IN THE UNITED STATES DISTRICT COURTFOR THE WESTERN DISTRICT OF WISCONSIN
RENAISSANCE LEARNING, INC.,
Plaintiff,
v.
DOE No. 1.
Defendant.
))))))))))))
Case No. 11-CV-166
COMPLAINT FOR DECLARATORY JUDGMENT
Plaintiff Renaissance Learning, Inc. (“Renaissance Learning”) hereby states as follows:
Jurisdiction and Venue
1. This is a civil action seeking a declaratory judgment of non-infringement under
the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202.
2. This Court has subject matter jurisdiction under 28 U.S.C. §§ 2201 et seq.; 28
U.S.C. §§ 1331 and 1338(a), and under the patent laws of the United States, 35 U.S.C. §§ 1 et
seq.
3. This Court has personal jurisdiction over Doe No. 1 (hereinafter, “the
Defendant”). Although the true identity of the Defendant is unknown to Renaissance Learning at
this time, on information and belief, the Defendant, acting through its agent, purposefully
directed acts at a resident in this district giving rise to this Complaint, and the Defendant’s agent
has regularly and actively conducted business in this judicial district.
2
4. Venue in this District is proper under 28 U.S.C. § 1391(b), 28 U.S.C. § 1391(c),
and/or 28 U.S.C. § 1400(a). Although the true identity of the Defendant is unknown to
Renaissance Learning at this time, on information and belief, venue is proper because: (i) a
substantial portion of the events giving rise to this action occurred in this judicial district; (ii) the
Defendant is subject to personal jurisdiction in this District; and (iii) the Defendant, acting
through its agent, purposefully directed acts at a resident in this district giving rise to this
Complaint.
Parties
5. Plaintiff Renaissance Learning, Inc. is a corporation duly organized and existing
under the laws of the State of Wisconsin, with its principal place of business in Wisconsin
Rapids, Wisconsin.
6. The true name and capacity of the Defendant is unknown to Renaissance Learning
at this time. The Defendant is known to Renaissance Learning only by the acts of the
Defendant’s agent, IP Navigation Group (“IP Nav”). IP Nav sent a letter to Renaissance
Learning on behalf of the Defendant, IP Nav’s “client” and an unnamed patent holder, asserting
that Renaissance Learning infringes the Defendant’s patents (hereinafter, “the asserted patents”).
See Exhibit A. Renaissance Learning believes that information obtained by discovery on IP Nav
will lead to the identification of the Defendant.
Acts Giving Rise to the Claims
7. Renaissance Learning is a leading provider of technology-based school
improvement and student assessment programs for K-12 schools. Renaissance Learning’s tools
have been adopted by more than 72,000 schools, and provide daily formative assessment and
periodic progress-monitoring technology to enhance core curriculum, support differentiated
instruction, and personalize practice in reading, writing and math.
3
8. Renaissance Learning received a letter from IP Nav dated February 22, 2011 and
entitled “Proposal to Negotiate Patent License.” See Exhibit A.
9. The letter states that IP Nav has been engaged by the Defendant, an unnamed
holder of “valuable patents and related intellectual property directed to the fields of online testing
and evaluation.” IP Nav indicates that it has conducted an “analysis” of Renaissance Learning’s
products and is “prepared to . . . identify specific patents and provide information outlining the
basis for the infringement claims against your products or services” (emphasis added).
10. The letter demands that Renaissance Learning enter into discussions with IP Nav
regarding a license agreement with the Defendant. As a condition precedent to disclosing the
identity of “specific patents,” the “basis for the infringement claims,” and the Defendant’s “basic
licensing structure,” the letter states that Renaissance Learning must sign the attached
“Confidentiality and Forbearance Agreement” (hereinafter “the Agreement”). The Agreement
provides that Renaissance Learning, IP Nav, and the Defendant would engage in “confidential
discussions to determine whether [Renaissance Learning] may benefit from a license to certain
patents owned by the confidential client.” See Exhibit A. Although the Agreement requires that
the information disclosed during the confidential discussions would not form the basis for legal
proceedings, there is no provision preventing the Agreement from bringing an action for
infringement against Renaissance Learning during the term of the Agreement or otherwise.
Nevertheless, the Agreement would purport to require Renaissance Learning to waive its right to
bring a declaratory judgment claim against the Defendant and/or IP Nav. The letter demands a
response within 10 days and demonstrates that the Defendant is prepared and willing to enforce
its alleged patent rights and file suit against Renaissance Learning.
4
11. IP Nav’s letter, attached as Exhibit A, establishes that the Defendant concludes
and alleges that Renaissance Learning’s products infringe on one of more of the Defendant’s
patents. The letter demonstrates that, unless Renaissance Learning enters into both the
Confidentiality and Forbearance Agreement and later a licensing agreement with the Defendant,
the Defendant will take action – that is, file a lawsuit – against Renaissance Learning. By virtue
of the allegations of IP Nav on behalf of and as agent of the Defendant, as well as IP Nav’s well-
known history of using litigation as leverage to “monetize” intellectual property in this judicial
district and others, Renaissance Learning has a reasonable apprehension that the Defendant will
file suit against Renaissance Learning.
12. Renaissance Learning makes, uses, offers for sale, and sells online testing and
evaluation programs, including a program called STAR. The STAR assessments – including
STAR Reading, STAR Math, and STAR Early Literacy – are the most widely used computer-
adaptive tests in K12 schools. Nearly 19 million STAR assessments were taken in school year
2009-2010 alone.
13. Renaissance Learning is not aware, and has no reason to believe, that its STAR
assessment programs, or any other of its online testing and evaluation products, are infringing on
any claims of any valid patents. Renaissance Learning expressly states that it is entitled to make,
use, offer for sale, sell, and otherwise commercially exploit its products without interference
from the Defendants or its agent, IP Nav.
14. By the allegations, threats, conduct, and actions of the Defendant, acting by and
through its agent, IP Nav, the Defendant has created an actual and justiciable case and
controversy between itself and Renaissance Learning concerning whether Renaissance Learning
is infringing any valid and enforceable claim of the asserted patents. Renaissance Learning is
5
now in the intolerable position of being pressured to choose between waiving its legal rights
pursuant to the terms of the proffered Agreement or subjecting itself to an ongoing threat of
litigation and unspecified infringement allegations against one of its central product lines.
Renaissance Learning refuses to make such a choice and, instead, seeks declaratory relief as to
its rights now.
Count IDeclaratory Judgment
15. Renaissance Learning hereby incorporates by reference each and every allegation
set forth in Paragraphs 1 through 14 of this Complaint as if fully set forth and restated herein.
16. Renaissance Learning is not aware, and has no reason to believe, that any of its
online testing and evaluation products, including, but not limited to, the STAR assessments, are
infringing upon any valid claims of the asserted patents.
17. The Defendant has engaged in a course of conduct that demonstrates a
preparedness and willingness to enforce their alleged patent rights and file suit against
Renaissance Learning. Under all the circumstances, a substantial controversy exists between
Renaissance Learning and the Defendant, because the parties have adverse legal interests that are
real and substantial. Renaissance Learning is being forced to choose between abandoning its
rights or risking prosecution. Thus, the issuance of a declaratory judgment is warranted.
WHEREFORE, Renaissance Learning respectfully prays that the Court enter judgment
in its favor and award the following relief against Defendants:
A. Declare that Renaissance Learning has not infringed and is not infringing any
valid claims of the Defendant’s patents;
B. Permanently enjoin Defendants and their officers, directors, agents, servants,
employees and attorneys, and any and all persons in active concert or participation with any of
6
them, from asserting, stating, implying or suggesting that Renaissance Learning and/or any of its
respective officers, directors, agents, servants, employees, subsidiaries or customers, infringe any
valid claims of the Defendant’s patents;
C. Award Renaissance Learning its costs and reasonable attorneys’ fees incurred in
connection with this action; and
D. Award and grant Renaissance Learning such other and further relief as the Court
deems just and proper under the circumstances.
Jury Demand
Renaissance Learning respectfully requests a jury trial of all issues so triable.
March 4, 2011 Respectfully submitted,
AXLEY BRYNELSON, LLP
s/Andrew J. ClarkowskiAndrew J. ClarkowskiState Bar No.: 1025019Michael J. ModlState Bar No.: 10114192 East Mifflin Street, Suite 200 (53703)P.O. Box 1767Madison, Wisconsin 53701-1767(608) [email protected]
OF COUNSEL (Pro Hac Vice Admission to be Requested)BRYAN CAVE, LLPK. Lee MarshallStephanie A. BlazewiczTwo Embarcadero Center, Ste 1410San Francisco, CA [email protected]@bryancave.com415-675-3400
Attorneys for Renaissance Learning, Inc.
Top Related