IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF WISCONSIN

RENAISSANCE LEARNING, INC., )

)
Plaintiff, )
) Case No. 11-CV-166
v. )
)
DOE No. 1. )
)
Defendant. )
)
)
)

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.

 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.

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 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.

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 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

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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 I
Declaratory 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

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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. Clarkowski
Andrew J. Clarkowski
State Bar No.: 1025019
Michael J. Modl
State Bar No.: 1011419
2 East Mifflin Street, Suite 200 (53703)
P.O. Box 1767
Madison, Wisconsin 53701-1767
(608) 257-5661
aclarkowski@axley.com

OF COUNSEL
(Pro Hac Vice Admission to be Requested)
BRYAN CAVE, LLP
K. Lee Marshall
Stephanie A. Blazewicz
Two Embarcadero Center, Ste 1410
San Francisco, CA 94111
klmarshall@bryancave.com
Stephanie.blazewicz@bryancave.com
415-675-3400

Attorneys for Renaissance Learning, Inc.