability Company with its principalplace of business at 1390 Lawrence Street, Suite 300, Denver, CO 80204.

2. Upon information and belief, Defendant George Peschke is an individual residingat 3838 Mallard Lane, Highlands Ranch, CO, 80126.

3. Upon information and belief, Defendant Peschke Map Technologies is aDelaware Limited Liability Company.


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NATURE OF THE ACTION

4. This is an action for a Declaratory Judgment that PlaceWise has not infringed anyclaim of U.S. Patent No. 6,397,143 (the 143 Patent or the Peschke Patent), entitled Layout

Based Method for Map Navigation, and that each and every one of the claims of said Patent is

invalid.

JURISDICTION AND VENUE

5. The Court has jurisdiction over this case pursuant to 28 U.S.C. 1331 and 1338,because this case presents a well-pleaded federal question under the Patent Act of 1952 (as

amended), 35 U.S.C. 1, et seq. The Court also has subject matter jurisdiction over this case

pursuant to the Federal Declaratory Judgments Act, 28 U.S.C. 2201 and 2202.

6. In November of 2012, Defendant PMT filed lawsuits for patent infringementagainst two of PlaceWises customers, Glimcher Colonial Park Mall, Inc. (Glimcher) and

Lerner Corporation (Lerner). These two lawsuits are currently pending in the District of

Delaware and are captionedPeschke Map Technologies v. Glimcher Colonial Park Mall, Inc.

and Glimcher Properties Limited Partnership, 12-01570-SLR, andPeschke Map Technologies v.

Lerner Corporation, No. 12-1526-SLR (the Delaware Lawsuits).

7. In the Delaware Lawsuits, PMT accuses software built by PlaceWise and suppliedby PlaceWise to Glimcher and Lerner of infringing the Peschke Patent. Specifically, PMT

alleges infringement of the 143 Patent based on Glimcher and Lerners use of digital shopping

center directories created and provided by PlaceWise. Because PlaceWise provides the products

accused of infringing the 143 Patent to Glimcher and Lerner, there is a case and controversy


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between PlaceWise, Peschke, and PMT, and there is a basis for subject matter jurisdiction in this

declaratory judgment action.

8. On information and belief, Mr. Peschke is a Colorado resident, and this Court haspersonal jurisdiction over Mr. Peschke.

9. On information and belief, Mr. Peschke is a necessary party to this action.According to the face of the 143 Patent, Mr. Peschke is the sole inventor. The United States

Patent and Trademark Offices website does not reflect any assignments by Mr. Peschke of the

143 Patent. Thus, on information and belief, Mr. Peschke remains the owner of the 143 Patent.

See 37 C.F.R. 3.73(a).

10. This Court has personal jurisdiction over Defendant PMT because PMT haspurposefully directed activities at a resident of Colorado. On information and belief, PMT is the

exclusive licensee to the 143 Patent. This exclusive license is, on information and belief, an

ongoing contractual business relationship with the owner of the 143 Patent, a Colorado resident.

This declaratory judgment action arises out of that ongoing relationship between PMT and a

Colorado resident. Therefore, personal jurisdiction over PMT is both reasonable and fair in the

District of Colorado.

11. Venue is proper in this district pursuant to 28 U.S.C. 1391(b) and (c) becausePlaceWise is a Colorado LLC that is based in Colorado. PlaceWises software development

activities take place in Colorado. Furthermore, Mr. Peschke, the sole inventor of the 143 Patent,

resides in Colorado.

12. There are no current related actions in this District.


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THE PATENT IN SUIT

13. On May 28, 2002, the Commissioner for Patents with the United States Patentand Trademark Office issued U.S. Patent No. 6,397,143.

14. The 143 Patent claims methods of presenting and providing navigation througha series of maps. A true and correct copy of the 143 Patent is attached as Exhibit A.

15. Among other things, all claims of the 143 Patent require links from storelayouts (or store depictions) to corresponding store description pages.

PLACEWISE MEDIAS PRODUCTS

16. PlaceWise is a privately held company that provides multiplatform digitalmarketing and advertising services to shopping malls nationwide.

17. Some online platforms built by PlaceWise include digital shopping centerdirectories. For example, PlaceWise has provided electronic directories to Colonial Park Mall, a

Glimcher Realty Trust Property, and Dulles Town Center, a Lerner Corporation Property. PMT

has accused both of these directories of infringing the 143 Patent.

18. The digital shopping center directory that PlaceWise designed for Colonial ParkMall (the Colonial Park Directory), and which PMT accuses of infringing the Peschke Patent,

is located at http://www.colonialparkmall.com/directory#.

19. The digital shopping center directory that PlaceWise designed for Dulles TownCenter (the Dulles Directory), and which PMT accuses of infringing the Peschke Patent, is

located at http://www.shopdullestowncenter.com/directory/shop/2138213570.

20. Neither of these accused directories infringe the 143 Patent. For example,neither of these directors include links from store layouts (or store depictions) to


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corresponding store description pages as required by the independent claims of the 143

Patent.

FIRST CLAIM FOR RELIEF

Declaratory Judgment of Non-Infringement of the 143 Patent

28 U.S.C. 2201

21. PlaceWise repeats and realleges the statements made above, as though fully setforth herein.

22. PlaceWise has not infringed in any manner under 35 U.S.C. 271 any claim ofthe Peschke Patent by making, using, selling, offering for sale, exporting and/or importing any

product, including but not limited to the Colonial Park Directory or the Dulles Directory, either

literally or under the doctrine of equivalents. For example, the Colonial Park Directory and the

Dulles Directory do not include and have never included the links required by all claims of

the 143 Patent.

23. PlaceWise seeks a judgment declaring that PlaceWise does not infringe any validand enforceable claim of the Peschke Patent, either literally or under the doctrine of equivalents.

24. Defendants assertions of infringement of the Peschke Patent with full knowledgeof PlaceWises non-infringement of the Peschke Patent makes this an exceptional case

warranting an award of PlaceWises reasonable attorneys fees and costs under 35 U.S.C. 285.

SECOND CLAIM FOR RELIEF

Declaratory Judgment of Invalidity of the 143 Patent28 U.S.C. 2201

25. PlaceWise repeats and realleges the statements made above, as though fully setforth herein.


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26. This is a claim for declaratory judgment that the claims of the 143 Patent areinvalid pursuant to 35 U.S.C. 101, 102, 103, and/or 112.

27. All claims of the 143 Patent are invalid as anticipated and/or obvious in light ofprior art. For example, the following references either anticipate or render obvious claims of the

143 Patent: U.S. Patent No. 4,870,576; U.S. Patent No. 5,032,989; U.S. Patent No. 5,890,088;

U.S. Patent No. 6,091,417; U.S. Patent No. 6,092,076; An Introduction to Geographic

Information Systems: Linking Maps to Databases (April 1992); How GIS Works (July 1998);

What is a GIS? (July 1998); What Can GIS Do for You? (December 1998); GIS Tasks (July

1998); Data for GIS (July 1998); Components of a GIS (July 1998); GIS is Everyday Life (July

1998); Introductory References About GIS (September 1998); Related Technologies (July 1988);

Welcome to the GIS for Everyone Site July 1998); Interactive mapping sites featured in Serving

Maps on the Internet (October 2000); GIS Jump StationDomestic Commercial Sites (May

2000); GIS Software Combines Mapping, Database Features (July 1991); GIS Sprouting

Corporate Wings; Low Cost Cited as Major Reason for GIS Emergence in the Computer

Graphics Field (July 1991); MapInfo for Windows Puts Your Data Directly on the Map (July

1991); Putting Your Business on the Map: Desktop Mapping Software Gets Your Data Out of a

Spreadsheet and Onto a Map (March 1991); The History of GIS (November 1997).

28. Defendants charges of infringement of the Peschke Patent with full knowledge ofits invalidity makes this an exceptional case warranting an award of PlaceWises reasonable

attorneys fees and costs under 35 U.S.C. 285.


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PRAYER FOR RELIEF

WHEREFORE, PlaceWise prays that this Court enter judgment in favor of PlaceWise

and against Defendants as follows:

A. A declaration that Defendants are without right or authority to threaten or to

maintain suit against PlaceWise or its customers for alleged infringement of U.S. Patent No.

6,397,143;

B. A declaration that U.S. Patent No. 6,397,143 is invalid, unenforceable, and not

infringed by PlaceWise or its customers;

C. An award of reasonable attorneys fees and costs incurred by PlaceWise in the

litigation of this matter in compensation for the exceptional circumstances of this case, pursuant

to 35 U.S.C. 285; and

D. Such other relief as the Court may deem just and proper to award.

JURY DEMAND

PlaceWise hereby demands a trial by jury on all issue so triable.

Respectfully submitted this 30th day of May, 2013.

s/ Mary V. Sooter

Mary (Mindy) V. Sooter

Kathryn A. FeiereiselFAEGRE BAKER DANIELS LLP

3200 Wells Fargo Center

1700 Lincoln StreetDenver, Colorado 80203-4532

Telephone: (303) 607-3500

E-mail: [email protected]@FaegreBD.com


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Attorneys for Plaintiff MALLFINDER NETWORK

LLC, d/b/a PLACEWISE MEDIA

Documents

Mallfinder Network v. Peschke Et. Al