3.

On information and belief, Defendant Teltech is Del aware corporation

with a principal place of business in Toms River,ew Jersey. N Jurisdiction and Venue 4. This Court has subject matter jurisdiction overs thi action under 28

U.S.C. 1331 and 28 U.S.C. 1338, and under the eclaratory Judgment Act, 28 D U.S.C. 2201 and 2202. There is an actual, subst antial, and continuing

justifiable controversy between the parties with spect to the infringement, re validity, and enforceability of U.S. Patent No. 7,6 64,242 (the 242 patent). 5. Venue is proper in this jurisdiction district pursu to 28 U.S.C. ant

1391(b) and (c), because a substantial part of the events or omissions giving rise to the claim occurred in this District and the defenda be found here. nt can Background 6. Itellas operates online and telephone-based servi that allow its ces

customers to change the caller ID shown on the tele phone of the party receiving the call. Itellass customers include, for example , law enforcement officers, physicians, investigators, and sales people, who wi to have their office telephone sh number appear on the receiving partys caller ID whthey are making the call en from their personal cell phone. 7. Itellas has been in business since 2006. However, technology and this

services implementing it, which are generally refer to as caller ID spoofing red

were widely available before Itellas began operatinCommercial services g. offering caller ID spoofing were on the market by S eptember 2004, and were the subject of considerable press, including articles the New York Times and USA ni Today. See Exhibit 1. Another provider of a caller ID spoofi service operating ng through the website www.covertcall.comwas publicly selling the service by December 2004, including by allowing customers to c into an access number all and through a touch-tone interface, enter their PIN ID, and destination , caller number to complete the call. Exhibit 2. Other providers, such as See www.piphone.com offered similar caller ID spoofing services inclu call , ding recording by February 2005. Exhibit 3. See 8. The Patent Act prohibits a person from obtaining pa protection on an tent

invention if the invention was known or used by oth in this country or described ers in a printed publication before the patent applican ts invention thereof. 35 U.S.C. 102(a). The Patent Act also prohibits a person f obtaining patent protection rom on an invention that was in public use, on sale, or described in a printed publication more than a year before the filing date of the pate Id. 102(b). The Patent Act nt. also prohibits a person from obtaining a patent if did not himself invent the he subject matter sought to be patented. 102(e). Id. 9. Even though caller ID spoofing was widely known and available by

September 2004, and was in public use and on sale va touch-tone interface by ia

December 2004, more than one year later, on March 3 0, 2006, Eli Finkelman and Meir Cohen filed an application claiming they inven caller ID spoofing using a ted touch-tone interface. Finkelman and Cohen assigned application to Teltech, a this competitor of Itellas. 10. In filing the patent application, not only did the named inventors swear

under oath that they had invented the technology, t acknowledged that they hey were under a duty to disclose to the Patent Office information known to be all material to patentability of the invention. Despit e claiming to be inventors of, and therefore experts in, a technology that was so widepublicized it had been written ly up in the New York Times over a year earlier, named inventors Finkelman and Cohen did not disclose any information about the pruse, sale, or widespread ior publication of the technology that they were seekin patent. g to 11. On February 16, 2010, ignorant of the prior public and sale of caller use

ID spoofing services, the United States Patent and Trademark Office issued the 242 Patent, a copy of which is attached as Exhibit 4. 12. On March 11, 2011, Teltech sued Itellas for patent infringement in the

United States District Court for the Southern Distr New York. Through ict of counsel, Itellas brought to Teltechs attention sev pieces of prior art showing eral the public use and sale of caller ID spoofing. In response to this evidence, Teltech on its own accord filed a request with the Patent O for reexamination of the ffice

242 Patent and submitted to the Patent Office a fe the prior art references w of provided to it by Itellas. In its reexaminationquest, Teltech stated that the prior re art raised substantial questions of patentability t either anticipated or rendered hat obvious the primary claims of its patent under 35 U 102 or 103. Teltech .S.C. went so far as to file a preliminary amendment with Patent Office canceling the the independent claims of its patent. Exhibit 5. After Teltech filed the request for See reexamination, the New York district court dismisse case. See Exhibit 6. d the 13. While there are many bases on which a patent can proven invalid in be

litigation, the Patent Offices scope of review in reexamination proceeding is a strictly limited. The Patent Office may only consi questions of patentability der raised by prior art as patents or printed publicat 35 U.S.C. 301-302. The ions. Patent Office is statutorily precluded from conside any other grounds of ring invalidity under 35 U.S.C. 102, such as those pre in this case, including that sent the subject matter was known or used by others, sale, or in public use. See id.; on see also 37 C.F.R. 1.552. On October 5, 2011, the Patent Office denied the request for reexamination under its statutorilytailed scope of review. The cur patent examiner stated that the prior art thatech submitted did not on its face Telt raise substantial new questions of patentabilityprinted publications. The as examiner expressly noted that questions of patentab of whether the prior art ility

showed the invention was in public use or on sal e would not be considered in a reexamination. See Exhibit 7. 14. The fact remains that Teltech obtained a patenttechnology invented on

and known by others, and which was on sale and in p use well over a year ublic before Teltech filed a patent application claiminginvented the technology. One it need only read the attached New York Times and USA Today articles to see Teltechs claim that it invented this technology,nd therefore should hold an a exclusive right to it under the patent laws, is who without merit. With the denial lly of the reexamination under the Patent Offices limi standard of review, Itellas is ted left with no choice but to bring this suit for decl aratory judgment, or else continue to operate its business under the threat of a paten t infringement suit by Teltech asserting an invalid patent. Count One Declaration of Invalidity of the 242 P atent 15. Itellas repeats, realleges, and incorporates by erence the allegations of ref

preceding paragraphs 1 through 14, as if fully set herein, and further alleges forth as follows: 16. This Count One is an action by Itellas seeking a claration under the de

Declaratory Judgment Act, 28 U.S.C. 2201 and 220that the 242 Patent is 2, invalid.