-- Cylink's complaint against RSA ------------------------------------------ Jon Michaelson, Esq., (State Bar No. 083815) Kurt H. Taylor, Esq., (State Bar No. 127077) Robert W. Ricketson, Esq., (State Bar No. 148481) HOPKINS & CARLEY A Law Corporation 150 Almaden Boulevard, Fifleenth Floor San Jose, California 95113-2089 Telephone: (408) 286-9800 Attorneys for Plaintiff CYLINK CORPORATION IN THE UNITED STATES DISTRICT COURT IN AND FOR THE NORTHERN DISTRICT OF CALIFORNIA CYLINK CORPORATION, Plaintiff, v. RSA DATA SECURITY, INC., Defendants. COMPLAINT FOR DECLARATORY JUDGMENT AND INJUNCTIVE RELIEF AND DEMAND FOR JURY TRIAL I . Plaintiff Cylink Corporation is incorporated under the laws of the State of California, and has its principal place of business therein. 2. Defendant RSA Data Security, Inc. ("RSADSI") is a corporation incorporated under the laws of the State of Delaware, and has its principal and a regular and established place of business a 100 Marine Boulevard, Redwood City, CA 94065. 3. Jurisdiction of this Court arises under the Federal Declaratory Judgments Act, Title 28, United States Code, Sections 2201 and 2202, and under the laws of the United States concerning actions relating to patents, Title 28, United States Code, Section 1338(a), as shown by the facts alleged below. 4. On September 20, 1983, U.S. Letter Patent No. 4,405,829 entitled "Cryptographic Communications System and Method" was issued to inventors and assignors R. Rivest, A. Shamir and L. Adleman ("the Patent"). 5. Cylink is informed and believes and on that basis alleges that in or about 1984 defendant RSADSI obtained an exclusive license to the Patent. 6. Cylink has made and/or offered for sale within the past six years and since the issuance of the said Letters Patent, certain encryption products. 7. Beginning in or about December 1993, RSADSI has charged that Cylink's manufacture and sale of said encryption products infringes the Patent and all claims thereof. On June 28, 1993, RSADSI delivered to Cylink's wholly- owned subsidiary, in this judicial district, a letter expressly stating RSADSI's intent to bring an infringement action against Cylink. A true and correct copy of RSADSI 's letter to Cylink dated June 29, 1994 is attached hereto as Exhibit A. 8. There is a substantial and continuing justiciable controversy between Cylink and RSADSI as to RSADSIs right to threaten or maintain suit for infringement of the Patent, and as to the validity, scope, and enforceability thereof, and as to whether any of Cylink's products infringes any valid claim thereof. 9. Cylink is informed and believes and on that basis alleges that the Patent is invalid unenforceable, and void, for one or more of the following reasons: (a) The alleged invention was not novel; (b) The differences (if any) between the alleged invention and the prior art were such that the alleged invention would have been obvious at the time made to a person having ordinary skill in the art; (c) The claims of the Patent, and/or the Patent as a whole, fails to meet one or more of the requirements of 35 U.S.C. section 1 12. (d) If there is any invention in the subject matter of the Patent, which is denied, the Patent nevertheless was not obtained in a manner consistent with the provisions of Title 35 of the United States Code. (e) The claims of the Patent are functional, indefinite, and are broader than the alleged invention as set forth in the specification of the Patent. 10. Cylink will seek leave of court to amend this complaint to assert such additional grounds for invalidity as may be ascertained and shall give such notice prior to trial as may be required by 35 U.S.C. section 282 of the matters specified therein. 11. Cylink is informed and believes and on that basis alleges that its encryption products do not infringe on the Patent or its claims. 12. Cylink is informed and believes and on that basis alleges that the Patent is unenforceable for reasons including, but not necessarily limited to the following: (a) RSADSI, with full knowledge of the activities of Cylink, has failed to assert the Patent for a period of 3 years while Cylink invested time and money in building its business and goodwill, and RSADSI is now guilty of laches and cannot maintain any cause of action against plaintiff under the Patent. (b) Pursuant to certain written agreements, RSADSI has obligated itself to license Cylink to make, use, and sell products employing all inventions claimed in the patent, and is therefore estopped from asserting the Patent against Cylink. True and correct copies of these agreements are attached hereto and incorporated in this complaint as Exhibits B and C. 13. RSADSI has denied that it is obligated to license Cylink as alleged in paragraph 12(b) above. Cylink and its wholly owned subsidiary have initiated an arbitration proceeding against RSADSI pursuant to the written agreements between the parties. By bringing this suit, as it has been forced to do in order to protect itself against the threat of litigation by RSADSI, Cylink does not waive its right to a determination through contractually mandated arbitration that RSADSI is obligated to grant to Cylink a license to the Patent according to the terms of the parties' agreements. WHEREFORE, plaintiff demands: (a) Entry of judgment that RSADSI is without right or authority to threaten or to maintain suit against plaintiff or its customers for alleged infringement of Letters Patent No. 4,405,829; that the Patent is invalid, unenforceable, and void in law; and that the Patent is not infringed by Cylink because of the making, selling, or using of any products made, sold, or used by Cylink. (b) Entry of a preliminary injunction enjoining RSADSI, its officers, agents, servants. employees, and attorneys, and those persons in active concert or participation with it who receive actual notice thereof from initiating infringement litigation and from threatening Cylink or any of its customers, dealers, agents, servants, or employees, or any prospective or present seller, dealer, or use of Cylink's products, with infringement litigation or charging any of them either verbally or in written with infringement of Letters Patent No. 4,405,829 because of the manufacture, use, sale, or offering for sale of products made by Cylink, to be made permanent following trial. (c) Entry of judgment for its costs and reasonable attorney fees incurred by Cylink herein. (d) Such other and further relief as the Court may deem appropriate. DATED: June 30, 1994 HOPKINS & CARLEY A Law Corporation BY: Kurt H. Taylor, Esq. Attorneys for Plaintiff CYLINK CORPORATION DEMAND FOR JURY TRIAL Cylink hereby demands trial by jury of all issues triable of right by jury. DATED: June 30, 1994 HOPKINS & CARLEY A Law Corporation By Kurt H. Taylor, Esq. Attorneys for Plaintiff CYLINK CORPORATION -- End ---------------------------------------------------------------------