14-02-10 Samsung Motion To Dismiss Rockstar Patent Lawsuit

Case 2:13-cv-00900-JRG Document 26 Filed 02/10/14 Page 1 of 22 PageID #: 163
IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION ROCKSTAR CONSORTIUM US LP, INC. AND MOBILESTAR TECHNOLOGIES, LLC Plaintiffs, v. SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG TELECOMMUNICATIONS AMERICA, LLC, GOOGLE INC., Defendants.
Civil Action No. 13-cv-0900-JRG JURY TRIAL DEMANDED
SAMSUNG DEFENDANTS MOTION TO DISMISS PLAINTIFFS FIRST AMENDED COMPLAINT PURSUANT TO THE FEDERAL RULES OF CIVIL PROCEDURE 12(b)(6) AND 12(b)(1)
TABLE OF CONTENTS Page INTRODUCTION ...........................................................................................................................1 STATEMENT OF FACTS ..............................................................................................................3 A. B. C. Plaintiff Rockstar Arises From the Nortel Bankruptcy Auction ..............................3 Rockstar Forms MobileStar in Delaware, But Fails to Register it in Texas ............3 Plaintiffs Assert Claim 5 of the 131 Patent Against Defendants ............................4
LEGAL STANDARD ......................................................................................................................4 A. B. Federal Rules of Civil Procedure 12(b)(1) and 12(b)(6) .........................................4 Invalidity under 101 is Routinely Decided at the Pleading Stage and Prior to Claim Construction .....................................................................................5
ARGUMENT ...................................................................................................................................7 I. The Court Should Dismiss Claim 5 of the 131 Patent For Failure to State a Claim ..........7 A. B. C. D. II. Claim 5 of the 131 Patent Does Not Claim Patent-Eligible Subject Matter...........7 Claim 5 of the 131 Patent Claims a Method for the Abstract Idea of Notifying a User of an Incoming Communication ..................................................7 The Claim Language Does Not Meaningfully Limit the Abstract Idea to a Concrete Application ...............................................................................................9 Claim 5 of the 131 Patent Also Fails the Machine-or-Transformation Test ........11
The Court Should Dismiss This Action for Lack of Subject-Matter Jurisdiction .............12 A. B. C. MobileStar Had No Standing To File This Action ................................................12 Without MobileStar, this Action Should Be Dismissed ........................................14 MobileStars Post-Litigation Registration Cannot Confer Standing, And Its Amended Complaint Cannot Cure Jurisdictional Defects ................................15
CONCLUSION ..............................................................................................................................16
TABLE OF AUTHORITIES Page Cases Abraxis Bioscience, Inc. v. Navinta LLC, 625 F.3d 1359 (Fed. Cir. 2010)......................................................................................4, 15, 16 Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336 (Fed. Cir. 2013)..................................................................................................9 Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 73 (2013) ...................................................................................................................9 Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 2013 WL 4768483 (U.S. Sept. 4, 2013) ....................................................................................9 Arachnid, Inc. v. Merit Indus., Inc., 939 F.2d 1574 (Fed. Cir. 1991)................................................................................................15 Ashcroft v. Iqbal, 556 U.S. 662 (2009) ...................................................................................................................5 Aspex Eyewear, Inc. v. Miracle Optics, Inc., 434 F.3d 1336 (Fed. Cir. 2006)................................................................................................15 Atrium Companies, Inc. v. ESR Associates, Inc., No. 11 Civ. 1288, 2012 WL 4215103 (S.D. Tex. Sept. 18, 2012)...........................................13 Bancorp Services, LLC v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266 (Fed. Cir. 2012)............................................................................................6, 11 Bilski v. Kappos, 130 S. Ct. 3218 (2010) ...............................................................................................6, 8, 10, 11 CLS Bank Intern. v. Alice Corp. Pty. Ltd., 717 F.3d 1269 (Fed. Cir. 2013)..................................................................................................9 Cardpool, Inc. v. Plastic Jungle, Inc., No. C 12-04182 WHA, 2013 WL 245026 (N.D. Cal. Jan. 22, 2013)........................................6 Clear With Computers v. Dick's Sporting Goods, No. 12-cv-00674-LED, Dkt. No. 116 (E.D. Tex., Jan. 21, 2014)T ...........................................2 CyberFone Sys., LLC v. Cellco P'ship, 885 F. Supp. 2d 710 (D. Del. 2012) ...........................................................................................6 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011)..........................................................................................11, 12 Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012)..............................................................................................5, 8
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Diamond v. Diehr 450 U.S. 175 (1981) .................................................................................................................11 Diversacon Indus. v. National Bank of Commerce, 629 F.2d 1030 (5th Cir. 1980) .................................................................................................13 E.E.O.C. v. Peabody Western Coal Co., 400 F.3d 774 (9th Cir. 2005) ...................................................................................................15 Eli Lilly & Co. v. Sav-On-Drugs, Inc., 366 U.S. 276 (1961) ...........................................................................................................13, 14 Gottschalk v. Benson, 409 U.S. 63 (1972) ...............................................................................................................7, 10 Guidry v. Am. Pub. Life Ins. Co., 512 F.3d 177 (5th Cir. 2007) .....................................................................................................2 Guidry v. Bank of LaPlace, 954 F.2d 278 (5th Cir. 1992) .....................................................................................................5 buySAFE, Inc. v. Google Inc., No. 11-1282-LPS, 2013 WL 3936906 (D. Del. July 29, 2013) .................................................5 Independent Wireless Tel. Co. v. Radio Corp., 269 U.S. 459 (1926) .................................................................................................................15 Keene Corp. v. United States, 508 U.S. 200 (1993) .................................................................................................................15 Lujan v. Defenders of Wildlife, 504 U.S. 555 (1992) ...................................................................................................................5 Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) ...............................................................................................................8 OIP Techs., Inc. v. Amazon.com, Inc., No. C-12-1233-EMC, 2012 WL 3985118 (N.D. Cal. Sept. 11, 2012) ..................................5, 6 Parker v. Flook 437 U.S. 584 (1978) .................................................................................................................10 Radio WHKW, Inc. v. Yarber, 838 F.2d 1439 (5th Cir. 1988) .................................................................................................13 Schreiber Foods, Inc. v. Beatrice Cheese, Inc., 402 F.3d 1198 (Fed. Cir. 2005)................................................................................................16 Terroco Indus. Ltd. v. Am. Home Assur. Co., No. 07 Civ. 437, 2009 WL 901488 (E.D. Tex. Mar. 30, 2009) ...............................................13 Tuchman v. DSC Communications Corp., 14 F.3d 1061 (5th Cir. 1994) .....................................................................................................5
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UbiComm, LLC v. Zappos IP, Inc., No. 13-cv-1029-RGA, 2013 WL 6019203 (D. Del. Nov. 13, 2013) .............................2, 5, 8, 9 Ultramerical, Inc. v. Hulu, LLC, 722 F.3d 1335 (Fed. Cir. 2013)............................................................................2, 6, 7, 8, 9, 10 Statutes 35 U.S.C. 101 ................................................................................................................................1 35 U.S.C. 281 (1994) ..................................................................................................................15 Fed. R. Civ. P. 12(b)(1)....................................................................................................................4 Fed. R. Civ. P. 12(b)(6)....................................................................................................................2
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INTRODUCTION Defendants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively, Samsung) respectfully move this Court to dismiss Plaintiffs First Amended Complaint on the following two grounds: (1) Plaintiffs fail to state a claim under Rule 12(b)(6) with respect to claim 5 of the 131 patent, because the claim is directed to patent-ineligible subject matter under 35 U.S.C. 101; and (2) Plaintiff MobileStar lacked standing at the time Plaintiffs filed their original complaint, thereby depriving this Court of subject matter jurisdiction over this action under Rule 12(b)(1). First, the Court should dismiss Plaintiffs asserted claim 5 of the 131 patent for failure to state a claim. The only plausible reading of claim 5 is that it claims nothing more than an abstract idea, without meaningful limitation, which is not patentable subject matter under 35 U.S.C. 101. Under well-settled law, therefore, this Court can and should dismiss claim 5 with prejudice for failure to state a claim. Notably, as other courts have done, this Court should do so at this pleading stage, without awaiting claim construction proceedings. Claim 5 reads as follows: 5. A method of notifying a user of an incoming communication event, comprising: determining a characteristic of the communication event; selecting a notification based on the characteristic; sending the user the selected notification; receiving a selection from the user indicating a format for delivery of further notification information regarding the communication event; and allowing the further notification information regarding the communication event to be sent to the user in the selected format. At best, this claim attempts to patent an abstract conditional action. Claim 5 simply describes an action (notifying a user of a communication event through a series of steps) in response to a condition (an incoming communication event). Recent case law has found claims
directed to such conditional actions to be unpatentable under 101. UbiComm, LLC v. Zappos IP, Inc., No. 13-cv-1029-RGA, 2013 WL 6019203, at *2, 3, 6 (D. Del. Nov. 13, 2013). Further, there is no limitation in the claim language tying the claim to a concrete application of the abstract conditional action. The claim fails to describe the use of any system, machine, transformation, programming, or hardware used to actually implement the method. In fact, the claim is completely untethered to an application in even the most generally-described realm of art or technology. This lack of a meaningful limitation renders the claim unpatentable. Ultramerical, Inc. v. Hulu, LLC, 722 F.3d 1335, 1349 n.2 (Fed. Cir. 2013) (requiring that a claim to an abstract idea contain meaningful limitations in the claim [that] make it clear that the claim is not to the abstract idea itself, but to a non-routine and specific application of that idea.) (emphasis added). The only plausible reading of claim 5 is that it recites an abstract, conditional action thereby rendering the claim ineligible. This deficiency is dispositive, and it cannot be cured by simply amending the pleadings. Dismissal of the claims is proper under Federal Rule of Civil Procedure 12(b)(6). See UbiComm, LLC v. Zappos IP, Inc., No. 13-cv-1029-RGA, 2013 WL 6019203, at *2, 3, 6 (D. Del. Nov. 13, 2013) (dismissing complaint based on Fed. R. Civ. P. 12(b)(6) for failure to meet requirements of 35 U.S.C. 101); see also Clear With Computers v. Dicks Sporting Goods, No. 12-cv-00674-LED, Dkt. No. 116 (E.D. Tex., Jan. 21, 2014) (J. Davis) (granting Fed. R. Civ. P. 12(c)1 motion for judgment on the pleadings for failure to meet the requirements of 35 U.S.C. 101). Second, the Court should dismiss this action for a simple but stark reason: one of the two plaintiffs had no standing to file the complaint. One day before filing this action, Plaintiff Rockstar
The standard for deciding a Rule 12(c) motion for judgment on the pleadings is the same as that for deciding a Rule 12(b)(6) motion to dismiss. Guidry v. Am. Pub. Life Ins. Co., 512 F.3d 177, 180 (5th Cir. 2007).
Consortium US LP (Rockstar) alleges that it formed plaintiff MobileStar LLC (MobileStar), and transferred to MobileStar ownership of five of the seven patents asserted in this action, and an exclusive license to the remaining two patents. Rockstar and MobileStar admit indeed, they affirmatively argue that no action on these patents can proceed without both Rockstar and MobileStar. Critically, however, Rockstar chose to organize MobileStar as a Delaware corporation, not a Texas corporation, and neglected to obtain MobileStars authorization to conduct business in Texas until a month after Rockstar and MobileStar filed their complaint. Texas law requires foreign corporations such as MobileStar to obtain this authorization before filing suit in Texas courts. MobileStar failed to do so, and it therefore lacked standing to bring this action in Texas. STATEMENT OF FACTS A. Plaintiff Rockstar Arises From the Nortel Bankruptcy Auction
Five of the worlds largest technology companies including Apple, Research In Motion, and Microsoft created Plaintiff Rockstar in 2011. These companies pooled together under the name Rockstar Bidco to place the winning $4.5 billion bid on a portfolio of patents auctioned during the bankruptcy of Nortel Networks. Ex. 1.2 Following the acquisition of Nortels portfolio, Rockstar Bidco transferred ownership of thousands of patents to its owners, whom it calls the founding licensees. Ex. 2. Over 1,000 patents were transferred to Apple alone. Ex. 3. Rockstar Bidco was then reorganized into Rockstar Consortium. Ex. 1. Rockstar Consortium US LP, a plaintiff in this action, was formed in 2013, under the laws of the state of Delaware. Ex. 4. B. Rockstar Forms MobileStar in Delaware, But Fails to Register it in Texas
On October 30, 2013, Rockstar formed its wholly owned subsidiary, MobileStar, as Delaware limited liability corporation. Ex. 5. The next day, October 31, 2013, Rockstar and All exhibits referenced herein are attached and submitted with the Declaration of Joseph Milowic III, filed concurrently herewith.
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MobileStar filed this and six other actions in this Court, accusing twenty-two defendants of infringing some or all of the seven patents at issue here. Rockstar v. ASUS, No. 13-00894; Rockstar v. HTC, No. 13-00895; Rockstar v. Huawei, No. 13-00896; Rockstar v. LG, No. 13-00898; Rockstar v. Pantech, No. 13-00899; and Rockstar v. ZTE, No 13-00901. MobileStar failed, however, to register as required with the Texas Secretary of State. Before a foreign entity such as MobileStar can transact business in this state, Texas law requires registration under Chapter Nine of the Texas Business and Organizations Code. Tex. Bus. & Orgs. Code 9.001. The Code exempts certain types of foreign entities from this registration, but MobileStar is not among them. Tex. Bus. & Orgs. Code 9.002. Although MobileStar asserted in its Complaint that it maintains its principal place of business at Legacy Town Center 1, 7160 North Dallas Parkway Suite No. 250, Plano, TX 75024 (D.N. 19 2), and has confirmed in other court papers that it is a Texas enterprise (Ex. 6 at 7), MobileStar did not comply with the registration requirement of Chapter Nine of the Texas Business and Organizations Code until December 2, 2013, more than a month after filing this action, when it finally registered as required with the Texas Secretary of State. Ex. 7. C. Plaintiffs Assert Claim 5 of the 131 Patent Against Defendants
The First Amended Complaint asserts that Samsung Mobile Communication Devices infringes at least method claim 5 of the 131 Patent. D.N. 19 94. LEGAL STANDARD A. Federal Rules of Civil Procedure 12(b)(1) and 12(b)(6)
If the court determines at any time that it lacks subject-matter jurisdiction, the court must dismiss the action. Fed. R. Civ. P. 12(b)(1); (h)(3). Standing is a constitutional requirement pursuant to Article III and it is a threshold jurisdictional issue. Abraxis Bioscience, Inc. v. Navinta
LLC, 625 F.3d 1359, 1363-64 (Fed. Cir. 2010) (citing Lujan v. Defenders of Wildlife, 504 U.S. 555, 560-61 (1992)). In considering a motion under Rule 12(b)(6) to dismiss a complaint, the Court must accept as true the well-pleaded factual allegations and any reasonable inferences to be drawn from them. See Tuchman v. DSC Communications Corp., 14 F.3d 1061, 1067 (5th Cir. 1994). To avoid dismissal for failure to state a claim, however, a plaintiff must plead specific facts, not mere conclusory allegations. Guidry v. Bank of LaPlace, 954 F.2d 278, 281 (5th Cir. 1992) (citation omitted). A complaint must contain sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its face. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (internal quotations and citations omitted). [W]here the well-pleaded facts do not permit the court to infer more than the mere possibility of misconduct, the complaint has alleged but it has not shown that the pleader is entitled to relief. Id. at 679 (quoting Fed. R. Civ. P. 8(a)(2)). B. Invalidity under 101 is Routinely Decided at the Pleading Stage and Prior to Claim Construction
The Federal Circuit has ruled that it is a question of law whether a patent claims patenteligible subject matter under 101. Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). Thus, courts routinely dismiss, at the pleading stage, patent infringement complaints on 101 grounds in situations where the patent claims can only be read plausibly to recite ineligible subject matter. Clear With Computers, No. 12-cv-00674-LED, Dkt. No. 116, at 6-7 (E.D. Tex., Jan. 21, 2014) (granting motion for judgment on the pleadings on patent ineligibility under 101); UbiComm, 2013 WL 6019203, at *6 ([d]ismissal under 12(b)(6) is appropriate in this case); see also buySAFE, Inc. v. Google Inc., No. 11-1282-LPS, 2013 WL 3936906, at *1 n.1 (D. Del. July 29, 2013); OIP Techs., Inc. v. Amazon.com, Inc., No. C-12-1233-EMC, 2012 WL 3985118, at *20 (N.D. Cal. Sept. 11, 2012); Cardpool, Inc. v. Plastic Jungle, Inc., No. C 12-04182 WHA, 2013 WL
245026, at *3 (N.D. Cal. Jan. 22, 2013) (finding no authority for the proposition that a patent may not be deemed ineligible subject matter on a motion to dismiss.).3 Courts also consistently rule on issues of patent-eligible subject matter under 101 prior to claim construction. See Bilski v. Kappos, 130 S. Ct. 3218, 3231 (2010); see also Bancorp Services, LLC v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1273 (Fed. Cir. 2012) (claim construction is not an inviolable prerequisite to a validity determination under 101); OIP Techs., 2012 WL 3985118, at *5 (concluding that claim construction is unnecessary to decide motion to dismiss based on 101); CyberFone Sys., LLC v. Cellco Pship, 885 F.Supp.2d 710, 715 (D. Del. 2012) (conducting 101 analysis without claim construction); Cardpool, 2013 WL 245026, at *4 (dismissing the case on 101 grounds because the basic character of the claimed subject matter is readily ascertainable from the face of the patent.). Indeed, Judge Davis of this Court recently affirmed that a Markman hearing is not necessary at this stage. Clear With Computers, No. 12-cv-00674-LED, Dkt. No. 116, at 6-7 (E.D. Tex., Jan. 21, 2014). The Court thus rejected Plaintiffs argument that a motion for judgment on the pleadings was premature prior to formal claim construction and ultimately granted Defendants motion without a claim construction hearing. Id.
In certain situations, fact development may be necessary to determine whether a patent embraces an abstract idea, including whether there exist sufficient limitations that narrow or tie the claims to specific applications of an otherwise abstract concept. Ultramercial, Inc. v Hulu, LLC, 722 F.3d 1335, 1339 (Fed. Cir. 2013). This is not one of those situations. No fact development will change the fact that claim 5 of the 131 Patent claims an abstract idea and that the claim language provides no meaningful limitation on the claim.
ARGUMENT I. The Court Should Dismiss Claim 5 of the 131 Patent For Failure to State a Claim A. Claim 5 of the 131 Patent Does Not Claim Patent-Eligible Subject Matter
Claim 5 covers an abstract idea and thus falls outside of the bounds of patentable subject matter under 101. Claim 5 also does not claim any meaningful limitations that restrict the abstractness of the claimed method to an actual concrete application. Finally, claim 5 fails the machine-or-transformation test because it is not tied to a particular machine or apparatus and it does not transform a particular article into a different state or thing. B. Claim 5 of the 131 Patent Claims a Method for the Abstract Idea of Notifying a User of an Incoming Communication
The Supreme Court has long recognized that abstract ideas are unpatentable under 101. Gottschalk v. Benson, 409 U.S. 63, 67 (1972). In determining whether a patent claim covers only an abstract idea as opposed to an application of that idea, the relevant inquiry is whether the claim, as a whole, includes meaningful limitations. Ultramercial, 722 F.3d at 1344. Claim 5 attempts to patent a method on the abstract idea of notifying a user of an incoming communication event, claiming: 5. A method of notifying a user of an incoming communication event, comprising: determining a characteristic of the communication event; selecting a notification based on the characteristic; sending the user the selected notification; receiving a selection from the user indicating a format for delivery of further notification information regarding the communication event; and allowing the further notification information regarding the communication event to be sent to the user in the selected format. Ex. 8 at 10:4-14.
Claim 5 is, in essence, a claim on the abstract idea of a conditional action i.e., notifying a user of a communication event if and when such a communication event occurs. The recent UbiComm case is instructive. There, the court considered a claim that described the following steps of a conditional action: (1) select an action to occur; (2) select a machine-based triggering parameter; (3) select a user-based triggering parameter; (4) monitor the two parameters; (5) determine if the parameters are triggered; and (6) if so, take the action selected in step (1). Id. at 2013 WL 6019203 *3. The UbiComm court concluded that the claim itself is simply an embodiment of a conditional action. Id. The elements of the claim 5 are also, at core, the steps for the abstract idea of a conditional action. The action is notifying the user of a communication event through a series of steps that involve, (a) determining a characteristic; (b) selecting a notification; (c) sending the selected notification; (d) receiving a selection from the user; and (e) allowing further notification information to be sent. This action is triggered by a condition, namely, an incoming communication event. Like the claim at issue in UbiComm, claim 5 describes, at best, an action that is triggered by receipt of a conditional incoming communication event and is unpatentable. Moreover, this generically-described4 method for notifying a user of an incoming communication event is even more abstract than other ideas that the Supreme Court and the Federal Circuit have held to be unpatentable, including hedging risk (Bilski, 130 S. Ct. at 3231), and processing information through a clearinghouse (Dealertrack, 674 F.3d at 1334).
Although the language purports to be a patentable process and is adorned with language traditionally indicative of a patentable process, (e.g., determining, selecting, etc.) these formalities are not enough to transform the highly-generalized claim language into a patentable process. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1300 (2012) (simply appending conventional steps, specified at a high level of generality, to . . . abstract ideas cannot make those . . . [abstract] ideas patentable.).
C.
The Claim Language Does Not Meaningfully Limit the Abstract Idea to a Concrete Application
Once an abstract idea is identified the court must then determine whether the patent claim includes limitations that narrow the scope of the claim so that it does not cover the full abstract idea. Ubicomm, 2013 WL 6019203 at *4. A claim is not meaningfully limited if it contains only insignificant or token pre- or post-solution activity such as identifying a relevant audience, a category of use, field of use, or technological environment. Ultramercial, 722 F.3d at 1346. Nor is a claim meaningfully limited if the steps of the claim must be taken in order to apply the [abstract idea] in question or are a routine and conventional aspect of the abstract idea. Id. at 1348. Indeed, the Ubicomm court concluded that limitations simply requiring two general purpose computers do[] nothing to transform a nonpatentable abstract idea into a patentable invention. Ubicomm, 2013 WL 6019203 at *5. Here, claim 5 is not limited at all. The claim fails to describe the use of any system, machine, transformation, programming, or hardware used to actually implement the claimed method. In fact, the claim is completely untethered to an application in even the most generally-described realm of art or technology. This complete lack of limitation falls far short of cases that have found even greater limitations to be insufficient.5 See Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013) (finding that the claim language did not meaningfully On December 6, 2013, the Supreme Court granted certiorari of the Federal Circuits decision in CLS Bank Intern. v. Alice Corp. Pty. Ltd., 717 F.3d 1269 (Fed. Cir. 2013), to consider the question of [w]hether claims to computer-implemented inventions including claims to systems and machines, processes, and items of manufacture are directed to patent-eligible subject matter within the meaning of 35 U.S.C. 101 as interpreted by this Court. Alice Corp. Pty. Ltd. v. CLS Bank Intl, 134 S.Ct. 73 (2013); Petition for a Writ of Certiorari at i, Alice Corp. Pty. Ltd. v. CLS Bank Intl, 2013 WL 4768483 (U.S. Sept. 4, 2013). The Federal Circuit held that the claims at issue, which recite computer-implemented systems and methods for conducting financial transactions where a third party settles obligations between a first and a second party so as to eliminate counterparty or settlement risk, are invalid under 35 U.S.C. 101. CLS Bank, 717 F.3d at 1273.
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limit the abstract idea even where the specification contained detailed software guidelines and even where the claims themselves contained generalized software components). The failure to
meaningful limit the claim renders the claim unpatentable. Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1349 n.2 (Fed. Cir. 2013) (requiring that a claim to an abstract idea contain meaningful limitations in the claim [that] make it clear that the claim is not to the abstract idea itself, but to a non-routine and specific application of that idea.) (emphasis added). Additionally, claim 5s lack of a meaningful limitation is similar to the lack of limitation in Clear With Computers. Compare Clear With Computers, No. 12-cv-00674-LED, Dkt. No. 116, at 13 (characterizing the claim at issue as: receive a product query, determine the customization options and their availability inventory, prepare a list of the customization options, and present the list), with Ex. 8 at 10:4-14 (receive a communication, determine a characteristic about the communication, send a notification to a user about the communication, receive from the user a selection of a format to send more notification information about the communication, send more notification information about the communication in the selected format). Further, performing a conditional action under the guise of exchanging information through notifications and communication events provides no meaningful limit on the basic abstract claim. Bilski, 130 S. Ct. at 3229. Ultimately, claim 5 is not limited to even a general field of technology or art, and instead impermissibly implicates any possible apparatus used in any area of communication, and for any communication purpose.6
Supreme Court precedent is in accord. In Gottshalk v. Benson, the patent claimed a process for using a computer algorithm to convert binary-coded numerals into pure binary numerals, which could otherwise be accomplished without a computer. 409 U. S. at 67. The claims were not limited to any particular art or technology and instead purported to cover any use of the claimed method in a general-purpose digital computer of any type. Id. at 64. The Court held the patent invalid, as the claim would wholly preempt the mathematical formula itself. Id. at 71-72. In Parker v. Flook, the Court considered a computerized process for updating alarm 10
D.
Claim 5 of the 131 Patent Also Fails the Machine-or-Transformation Test
Applying the machine-or-transformation test to claim 5 leads to the same result. Claim 5 of the 131 Patent neither (1) is tied to a particular machine or apparatus nor (2) transforms a particular article into a different state or thing. Bilski, 130 S. Ct. at 3227. Claim 5 fails the first prong of the machine-or-transformation test because it is not tied to a particular machine. In fact, Claim 5 is not tied to any machine, general or particular. Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1273, 1278 (Fed. Cir. 2012). Claim 5 fails to describe the use of any system, machine, transformation, programming, or hardware used to actually implement the method. The complete failure to link the claim to a machine necessarily prevents a machine from imposing meaningful limits on the claim, which is necessary to satisfy the first prong of the machine-or-transformation test. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (To impart patent-eligibility to an otherwise unpatentable process under the theory that the process is linked to a machine, the use of the machine must impose meaningful limits on the claims scope.) (citations and quotations omitted). Claim 5 also fails the second prong of the machine-or-transformation test because the claimed process is not transformative. Specifically, the method does not claim to transform the communication event. Rather, it simply receives a conditional communication event and triggers a series of actions about how to further communicate the communication event. Clear With Computers, No. 12-cv-00674-LED, Dkt. No. 116, at 11 (E.D. Tex., Jan. 21, 2014) (rejecting limits in the petrochemical industry. 437 U.S. 584, 585-86 (1978). The Court found the claims were not patent-eligible because they disclosed only that a particular equation could be usefully applied in the petrochemical industry, i.e., insignificant post-solution activity. Id. at 590, 595. By contrast, in Diamond v. Diehr, the claims at issue were drawn to processes for curing synthetic rubber. 450 U.S. 175, 177 (1981). The Court found the claims patent-eligible, notwithstanding the fact that in several steps of the process a mathematical equation and a programmed digital computer are used, because the applicant claimed a specific application, rather than an abstract idea in isolation. Id. at 185.
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Plaintiffs transformation argument because the invention received queries, it did not transform them). At most, the method merely manipulates or reorganizes one communication event into a second communication (the notification) and a third communication (allowing for further notification information to be sent in a selected format). The Federal Circuit has made clear that such a process does not constitute transformation and cannot satisfy the second prong of the machine-or-transformation test. Cybersource, 654 F.3d at 1375 (The mere manipulation or reorganization of data . . . does not satisfy the transformation prong.). II. The Court Should Dismiss This Action for Lack of Subject-Matter Jurisdiction MobileStar had no standing to pursue its claims when Plaintiffs filed their Complaint, and the Court must dismiss this action for lack of subject-matter jurisdiction. A. MobileStar Had No Standing To File This Action
Texas law is simple and clear: as a foreign limited liability corporation, MobileStar must register with Texas under Chapter Nine of the Texas Business and Organizations Code. Tx. Bus. Org. 9.001; see supra at 4. Specifically, Texas required MobileStar to file an Application for Registration of a Foreign Limited Liability Company (the Application) with the Office of the Secretary of State of Texas. Tx. Bus. Org. 9.001. Until it filed an Application, MobileStar could not bring suit within this state, including in this Court: A foreign filing entity or the entitys legal representative may not maintain an action, suit, or proceeding in a court of this state, brought either directly by the entity or in the form of a derivative action in the entitys name, on a cause of action that arises out of the transaction of business in this state unless the foreign filing entity is registered in accordance with this chapter. Tx. Bus. Org. 9.051. Although Plaintiffs filed this suit on October 31, 2013, MobileStar did not file its Application until December 2, 2013. See supra at 4. Thus, when it filed its Complaint, MobileStar had no standing to appear before this Court and cannot pursue it.
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This rule applies not only to suits in Texas state courts, but to federal courts in Texas, which follow the general rule that, where a foreign corporation has established a continuing presence in a state for the purpose of doing business within that state, it is fair that [the foreign corporation] be required to comply with qualification statutes. Radio WHKW, Inc. v. Yarber, 838 F.2d 1439, 1443 (5th Cir. 1988) (quoting Diversacon Indus. v. National Bank of Commerce, 629 F.2d 1030, 1034 (5th Cir. 1980) (alteration in original)); see, e.g., Atrium Companies, Inc. v. ESR Associates, Inc., No. 11 Civ. 1288, 2012 WL 4215103 at *7 (S.D. Tex. Sept. 18, 2012). Failure to satisfy this rule deprives plaintiffs of standing to sue. See, e.g., Terroco Indus. Ltd. v. Am. Home Assur. Co., No. 07 Civ. 437, 2009 WL 901488 at *3 (E.D. Tex. Mar. 30, 2009) (analyzing challenge to subject matter jurisdiction based on compliance with Tx. Bus. Org. 9.051). Thus, MobileStar cannot proceed with this action if, as its complaint alleges, certain of the transactions from which its suit arises are intrastate transactions. Terroco, 2009 WL 901488 at *3 (finding that a certificate of filing was not required to maintain suit in Texas, because the transactions at issue were not intrastate transactions under Tx. Bus. Org. 9.251(9)). In Eli Lilly & Co. v. Sav-On-Drugs, Inc., 366 U.S. 276 (1961), the Supreme Court addressed in detail how to separate interstate from intrastate commerce in this context. There, plaintiff Eli Lilly appealed from dismissal for failure to register, stating that its business in New Jersey was entirely in interstate commerce and arguing, upon that ground, that the attempt to require it to file the necessary information and obtain a certificate for its New Jersey business was forbidden by the Commerce Clause of the Federal Constitution. Id. at 277. The Supreme Court found that, although Eli Lilly had extensive interstate business, it also had intrastate business sufficient to allow application of the similar New Jersey statute: The record shows that the New Jersey trade in Lillys pharmaceutical products is carried on through both interstate and intrastate channels. Lilly manufactures these
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products and sells them in interstate commerce to certain selected New Jersey wholesalers. These wholesalers then sell the products in intrastate commerce to New Jersey hospitals, physicians and retail drug stores, and these retail stores in turn sell them, again in intrastate commerce, to the general public. 366 U.S. at 278. Because Eli Lilly participated in the intrastate portions of this commerce, the Court found, New Jersey law could bar its suit pending a corporate registration. Id. at 279-280. Precisely the same logic applies here. Plaintiffs allege infringing sales throughout the country, but specifically including intrastate commerce within Texas: Samsung, directly or through subsidiaries or intermediaries (including distributors, retailers, and others), ships, distributes, offers for sale, sells, and advertises (including the provision of an interactive web page) its products including its infringing products) and/or services in the United States, the State of Texas, and the Eastern District of Texas. . . . These infringing products and/or services have been and continue to be purchased and used by consumers in the Eastern District of Texas. Samsung has committed acts of patent infringement within the State of Texas and, more particularly, within the Eastern District of Texas. D.N. 1 8. Precisely as in Eli Lilly, plaintiffs here allege a multi-level chain of distribution, including distributors, retailers, and others, and culminating in sales to consumers in the Eastern District of Texas. Id. To hold under the facts above recited that plaintiffs allegations do not include doing business in [Texas] is to completely ignore reality. Eli Lilly, 366 U.S. at 280. Plaintiffs agree: in opposing Google Inc.s declaratory judgment action in California, they state: Nor did a substantial part of any act underlying the claim occur in California (id. 1391(b)(2)), since the claim is patent infringement and Rockstar and MobileStars effort to enforce[] these patent claims is ongoing in Texas. Ex. 6 at 7 (alteration and emphasis in original). B. Without MobileStar, this Action Should Be Dismissed
Rockstar cannot pursue this action alone. MobileStar is the owner of all rights, title, and interest in asserted U.S. Patent Nos. 6,037,937; 6,333,973; 6,463,131; 6,765,591; and 6,937,572, and the exclusive licensee of asserted U.S. Patent Nos. 5,838,551 and 6,128,298. D.N. 1 9-15. As a result, Rockstar does not have standing to pursue its claims itself, without MobileStar also appearing. 14
The Patent Act provides that a patentee shall have remedy by civil action for patent infringement. 35 U.S.C. 281 (1994). Courts have interpreted Section 281 to require that a suit for infringement be brought by a party holding legal title to the patent. See, e.g., Arachnid, Inc. v. Merit Indus., Inc., 939 F.2d 1574, 1578-79 (Fed. Cir. 1991). For the same policy reasons that a patentee must be joined in any lawsuit involving his or her patent, there must be joinder of any exclusive licensee. Aspex Eyewear, Inc. v. Miracle Optics, Inc., 434 F.3d 1336, 1344 (Fed. Cir. 2006) (citing Independent Wireless Tel. Co. v. Radio Corp., 269 U.S. 459, 466 (1926)) (remanding for the dispositive factual determination of whether an absent party was an exclusive licensee and thus necessary to the action). This point is not in dispute. To the contrary, in opposing Googles declaratory judgment action in the Northern District of California, Rockstar and MobileStar have vociferously argued that MobileStar is critical to any litigation regarding these patents: MobileStar is an indispensable party to this litigationit is the owner of five of the seven patents-in-suit and the exclusive licensee of the other two patents. In the absence of jurisdiction as to MobileStar, this action must be dismissed. E.E.O.C. v. Peabody Western Coal Co., 400 F.3d 774, 779-80 (9th Cir. 2005) (If an indispensable party cannot be joined, the action must be dismissed). Ex. 6 at 1. C. MobileStars Post-Litigation Registration Cannot Confer Standing, And Its Amended Complaint Cannot Cure Jurisdictional Defects
A court may exercise jurisdiction only if a plaintiff has standing to sue on the date it files suit. Abraxis Bioscience, Inc. v. Navinta, LLC, 625 F.3d 1359, 1364 (Fed. Cir. 2010); see also Keene Corp. v. United States, 508 U.S. 200, 207 (1993) (noting the longstanding principle that the jurisdiction of the Court depends upon the state of things at the time of the action brought) (citations omitted). Standing must exist when the original complaint is filed, as an amended complaint cannot cure defects in standing: The initial standing of the original plaintiff is assessed
15
at the time of the original complaint, even if the complaint is later amended. Schreiber Foods, Inc. v. Beatrice Cheese, Inc., 402 F.3d 1198, 1203 n.3 (Fed. Cir. 2005) (emphasis added). MobileStar cannot demonstrate that it had standing to sue when Plaintiffs commenced this action. In cases such as this one, where the plaintiff lacked standing at the outset, the suit must be dismissed, and the jurisdictional defect cannot be cured after the inception of the lawsuit. Abraxis, 625 F.3d at 1364 (quotation omitted). The Court should dismiss this action in its entirety. CONCLUSION For the reasons set forth above, Defendants respectfully request that the Court dismiss Plaintiffs asserted claim 5 of the 131 patent with prejudice for failure to comply with 35 U.S.C. 101; and also dismiss Plaintiffs First Amended Complaint due to MobileStars lack of standing to file Plaintiffs original complaint.
Dated: February 10, 2014
Respectfully submitted, /s/ J. Mark Mann ______________________ Attorneys for Defendants Samsung Electronics, Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC J. Mark Mann State Bar No. 12926150 G. Blake Thompson State Bar No. 24042033 MANN | TINDEL | THOMPSON 300 West Main Street Henderson, Texas 75652 Tel: (903) 657-8540 Fax: (903) 657-6003 Email: Mark@TheMannFirm.com
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CERTIFICATE OF SERVICE I hereby certify that on February 10, 2014, I electronically filed the foregoing document with the clerk of the court for the U.S. District Court, Eastern District of Texas, Marshall Division, using the electronic case filing system of the court. The electronic case filing system sent a Notice of Electronic Filing to the attorneys of record who have consented in writing to accept this Notice as service of this document by electronic means. /s/ J. Mark Mann __________________________________________ J. Mark Mann
17
Case 2:13-cv-00900-JRG Document 26-1 Filed 02/10/14 Page 1 of 3 PageID #: 185
Civil Action No. 13-cv-0900-JRG
DECLARATION OF JOSEPH MILOWIC III IN SUPPORT OF SAMSUNG DEFENDANTS MOTION TO DISMISS PLAINTIFFS FIRST AMENDED COMPLAINT PURSUANT TO THE FEDERAL RULES OF CIVIL PROCEDURE 12(b)(6) AND 12(b)(1) I, Joseph Milowic III, hereby declare as follows: 1. I am a partner with the law firm of Quinn Emanuel Urquhart & Sullivan, LLP. I
have personal knowledge of the facts set forth in this declaration and, if called upon as a witness, I could and would testify to such facts under oath. 2. I offer this declaration in support of Samsungs Motion to Dismiss Plaintiffs First
Amended Complaint Pursuant to the Federal Rules of Civil Procedure 12(b)(6) and 12(b)(1). 3. Attached hereto as Exhibit 1 is a true and correct copy of Robert McMillan, How
Apple and Microsoft Armed 4,000 Patent Warheads, Wired Enterprise, May 21, 2012. 4. Attached hereto as Exhibit 2 is a true and correct copy of an excerpt from the ip-
rockstar.com website page titled About Rockstar.
5.
Attached hereto as Exhibit 3 is a true and correct copy of an excerpt from the
United States Patent And Trademark Office website (www.uspto.gov/assignments) Patent Assignment Assignor Details for Rockstar Bidco, LP. 6. Attached hereto as Exhibit 4 is a true and correct copy of the Certificate of
Limited Partnership of Rockstar Consortium US LP. 7. Attached hereto as Exhibit 5 is a true and correct copy of the Certificate of
Formation of MobileStar Technologies LLC. 8. Attached hereto as Exhibit 6 is a true and correct copy of the public redacted
version of Defendants [Rockstar Consortium U.S. LP and MobileStar Technologies LLC] Motion to Dismiss Under Fed. R. Civ. P. 12(b)(2) and 12(b)(3) for Lack of Personal Jurisdiction and Improper Venue and to Decline Exercising Jurisdiction Under the Declaratory Judgment Act, Dkt. No. 19-3, Case 4:13-cv-05933-CW, dated January 23, 2014. 9. Attached hereto as Exhibit 7 is a true and correct copy of MobileStar
Technologies LLCs Application for Registration of a Foreign Limited Liability Company. 10. 6,463,131. I declare under penalty of perjury that the foregoing are true and correct. Attached hereto as Exhibit 8 is a true and correct copy of United States Patent No.
Dated: February 10, 2014
Respectfully submitted, /s/ Joseph Milowic III ______________________ Joseph Milowic III josephmilowic@quinnemanuel.com QUINN EMANUEL URQUHART & SULLIVAN, LLP 51 Madison Avenue, 22nd Floor New York, New York 10010 Telephone: (212) 849-7000 Facsimile: (212) 849-7100
02198.00011/5756717.1
CERTIFICATE OF SERVICE I hereby certify that on February 10, 2014, I electronically filed the foregoing document with the clerk of the court for the U.S. District Court, Eastern District of Texas, Marshall Division, using the electronic case filing system of the court. The electronic case filing system sent a Notice of Electronic Filing to the attorneys of record who have consented in writing to accept this Notice as service of this document by electronic means. /s/ J. Mark Mann J. Mark Mann
02198.00011/5756717.1
EXHIBIT 1
Case 2:13-cv-00900-JRG Document 26-2 Filed 02/10/14 Page 2 of 826 PageID #: 189 Scott Widdowson is a specialist, one of 10 reverse-engineers working full time for a stealthy company funded by some of the biggest names in technology: Apple, Microsoft, Research In Motion, Sony, and Ericsson. Called the Rockstar Consortium, the 32-person outfit has a singleminded mission: It Enterprise
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Inside the reverse-engineering lab at Rockstar, Scott Widdowson is looking for products that infringe on the company's 4,000 patents. Photo: Rockstar In many ways, Scott Widdowson is your typical electrical engineer. Most days, when the weathers good, he bikes the 15 miles along the Ottawa River to his companys offices in the west end of the Canadian capital. Once there, he settles in for a day of reading technical
Case 2:13-cv-00900-JRG Document 26-2 Filed 02/10/14 Page 3 of 826 PageID #: 190 specifications, poring over computer textbooks, or prying apart consumer electronics logic probe in one hand and a soldering iron in the other. But Widdowson is a specialist. Hes one of 10 reverse-engineers working full time for a stealthy company funded by some of the biggest names in technology: Apple, Microsoft, Research In Motion, Sony, and Ericsson. Called the Rockstar Consortium, the 32-person outfit has a single-minded mission: It examines successful products, like routers and smartphones, and it tries to find proof that these products infringe on a portfolio of over 4,000 technology patents once owned by one of the worlds largest telecommunications companies. When a Rockstar engineer uncovers evidence of infringement, the company documents it, contacts the manufacturer, and demands licensing fees for the patents in question. The demand is backed by the implicit threat of a patent lawsuit in federal court. Eight of the companys staff are lawyers. In the last two months, Rockstar has started negotiations with as many as 100 potential licensees. And with control of a patent portfolio covering core wireless communications technologies such as LTE (Long Term Evolution) and 3G, there is literally no end in sight. Pretty much anybody out there is infringing, says John Veschi, Rockstars CEO. It would be hard for me to envision that there are high-tech companies out there that dont use some of the patents in our portfolio. Rockstar has its roots in last years high-profile auction of 6,000 patents owned by the bankrupt Canadian telco giant Nortel. Google made headlines when it cast the first bid of $900 million for the portfolio, but the search giant was soon in a heated bidding war with a consortium of rivals led by Apple and Microsoft. The final sale price was $4.5 billion, and Rockstar Bidco, as it was then called, was the winner. Pretty much anybody out there is infringing, I would think. It would be hard for me to envision that there are high-tech companies out there that dont use some of the patents in our portfolio. John Veschi Since then, Rockstar Bidco has given way to a new entity, called Rockstar Consortium. And for the first time, the consortiums strategy for the Nortel patents is clear. Ownership of about 2,000 of the patents was shifted to the individual companies that won the auction: Apple, Microsoft, et al. But the remaining 4,000 have been transferred to Rockstar Consortium, which is now a pure patent exploitation operation funded by all of the winning bidders except EMC, which has dropped out of the picture, according to Veschi. Rockstar is a special kind of company. Because it doesnt actually make anything, it cant be countersued in patent cases. That wouldnt be the case with Apple or Microsoft if they had kept the patents for themselves. And because its independent, it can antagonize its owners partners and customers in ways that its owner companies could not. The principals have plausible deniability, says Thomas Ewing, an attorney and intellectual property consultant. They can say with a straight face: Theyre an independent company. We dont control them. And theres some truth to that. When the Rockstar Bidco group purchased Nortels patents, the U.S. Department of Justice took a look at the deal, as part of a broader investigation into several large technology patent sales. The DoJ was concerned that patent attacks might somehow be used to knock Rockstars competitors out of the smartphone or tablet market. But in February, the DoJ closed its investigation, in part because Microsoft and Apple had promised to license many of their core wireless patents under reasonable terms to anyone who needed them. But the new company Rockstar Consortium isnt bound by the promises that its member companies made, according to Veschi. We are separate, he says. That does not apply to us. Rockstar owners could choose to simply recoup their investment by licensing the patents and then reselling them much as Microsoft did recently when it bought patents from AOL and
Case 2:13-cv-00900-JRG Document 26-2 Filed 02/10/14 Page 4 of 826 PageID #: 191 then turned around and sold them to Facebook. Or Rockstar could play into the strategic interests of its owner companies by going after Google, and Android partners such as HTC, says Colleen Chien, a law professor at Santa Clara University who has made a study of the market for technology patents. Microsoft, Ericsson and EMC declined to comment for this story. The other Rockstar owners didnt respond to messages. To say that technology patents have become more important over the past decade is to risk comic understatement. A patent is essentially a government-sanctioned monopoly designed to give the inventor a two-decade head start to commercialize any new technology. But in practice, patents are weapons. Technology companies load up on patents like Cold War nations stockpiling nuclear bombs, hoarding them for use when an important market is at stake. And few companies have been loading up on patents as aggressively as Apple and Google, two companies that had nothing to do with the smartphone market 10 or 15 years ago when many of Nortels wireless patents were being developed. Many companies stockpile patents for defensive purposes, but others actively look for ways they can make money from them big money. The kind of reverse-engineering practiced by Widdowson happens more often than most people realize. Its just not widely discussed. Big companies are doing this work with a combination of their own resources and outsourcing, says Fas Mosleh, senior vice president of IP transactions with Kanzatec, a Los Altos, California, company that sells the type of reverse-engineering services that Widdowson practices in Rockstars Ottawa lab. The companies that do this are big because the costs are big. When patent fights go to trial, the legal fees typically run into the millions of dollars. This is the sport of kings, says Ewing. Ordinary people cant play in this arena. But the rewards can be great too. In 2007, a U.S. jury hit Microsoft with $1.5 billion in damages after finding that it violated Lucents MP3 patents (that verdict was later appealed, and most of the case settled out of court). On Friday, the U.S. International Trade Commission threatened to halt the import of all Motorola Mobilitys Android phones and tablets after finding that Motorola had violated a Microsoft patent on how to fire off meeting requests from a mobile device.
Welcome to Ground Zero
Right now, ground zero for the patent wars is the smartphone market, where everyone from Google, Oracle, Microsoft, and Apple to Motorola, HTC and Samsung are battling it out in the courts. Some companies use patents as a competitive weapon, launching legal wars of attrition against competitors. Others find that they can make big money in some areas without necessarily having to win in the marketplace. Qualcomm makes nearly $4 billion annually licensing its mobile patents. IBM, one of the top patent-holders on the planet, makes over $1 billion each year. The creation of these conglomeration of patents what this does is create a barrier to entry for the little guy. Julie Samuels Veschi says that he and not Rockstars board of directors is calling the shots when it comes to licensing deals. The companys mission is to manage the patent portfolio to achieve a return on investment, probably through a combination of licensing and sales, says Veschi. So, in some cases, we might be selling some patents, and in other cases, we might be licensing some patents. Rockstar hasnt sued anyone yet, but Veschi expects that to happen too. Because it doesnt actually produce anything, some knock Rockstar as a straight-up patent troll. This deal is indicative of a much larger fundamental problem that we see today, says Julie Samuels, a staff attorney with the Electronic Frontier Foundation. She says she hears from small companies regularly who get pressured out of the U.S. market because they simply
Case 2:13-cv-00900-JRG Document 26-2 Filed 02/10/14 Page 5 of 826 PageID #: 192 cant defend themselves against massive patent claims, whether legitimate or not. None of them want to talk to the press, though, for fear of drawing attention and possibly more legal troubles to themselves. Ultimately, Samuels worries that patents especially software patents will hurt innovators rather than help them. And thats exactly the opposite of what patents are supposed to do. The creation of these conglomerations of patents what this does is create a barrier to entry for the little guy, Samuels says. It makes it so much harder to break into the market if you are a creator or an innovator.
After surviving the Nortel meltdown, Rockstar CEO John Veschi now controls 4,000 patents. Photo: Dan Krauss/Wired
Building in the Nortel Crater
With just 32 employees, Veschis company is tiny, but it has a big legacy. Its the final resting place of the patent portfolio of Canadas most storied technology company, Nortel Networks, a telecommunications giant whose origins date back to 1882 when it was the telephone manufacture and repair department of the Bell Telephone Company of Canada. Threequarters of Rockstars employees, including Veschi and Widdowson worked at Nortel and kept their jobs by helping the creditors understand and then sell Nortels patent portfolio. Nortel flamed out spectacularly in 2009, in a complex international bankruptcy that cost more than 30,000 employees their jobs, left others without pension and life insurance coverage, and saw several top executives face fraud charges in a trial thats still ongoing. How the hell did you guys go bankrupt? Why werent you Google? Why werent you Facebook? John Veschi Employee pensions were slashed in half when the company could no longer meet payment obligations. Some workers lost life insurance or medical benefits when the companys selffunded programs collapsed. And theyre still hurting three years later, waiting for courts in
Case 2:13-cv-00900-JRG Document 26-2 Filed 02/10/14 Page 6 of 826 PageID #: 193 the United States, Canada, and the United Kingdom to hammer out final bankruptcy settlements, says Anne Clark-Stewart, a spokeswoman with Nortel Retirees and Former Employees Protection Canada, a group representing more than 20,000 former Nortel employees. But what was a tragedy for the companys employees turned out to be an unprecedented opportunity for Rockstars investors. Nortel had a massive patent portfolio nearly 9,000 patents in all most of them related to computer networking. And according to Veschi, they were high-quality patents the kind that youd normally find in a Bell Labs or an IBM; the kind that would be likely to stand up in a court case. Nortels patents covered broad areas of wireless networking, telecom switching, internet routers, modems, personal computers, even search and social networking. A lot of people are still surprised to see the quality and the diversity of the IP that was in Nortel, he says. And the fundamental question comes back: How the hell did you guys go bankrupt? Why werent you Google? Why werent you Facebook? Why werent you all these things, because you guys actually had the ideas for these business models before they did? They were within a Bell Labs-y kind of environment, and maybe the wherewithal of turning them into businesses wasnt necessarily there. Nortel went bankrupt because it was mismanaged and, ultimately, fizzled out in the marketplace. Best known as a maker of telephone-company hardware and corporate phone systems, it once boasted more than 90,000 employees. But it lost out in the data center to Cisco, and it was outmaneuvered in its traditional telecom business by Chinas Huawei.
No More Friendly Canadians

When Veschi signed on in 2008, Nortel hadnt done much work to license its intellectual property. It was run by friendly Canadians who didnt want to antagonize partners and customers by suing them. But the company had been remarkably adept at filing patents. We had huge patent ceremonies in the CTO group that we made a big production of every year, says Gillian McColgan, a former Nortel technical manager who is now chief technology officer with Rockstar. Nortels patents sold for $4.5 billion $1.3 billion more than the combined value of all of the companys business units. Employees were paid bonuses, and sometimes, theyd join up with senior management at fancy award ceremonies held at swank venues such as the five-star Adolphus Hotel in Dallas, home to Queen Elizabeth II whenever shes in Texas. Nortel had long patented its inventions, but encouraged by former CEO Mike Zafirovski, it started doing something called defensive patenting. Engineers were encouraged to file patents that could be used to fire back in the event that someone brought a patent suit against Nortel. A large focus of our patenting efforts had been around in the pre-bankruptcy era, had been trying to identify what our competitors might do, and laying down inventions in those spaces to protect ourselves, McColgan says. We ended up with a large portfolio of patents that are directed toward products and areas of technology that our competitors were working in, where we didnt necessarily have products ourselves, she adds. When Nortel went belly up, patents representing tens of billions of dollars in research and development were suddenly made available on the open market. It was an unprecedented opportunity for patent buyers. There had never been anything like it up to this point, not even close, says David Descoteaux, a banker with Lazard, an investment firm that advised Nortel through the bankruptcy.
Case 2:13-cv-00900-JRG Document 26-2 Filed 02/10/14 Page 7 of 826 PageID #: 194 It wasnt just the quality of the patents that attracted serious investors. It was the sheer volume. Having thousands of high-quality patents to aim at a competitor is a uniquely useful weapon in this new sport of kings. Patent attorneys love large patent portfolios because they make negotiations easier, says Thomas Ewing, the IP consultant. When you get to these big numbers youre not talking about merits anymore. The merit discussion just goes out the window, he says. The reason? Whey youre paying lawyers between $10,000 to $15,000 per patent to drill down and research each patent, its usually less expensive to cut a licensing deal. Anything over 200, nobodys talking about merits, he says. But Google, Apple, and Microsoft saw the same promise as Veschi, and soon, they marshaled forces for a bidding war over Nortels patent portfolio. When the dust settled, Nortels patents sold for $4.5 billion $1.3 billion more than the combined value of all of the companys business units.
The $4.5 Billion Sales Job
John Veschi and his small team of former Nortel employees had front-row seats to the bidding war. In fact, they deserve a lot of the credit for driving the patent portfolio sale as high as it went. Veschi is serious and intense. A half-marathon runner who likes to talk, but with a peripatetic way of qualifying his thoughts in mid-sentence. His first job out of school was as an officer at Fort Monmouth, New Jersey, the now-decommissioned Army signals facility that was once the workplace of Julius Rosenberg. Veschi signed on to run Nortels licensing business in the summer of 2008 just six months before the company declared bankruptcy. He had run licensing practices at Lucent and semiconductor maker LSI before Nortel, and he saw a rare opportunity: a vast portfolio of top -quality patents that nobody had yet tried to license. I was getting my equity struck at a nice low point and the future was rosy and I could help make it that way. We could be less wimpy about our IP. John Veschi He thought it was the perfect time to jump onboard and work on building a licensing business that rivaled Lucent or IBM. I was getting my equity struck at a nice low point and the future was rosy and I could help make it that way, he said, because we could be less wimpy about our IP. What he ended up with was a quick hiring freeze and then, after bankruptcy, the job of analyzing Nortels 8,500 patents, figuring out which ones should be sold with the companys business units, and which ones could be sold separately at auction. When this job called the Patent Segmentation Exercise was done, Veschi had a portfolio of 6,000 patents to put up at auction. Its a remarkable story. Veschi and his small team ended up riding along with Nortel right through the bankruptcy, and ultimately selling Nortel executives and creditors on the idea that the patents should be split apart from the rest of companys assets and sold separately. That wasnt immediately obvious to some creditors and company executives who thought they could bump up the sale prices of Nortels business units by rolling in more patents. It was at the time controversial, says Michael Lasinski, an early ally of Veschis who worked on a committee for unsecured Nortel creditors during the bankruptcy. Lasinski was quick to see the value of Nortels patents because, like Veschi, hed had some experience in the patent marketplace. Hed worked at the Ocean Tomo Patent Brokerage, a company that had pioneered the idea of Sothebys-style patent auctions. Veschi and his team started building financial models. From his time at Lucent, he knew how to show just how much Nortels patent portfolio could bring in. At first, some executives thought it would be less than a billion dollars. But with Lasinskis support the models showed
Case 2:13-cv-00900-JRG Document 26-2 Filed 02/10/14 Page 8 of 826 PageID #: 195 a lot more money. The team built a database of Nortels patents and mapped them out to current and emerging networking standards to show where they might play. Then came the sales job of proving just how valuable these patents were to potential buyers. Google was first out of the gate, with a $900 million stalking horse bid a bid pre-approved by Nortels management and creditors aimed at establishing the minimum amount that the patents would sell for in bankruptcy auction. It didnt take long for others to jump in. At first, Apple, Intel, RIM, and others were interested, as was a patent company called RPX, which buys up patents defensively, so they cannot be used against its investors. By the time the bidding got to $4.5 billion, there were just two groups: Rockstar, and a group called Ranger. Ranger was Intel and Google.
Does Rockstar Own 4G?

After the Rockstar group acquired the 6,000 Nortel patents, about 2,000 were transferred to the companies behind the consortium. But 4,000 remained with Rockstar the company, which is actively trying to make money from them. It turned out that Nortel had patents that covered parts of the up-and-coming mobile data technology called Long Term Evolution. Also known as 4G, this is the standard now bringing speedier internet access to mobile phones. Many of those patents are now owned by Rockstar and could be enforced against mobile phone companies Google, for example in the coming months. You knew you were making tens or hundreds of millions of dollars difference. Scott Widdowson But Nortels patents also covered core networking technologies used by routers and switches and many other areas. The European Telecommunications Standards Institute, the standards body for the European telecommunications industry, has a database that lists whose patents may apply to emerging telecommunications standards, and it lists 43 standards areas, many relating to LTE, where Nortel patents some of them now transferred to Rockstar are in play. Close to 25 of Rockstars employees are former Nortel workers, including lawyers, managers and engineers. Having longtime Nortel engineers like Widdowson and McColgan people who know the business and the patent portfolio is going to help Veschi do a better job in figuring out where to go looking for licensing fees. Widdowson wont say what hes working on, by the way, except that its related to consumer telecommunications technology. But thats not why Widdowson says he stuck it out through the bankruptcy. He was offered another job, and he turned it down. Former coworkers might have found this a little strange, but it turned out that Widdowson liked the work he was doing. The mesh of the legal and technical work was a new challenge for him, but there was another reason he stuck with it. He felt like he was helping his former Nortel colleagues who were hurting because of the bankruptcy. McColgan reports a similar story. Even though she had colleagues telling her she was off her rocker, she stuck it out with the patent work because she thought she could make a difference and increase the amount paid back to Nortels workers. You knew you were making tens or hundreds of millions of dollars difference, Widdowson says, which is not usual for someone who is an engineer. Pages:1 2 3 View All
Robert McMillan is a writer with Wired Enterprise. Got a tip? Send him an email at: robert_mcmillan [at] wired.com. PGP fingerprint 7658 D551 97F1 D65D 7695 279D DFBB 392E 53F7 DC7C Read more by Robert McMillan Follow @bobmcmillan on Twitter.
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Jesse Petersen
This is exactly what's wrong with the patent system.
Scott Sterling
In a free enterprise system, if you legitimately own a patent, what is wrong with asking another company that wants to use your patent to pay a small fee? Is it complicated and messy? Of course. But what exactly is wrong with it?
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Patent Assignment Assignor Details
Assignor Name : ROCKSTAR BIDCO, LP

Total Assignments: 1258 Assignment: 101
Reel/Frame: 029992/0115 Recorded: 03/13/2013 A ttorney Dkt #: 337051.01 Conveyance: ASSIGNMENT O F ASSIGNO R S INTER EST (SEE DO C UMENT FO R DETAILS). Pages: 16
Assignor
1 1 R O C KSTAR BIDC O , LP MIC R O SO FT C O R PO R ATIO N O NE MIC R O SO FT W AY R EDMO ND, W ASHINGTO N 98052 Exec Dt: 05/10/2012
Assignee
Property
Pat # 8516349 Pub # A pp # US20120060069 12874696
Correspondence name and address

W O LFE-SBMC 601 W MAIN AVENUE SUITE 1300 SPO KANE, W A 99201
Assignment: 102
Reel/Frame: 030147/0562 Recorded: 04/03/2013 A ttorney Dkt #: R O C KSTAR PATENTS Conveyance: ASSIGNMENT O F ASSIGNO R S INTER EST (SEE DO C UMENT FO R DETAILS). Pages: 16
Assignor
1 1 R O C KSTAR BIDC O , LP MIC R O SO FT C O R PO R ATIO N O NE MIC R O SO FT W AY R EDMO ND, W ASHINGTO N 98052 Exec Dt: 05/10/2012
Assignee
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Assignor
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Assignee
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Assignor
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Assignment: 109
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Assignment: 113
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Assignment: 118
Assignor
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Assignment: 119
Assignor
1 R O C KSTAR BIDC O , LP Exec Dt: 05/11/2012
Assignee
1 APPLE INC. 1 INFINITE LO O P C UPER TINO , C ALIFO R NIA 95014
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Assignment: 120
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Assignor
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Assignor
1 1 R O C KSTAR BIDC O , LP APPLE, INC. O NE INFINITE LO O P C UPER TINO , C ALIFO R NIA 95014 Exec Dt: 05/11/2012
Assignee
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JAC KIE PITR E 1120 SO UTH C APITAL O F TEXAS HW Y BUILDING 2, SUITE 300 AUSTIN, TX 78746
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Assignor
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Assignor
1 1 R O C KSTAR BIDC O , LP APPLE INC. 1 INFINITE LO O P Exec Dt: 05/11/2012
Assignee
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Assignor
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Assignee
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Assignor
1 1 R O C KSTAR BIDC O , LP APPLE INC. 1 INFINITE LO O P C UPER TINO , TEXAS 95014 Exec Dt: 05/11/2012
Assignee
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Assignment: 183
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MEYER TO NS HO O D KIVLIN KO W ER T & GO ETZEL
PO BO X 398 AUSTIN, TX 78767-0398
Assignment: 184
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Assignment: 185
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Assignment: 186
Assignor
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Assignment: 188
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Assignment: 190
Assignor
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Assignor
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Assignment: 193
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Assignor
Assignee
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Assignment: 195
Reel/Frame: 028504/0878 Pages: 58
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Assignor
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Assignment: 196
Assignor
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Pat # 8441918 Pub # A pp # US20120027136 13204238
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Assignor
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MEYER TO NS HO O D KIVLIN KO W ER T & GO ETZELD PO BO X 398 AUSTIN, TX 78767-0398
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MEYER TO NS HO O D KIVLIN KO W ER T & GO ETZEL PO BO X 398 AUSTIN, C A 78767-0398
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Case 2:13-cv-00900-JRG Case4:13-cv-05933-CW DocumentDocument19-3 26-2 Filed 02/10/14 Filed01/23/14 Page 409 Page1 of 826 of PageID 33 #: 596 REDACTED VERSION OF DOCUMENT(S) SOUGHT TO BE SEALED 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
DEFENDANTS MOTION TO DISMISS FOR LACK OF PERSONAL JURISDICTION AND IMPROPER VENUE AND TO DECLINE EXERCISING JURISDICTION UNDER THE DECLARATORY JUDGMENT ACTCase No. 3:13-cv-5933-CW McKool 960087v1
Courtland L. Reichman (SBN 268873) creichman@mckoolsmithhennigan.com MCKOOL SMITH HENNIGAN P.C. 255 Shoreline Drive, Suite 510 Redwood Shores, CA 94065 Telephone: (650) 394-1400 Fax: (650) 394-1422 ADDITIONAL COUNSEL LISTED ON SIGNATURE PAGE Attorneys for Defendants Rockstar Consortium US LP and MobileStar Technologies LLC UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA OAKLAND DIVISION Google, Inc. Plaintiff, vs. Rockstar Consortium U.S. LP and MobileStar Technologies LLC Defendants. ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) Case No. 13-cv-5933 CW DEFENDANTS MOTION TO DISMISS UNDER FED. R. CIV. P. 12(b)(2) AND 12(b)(3) FOR LACK OF PERSONAL JURISDICTION AND IMPROPER VENUE AND TO DECLINE EXERCISING JURISDICTION UNDER THE DECLARATORY JUDGMENT ACT Date: March 13, 2014 Time: 2:00 p.m. Courtroom: TBD Judge: Hon. Claudia Wilken
Case 2:13-cv-00900-JRG Case4:13-cv-05933-CW DocumentDocument19-3 26-2 Filed 02/10/14 Filed01/23/14 Page 410 Page2 of 826 of PageID 33 #: 597 REDACTED VERSION OF DOCUMENT(S) SOUGHT TO BE SEALED 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -iiMcKool 960087v1
TO PLAINTIFF GOOGLE INC. AND ITS COUNSEL OF RECORD: PLEASE TAKE NOTICE that on Thursday, March 13, 2014, at 2:00 p.m., or as soon thereafter as it may be heard, Defendants Rockstar Consortium U.S. LP (Rockstar) and MobileStar Technologies LLC (MobileStar) respectfully will move, and hereby do move, to dismiss Plaintiff Google Inc.s Complaint for Declaratory Judgment of Non-Infringement (D.I. 1) filed on December 23, 2013. Defendants Rockstar and MobileStar respectfully bring this motion pursuant to Rules 12(b)(2) and 12(b)(3) of the Federal Rules of Civil Procedure upon the grounds that this Court lacks personal jurisdiction over Defendants and this forum is an improper venue; Defendants also maintain that this Court should decline exercising jurisdiction under the Declaratory Judgment Act. This motion is supported by the attached Memorandum of Points and Authorities, the accompanying Declaration of Afzal Dean, the record in this matter, and any other argument that the Court may accept at the hearing. RELIEF REQUESTED Defendants Rockstar and MobileStar seek an order granting their motion to dismiss Plaintiff Google Inc.s Complaint for lack of personal jurisdiction and improper venue and to decline exercising jurisdiction under the Declaratory Judgment Act. Respectfully submitted, Dated January 23, 2014. By: /s/ Courtland Reichman Courtland L. Reichman (SBN 268873) McKool Smith Hennigan, P.C. 255 Shoreline Drive Suite 510 Redwood Shores, CA 94065 (650) 394-1400 (650) 394-1422 (facsimile) Mike McKool (Pro Hac Vice Application to be filed) mmckool@mckoolsmith.com Douglas A. Cawley (Pro Hac Vice Application to be filed)
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dcawley@mckoolsmith.com Ted Stevenson III (Pro Hac Vice Application to be filed) tstevenson@mckoolsmith.com David Sochia (Pro Hac Vice Application filed) dsochia@mckoolsmith.com McKool Smith, P.C. 300 Crescent Court Suite 1500 Dallas, TX 75201 (214) 978-4000 (214) 978-4044 (facsimile) Attorneys For Defendants Rockstar Consortium U.S. LP and MobileStar Technologies LLC
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TABLE OF CONTENTS I. Introduction And Summary Of The Argument .............................................................................- 1 A. B. C. Googles Theory Of Personal Jurisdiction Conflicts With Controlling Precedent...................................................................................................................- 1 This Suit Was Filed In An Improper Venue .............................................................- 3 The Court Should Exercise Its Discretion And Refuse Jurisdiction.........................- 3 -
II. Statement of Facts ........................................................................................................................- 5 A. B. Rockstar And MobileStars First-Filed Suit In the Eastern District of Texas ..........- 5 MobileStar and Rockstar Are Texas Companies With Few California Contacts.....- 5 -
III. This Court Lacks Personal Jurisdiction Over MobileStar ..........................................................- 6 A. B. This Court Has Neither General Nor Specific Personal Jurisdiction Over Mobilestar .................................................................................................................- 7 Lacking Jurisdiction Over MobileStar, Googles Complaint Must Be Dismissed..................................................................................................................- 8 -
IV. This Court Lacks Personal Jurisdiction Over Rockstar...........................................................- 10 A. B. C. Rockstars Limited Patent Discussions Do Not Subject It To Specific Jurisdiction In California ........................................................................................- 10 Rockstars Minimal Contacts With California Are Permissible Patent Licensing Discussions That Do Not Subject Rockstar To Specific Jurisdiction ....- 11 Rockstars Sporadic And Insubstantial Contacts With California Do Not Give Rise To General Jurisdiction...................................................................................- 13 1. 2. 3. 4. Rockstars is a Texas entity and does not have contacts with California that approximate a physical presence......................................................- 13 Rockstars lone, part-time, independent contractor in California does not subject Rockstar to general jurisdiction................................................- 14 Revenue generated from non-exclusive licensees located in California is insufficient to justify general jurisdiction ...............................................- 15 The contacts of Rockstars shareholders may not be imputed to Rockstar ......................................................................................................- 15 -
V. This District Is Not The Proper Venue For This Suit ................................................................- 16 VI. The Court Should Decline to Exercise Jurisdiction Over Googles Claims.............................- 17 A. B. The Court Has Discretion To Decline Jurisdiction Over Declaratory Claims........- 17 The Court Should Decline Jurisdiction Because Googles Claims Do Not Meet The Purpose Of The Declaratory Judgment Act............................................- 18 -iv-
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1. 2. C.
The Court should decline jurisdiction because Googles complaint is an attempt at forum shopping .....................................................................- 18 Googles claims are an inefficient use of judicial resources.......................- 19 -
The Court Should Decline to Assert Jurisdiction Under the First-Filed Rule ........- 20 1. 2. The Texas Actions are first-filed and should be favored............................- 20 Judicial efficiency and interests of justice favor the Texas Actions...........- 22 -
VII. Conclusion...............................................................................................................................- 24 -
Case 2:13-cv-00900-JRG Case4:13-cv-05933-CW DocumentDocument19-3 26-2 Filed 02/10/14 Filed01/23/14 Page 414 Page6 of 826 of PageID 33 #: 601 REDACTED VERSION OF DOCUMENT(S) SOUGHT TO BE SEALED TABLE OF AUTHORITIES 3D Sys. Inc. v. Aarotech Labs., Inc., 160 F.3d 1373(Fed. Cir. 1998).15, 20 A123 Sys. v. Hydro-Quebec, 626 F.3d 1213 (Fed. Cir. 2010)..9, 13 Aetna Cas. & Sur. Co. v. Ind-Com Elec. Co., 139 F.3d 419 (4th Cir. 1998). .5,9 Arrowhead Indus. Water, Inc., 846 F.2d ..... 23 Autogenomics Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012 (Fed. Cir. 2009)..3, 7, 11,12,15,17 Avocent Huntsville Corp. v. Aten Intl Co., 552 F.3d 1324 (Fed. Cir. 2008) .......1,6,8,10,15,16 Campbell Pet Co. v. Miale, 542 F.3d 879 (Fed. Cir. 2008).12, 16 Catalyst Assets LLC v. Life Techs. Corp., 2012 U.S. Dist. LEXIS 84347, *7-8 (N.D. Cal. June 17, 2012) ......22, 23 Cf. Continental Grain Co. v. The FBL-585, 364 U.S. 19 (1960) ...4, 8 Daimler AG v. Bauman, No. 11-965, slip op. 14 n.11 (U.S. Jan. 14, 2014)..... 6,7,17,19 E.E.O.C. v. Peabody Western Coal Co., 400 F.3d 774 (9th Cir. 2005)... .6, 9, 13 Elecs. for Imaging, Inc. v. Coyle, 394 F.3d 1341 (Fed. Cir. 2005) (quoting Wilton v. Seven Falls Co., 515 U.S. 277 (1995).3, 8,21,22 EMC Corp. v. Norand Corp., 89 F.3d 807 (Fed. Cir. 1996).21 Futurewei Techs., Inc. v. Acacia Research Corp., 737 F.3d 704 (Fed. Cir. 2013) ..25 Gen. Tire & Rubber Co. v. Watkins, 373 F.2d 361 (4th Cir. 1967)....4, 9 Genentech, Inc. v. Eli Lilly & Co., 998 F.2d 931 (Fed. Cir. 1993).. 24 Helicopteros Nacionales De Colombia, S.A. v. Hall, 466 U.S. 408 (1984)7, 12, 18 Huth v. Hartford Ins. Co. of the Midwest, 298 F.3d 800 (9th Cir. 2002)..4, 8, 23 IBC Aviation Servs. v. Compania Mexicana De Aviacion, S.A. de C.V., 125 F. Supp. 2d 1008, (N.D. Cal. 2000) (citing CP Nat'l. Corp. v. Bonneville Power Admin., 928 F.2d 905 (9thCir.1991)).....8,13 Intl Shoe Co. v. Washington, 326 U.S. 310, 316 (1945)...7,8,11,12 Intersearch Worldwide, Ltd. v. Intersearch Group, Inc., 544 F.Supp.2d 949, 959 (N.D. Cal.2008). 25 Juniper Networks, Inc. v. SSL Servs., LLC, Case No. 08-cv-5758, 2009 U.S. Dist. LEXIS 112399, *11-12 (N.D. Cal. Nov. 16, 2009)..11,16 Kescoli v. Babbitt, 101 F.3d 1304 (9th Cir. 1996)... 14
Case 2:13-cv-00900-JRG Case4:13-cv-05933-CW DocumentDocument19-3 26-2 Filed 02/10/14 Filed01/23/14 Page 415 Page7 of 826 of PageID 33 #: 602 REDACTED VERSION OF DOCUMENT(S) SOUGHT TO BE SEALED Kyocera Communs., Inc. v. ESS Techs. Int'l, Inc., 2012 U.S. Dist. LEXIS 89267, *7-8 (N.D. Cal. June 27, 2012)....18, 22, 24 Merial Ltd. v. Cipla Ltd., 681 F.3d 12834,9,24,26 Microchip Tech., Inc. v. United Module Corp., CV-10-04241-LHK, 2011 U.S. Dist. LEXIS 73276, 2011 WL 2669627 (N.D. Cal. July 7, 2011 ... 25, 26 Pacesetter Sys., Inc. v. Medtronic, Inc., 678 F.2d 93, 94-95 (9th Cir.1982).25 Proofpoint, Inc. v. InNova Patent Licensing, LLC, 2011 U.S. Dist. LEXIS 120343, (N.D. Cal. Oct. 17, 2011)..25, 26 Public Serv. Comm'n of Utah v. Wycoff Co., 344 U.S. 237(1952).. 21 Quackenbush v. Allstate Ins. Co., 517 U.S. 706 (U.S. 1996)....21 Radio Sys. Corp. v. Accession, Inc., 638 F.3d 785 (Fed. Cir. 2011)..8,10, 12,15 Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355 (Fed. Cir. 1988) ......7, 8, 10, 12,14 Serco Servs. Co., L.P. v. Kelley Co., 51 F.3d 1037(Fed. Cir. 1995).....23 Smugmug, Inc. v. Virtual Photo Store LLC, Case No. 09-cv-2255 CW, 2009 U.S. Dist. LEXIS 112400, *11 (N.D. Cal. Nov. 16, 2009).....10,15, 17 Sony Elecs., Inc. v. Guardian Media Techs., Ltd., 497 F.3d 1271 (Fed. Cir. 2007)) ...21 Teva Pharms. USA, Inc. v. Eisai Co., 620 F.3d 1341 (Fed. Cir. 2010).4, 8, 23 Vanguard Prods. Group, Inc. v. Protex Intl Corp., No. 05 C 6310, 2006 WL 695700 .4, 9 Other Authorities 28 U.S.C. 1391(b) and (c) ..3,16, 20 Cal. Civ. Proc. Code 410.10...7, 11 Fed. R. Civ. P. 12(b)(2) 6, 11 Fed. R. Civ. P. 19(b)..9,13
Case 2:13-cv-00900-JRG Case4:13-cv-05933-CW DocumentDocument19-3 26-2 Filed 02/10/14 Filed01/23/14 Page 416 Page8 of 826 of PageID 33 #: 603 REDACTED VERSION OF DOCUMENT(S) SOUGHT TO BE SEALED 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 I. MEMORANDUM OF POINTS AND AUTHORITIES Introduction And Summary Of The Argument Google filed this suit under the Declaratory Judgment Act, 28 U.S.C. 2201, to determine whether its Android platform and related products infringe the patents-in-suit. But Google has sued two parties with no material California ties, and invites the Court to resolve a dispute that was already pendingand will remain pendingin a proper forum in Texas. Google is the natural defendant, and its second-filed declaratory action cannot trump the natural plaintiffs first-filed action in Texas. Google could have asserted its claims as defenses in the preexisting Eastern District of Texas action, and there was no legitimate reason for Google to file its own duplicative action here. A. Googles Theory Of Personal Jurisdiction Conflicts With Controlling Precedent
According to Google, Rockstar (defined as including MobileStar) engages in certain business activities in California, including meetings, providing notice of patent rights and discussing licensing opportunities. Compl. 3-4. Even if true, as a matter of law, such limited contacts cannot establish general or specific jurisdiction over either Rockstar or MobileStar. While Googles complaint defines Rockstar as including MobileStar, each are separate legal entities, whose contacts with California must be separately examined. Avocent Huntsville Corp. v. Aten Intl Co., 552 F.3d 1324, 1329 (Fed. Cir. 2008) ([e]ach defendants contacts with the forum State must be assessed individually). Yet, MobileStar is an indispensable party to this litigationit is the owner of five of the seven patents-in-suit and the exclusive licensee of the other two patents. In the absence of jurisdiction as to MobileStar, this action must be dismissed. E.E.O.C. v. Peabody Western Coal Co., 400 F.3d 774, 779-80 (9th Cir. 2005) (If an indispensable party cannot be joined, the action must be dismissed).
Case 2:13-cv-00900-JRG Case4:13-cv-05933-CW DocumentDocument19-3 26-2 Filed 02/10/14 Filed01/23/14 Page 417 Page9 of 826 of PageID 33 #: 604 REDACTED VERSION OF DOCUMENT(S) SOUGHT TO BE SEALED 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Moreover, general jurisdiction requires affiliations so continuous and systematic as to render [the foreign corporation] essentially at home in the forum State, i.e., comparable to a domestic enterprise in that State. Daimler AG v. Bauman, No. 11-965, slip op. 14 n.11 (U.S. Jan. 14, 2014) (emphases added); see also id. at 20 (specifically rejecting Googles lead theory that it is sufficient to assert continuous and systematic contacts (Compl. 3)instead, the proper inquiry is whether those contacts are so continuous and systematic as to render [the corporation] at home in the forum State) (emphasis added). In only exceptional case[s] will this standard sweep in corporations like Rockstar and MobileStar from outside their formal place of incorporation or principal place of business (id. at 20 n.19), and this is no such exceptional case. Rockstar and MobileStar do not bear a single hallmark of a California enterprise, and there is no good-faith basis for asserting they are effectively California corporations. Rockstars and MobileStars limited instate contacts are the same kind of contacts that arise in routine business dealings. If a handful of meetings, visits, and engagements qualify for all-purpose jurisdiction, it is difficult to imagine any business with a nationwide practice avoiding general jurisdiction in every State. That is directly contrary to general jurisdictions less dominant role in the contemporary scheme. Id. at 14.1 Nor does Rockstars and MobileStars so-called enforcement campaign establish specific jurisdiction. Compl. 3. A patentee is afforded sufficient latitude to inform others of its patent rights without subjecting itself to jurisdiction in a foreign forum. Red Wing Shoe, 148 F.3d at 1360-61. The ordinary activities of offer[ing]a license, sending cease-and-desist letter[s], and initiat[ing] settlement negotiations are per se insufficient under the controlling framework. Id. Googles allegations are limited to exactly the kind of efforts that are not to be considered for Googles allegation that Rockstars licensing and enforcement efforts in California have generated substantial revenues is also incompatible with circuit law: the in-state contacts of licensees are not constitutionally cognizable for purposes of jurisdiction, and thus any financial benefits accruing to [Rockstar and MobileStar] from [their] licensees relations with [California] are irrelevant. Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355, 1362 (Fed. Cir. 1988). -- 2 -McKool 960087v1 1
Case 2:13-cv-00900-JRG Case4:13-cv-05933-CW Document Document19-3 26-2 Filed 02/10/14 Filed01/23/14 Page 418 Page10 of 826of PageID 33 #: 605 REDACTED VERSION OF DOCUMENT(S) SOUGHT TO BE SEALED 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Google also asserts that Rockstars shareholders have substantial California contacts (Compl. 3), which might be relevant if this suit were againstRockstars shareholders. Rockstar and MobileStar are separate corporate entities with their own corporate identities. Unless Google wishes to pierce the corporate veila theory unmentioned anywhere in its complaintthere is no rule of law or logic that subjects a corporation to jurisdiction anywhere its shareholders can be sued. -- 3 -McKool 960087v1 2
establishing specific personal jurisdiction. Autogenomics, Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012, 1020 (Fed. Cir. 2009).2 B. This Suit Was Filed In An Improper Venue
Contrary to Googles contention, this is not a judicial district in which any defendant resides, since Rockstar and MobileStar each reside in Texas. 28 U.S.C. 1391(b)(1). Nor did a substantial part of any act underlying the claim occur in California (id. 1391(b)(2)), since the claim is patent infringementand Rockstar and MobileStars effort to enforce[] these patent claims is ongoing in Texas. Autogenomics, 566 F.3d at 1020 (distinguishing patent litigation from pre-enforcement efforts to commercialize a patent). Finally, the Eastern District of Texas is both a district in which [this] action may otherwise be brought and a judicial district, unlike this one, in which any defendant is subject to the courts personal jurisdiction. 28 U.S.C. 1391(b)(3). The only reason this action was filed in this venue was because it was Googles preferred forum Googles preference, however, is not a relevant consideration under the statutory scheme. C. The Court Should Exercise Its Discretion And Refuse Jurisdiction
This Court has unique and substantial discretion to refuse jurisdiction under the Declaratory Judgment Act. Elecs. for Imaging, Inc. v. Coyle, 394 F.3d 1341, 1345-46 (Fed. Cir. 2005) (quoting Wilton v. Seven Falls Co., 515 U.S. 277, 286 (1995)). Congress authorized declaratory relief so that natural defendants (like Google here) would not be forced into the intolerable position of endlessly awaiting a suit that could establish their rights. See, e.g., Electronics for Imaging, 394 F.3d at 1345. Here, however, there is no need for 2201 relief because Google is not await[ing] the commencement of legal action by the other side. Id. Google, the natural
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defendant, has attempted to avoid the preexisting legal actions in Texas in favor of filing a redundant suit in this Court. This case thus accomplishes exactly none of the Acts objectives: by favoring Googles second-filed declaratory action over the first-filed action in the Eastern District of Texas, the court would (i) embrace duplicative litigation in multiple forums; (ii) create an unnecessary risk of inconsistent verdicts; and (iii) reward Google, the natural defendant, for its explicit act of forumshopping (while imposing undue burdens on Rockstar and MobileStar, the natural plaintiffs, for electing a Texas forum where all seven actions could be litigated in a single district). See, e.g., Teva Pharms. USA, Inc. v. Eisai Co., 620 F.3d 1341, 1349 (Fed. Cir. 2010); Huth v. Hartford Ins. Co. of the Midwest, 298 F.3d 800, 802 (9th Cir. 2002). This type of duplicative, two-track litigation is not an acceptable use of judicial or party resources. Rockstar and MobileStar, the natural plaintiffs, chose Texas as an appropriate forum for the pending litigation; it is a forum that all parties can access fairly, and it is one in which an open court will fully resolve the very dispute Google wishes to relitigate here. Cf. Continental Grain Co. v. The FBL-585, 364 U.S. 19, 26 (1960) (To permit a situation in which two cases involving precisely the same issues are simultaneously pending in different District Courts leads to the wastefulness of time, energy and money that 1404(a) was designed to prevent.); Gen. Tire & Rubber Co. v. Watkins, 373 F.2d 361, 362 (4th Cir. 1967) (rejecting extravagantly wasteful and useless duplication of the time and effort of the federal courts by the simultaneous trial of two complex and elaborate cases involving substantially the same factual issues). Once Rockstar and MobileStar filed their actions in Texas, there was no legitimate reason for Google to file its own duplicative action here. Merial Ltd. v. Cipla Ltd., 681 F.3d 1283, 1299 (Fed. Cir. 2012). The Declaratory Judgment Act is not a tool to be used by potential litigants for the purpose of securing the forum. Vanguard Prods. Group, Inc. v. Protex Intl Corp., No. 05 C 6310, 2006 WL 695700, at
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For any of these independent reasons, there is no basis for invoking the Courts jurisdiction over this duplicative, second-filed, declaratory action. The Court should dismiss Googles complaint and permit the dispute to be resolved in the ordinary coursethe seven lawsuits Google itself recognizes (Compl. 1) have already been filed in the Eastern District of Texas. II. Statement of Facts A. Rockstar And MobileStars First-Filed Suit In the Eastern District of Texas
On October 31, 2013, Rockstar and MobileStar filed a series of actions in the Eastern District of Texas alleging that several companiesASUS, HTC, Huawei, LG, Pantech, Samsung, and ZTEinfringed seven patents. (Texas Actions); see Exh. A-G. MobileStar owns five of the seven patents and is the exclusive licensee (from Rockstar) of the other two patents. Declaration of Afzal Dean (Dean Decl.) at 5, 15, 24. The same seven patents are at-issue in Googles complaint. Compl. 2. Google did not seek to intervene in the Texas Actions. Instead, it filed this declaratoryjudgment suit on December 23, 2013, nearly two months after the Texas Actions were filed. On December 31, 2013, Rockstar and MobileStar added Google as a defendant in their already-pending suit against Samsung. Exh. H. Googles answer is due in Texas on February 17, 2014. B. MobileStar and Rockstar Are Texas Companies With Few California Contacts
Rockstar and MobileStar are both Delaware entities with principal places of business in Plano, Texas. Dean Decl. at 5, 15. Rockstar is MobileStars parent. Id. at 15. Rockstar and MobileStars Texas roots are long-standing and substantial. Rockstar and MobileStar acquired the patents-in-suit from Nortel Networks, a company that went bankrupt in 2011. Nortels U.S. headquarters was in Richardson, Texas. Id. at 27. As explained in more detail -- 5 -McKool 960087v1
Case 2:13-cv-00900-JRG Case4:13-cv-05933-CW Document Document19-3 26-2 Filed 02/10/14 Filed01/23/14 Page 421 Page13 of 826of PageID 33 #: 608 REDACTED VERSION OF DOCUMENT(S) SOUGHT TO BE SEALED 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 The presence of at least one shareholder (Apple Inc.) in California. Id. at 35. However, Rockstars shareholders do not direct or control Rockstars licensing efforts these activities are directed and controlled by Rockstars management team. Id. III. This Court Lacks Personal Jurisdiction Over MobileStar Fed. R. Civ. P. 12(b)(2) requires that a court dismiss a defendant when it lacks personal jurisdiction over that defendant. Jurisdiction, whether general or specific, is a question of Federal -- 6 -McKool 960087v1
in the attendant declaration, Nortel had a substantial presence in Texas prior to its bankruptcy, and many of Rockstars and MobileStars current employees are former Nortel employees. Id. Neither Rockstar nor MobileStar is licensed to do business in California. Id. at 6-9, 16, 2224, 29-33. They have no agent for service of process in California, have never signed any contracts in California, have never owned real or personal property in California, have never maintained offices in California, and have never maintained any records in California. Id. They pay no California taxes and do not have any employees, officers, or board members who live in California. Id. They have not filed any lawsuits in California, have not engaged in extra-judicial enforcement activities in California,
Rockstars California contacts are limited to the following: A single part-time independent contractor who lives in California. Id. at 34.
Circuit law. Autogenomics, 566 F.3d at 1016 (the jurisdiction issue is intimately involved with the substance of the patent laws.) Determining whether jurisdiction exists over a foreign defendant involves two inquiries: whether a forum states long-arm statute permits service of process and whether assertion of personal jurisdiction violates due process. Id. at 1017. Here, because Californias long-arm statue is co-extensive with the limits of due process, the only inquiry is whether the exercise of personal jurisdiction comports with due process. Cal. Civ. Proc. Code 410.10. Due process requires that the defendant have certain minimum contacts with the [forum] such that the maintenance of the suit does not offend traditional notions of fair play and substantial justice. Intl Shoe Co. v. Washington, 326 U.S. 310, 316 (1945). There are two bases for personal jurisdiction, general and specific. General jurisdiction requires that the defendant have continuous and systematic contacts with the forum state and confers personal jurisdiction even when the cause of action has no relationship with those contacts. Autogenomics, 566 F.3d at 1017. Specific jurisdiction may be exercised subject to a three-part test where (1) the defendant purposefully directed activities at residents of the forum, (2) the claim arises out of or relates to those activities, provided that (3) personal jurisdiction is both reasonable and fair. Id. at 1018. A. This Court Has Neither General Nor Specific Personal Jurisdiction Over Mobilestar
As for general jurisdiction, there is no good-faith basis for alleging that MobileStar is equivalent to a domestic enterprise in California. Daimler, slip op. 14 n.11. MobileStar is a Texas enterprise with has no meaningful connection to California. See Statement of Facts, supra. There is no general jurisdiction over MobileStar in California. Helicopteros Nacionales De Colombia, S.A. v. Hall, 466 U.S. 408, 411 (1984).
Case 2:13-cv-00900-JRG Case4:13-cv-05933-CW Document Document19-3 26-2 Filed 02/10/14 Filed01/23/14 Page 423 Page15 of 826of PageID 33 #: 610 REDACTED VERSION OF DOCUMENT(S) SOUGHT TO BE SEALED 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Dean Decl. at 13. This type of discussion is per se inadequate under Red Wing Shoe to establish the minimum contacts necessary to find specific jurisdiction. Moreover, a single act of travel to the forum state cannot create specific jurisdiction in that state. Radio Sys. Corp. v. Accession, Inc., 638 F.3d 785, 789 (Fed. Cir. 2011) (multiple licensing meetings in forum state insufficient to establish specific jurisdiction); Autogenomics, 566 F.3d at 1021 (travel to forum state to negotiate patent license insufficient to establish specific jurisdiction). Nor may Google impute Rockstars alleged California contacts to MobileStar in order to establish specific jurisdiction. Avocent, 552 F.3d at 1338 (rejecting complaint as fatally deficient and refusing jurisdiction where plaintiff failed to include any allegations for imputing defendants contacts to related corporate entities). MobileStar and Rockstar are separate corporate entities and there is no basis for attributing one entitys contacts to the other. Id. at 1329 ([e]ach defendants contacts with the forum State must be assessed individually). B. Lacking Jurisdiction Over MobileStar, Googles Complaint Must Be Dismissed fails to establish the type of minimum contacts required for specific jurisdiction over MobileStar in California. Intl Shoe, 326 U.S. at 316; Red Wing Shoe, 148 F.3d at 1360-61 (A patentee should not subject itself to personal jurisdiction in a forum solely by informing a party who happens to be located there of suspected infringement.).
A necessary party is one having an interest in the controversy, and who ought to be made [a] party, in order that the court may act on that rule which requires it to decide and finally determine the entire controversy, and do complete justice, by adjusting all the rights involved in it. IBC Aviation Servs. v. Compania Mexicana De Aviacion, S.A. de C.V., 125 F. Supp. 2d 1008, 1011 (N.D. Cal. 2000) (citing CP Nat'l. Corp. v. Bonneville Power Admin., 928 F.2d 905, 912 (9th Cir. 1991)). -- 8 -McKool 960087v1
In general, . . . an accused infringer must likewise join both the exclusive licensee and the patentee in a declaratory action because both are likely to be necessary parties. See, e.g., A123 Sys. v. HydroQuebec, 626 F.3d 1213, 1217, (Fed. Cir. 2010). MobileStar owns five of the seven patents-in-suit, and is the exclusive licensee of the other two patents. Dean Decl. at 5, 15, 24. MobileStar undoubtedly has an interest in the controversy and ought to be made a partyMobileStar is therefore a necessary party to Googles complaint. Lacking jurisdiction over MobileStar, a necessary party, the Court must thus determine whether in equity and good conscience the action should proceed among the parties before it, or should be dismissed, the absent person being thus regarded as indispensable. Fed. R. Civ. P. 19(b); see also Dainippon Screen Mfg. Co., Ltd. v. CFMT, Inc., 142 F.3d 1266, 1269 (Fed. Cir. 1998) (applying Rule 19 to a declaratory judgment action and holding [w]hether a party is indispensable under Rule 19(b) is a matter of regional circuit law). If a party is indispensable but cannot be joined, the action must be dismissed. See E.E.O.C. v. Peabody Western Coal Co., 400 F.3d 774, 77980 (9th Cir. 2005). Rule 19(b) establishes the factors courts can examine to determine whether a case should be dismissed for the inability to join a necessary party: (1) prejudice to any party or to any absent party; (2) whether the relief can be shaped to lessen the prejudice; (3) whether an adequate remedy, even if not complete, can be awarded without the absent party; and (4) whether there exists an alternate forum. Kescoli v. Babbitt, 101 F.3d 1304, 1310-11 (9th Cir. 1996). Without a doubt, (1) MobileStar would be prejudiced if the patents it owns (or is the exclusive licensee of) are declared invalid or noninfringed without its presence; (2) no relief can be shaped to lessen this prejudice; (3) no adequate remedy for Google could be awarded as to any of the seven patents-at-issue without the owner and exclusive licensee as a party; and (4) an alternate forum exists in the already-filed Texas Actions.
Case 2:13-cv-00900-JRG Case4:13-cv-05933-CW Document Document19-3 26-2 Filed 02/10/14 Filed01/23/14 Page 425 Page17 of 826of PageID 33 #: 612 REDACTED VERSION OF DOCUMENT(S) SOUGHT TO BE SEALED 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 See Red Wing Shoe, 148 F.3d at 1361 (holding no specific jurisdiction even if patentee had 34 licensees doing business in the forum state because seeking licenses does not confer jurisdiction and licensees contacts with forum may not be attributed to patentee). -- 10 -McKool 960087v1
IV.
This Court Lacks Personal Jurisdiction Over Rockstar A. Rockstars Limited Patent Discussions Do Not Subject It To Specific Jurisdiction In California
Google alleges that Rockstar should be subject to specific jurisdiction in California because it engages in certain business activities in California, including discussions regarding its patents. Compl. 3-4. But Rockstar has minimal California contacts related to discussions of its patents. See Statement of Facts, supra.
These limited patent discussions do not give rise to specific jurisdiction in California. Red Wing Shoe., 148 F.3d at 1361 (Standards of fairness demand that [the patentee] be insulated from personal jurisdiction when its only contacts with that forum were efforts to give proper notice of its patent rights.). The Federal Circuit has made clear that, for purposes of specific jurisdiction, enforcement activities do not include warning others located in the forum state of suspected infringement, offering licenses to the patent, or sending cease-and-desist letters. Radio Sys., 638 F.3d at 789 (patentees numerous letters, phone calls, and meetings with plaintiff in forum state relating to licensing insufficient for specific jurisdiction); Avocent, 552 F.3d at 1340 (infringement letters sent to forum state insufficient for specific jurisdiction); Autogenomics, 566 F.3d at 1021 (traveling to forum state to negotiate a patent license and having ten licensees in the forum insufficient for specific jurisdiction); Smugmug, Inc. v. Virtual Photo Store LLC, Case No. 09-cv-2255 CW, 2009
Case 2:13-cv-00900-JRG Case4:13-cv-05933-CW Document Document19-3 26-2 Filed 02/10/14 Filed01/23/14 Page 426 Page18 of 826of PageID 33 #: 613 REDACTED VERSION OF DOCUMENT(S) SOUGHT TO BE SEALED 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 U.S. Dist. LEXIS 112400, *11 (N.D. Cal. Nov. 16, 2009) (J. Wilken) (letters sent by patentee to California companies seeking to discuss potential licensing terms are not the type of enforcement activity envisioned in Autogenomics, but rather Defendants efforts at commercialization; they cannot be used to support specific jurisdiction). B. Rockstars Minimal Contacts With California Are Permissible Patent Licensing Discussions That Do Not Subject Rockstar To Specific Jurisdiction
Googles allegations regarding Rockstars enforcement activities pertain only to permissible licensing activity (i.e., notifying others of Rockstars patent rights) and nothing more. Compl. 3-4. Without evidence of impermissible other activities beyond licensing or generic discussions related to the enforcement (or defense of the validity) of the patents-in-suit, the Federal Circuit has refused to find specific jurisdiction over a declaratory judgment defendant. Avocent, 552 F.3d at 1334. Examples of other activities that would subject a party to specific jurisdiction include initiating judicial or extrajudicial patent enforcement within the forum, or entering into an exclusive license agreement in the forum, or entering into any other undertaking which imposes obligations with a party residing in or regularly doing business in the forum. Id. None of these other activities are present here. Rockstar has not filed any lawsuits in California asserting the patents-in-suit. Dean Decl. at 22. The fact that Rockstar previously enforced the patents-in-suit by filing suit in the Eastern District of Texas has no relevance here. Avocent, 552 F.3d at 1339 (We are aware of no precedent that holds that the filing of a suit in a particular state subjects that party to specific personal jurisdiction everywhere else); Juniper Networks, Inc. v. SSL Servs., LLC, Case No. 08-cv-5758, 2009 U.S. Dist. LEXIS 112399, *11-12 (N.D. Cal. Nov. 16, 2009), affd 2010 U.S. App. LEXIS 25498 (Fed. Cir. Dec. 13, 2010) (suing a California entity in Texas is insufficient to confer specific jurisdiction in California). Rockstar does not engage in the types of extra-judicial enforcement activity contemplated by the Federal Circuit as giving rise to specific jurisdiction, nor does Google make any such allegation. -- 11 -McKool 960087v1
Case 2:13-cv-00900-JRG Case4:13-cv-05933-CW Document Document19-3 26-2 Filed 02/10/14 Filed01/23/14 Page 427 Page19 of 826of PageID 33 #: 614 REDACTED VERSION OF DOCUMENT(S) SOUGHT TO BE SEALED 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 See Smugmug, 2009 U.S. Dist. LEXIS 112400 (J. Wilken) (non-exclusive licenses, without any showing of enforcement efforts are insufficient to justify specific jurisdiction. And revenue from licensing is irrelevant unless the contact with the licensees is itself constitutionally cognizable) (citing Red Wing Shoe, 148 F.3d at 1361-62).
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Rockstar has not engaged any third-parties in attempting to remove allegedly infringing products from a trade show in the forum state, as was the case in Campbell Pet Co. v. Miale, 542 F.3d 879, 888 (Fed. Cir. 2008); Dean Decl. at 23. Contrary to Googles assertions, and in filing the Texas Actions against several third-parties was not to discourage unnamed companies from continuing to use Googles Android platform in their devices, and to interfere with Googles business relationships. Compl. 4. But, even if this was Rockstars intent, it would be irrelevant to specific jurisdiction. See Avocent, 552 F.3d at 1340 (rejecting plaintiffs argument that patentees infringement letters sent to a third-party retailer provided specific jurisdiction because the intended effect was to slow the sale of plaintiffs allegedly infringing products). Dean Decl. at 24. This is another example of the other activities beyond licensing that would support specific jurisdiction. See Avocent, 552 F.3d at 1334-34 (collecting cases finding specific jurisdiction based on presence in the forum of an exclusive licensee or exclusive distributor).
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Case 2:13-cv-00900-JRG Case4:13-cv-05933-CW Document Document19-3 26-2 Filed 02/10/14 Filed01/23/14 Page 428 Page20 of 826of PageID 33 #: 615 REDACTED VERSION OF DOCUMENT(S) SOUGHT TO BE SEALED 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 C. Rockstars Sporadic And Insubstantial Contacts With California Do Not Give Rise To General Jurisdiction
Googles bare allegations regarding Rockstars alleged continuous and systematic contacts with California can be summarized as follows: (1) Rockstar is alleged to engage in general licensing activities with other companies, some of which may be located in California, and allegedly has personnel in California to conduct such licensing activities, Compl. 3; and (2) one of Rockstars shareholders is headquartered in California, Compl. 3. Such insubstantial allegations, even if true, do not confer general jurisdiction. The Supreme Court has recognized that general jurisdiction has come to occupy a less dominant place in the contemporary scheme. Daimler, slip op at 14. Thus, general jurisdiction applies only where a defendants contacts with a forum are so continuous and systematic as to render the [foreign corporation] essentially at home in the forum state, i.e., comparable to a domestic enterprise in that State. Id. at 14 n. 11. For general jurisdiction, a defendants contacts must approximate[] a physical presence within the state. See, e.g., Autogenomics, 566 F.3d at 1018. The standard for general jurisdiction is high because it confers personal jurisdiction for any cause of action, even one that has no relationship with the defendants contacts to the forum. 1. Rockstars is a Texas entity and does not have contacts with California that approximate a physical presence
With respect to a corporation, the place of incorporation and the principal place of business are paradigm bases for general jurisdiction. Daimler, slip op. at 19. Rockstar has no contacts with California approximating physical presence, and Google cannot allege that such contacts exist. As set forth in the Statement of Facts supra and the attached declaration, Rockstar is and always has been a Delaware limited partnership and with its principal place of business in Plano, Texas. Like the foreign defendant in Helicopteros found not to be subject to general jurisdiction, Rockstar is not authorized to do business in California; has no agent for service of process in California; has never signed any contract in California; has never owned property in California; has never maintained an -- 13 -McKool 960087v1
office in California; and has never maintained records in California. See Helicopteros, 466 U.S. at 411; Dean Decl. at 16, 29-33. Moreover, Rockstar has no contacts that make it essentially at home in California and has no contacts that would make Rockstar comparable to a domestic California enterprise. None of Rockstars employees live in California; Rockstar pays no California taxes; Rockstar has not held any board meetings in California; Rockstar has not signed any license agreements in California; and Rockstar has not sold any patents to any California entities. Dean Decl. at 29-33. Rockstar and MobileStar acquired the patents-in-suit from Nortel Networks, a company that went bankrupt in 2011. Nortels U.S. headquarters was in Richardson, Texas. Id. at 27. Nortel had a substantial presence in Texas prior to its bankruptcy, and many of Rockstars and MobileStars current employees are former Nortel employees. Id. 2. Rockstars lone, part-time, independent contractor in California does not subject Rockstar to general jurisdiction
Googles allegation that Rockstar has employees in California responsible for licensing activities related to the patents-in-suit is incorrect. Compl. 3. As explained in the Statement of Facts, supra and the attached declaration, Rockstar employed a single part-time independent contractor who lives in California. Dean Decl. at 34.
This single contact is too isolated and insubstantial to justify exercising general jurisdiction over Rockstar. See Daimler, slip op. at 4, 21 (rejecting general jurisdiction over a foreign defendant based on the California presence of the defendants independent contractor who had no authority to make binding obligations on behalf of the defendant).
Case 2:13-cv-00900-JRG Case4:13-cv-05933-CW Document Document19-3 26-2 Filed 02/10/14 Filed01/23/14 Page 430 Page22 of 826of PageID 33 #: 617 REDACTED VERSION OF DOCUMENT(S) SOUGHT TO BE SEALED 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 3. Revenue generated from non-exclusive licensees located in California is insufficient to justify general jurisdiction
Google alleges that Rockstars licensing efforts have generated substantial revenue in California. Compl. 3. Even if true, mere licensing revenue generated in the forum is irrelevant to a general jurisdiction analysis. In Helicopteros, the Supreme Court rejected general jurisdiction over a foreign defendant, even though the foreign defendant purchased $4 million of helicopters and repair parts in the forum state, constituting 80% of its helicopter fleet (its primary business). Helicopteros held that mere purchases, even if occurring at regular intervals, are not enough to warrant general jurisdiction. 466 U.S. at 418. The Supreme Court has extended the holding of Helicopteros to include mere sales or revenue in the forum state. Goodyear Dunlop Tire Ops., S.A. v. Brown, 564 U.S. __, slip op. at 12 (2011). Rockstars mere revenue from California is not enough to justify general jurisdiction. Id. And contrary to Googles allegation, Rockstar and MobileStar have generated no licensing revenue in California, as here, all of Rockstars licensees are non-exclusive, and Rockstar has no control over any such licensee. Dean Decl. at 25-26. 4. The contacts of Rockstars shareholders may not be imputed to Rockstar
Google incorrectly asserts that Rockstars shareholders, including Apple, are somehow relevant to its claim of declaratory judgment jurisdiction. Compl. 3-4. While it is true that Rockstar has limited partners (including Apple), and these limited partners do not direct or control Rockstars licensing efforts in California, or anywhere else. Dean Decl. at 35. Only Rockstars Texas-based management directs Rockstars licensing efforts. Id. Rockstar also takes measures to ensure that information about prospective licensees and negotiations does not flow to the limited partners. Id. Moreover, none of Apples California contacts may be imputed to Rockstar. The Federal Circuit has cautioned that the corporate form is not to be lightly cast aside when rejecting arguments by plaintiffs seeking to establish jurisdiction by piercing the corporate veil or via an alter ego theory. 3D Sys. Inc. v. Aarotech Labs., Inc., 160 F.3d 1373, 1380-81 (Fed. Cir. 1998) (declining -- 15 -McKool 960087v1
Case 2:13-cv-00900-JRG Case4:13-cv-05933-CW Document Document19-3 26-2 Filed 02/10/14 Filed01/23/14 Page 431 Page23 of 826of PageID 33 #: 618 REDACTED VERSION OF DOCUMENT(S) SOUGHT TO BE SEALED 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
4
to assert jurisdiction over subsidiary defendants and rejecting plaintiffs arguments to impute parent defendants contacts with forum by piercing corporate veil or under alter ego theory). Here, too, Rockstar and Apple are distinct corporate entities and there is no justification for imputing ones contacts to the other. V. This District Is Not The Proper Venue For This Suit The Court should dismiss Googles complaint because venue is not proper in this District under 28 U.S.C. 1391(b) and (c). As set forth in the Statement of Facts, supra, neither Rockstar nor MobileStar are residents of California. Proper venue cannot exist under 1391(b)(1).4 The events giving rise to the claimGoogles claim that Rockstar and MobileStar improperly threatened Google or its customers with a lawsuit involving the seven patentsdid not occur in California. Rather, the events, e.g., filing suit against Googles customers, occurred in Texas). And, as discussed previously, the types of general patent discussion and licensing activities with various unidentified parties as alleged by Google do not give rise to the claim at issue. Proper venue cannot exist under 1391(b)(2). Venue in this District is also not proper under 1391(b)(3). Section 1391(b)(3) does not apply here because the Eastern District of Texas is a suitable forum, as Rockstar and MobileStar both reside there. And as demonstrated above, Rockstar and MobileStar are not subject to personal jurisdiction in this forum.
The general venue statute provides that: (b) Venue in General. A civil action may be brought in (1) a judicial district in which any defendant resides, if all defendants are residents of the State in which the district is located; (2) a judicial district in which a substantial part of the events or omissions giving rise to the claim occurred, or a substantial part of property that is the subject of the action is situated; or (3) if there is no district in which an action may otherwise be brought as provided in this section, any judicial district in which any defendant is subject to the courts personal jurisdiction with respect to such action -- 16 --
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Case 2:13-cv-00900-JRG Case4:13-cv-05933-CW Document Document19-3 26-2 Filed 02/10/14 Filed01/23/14 Page 432 Page24 of 826of PageID 33 #: 619 REDACTED VERSION OF DOCUMENT(S) SOUGHT TO BE SEALED 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 VI. The Court Should Decline to Exercise Jurisdiction Over Googles Claims Even if the Court finds that it has personal jurisdiction over Rockstar or MobileStar, the Court should not entertain Googles declaratory action. Googles complaint is inconsistent with the purpose of the Declaratory Judgment Act and it is effectively duplicative of the first-filed Texas Actions. By declining to exercise jurisdiction over Googles complaint, the Court would promote judicial efficiency and eliminate the risk of inconsistent judgments. The purpose of the Declaratory Judgment Act is notas is the case hereto promote forum shopping by the complainant. A. The Court Has Discretion To Decline Jurisdiction Over Declaratory Claims
[The] authority of a federal court to abstain from exercising its jurisdiction extends to all cases in which the court has discretion to grant or deny relief. Quackenbush v. Allstate Ins. Co., 517 U.S. 706, 718-719 (U.S. 1996). This holds particularly true for declaratory judgment actions, characterized as an enabling Act, which confers a discretion on the courts rather than an absolute right upon the litigant. Wilton, 515 U.S. at 286-287 (quoting Public Serv. Comm'n of Utah v. Wycoff Co., 344 U.S. 237, 241 (1952). Accordingly, a district court is not required to exercise declaratory judgment jurisdiction, but has unique and substantial discretion to decline that jurisdiction. Elecs. for Imaging, 394 F.3d at 1345-1346 (citing Wilton, 515 U.S. at 286). In exercising that unique and substantial discretion, a court must act in accordance with the purposes of the Declaratory Judgment Act and the principles of sound judicial administration when declining jurisdiction in declaratory suits. Id. (quoting EMC Corp. v. Norand Corp., 89 F.3d 807, 813-14 (Fed. Cir. 1996), overruled on other grounds, Sony Elecs., Inc. v. Guardian Media Techs., Ltd., 497 F.3d 1271 (Fed. Cir. 2007)). In patent cases, the purpose of the Declaratory Judgment Act is as follows: [A] patent owner attempts extra-judicial patent enforcement with scare-the-customer-andrun tactics that infect the competitive environment of the business community with uncertainty and insecurity. Before the Act, competitors victimized by that tactic were rendered helpless and immobile so long as the patent owner refused to grasp the nettle and sue. After the Act, those competitors were no longer restricted to an in terrorem choice between the incurrence of a growing potential liability for patent infringement and -- 17 -McKool 960087v1
abandonment of their enterprises; they could clear the air by suing for a judgment that would settle the conflict of interests. Elecs. for Imaging, 394 F.3d at 1346 (quoting Arrowhead Indus. Water, Inc. v. Ecolochem, Inc., 846 F.2d 731, 735 (Fed. Cir. 1988)). Permitting multiple lawsuits to adjudicate the same issues would serve no purpose of judicial administration and would risk inconsistent rulings on the patents' validity, enforceability, and ownership. Kyocera Communs., Inc. v. ESS Techs. Int'l, Inc., 2012 U.S. Dist. LEXIS 89267, *7-8 (N.D. Cal. June 27, 2012). B. The Court Should Decline Jurisdiction Because Googles Claims Do Not Meet The Purpose Of The Declaratory Judgment Act
None of the purposes of the Declaratory Judgment Act are met by Googles claims. As noted above, in the context of a patent dispute, the purpose of the Declaratory Judgment Act is to provide a party the ability to settle a controversy where the patent owner refused to grasp the nettle and sue. Elecs. for Imaging, 394 F.3d at 1346 (Fed. Cir. 2005). That is not the case herenearly two months before Google brought its declaratory judgment action, Rockstar and MobileStar brought the Texas Actions on the identical patents Google asserts here. As this shows, Rockstar and MobileStar did grasp the nettle and sue. Id. Indeed, shortly after Google filed its complaint here, Google was added as a defendant in the first-filed Texas Actions. 1. The Court should decline jurisdiction because Googles complaint is an attempt at forum shopping
An attempt to forum shop runs counter to the purposes of the Declaratory Judgment Act. Catalyst Assets LLC v. Life Techs. Corp., 2012 U.S. Dist. LEXIS 84347, 7-8 (N.D. Cal. June 17, 2012) (noting that a court should decline to hear declaratory judgments actions where a litigant files a declaratory action as a means of forum shopping). In light of the fact that the Texas Actions were filed nearly two months before Google filed its action in this District, Googles declaratory judgment action can only be viewed as an attempt at forum shopping. Instead of intervening in the Texas Actions, Google invited Rockstar and MobileStar to a meeting in California, then six days later filed
Case 2:13-cv-00900-JRG Case4:13-cv-05933-CW Document Document19-3 26-2 Filed 02/10/14 Filed01/23/14 Page 434 Page26 of 826of PageID 33 #: 621 REDACTED VERSION OF DOCUMENT(S) SOUGHT TO BE SEALED 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 this case. Rather than file its declaratory judgment action, Google could have moved to intervene in Texas (or simply filed counterclaims). This would have made sure that Google had the opportunity to be heard on the very same issues raised in its complaint.5 2. Googles claims are an inefficient use of judicial resources
In deciding whether to decline to assert jurisdiction over a declaratory judgment action, [t]he court must make a reasoned judgment whether the investment of time and resources will be worthwhile. Serco Servs. Co., L.P. v. Kelley Co., 51 F.3d 1037, 1039 (Fed. Cir. 1995). Entertaining Googles action would be a waste of judicial resources given the existence of the parallel, earlierfiled Texas Actions and the overlap in patents between those actions and this one. When determining if to exercise jurisdiction over a declaratory judgment action, [a] district court . . . should avoid duplicative litigation. Catalyst Assets LLC v. Life Techs. Corp., 2012 U.S. Dist. LEXIS 84347, *7-8 (N.D. Cal. June 17, 2012) (citing Huth v. Hartford Ins. Co. of the Midwest, 298 F.3d 800, 802 (9th Cir. 2002) (dismissing declaratory judgment action where it would would result in duplicative litigation and a waste of judicial resources.); see also Teva Pharms. USA, Inc. v. Eisai Co., 620 F.3d 1341, 1349 (Fed. Cir. 2010) (recognizing that the Federal Circuit has upheld discretionary decisions declining jurisdiction when the declaratory judgment action was duplicative of other proceedings . . . .). This principle is consistent with the purpose of the Declaratory Judgment Act: giving a party a forum to sue only when a patent holder has refused to sue the party despite creating a palpable threat of suit. See Arrowhead Indus. Water, Inc., 846 F.2d at 735. Entertaining duplicative suits here would serve no purpose of judicial administration and would risk inconsistent rulings on the patents' validity, enforceability, and ownership. Kyocera
The only other possible reason Google would have to file its declaratory judgment would be to attempt to adjust its bargaining position as to the patents-in-suit. See Statement of Facts, supra. But using a declaratory judgment action as a bargaining tool runs contrary to the purpose of the Declaratory Judgment Act. See Teva Pharmaceuticals USA, Inc. ex rel. Gate Pharmaceuticals Div. v. EISAI Co., Ltd., 426 F. App'x 904 (Fed. Cir. 2011) (recognizing that the Federal Circuit has upheld discretionary decisions declining jurisdiction when. . . . the party instituted an [declaratory judgment action solely to enhance its bargaining power in negotiations . . . .).
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Case 2:13-cv-00900-JRG Case4:13-cv-05933-CW Document Document19-3 26-2 Filed 02/10/14 Filed01/23/14 Page 435 Page27 of 826of PageID 33 #: 622 REDACTED VERSION OF DOCUMENT(S) SOUGHT TO BE SEALED 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Communs., Inc. v. ESS Techs. Int'l, Inc., 2012 U.S. Dist. LEXIS 89267, 7-8 (N.D. Cal. June 27, 2012) (declining to exercise jurisdiction over declaratory judgment claims duplicative of an earlierfiled action). Because Google is now a party to one of the Texas Actions, Google can have its infringement and validity concerns raised as a counterclaim there. See Proofpoint, Inc. v. InNova Patent Licensing, LLC, 2011 U.S. Dist. LEXIS 120343, *22-23 (N.D. Cal. Oct. 17, 2011) (encouraging the declaratory judgment plaintiff to move to intervene in the Texas Action or bring a separate action for declaratory judgment in the Eastern District of Texas and seek to relate that claim to the Texas Action). C. The Court Should Decline to Assert Jurisdiction Under the First-Filed Rule
The first-filed rule, which favors an earlier filed action, also dictates that the Court should decline jurisdiction over Googles Action. When two actions that sufficiently overlap are filed in different federal district courts, one for infringement and the other for declaratory relief, the declaratory judgment action, if filed later, generally is to be stayed, dismissed, or transferred to the forum of the infringement action. Merial Ltd. v. Cipla Ltd., 681 F.3d 1283, 1299 (Fed. Cir. 2012). In patent cases, the general rule favors the forum of the first-filed action, whether or not it is a declaratory action. Genentech, Inc. v. Eli Lilly & Co., 998 F.2d 931, 937 (Fed. Cir. 1993) abrogated on other grounds by Wilton, 515 U.S. 277. The general rule that the first-filed case is favored over the second-filed action may be even stronger where the second-filed action is [for] a declaratory judgment. Id. The purpose of the first-to-file rule is avoid conflicting decisions and promote judicial efficiency. Merial Ltd. v. Cipla Ltd., 681 F.3d 1283, 1299 (Fed. Cir. 2012). 1. The Texas Actions are first-filed and should be favored
The Texas Actions are the first-filed actions under the first-to-file rule. The first-filed rule permits a district court to decline jurisdiction when a complaint involving substantially similar parties and issues has already been filed in another district court. Futurewei Techs., Inc. v. Acacia Research Corp., 737 F.3d 704 (Fed. Cir. 2013) (affirming district courts dismissal of later-filed -- 20 -McKool 960087v1
Case 2:13-cv-00900-JRG Case4:13-cv-05933-CW Document Document19-3 26-2 Filed 02/10/14 Filed01/23/14 Page 436 Page28 of 826of PageID 33 #: 623 REDACTED VERSION OF DOCUMENT(S) SOUGHT TO BE SEALED 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 declaratory judgment action) (emphasis added); see also Pacesetter Sys., Inc. v. Medtronic, Inc., 678 F.2d 93, 94-95 (9th Cir.1982) (recognizing the same principle). In other words, for an action to be considered first-filed, the parties and issues need only be substantially the samenot be identical. E.g., Intersearch Worldwide, Ltd. v. Intersearch Group, Inc., 544 F.Supp.2d 949, 959 (N.D. Cal.2008) (stating that exact identity [of parties] is not required to satisfy the first-to-file rule); Microchip Tech., Inc. v. United Module Corp., CV-10-04241-LHK, 2011 U.S. Dist. LEXIS 73276, 2011 WL 2669627 (N.D. Cal. July 7, 2011) (noting that application of the rule requires consideration of (1) the chronology of the two actions; (2) the similarity of the parties; and (3) the similarity of the issues). This principle is illustrated by Proofpoint, Inc. v. InNova Patent Licensing, LLC, 2011 U.S. Dist. LEXIS 120343, (N.D. Cal. Oct. 17, 2011). In Proofpoint, the court determined that an earlierfiled infringement action in the Eastern District of Texas was the first filed for purposes of applying the first to file rule, despite the fact that the party asserting the later declaratory judgment action in the Northern District of California was not a party to the first-filed action. In doing so, the court focused on the fact that the same patent was asserted in the earlier-filed and later-filed suits. Id. at * 19. The court also noted that many of the defendants to the first-filed patent infringement suit have asserted claims of non-infringement and invalidity similar to those advanced by Proofpoint. Id. The court concluded that this Court's assertion of jurisdiction would risk a conflicting determination of the scope of the [patent], and [g]iven the substantial similarity of the issues and the considerable energy already invested by the District Court for the Eastern District of Texas, it would not be in the interest of justice or judicial economy for this Court to entertain Proofpoint's claim. The reasoning set forth in Proofpoint applies here. Although Google was not a party to the Texas Actions when it filed its declaratory judgment action in this District, the issues between the two actions are substantially similar such that the Texas actions are first-filed for purposes of the -- 21 -McKool 960087v1
Case 2:13-cv-00900-JRG Case4:13-cv-05933-CW Document Document19-3 26-2 Filed 02/10/14 Filed01/23/14 Page 437 Page29 of 826of PageID 33 #: 624 REDACTED VERSION OF DOCUMENT(S) SOUGHT TO BE SEALED 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 first-to-file rule. The patents asserted in the two actions are identical, and it is almost a certainty that each defendant in the Texas Actions will file non-infringement and invalidity declaratory judgment counterclaims substantially similar to those brought in Googles Action. 2. Judicial efficiency and interests of justice favor the Texas Actions
When considering factors of judicial efficiency and interests of justice, it is clear that the first-to-file rule mandates that Googles action should be dismissed, or in the alternative, transferred to the Eastern District of Texas. These factors, similar to those applied to a motion to transfer under Section 1404, include the convenience and availability of witnesses, absence of jurisdiction over all necessary or desirable parties, possibility of consolidation with related litigation, or considerations relating to the interest of justice. Proofpoint, LLC, 2011 U.S. Dist. LEXIS 120343 at *19 (citing Micron Tech., Inc. v. Mosaid Techs., Inc., 518 F.3d 897, 904-05 (Fed. Cir. 2008)).6 Each of these factors weighs in favor of the Texas Actions, or at best is neutral. If the Court applies the first-to-file rule it should dismiss or transfer Googles Action to the Eastern District of Texas.7 a. Convenience of the Witnesses is Neutral
Both Rockstar and MobileStar are located in Texas. See Statement of Facts, supra. The majority of the inventors of the patents-in-suit are listed on the patents as being from Canada, or otherwise residing in places other than California. See Google Compl., D.I. 1, Exs. A-G. Thus, even taking into account that some of Googles witnesses may be located in this District, Google cannot
6
Although the Federal Circuit in Micron Tech. said a court must apply these factors, its holding was limited to the situation in which the court presiding over a first-filed declaratory judgment action is performing a first-to-file analysis. Micron Tech., 518 F. 3d at 904; EMC Corp. v. Parallel Iron, LLC, 914 F. Supp. 2d 125, 129 (D. Mass. 2012) (explaining that Micron makes application of the factors mandatory only to a first-filed action analyzed by the court presiding over the first-filed action). Thus, the Court here may, but is not required, to take these factors into account, as it is not presiding over the first-filed action. See Proofpoint, 2011 U.S. Dist. LEXIS 120343 at *18-19; Pacesetter Systems, Inc. v. Medtronic, Inc., 678 F.2d 93, 96-97 (9th Cir. Cal. 1982).
As noted above, a later filed declaratory judgment action, generally is to be stayed, dismissed, or transferred to the forum of the infringement action. Merial Ltd. v. Cipla Ltd., 681 F.3d 1283, 1299 (Fed. Cir. 2012). Accordingly, the Court can transfer the Google Action to the Eastern District of Texas pursuant to this motion under the first-to-file rule. -- 22 -McKool 960087v1
Case 2:13-cv-00900-JRG Case4:13-cv-05933-CW Document Document19-3 26-2 Filed 02/10/14 Filed01/23/14 Page 438 Page30 of 826of PageID 33 #: 625 REDACTED VERSION OF DOCUMENT(S) SOUGHT TO BE SEALED 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 show that the balance tips in favor of this District with regard to convenience of the witnesses. This factor is neutral with regard to judicial efficiency and the interests of justice. b. This Court Lacks Jurisdiction Over at Least Some Necessary Parties
As Google admits, it brought its declaratory judgment action because of a perceived threat to its relationships with its customers who are defendants in the Texas Actions. It follows, then, that its customers necessarily would be indispensable parties to this litigation, as their rights vis--vis Googles infringement of the patents-in-suit and the validity of the patents in suit are at play. But a number of the Defendants in the Texas Actions are not subject to jurisdiction in this District, as they lack any substantial presence with California. Indeed, a number of these Defendants including Samsung and others are foreign-based entities with offices in Texas. See Ex. A-G. This reality also underscores that the convenience of witnesses is neutral at best, as most of the Google customer witnesses are either overseas or in Texas. The interest of judicial efficiency, then, dictates that Googles Action is properly heard in the Eastern District of Texas, as both Google and its customers are subject to jurisdiction there. c. The Google Action Can Be Consolidated with the Texas Actions
As stated, the defendants in the Texas Actions almost certainly will file answers containing counterclaims mirroring Googles Action seeking declarations of invalidity. These actions, then, can at the very least be consolidated with one or more of the current Texas Actions for the purposes of invalidity and for purposes of the pre-trial scheduling order. Such consolidation will promote an efficient use of judicial resources and uniformity among suits dealing with substantially the same issues. Accordingly, this factor favors dismissing or transferring Googles Action. d. Considerations for the interests of justice are in favor of the Texas Actions
As explained earlier, the interests of justice would be harmed if the Google Action was entertained further in this district. Specifically, the risk of inconsistent claim constructions and -- 23 -McKool 960087v1
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rulings on invalidity run counter to the interests of fair and efficient justice. Accordingly, this factor weighs in favor of the Texas Actions. VII. Conclusion Google cannot show that this Court has personal jurisdiction over either Rockstar or MobileStar. Moreover, even if such a showing could be made, the Court should decline to assert jurisdiction over Googles declaratory judgment claims because they fail to meet any of the purposes of the Declaratory Judgment Act. For these reasons, the Court should dismiss Googles complain, or in the alternative transfer Googles claims to the Eastern District of Texas.
Dated January 23, 2014.
Respectfully submitted,
By: /s/ Courtland Reichman Courtland L. Reichman (SBN 268873) McKool Smith Hennigan, P.C. 255 Shoreline Drive Suite 510 Redwood Shores, CA 94065 (650) 394-1400 (650) 394-1422 (facsimile) Mike McKool (Pro Hac Vice Application to be filed) mmckool@mckoolsmith.com Douglas A. Cawley (Pro Hac Vice Application to be filed) dcawley@mckoolsmith.com Ted Stevenson III (Pro Hac Vice Application to be filed) tstevenson@mckoolsmith.com David Sochia (Pro Hac Vice Application filed) dsochia@mckoolsmith.com McKool Smith, P.C. 300 Crescent Court Suite 1500 Dallas, TX 75201 (214) 978-4000 (214) 978-4044 (facsimile) Attorneys For Defendants -- 24 --
Rockstar Consortium U.S. LP and MobileStar Technologies LLC
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EXHIBIT A
Case 2:13-cv-00900-JRG Case Case4:13-cv-05933-CW 2:13-cv-00894Document Document Document20-3 26-2 1 Filed Filed 10/31/13 02/10/14 Filed01/23/14 Page Page 1443 of Page2 38 of PageID 826 of PageID 39#: 1 #: 630
UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
ROCKSTAR CONSORTIUM US LP, AND MOBILESTAR TECHNOLOGIES LLC PLAINTIFFS v. Civil Action No. 2:13-cv-894 ASUSTEK COMPUTER, INC. AND JURY TRIAL REQUESTED ASUS COMPUTER INTERNATIONAL, INC. DEFENDANTS. PLAINTIFFS ROCKSTAR CONSORTIUM US LP AND MOBILESTAR TECHNOLOGIES LLCS ORIGINAL COMPLAINT Plaintiffs Rockstar Consortium US LP (Rockstar) and MobileStar Technologies LLC (MobileStar) file this Original Complaint for patent infringement under 35 U.S.C. 271 and in support thereof would respectfully show the Court the following: PARTIES 1. Plaintiff Rockstar Consortium US LP (Rockstar) is a limited partnership
organized and existing under the laws of the State of Delaware, and maintains its principal place of business at Legacy Town Center 1, 7160 North Dallas Parkway Suite No. 250, Plano, TX 75024. 2. Plaintiff MobileStar Technologies LLC (MobileStar) is a subsidiary of
Rockstar and is a limited liability corporation organized and existing under the laws of the State of Delaware, and maintains its principal place of business at Legacy Town Center 1, 7160 North Dallas Parkway Suite No. 250, Plano, TX 75024.
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3.
Upon information and belief, Defendant ASUSTeK Computer, Inc. is a
corporation organized and existing under the laws of Taiwan with its principal place of business at 15 Li-Te Rd., Peitou District, Taipei 112, Taiwan. 4. Upon information and belief, Defendant ASUS Computer International,
Inc. is a subsidiary of ASUSTeK and is a corporation organized and existing under the laws of California with its principal place of business at 800 Corporate Way, Fremont, California 94536. JURISDICTION AND VENUE 5. This is an action for patent infringement under the Patent Laws of the
United States, 35 U.S.C. 271. This Court has exclusive subject matter jurisdiction over this case for patent infringement under 28 U.S.C. 1338. 6. 7. Venue is proper in this Court pursuant to 28 U S.C. 1391 and 1400(b). This Court has personal jurisdiction over Defendants ASUSTeK Computer,
Inc. and ASUS Computer International, Inc. (collectively, ASUS). ASUS has conducted and does conduct business within the State of Texas. ASUS, directly or through subsidiaries or intermediaries (including distributors, retailers, and others), ships, distributes, offers for sale, sells, and advertises (including the provision of an interactive web page) its products (including its infringing products) and/or services in the United States, the State of Texas, and the Eastern District of Texas. ASUS, directly and through subsidiaries or intermediaries (including distributors, retailers, and others), has purposefully and voluntarily placed one or more of its infringing products and/or services, as described below, into the stream of commerce with the expectation that they will be purchased and used by consumers in the Eastern District of Texas. 2
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These
infringing products and/or services have been and continue to be purchased and used by consumers in the Eastern District of Texas. ASUS has committed acts of patent
infringement within the State of Texas and, more particularly, within the Eastern District of Texas. ASSERTED PATENTS 8. On November 17, 1998, U.S. Patent No. 5,838,551 (the 551 Patent)
entitled Electronic Package Carrying an Electronic Component and Assembly of Mother Board and Electronic Package was duly and legally issued with Yee-Ning Chan as the named inventor after full and fair examination. Rockstar owns all rights, title, and interest in and to the 551 Patent and possesses all rights of recovery under the 551 Patent. MobileStar is the exclusive licensee of the 551 patent. 9. On March 14, 2000, U.S. Patent No. 6,037,937 (the 937 Patent) entitled
Navigation Tool for Graphical User Interface was duly and legally issued with Brian Finlay Beaton, Colin Donald Smith, and Bruce Dale Stalkie as the named inventors after full and fair examination. MobileStar owns all rights, title, and interest in and to the 937 Patent and possesses all rights of recovery under the 937 Patent. 10. On October 3, 2000, U.S. Patent No. 6,128,298 (the 298 Patent)
entitled Internet Protocol Filter was duly and legally issued with Bruce Anthony Wootton and William G. Colvin as the named inventors after full and fair examination. Rockstar owns all rights, title, and interest in and to the 298 Patent and possesses all rights of recovery under the 298 Patent. MobileStar is the exclusive licensee of the 298 patent.
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11.
On October 8, 2002, U.S. Patent No. 6,463,131 (the 131 Patent)
entitled System and Method for Notifying a User of an Incoming Communication Event was duly and legally issued with Marilyn French-St. George, Mitch A. Brisebois and Laura A. Mahan as the named inventors after full and fair examination. MobileStar owns all rights, title, and interest in and to the 131 Patent and possesses all rights of recovery under the 131 Patent. 12. On July 20, 2004, U.S. Patent No. 6,765,591 (the 591 Patent) entitled
Managing a Virtual Private Network was duly and legally issued with Matthew W. Poisson, Melissa L. Desroches, and James M. Milillo as the named inventors after full and fair examination. MobileStar owns all rights, title, and interest in and to the 591 Patent and possesses all rights of recovery under the 591 Patent. 13. On August 30, 2005, U.S. Patent No. 6,937,572 (the 572 Patent)
entitled Call Trace on a Packet Switched Network was duly and legally issued with Brian B. Egan and Milos Vodsedalek as the named inventors after full and fair examination. Rockstar owns all rights, title, and interest in and to the 572 Patent and possesses all rights of recovery under the 572 Patent. GENERAL ALLEGATIONS 14. ASUS has directly and indirectly infringed and continues to direction and
indirectly infringe each of the 551, 937, 298, 131, 591, and 572 Patents by engaging in acts constituting infringement under 35 U.S.C. 271(a), (b), (c), and/or (f), including but not necessarily limited to one or more of making, using, selling and offering to sell, in this District and elsewhere in the United States, and importing into this District and elsewhere in the United States, certain mobile communication devices having a version 4
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(or an adaption thereof) of Android operating system (ASUS Mobile Communication Devices). 15. ASUS is doing business in the United States and, more particularly, in the
Eastern District of Texas by making, using, selling, importing, and/or offering for sale ASUS Mobile Communication Devices, including but not limited to ASUS family of smartphones, including, but not limited to the ASUS FonePad and PadFone product families, and ASUS family of tablets, including, but not limited to the ASUS Transformer and /or Transformer Pad (including the Transformer TF201), MeMo Pad, and Nexus 7 product families, and other products that infringe the patent claims involved in this action or by transacting other business in this District. COUNT ONE PATENT INFRINGEMENT BY ASUS 16. Plaintiffs incorporate by reference paragraphs 1-15 as if fully set forth
herein. As described below, ASUS has infringed and/or continues to infringe the 551, 937, 298, 131, 591, and 572 Patents. 17. At least the ASUS Mobile Communication Devices infringe at least claim
1 of the 551 Patent. ASUS makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these products and thus directly infringes one or more claims of the 551 Patent, including at least claim 1. 18. ASUS indirectly infringes the 551 patent by inducing infringement by
others, such as resellers, of at least claim 1 in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of the ASUS Mobile
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Communication Devices. ASUS had actual notice of the 551 Patent at least as of the date this lawsuit was filed. 19. ASUSs affirmative acts of selling ASUS Mobile Communication
Devices, causing the ASUS Mobile Communication Devices to be manufactured and distributed, and providing instruction manuals for ASUS Mobile Communication Devices induced ASUSs manufacturers and resellers to make or use ASUS Mobile Communication Devices in their normal and customary way to infringe the 551 patent. Through its manufacture and sales of ASUS Mobile Communication Devices, ASUS specifically intended its resellers and manufacturers to infringe the 551 patent; further, ASUS was aware that these normal and customary activities would infringe the 551 patent. ASUS performed the acts that constitute induced infringement, and would induce actual infringement, with the knowledge of the 551 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 20. Accordingly, a reasonable inference is that ASUS specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of the 551 Patent in the United States because ASUS has knowledge of the 551 Patent and ASUS actually induces others, such as resellers and end-use customers, to directly infringe the 551 patent, by using, selling, exporting, supplying and/or distributing within the United States, ASUS Mobile Communication Devices for resale to others, such as resellers and end-use customers. ASUS knew or should have known that such actions would induce actual infringement. 21. ASUS indirectly infringes the 551 Patent by contributing to infringement
by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) 6
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in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of ASUS Mobile Communication Devices. ASUS had actual notice of the 551 Patent at least as of the date this lawsuit was filed. 22. ASUS Mobile Communication Devices include at least one electronic
package comprising a component that is located between an EMI shield and a ground member for performing shielding operations. The EMI shield is incorporated into the electronic package, which is then mounted to a circuit board in ASUS Mobile Communication Devices, and on information and belief, the electronic component does not function in an acceptable manner absent the EMI shielding. Furthermore, the
electronic package incorporating the EMI shield does not operate in isolation, but is designed to operate within the Mobile Communication Device, and absent the EMI shielding of the electronic component, ASUS Mobile Communication Devices would not function in an acceptable manner. 23. A reasonable inference to be drawn from the facts set forth is that the EMI
shielded electronic package in ASUS Mobile Communication Devices is especially made or especially adapted to operate in an ASUS Mobile Communication Device as an EMI shield. 24. A reasonable inference to be drawn from the facts set forth is that the EMI
shielded electronic package is not a staple article or commodity of commerce and that the use of the EMI shielded electronic package is required for operation of ASUS Mobile Communication Devices. Any other use would be unusual, far-fetched, illusory,
impractical, occasional, aberrant, or experimental. 7

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25.
The EMI shielded electronic package in ASUS Mobile Communication
Devices are each a material part of the invention of the 551 patent and are especially made for the infringing manufacture, sale, and use of ASUS Mobile Communication Devices. ASUS Mobile Communication Devices, including the EMI shielded electronic package, are especially made or adapted as an electronic package that infringes the 551 patent. Because the sales and manufacture of ASUS Mobile Communication Devices including the EMI shielded electronic package infringe the 551 patent, ASUSs sales of its infringing products have no substantial non-infringing uses. 26. Accordingly, a reasonable inference is that ASUS offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. ASUS provides to others ASUS Mobile Communication Devices with distinct and separate components, including hardware components, which have no substantial non-infringing use. 27. At least ASUS Mobile Communication Devices with an operating system
configured and installed by ASUS to support Gallery, Email, Maps and Browser functionality, infringe at least claim 13 of the 937 Patent. ASUS makes, uses, tests, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claim 13 of the 937 Patent. 28. ASUS indirectly infringes the 937 patent by inducing infringement by
others of at least claim 13, such as resellers, in accordance with 35 U.S.C. 271(b) in this 8
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District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the ASUS Mobile Communication Devices. ASUS received actual notice of the 937 Patent at least by May 14, 2012 from a communication from Rockstar, and/or its predecessors-in-interest, to ASUS, and also received knowledge as of the date this lawsuit was filed. 29. ASUSs affirmative acts of selling ASUS Mobile Communication Devices,
causing the ASUS Mobile Communication Devices to be manufactured, and providing instruction manuals for ASUS Mobile Communication Devices induced ASUSs manufacturers and resellers to make or use the ASUS Mobile Communication Devices in their normal and customary way to infringe the 937 patent. Through its manufacture and sales of ASUS Mobile Communication Devices, ASUS specifically intended its resellers and manufacturers to infringe the 937 patent; further, ASUS was aware that these normal and customary activities would infringe the 937 patent. ASUS performed the acts that constitute induced infringement, and would induce actual infringement, with knowledge of the 937 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 30. Accordingly, a reasonable inference is that ASUS specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of the 937 patent in the United States because ASUS has knowledge of the 937 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, ASUS Communication Devices for resale to others, such as resellers and end-use customers. ASUS knew or should have known that such actions would induce actual infringement. 9
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31.
The use of at least ASUS Mobile Communication Devices with an
operating system configured and installed by ASUS to support Gallery, Email, Maps and Browser functionality as intended by ASUS infringes at least method claim 1 of the 937 Patent. ASUS uses these products and thus directly infringes at least method claim 1 of the 937 Patent. 32. In addition, ASUS provides at least ASUS Mobile Communication
Devices with an operating system configured and installed by ASUS to support Gallery, Email, Maps, and Browser functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claim 1 of the 937 Patent. 33. ASUS indirectly infringes the 937 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of the ASUS Mobile Communication Devices. ASUS received actual notice of the 937 Patent at least by May 14, 2012, in view of a communication from Rockstar, and/or its predecessors-ininterest, to ASUS, and also received knowledge as of the date this lawsuit was filed. 34. ASUS provides at least ASUS Mobile Communication Devices with an
operating system configured and installed by ASUS to support Gallery, Email, Maps and Browser functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe the 937 Patent. Through its
manufacture and sales of ASUS Mobile Communication Devices, ASUS specifically intended its resellers and manufacturers to infringe the 937 patent. 10
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35.
ASUS specifically intends for others, such as resellers and end-use
customers, to directly infringe one or more claims of the 937 Patent in the United States. For example, ASUS provides instructions to resellers and end-use customers regarding the use and operation of ASUSs products in an infringing way. Such instructions include at least Transformer User Manual TF201 available on ASUSs web site at http://dlcdnet.asus.com/pub/ASUS/EeePAD/TF201/TF201_MANUAL_en_20120210.pdf . When resellers and end-use customers follow such instructions, they directly infringe the 937 Patent. ASUS knows that by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 937 Patent. ASUS thus knows that its actions induce the infringement. 36. ASUS performed the acts that constitute induced infringement, and would
induce actual infringement with the knowledge of the 937 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 37. ASUS indirectly infringes the 937 patent, by contributing to infringement
by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of ASUS Mobile Communication Devices. ASUS received actual notice of the 937 Patent at least by May 14, 2012, in view of a communication from Rockstar, and/or its predecessors-in-interest, to ASUS, and also received knowledge as of the date this lawsuit was filed. 38. ASUS Mobile Communication Devices include functionality that, inter
alia, displays a navigable graphical user interface (navigable GUI) that permits a user to manipulate and control the contents of the display to maximize the use of display real 11
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estate. This navigable GUI is included in ASUS Mobile Communication Devices with an operating system configured and installed by ASUS to support at least the Gallery, Email, Maps, and Browser functionalities. On information and belief, these functionalities
cannot operate in an acceptable manner absent the navigable GUI, as it is included in every ASUS Mobile Communication Device. 39. A reasonable inference to be drawn from the facts set forth is that the
navigable GUI as included in ASUS Mobile Communication Devices is especially made or especially adapted to operate on an ASUS Mobile Communication Device as a navigable GUI that permits a user to manipulate or control the contents of the display to maximize the use of display real estate on the users ASUS Mobile Communication Devices. 40. A reasonable inference to be drawn from the facts set forth is that the
navigable GUI as included in the Mobile Communication Device is not a staple article or commodity of commerce and that the use of the navigable GUI in ASUS Mobile Communication Devices is required for the operation of ASUS Mobile Communication Devices. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 41. ASUS Mobile Communication Devices with the navigable GUI are each a
material part of the invention of the 937 patent and are especially made for the infringing manufacture, sale, and use of ASUS Mobile Communication Devices. ASUS Mobile Communication Devices with the navigable GUI are especially made or adapted as a navigable GUI that infringes the 937 patent. Because the sales and manufacture of
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ASUS Mobile Communication Devices with a navigable GUI infringes the 937 patent, ASUSs sales of its infringing products have no substantial non-infringing uses. 42. Accordingly, a reasonable inference is that ASUS offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing the 937 patent, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. ASUS provides to others, ASUS Mobile Communication Devices with distinct and separate components, including software components, which have no substantial non-infringing use. 43. At least ASUS Mobile Communication Devices with an operating system
configured and installed by ASUS to support the Mobile Hotspot functionality infringe at least claims 27 and 31 of the 298 Patent. ASUS makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claims 27 and 31 of the 298 Patent. 44. ASUS indirectly infringes the 298 patent by inducing infringement by
others of at least claim 27 and 31, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the ASUS Mobile Communication Devices. ASUS had actual notice of the 298 Patent at least by September 27, 2013 from a communication from Rockstar to ASUS, and also received knowledge as of the date this lawsuit was filed.
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45.
ASUSs affirmative acts of selling ASUS Mobile Communication Devices,
causing the ASUS Mobile Communication Devices to be manufactured, and providing instruction manuals for ASUS Mobile Communication Devices induced ASUSs manufacturers and resellers to make or use the ASUS Mobile Communication Devices in their normal and customary way to infringe the 298 patent. Through its manufacture and sales of ASUS Mobile Communication Devices, ASUS specifically intended its resellers and manufacturers to infringe the 298 patent; further, ASUS was aware that these normal and customary activities would infringe the 298 patent. ASUS performed the acts that constitute induced infringement, and would induce actual infringement, with the knowledge of the 298 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 46. Accordingly, a reasonable inference is that ASUS specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of the 298 patent in the United States because ASUS has knowledge of the 298 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, ASUS Communication Devices for resale to others, such as resellers and end-use customers. ASUS knew or should have known that such actions would induce actual infringement. 47. The use of at least ASUS Mobile Communication Devices that support the
Mobile Hotspot functionality as intended by ASUS infringes at least method claims 14 and 24 of the 298 Patent. ASUS uses these products and thus directly infringes at least method claims 14 and 24 of the 298 Patent.
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48.
In addition, ASUS provides at least ASUS Mobile Communication
Devices that support the Mobile Hotspot functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claims 14 and 24 of the 298 Patent. 49. ASUS indirectly infringes the 298 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of ASUS Mobile Communication Devices in their intended use, including a customers use of the Mobile Hotspot functionality. ASUS received actual notice of the 298 Patent at least by
September 27, 2013, in view of a communication from Rockstar to ASUS, and also received knowledge as of the date this lawsuit was filed. 50. ASUSs affirmative acts of selling its ASUS Mobile Communication
Devices and providing instruction manuals induced the end-users of ASUS Mobile Communication Devices to use ASUS Mobile Communication Devices in their normal and customary way to infringe the 298 patent at least through using Mobile Hotspot functionality. ASUS also provides instructions, including at least Transformer User Manual TF201 available on ASUSs web site at
http://dlcdnet.asus.com/pub/ASUS/EeePAD/TF201/TF201_MANUAL_en_20120210.pdf for using the Mobile Hotspot functionality. Through its sales of ASUS Mobile
Communication Devices with Mobile Hotspot functionality, ASUS specifically intended the end-users of ASUS Mobile Communication Devices to infringe the 298 patent; further, ASUS was aware that the normal and customary use of Mobile Hotspot 15
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functionality would infringe the 298 patent. ASUS also enticed its end-users to use the Mobile Hotspot functionality by providing instruction manuals and also providing Mobile Hotspot functionality. ASUS performed the acts that constituted induced infringement, and would induce actual infringement, with the knowledge of the 298 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 51. Accordingly, a reasonable inference is that ASUS actively induces
infringement of the 298 Patent by others, such as resellers and end-use customers. ASUS specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 298 Patent in the United States because ASUS had knowledge of the 298 Patent, and ASUS actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of ASUS Mobile Communication Devices in an infringing way. Such instructions include at least Transformer User Manual TF201 available on ASUSs web site at
http://dlcdnet.asus.com/pub/ASUS/EeePAD/TF201/TF201_MANUAL_en_20120210.pdf . When resellers and end-use customers follow such instructions, they directly infringe the 298 Patent. ASUS knows that by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 298 Patent. ASUS thus knows that its actions induce the infringement. 52. ASUS indirectly infringes the 298 Patent by contributing to infringement
by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of ASUS Mobile Communication Devices in their intended use, including a customers use of the Mobile 16
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Hotspot functionality.
ASUS received actual notice of the 298 Patent at least by
September 27, 2013, in view of a Rockstar communication to ASUS, and also received knowledge as of the date this lawsuit was filed. 53. ASUS Mobile Communication Devices with the Mobile Hotspot
functionality allow wireless devices from a first, or private, network to connect to a second, or public, network such as the Internet. The Mobile Hotspot functionality is designed to route data packets between wireless devices tethered to the Mobile Hotspot to nodes on a public network such as the Internet, and cannot function in a manner that does not utilize the Mobile Hotspot functionality available to ASUS Mobile Communication Devices. Upon information and belief, the Mobile Hotspot functionality is designed to entice a user to access nodes in a second, or public, network such as the Internet. 54. A reasonable inference to be drawn from the facts set forth is that the
Mobile Hotspot functionality is especially made or especially adapted to operate on a mobile communication device for providing access for wireless devices in a first, or private, network to nodes in a second, or public, network. 55. A reasonable inference to be drawn from the facts set forth is that the
Mobile Hotspot functionality is not a staple article or commodity of commerce and that the use of the Mobile Hotspot functionality of ASUS Mobile Communication Devices is for interfacing first and second data communications networks, e.g., a private network and a public network such as the Internet. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 56. ASUS Mobile Communication Devices with Mobile Hotspot functionality
are each a material part of the 298 patent and especially made for the infringing use of 17
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the Mobile Hotspot functionality for interfacing private and public data communication networks. ASUS Mobile Communication Devices with the Mobile Hotspot functionality are especially made or adapted to provide access for wireless devices in a first, or private, network through the Mobile Communication Device, to nodes in a second, or public, network that perform or facilitate performance of the steps that infringe the 298 patent. Furthermore, ASUS provides user manuals describing the uses of ASUS Mobile Communication Devices that infringe the 298 patent. Because the sales and
manufacture of ASUS Mobile Communication Devices with Mobile Hotspot functionality infringes the 298 patent, ASUSs sales of its infringement products have no substantial non-infringing uses. 57. Accordingly, a reasonable inference is that ASUS offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. ASUS provides to others, ASUS Mobile Communication Devices with an operating system configured and installed by ASUS to support Mobile Hotspot functionality. ASUS installs and
configures ASUS Mobile Communication Devices with distinct and separate components, including software components, which are used only to perform the infringing method claims. 58. At least ASUS Mobile Communication Devices with an operating system
configured and installed by ASUS to support Message and Notification functionality 18

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infringe at least claim 1 of the 131 Patent. ASUS makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claim 1 of the 131 Patent. 59. ASUS indirectly infringes the 131 patent by inducing infringement by
others of at least claim 1, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the ASUS Mobile Communication Devices. ASUS had actual notice of the 131 Patent at least by
September 27, 2013 from a communication from Rockstar to ASUS, and also received knowledge as of the date this lawsuit was filed. 60. ASUSs affirmative acts of selling ASUS Mobile Communication Devices,
causing the ASUS Mobile Communication Devices to be manufactured, and providing instruction manuals for ASUS Mobile Communication Devices induced ASUSs manufacturers and resellers to make or use the ASUS Mobile Communication Devices in their normal and customary way to infringe the 131 patent. Through its manufacture and sales of ASUS Mobile Communication Devices, ASUS specifically intended its resellers and manufacturers to infringe the 131 patent; further, ASUS was aware that these normal and customary activities would infringe the 131 patent. ASUS performed the acts that constitute induced infringement, and would induce actual infringement, with the knowledge of the 131 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 61. Accordingly, a reasonable inference is that ASUS specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of 19
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the 131 patent in the United States because ASUS has knowledge of the 131 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, ASUS Communication Devices for resale to others, such as resellers and end-use customers. ASUS knew or should have known that such actions would induce actual infringement. 62. The use of at least ASUS Mobile Communication Devices with an
operating system configured and installed by ASUS to support Message and Notification functionality as intended by ASUS infringes at least method claim 5 of the 131 Patent. ASUS uses these products and thus directly infringes at least method claim 5 of the 131 Patent. 63. In addition, ASUS provides at least ASUS Mobile Communication
Devices with an operating system configured and installed by ASUS to support Message functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claim 5 of the 131 Patent. 64. ASUS indirectly infringes the 131 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of ASUS Mobile Communication Devices in their intended use, including a customers use of the Message and Notifications functionality. ASUS received actual notice of the 131 Patent at least by September 27, 2013, in view of a Rockstar communication to ASUS, and also received knowledge as of the date this lawsuit was filed.
20
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65.
ASUSs affirmative acts of selling ASUS Mobile Communication Devices
and providing instruction manuals induced the end-users of ASUS Mobile Communication Devices to use ASUS Mobile Communication Devices in their normal and customary way to infringe the 131 patent at least through using Message and Notifications functionality. Transformer User ASUS also provides instructions, including at least TF201 available on ASUSs web site at
Manual
http://dlcdnet.asus.com/pub/ASUS/EeePAD/TF201/TF201_MANUAL_en_20120210.pdf , for using the Messaging and Notifications functionality. Through its sales of Mobile Communication Devices with Messaging and Notifications functionality, ASUS specifically intended the end-users of ASUS Mobile Communication Devices to infringe the 131 patent; further, ASUS was aware that the normal and customary use of the Message and Notifications functionality would infringe the 131 patent. ASUS also enticed its end-users to use the Messaging and Notifications functionality by providing instruction manuals. ASUS performed the acts that constituted induced infringement, and would induce actual infringement, with the knowledge of the 131 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 66. Accordingly, a reasonable inference is that ASUS actively induces
infringement of the 131 Patent by others, such as resellers and end-use customers. ASUS specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 131 Patent in the United States because ASUS had knowledge of the 131 Patent, and ASUS actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of ASUS Mobile Communication Devices in an infringing way. Such instructions include at least 21
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Transformer
User
Manual
TF201
available
on
ASUSs
web
site
at
by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of ASUS Mobile Communication Devices in their intended use, including a customers use of the Messaging and Notification functionality. ASUS received actual notice of the 131 Patent at least by September 27, 2013, in view of a Rockstar communication to ASUS, and also received knowledge as of the date this lawsuit was filed. 68. ASUSs Message and Notification functionality receives and displays
message of different types, such as a phone call, voice mail, text message, or email. The Message and Notification Services functionality is designed to notify the user of an incoming communication and to select the format of the message received and cannot function in a manner that does not utilize the messaging functionality available to ASUS Mobile Communication Devices. Upon information and belief, the Message and
Notifications functionality is designed to entice a user to receive notifications of an incoming communication.
22
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69.
A reasonable inference to be drawn from the facts set forth is that the
Message and Notifications functionality especially made or especially adapted to operate on ASUS Mobile Communication Devices for notifying a user of an incoming communication. 70. A reasonable inference to be drawn from the facts set forth is that the
Message and Notifications functionality is not a staple article or commodity of commerce and that the use of the Messaging and Notifications functionality of the ASUS Mobile Communication Devices is for notifying a user of an incoming communication. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 71. ASUS Mobile Communication Devices with Messaging and Notifications
functionality are each a material part of the 131 patent and especially made for the infringing use of the Messaging and Notification functionality to receive and display messages. ASUS Mobile Communication Devices including the Messaging and
Notification functionality, are especially made or adapted to notify a user of an incoming communication that perform or facilitate performance of the steps that infringe the 131 patent. Furthermore, ASUS provides user manuals describing the uses of its Mobile Communication Devices that infringe the 131 patent. Because the functionality
provided by ASUSs Messaging and Notification to notify a user of an incoming communication infringes the 131 patent, ASUSs sales of its infringing products have no substantial non-infringing uses. 72. Accordingly, a reasonable inference is that ASUS offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, 23

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or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. ASUS provides to others, Mobile Communication Devices with an operating system configured and installed by ASUS to support Message and Notification functionality. ASUS installs and configures on these products distinct and separate components, including software components, which are used only to perform the infringing method claims. 73. At least ASUS Mobile Communication Devices with an operating system
configured and installed by ASUS to support VPN management functionality, including the ASUS Galaxy S III, infringe at least claims 1 and 8 of the 591 Patent. ASUS makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claims 1 and 8 of the 591 Patent. 74. ASUS indirectly infringes the 591 patent by inducing infringement by
others of at least claims 1 and 8, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the ASUS Mobile Communication Devices. ASUS had actual notice of the 591 Patent at least by
September 27, 2013 from a communication from Rockstar to ASUS, and also received knowledge as of the date this lawsuit was filed. 75. ASUSs affirmative acts of selling ASUS Mobile Communication Devices,
causing the ASUS Mobile Communication Devices to be manufactured, and providing instruction manuals for ASUS Mobile Communication Devices induced ASUSs 24
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manufacturers and resellers to make or use the ASUS Mobile Communication Devices in their normal and customary way to infringe the 591 patent. Through its manufacture and sales of ASUS Mobile Communication Devices, ASUS specifically intended its resellers and manufacturers to infringe the 591 patent; further, ASUS was aware that these normal and customary activities would infringe the 591 patent. ASUS performed the acts that constitute induced infringement, and would induce actual infringement, with the knowledge of the 591 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 76. Accordingly, a reasonable inference is that ASUS specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of the 591 patent in the United States because ASUS has knowledge of the 591 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, ASUS Communication Devices for resale to others, such as resellers and end-use customers. ASUS knew or should have known that such actions would induce actual infringement. 77. The use of at least ASUS Mobile Communication Devices with an
operating system configured and installed by ASUS to support VPN management functionality as specified and intended by ASUS infringes at least claims 1 and 8 of the 591 Patent. ASUS uses these products and thus directly infringes at least claims 1 and 8 of the 591 Patent. 78. In addition, ASUS provides at least its Mobile Communication Devices
with an operating system configured and installed by ASUS to support VPN management
25
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functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least claims 1 and 8 of the 591 Patent. 79. ASUS indirectly infringes the 591 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of ASUS Mobile Communication Devices in their intended use, including a customers use of the VPN management functionality. ASUS received actual notice of the 591 Patent at least by September 27, 2013, from a Rockstar communication to ASUS, and also received knowledge as of the date this lawsuit was filed. 80. ASUSs affirmative acts of selling its Mobile Communication Devices and
providing instruction manuals induced the end-users of ASUS Mobile Communication Devices to use ASUS Mobile Communication Devices in their normal and customary way to infringe the 591 patent at least through using VPN management functionality. ASUS also provides instructions, including at least Transformer User Manual TF201 available on ASUSs web site at
http://dlcdnet.asus.com/pub/ASUS/EeePAD/TF201/TF201_MANUAL_en_20120210.pdf , for using the VPN management functionality. Through its sales of ASUS Mobile Communication Devices with VPN management functionality, ASUS specifically intended the end-users of ASUS Mobile Communication Devices to infringe the 591 patent; further, ASUS was aware that the normal and customary use of VPN management functionality would infringe the 591 patent. ASUS also enticed its end-users to use the VPN management functionality by providing instruction manuals. ASUS performed the 26
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acts that constituted induced infringement, and would induce actual infringement, with the knowledge of the 591 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 81. Accordingly, it is a reasonable inference that ASUS actively induces
infringement of the 591 Patent by others, such as resellers and end-use customers. ASUS specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 591 Patent in the United States because ASUS had knowledge of the 591 Patent, and ASUS actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of ASUSs products in an infringing way. Such instructions include at least Transformer User Manual TF201 available on ASUSs web site at
by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of ASUS Mobile Communication Devices in their intended use, including a customers use of the VPN management functionality. ASUS received actual notice of the 591 Patent at least by
27
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September 27, 2013, in view of a Rockstar communication to ASUS, and also received knowledge as of the date this lawsuit was filed. 83. ASUSs VPN management functionality facilitates management of VPNs.
The VPN management functionality is designed for management of VPNs and cannot function in a manner that does not utilize the VPN management functionality available to ASUS Mobile Communication Devices. The VPN management functionality is designed upon information and belief to entice a user to manage VPNs. 84. A reasonable inference to be drawn from the facts set forth is that the VPN
functionality is especially made or especially adapted to operate on ASUS Mobile Communication Devices for providing VPN management functionality. 85. A reasonable inference to be drawn from the facts set forth is that the VPN
management functionality is not a staple article or commodity of commerce and that the use of the VPN management functionality of ASUS Mobile Communication Devices is for managing VPNs. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 86. ASUS Mobile Communication Devices with VPN management
functionality are each a material part of the invention of the 591 patent and especially made for the infringing use of the VPN functionality to receive call trace information. ASUS Mobile Communication Devices including the VPN management functionality, are especially made or adapted to provide VPN management functionality that perform or facilitate performance of the steps that infringe the 591 patent. Furthermore, ASUS provides user manuals describing the uses of its Mobile Communication Devices that infringe the 591 patent. Because the functionality provided by ASUSs VPN 28
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management functionality infringes the 591 patent, ASUSs sales of its infringing Mobile Communication Devices have no substantial non-infringing uses. 87. Accordingly, a reasonable inference is that ASUS offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. ASUS provides to others, Mobile Communication Devices with an operating system configured and installed by ASUS to support VPN management functionality. ASUS installs and
configures on these products distinct and separate components, including software components, which are used only to infringe the 591 Patent. 88. The use of at least ASUS Mobile Communication Devices with an
operating system configured and installed by ASUS to support Location Services functionality, as intended by ASUS infringes at least method claim 17 of the 572 Patent. ASUS uses these Mobile Communication Devices and thus directly infringes at least method claim 17 of the 572 Patent. 89. In addition, ASUS provides at least its Mobile Communication Devices
with an operating system configured and installed by ASUS to support Location Services functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claim 17 of the 572 Patent. 90. ASUS indirectly infringes by inducing infringement by others, such as
resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District 29
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and elsewhere in the United States.
Direct infringement is the result of activities
performed by the manufacturers, resellers, and/or end-users of ASUS Mobile Communication Devices in their intended use, including a customers use of the Location Services functionality. ASUS received actual notice of the 572 Patent at least by May 14, 2012, in view of a communication from Rockstar, and/or its predecessors-in-interest, to ASUS, and also received knowledge as of the date this lawsuit was filed. 91. ASUSs affirmative acts of selling its Mobile Communication Devices and
providing instruction manuals induced the end-users of ASUS Mobile Communication Devices to use ASUS Mobile Communication Devices in their normal and customary way to infringe the 572 patent at least through using Location Services functionality. ASUS also provides instructions, including at least Transformer User Manual TF201 available on ASUSs web site at
http://dlcdnet.asus.com/pub/ASUS/EeePAD/TF201/TF201_MANUAL_en_20120210.pdf , for using the Location Services functionality. Through its sales of ASUS Mobile Communication Devices with Location Services functionality, ASUS specifically intended the end-users of ASUS Mobile Communication Devices to infringe the 572 patent; further, ASUS was aware that the normal and customary use of Location Services would infringe the 572 patent. ASUS also enticed its end-users to use the Location Services by providing instruction manuals. ASUS performed the acts that constituted induced infringement, and would induce actual infringement, with the knowledge of the 572 patent and with the knowledge or willful blindness that the induced acts would constitute infringement.
30
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92.
Accordingly, a reasonable inference is that ASUS actively induces
infringement of the 572 Patent by others, such as resellers and end-use customers. ASUS specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 572 Patent in the United States because ASUS had knowledge of the 572 Patent, and ASUS actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of ASUSs products in an infringing way. Such instructions include at least Transformer User Manual TF201 available on ASUSs web site at
by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of ASUS Mobile Communication Devices in their intended use, including a customers use of the Locations Services functionality. ASUS received actual notice of the 572 Patent at least by May 14, 2012, in view of a communication from Rockstar, and/or its predecessors-ininterest, to ASUS, and also received knowledge as of the date this lawsuit was filed. 94. ASUSs Location Services functionality provides call trace information,
i.e., a geographic location of ASUS Mobile Communication Devices. The Location 31

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Services functionality is designed to notify the user of ASUS Mobile Communication Devices of call trace information, i.e., a geographic location of the Mobile Communication Devices, and cannot function in a manner that does not utilize the Location Services functionality available to the Mobile Communication Devices. Upon information and belief, the Location Services functionality is designed to entice a user to access call trace information. 95. A reasonable inference to be drawn from the facts set forth is that the
Location Services functionality is especially made or especially adapted to operate on ASUS Mobile Communication Devices for obtaining call trace information, i.e., a geographic location of the Mobile Communication Devices. 96. A reasonable inference to be drawn from the facts set forth is that the
Location Services functionality is not a staple article or commodity of commerce and that the use of the Location Services functionality of ASUS Mobile Communication Devices is for providing call trace information. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 97. ASUS Mobile Communication Devices with Location Services
functionality are each a material part of the 572 patent and especially made for the infringing use of the Location Services functionality to receive call trace information, i.e., a geographic location of the Mobile Communication Devices. The Mobile
Communication Devices including the Location Services functionality are especially made or adapted to provide call trace information that perform or facilitate performance of the steps that infringe the 572 patent. Furthermore, ASUS provides user manuals describing the uses of its products that infringe the 572 patent. Because the functionality 32
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provided by ASUSs Location Services to obtain call trace information, i.e., a geographic location of the Mobile Communication Devices, infringes the 572 patent, ASUSs sales of its infringing products have no substantial non-infringing uses. 98. Accordingly, a reasonable inference is that ASUS offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. ASUS provides to others, Mobile Communication Devices with an operating system configured and installed by ASUS to support Location Services functionality. ASUS installs and
configures on these products distinct and separate components, including software components, which are used only to perform the infringing method claims. 99. ASUSs acts of infringement have caused damage to Rockstar and
MobileStar. Rockstar and MobileStar are entitled to recover from ASUS the damages sustained by Rockstar and MobileStar as a result of ASUSs wrongful acts in an amount subject to proof at trial. In addition, the infringing acts and practices of ASUS have caused, are causing, and, unless such acts and practices are enjoined by the Court, will continue to cause immediate and irreparable harm to Rockstar and MobileStar for which there is no adequate remedy at law, and for which Rockstar and MobileStar are entitled to injunctive relief under 35 U.S.C. 283. 100. ASUS received actual notice of its infringement of the 551, 937, 298,
973, 131, 591, and 572 Patents through at least letters sent by Rockstar and/or its 33
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predecessors-in-interest, Nortel Networks Ltd. and/or Nortel Networks, Inc., to ASUS, and through meetings between employees of Rockstar and/or its predecessors-in-interest, Nortel Networks Ltd., or Nortel Networks Inc. and ASUS. ASUS also has knowledge of its infringement of the Patents-in-Suit by way of this Complaint. 101. ASUS has willfully infringed and/or does willfully infringe the 551, 937,
298, 131, 591, and 572 Patents. DEMAND FOR JURY TRIAL Rockstar and MobileStar hereby demand a jury trial for all issues so triable. PRAYER FOR RELIEF WHEREFORE, Rockstar and MobileStar pray for the following relief: 1. A judgment that ASUS has directly infringed the 551 Patent,
contributorily infringed the 551 Patent, and/or induced the infringement of the 551 Patent. 2. A judgment that ASUS has directly infringed the 937 Patent,
contributorily infringed the 131 Patent, and/or induced the infringement of the 131 Patent.
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5.
A judgment that ASUS has directly infringed the 591 Patent,
contributorily infringed the 572 Patent, and/or induced the infringement of the 572 Patent. 7. A permanent injunction preventing ASUS and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 551 Patent; 8. A permanent injunction preventing ASUS and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 937 patent; 9. A permanent injunction preventing ASUS and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 973 patent;
35
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11.
A permanent injunction preventing ASUS and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 572 patent; 14. A judgment that ASUSs infringement of the 551, 937, 298, 131, 591,
and 572 Patents has been willful; 15. A ruling that this case be found to be exceptional under 35 U.S.C. 285,
and a judgment awarding Rockstar and MobileStar to its attorneys fees incurred in prosecuting this action; 16. A judgment and order requiring ASUS to pay Rockstar and MobileStar
damages under 35 U.S.C. 284, including supplemental damages for any continuing post-verdict infringement up until entry of the final judgment, with an accounting, as needed, and treble damages for willful infringement as provided by 35 U.S.C. 284; 17. A judgment and order requiring ASUS to pay Rockstar and MobileStar the
costs of this action (including all disbursements); 36

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18.
A judgment and order requiring ASUS to pay Rockstar and MobileStar
pre-judgment and post-judgment interest on the damages awarded; 19. A judgment and order requiring that in the event a permanent injunction
preventing future acts of infringement is not granted, that Rockstar and MobileStar be awarded a compulsory ongoing licensing fee; and 20. Such other and further relief as the Court may deem just and proper.
37
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DATED: October 31, 2013.
Respectfully submitted, MCKOOL SMITH, P.C. /s/ Theodore Stevenson, III Mike McKool, Jr. Texas Bar No. 13732100 mmckool@mckoolsmith.com Douglas A. Cawley Texas Bar No. 0403550 dcawley@mckoolsmith.com Theodore Stevenson, III Lead Attorney Texas State Bar No. 19196650 tstevenson@mckoolsmith.com David Sochia Texas State Bar No. 00797470 dsochia@mckoolsmith.com MCKOOL SMITH P.C. 300 Crescent Court, Suite 1500 Dallas, Texas 75201 Telephone: (214) 978-4000 Facsimile: (214) 978-4044 ATTORNEYS FOR PLAINTIFFS ROCKSTAR CONSORTIUM US, LP AND MOBILESTAR TECHNOLOGIES LLC
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EXHIBIT B
Case Case 2:13-cv-00900-JRG 2:13-cv-00895-JRG Case4:13-cv-05933-CW Document Document Document20-4 26-2 1 Filed Filed 02/10/14 10/31/13 Filed01/23/14 Page Page 482 1Page2 of of44 826 PageID of PageID 45 #: #: 1 669
ROCKSTAR CONSORTIUM US LP, AND MOBILESTAR TECHNOLOGIES LLC PLAINTIFFS v. Civil Action No. 2:13-cv-895 HTC CORPORATION AND HTC AMERICA, INC. JURY TRIAL REQUESTED DEFENDANTS. PLAINTIFFS ROCKSTAR CONSORTIUM US LP AND MOBILESTAR TECHNOLOGIES LLCS ORIGINAL COMPLAINT Plaintiffs Rockstar Consortium US LP (Rockstar) and MobileStar Technologies LLC (MobileStar) file this Original Complaint for patent infringement under 35 U.S.C. 271 and in support thereof would respectfully show the Court the following: PARTIES 1. Plaintiff Rockstar Consortium US LP (Rockstar) is a limited partnership
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3.
Upon information and belief, Defendant HTC Corporation is a corporation
organized and existing under the laws of the country of Taiwan with its principal place of business headquarters at 23 Xinghua Road, Taoyuan City, Taoyuan County 330, Taiwan. 4. Upon information and belief, Defendant HTC America, Inc. is a
subsidiary of Defendant HTC Corporation and is a corporation organized and existing under the laws of the state of Texas with its principal place of business at 13920 SE Eastgate Way, Suite 400, Bellevue, Washington 98005. JURISDICTION AND VENUE 5. This is an action for patent infringement under the Patent Laws of the
United States, 35 U.S.C. 271. This Court has exclusive subject matter jurisdiction over this case for patent infringement under 28 U.S.C. 1338. 6. 7. Venue is proper in this Court pursuant to 28 U S.C. 1391 and 1400(b). This Court has personal jurisdiction over Defendants HTC Corporation
and HTC America, Inc. (collectively, HTC). HTC has conducted and does conduct business within the State of Texas. HTC, directly or through subsidiaries or
intermediaries (including distributors, retailers, and others), ships, distributes, offers for sale, sells, and advertises (including the provision of an interactive web page) its products (including its infringing products) and/or services in the United States, the State of Texas, and the Eastern District of Texas. HTC, directly and through subsidiaries or
intermediaries (including distributors, retailers, and others), has purposefully and voluntarily placed one or more of its infringing products and/or services, as described below, into the stream of commerce with the expectation that they will be purchased and used by consumers in the Eastern District of Texas. These infringing products and/or 2
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services have been and continue to be purchased and used by consumers in the Eastern District of Texas. HTC has committed acts of patent infringement within the State of Texas and, more particularly, within the Eastern District of Texas. ASSERTED PATENTS 8. On November 17, 1998, U.S. Patent No. 5,838,551 (the 551 Patent)
entitled Internet Protocol Filter was duly and legally issued with Bruce Anthony Wootton and William G. Colvin as the named inventors after full and fair examination. Rockstar owns all rights, title, and interest in and to the 298 Patent and possesses all rights of recovery under the 298 Patent. MobileStar is the exclusive licensee of the 298 Patent. 11. On December 25, 2001, U.S. Patent No. 6,333,973 (the 973 Patent)
entitled Integrated Message Center was duly and legally issued with Colin Donald 3
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Smith and Brian Finlay Beaton as the named inventors after full and fair examination. MobileStar owns all rights, title, and interest in and to the 973 Patent and possesses all rights of recovery under the 973 Patent. 12. On October 8, 2002, U.S. Patent No. 6,463,131 (the 131 Patent)
entitled Call Trace on a Packet Switched Network was duly and legally issued with Brian B. Egan and Milos Vodsedalek as the named inventors after full and fair examination. Rockstar owns all rights, title, and interest in and to the 572 Patent and possesses all rights of recovery under the 572 Patent. GENERAL ALLEGATIONS 15. HTC has directly and indirectly infringed and continues to directly and
indirectly infringe each of the 551, 937, 298, 973, 131, 591, and 572 Patents by engaging in acts constituting infringement under 35 U.S.C. 271(a), (b), (c), and/or (f), 4
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including but not necessarily limited to one or more of making, using, selling and offering to sell, in this District and elsewhere in the United States, and importing into this District and elsewhere in the United States, certain mobile communication devices having a version (or an adaption thereof) of Android operating system (HTC Mobile Communication Devices). 16. HTC is doing business in the United States and, more particularly, in the
Eastern District of Texas by making, using, selling, importing, and/or offering for sale HTC Mobile Communication Devices, including but not limited to HTCs family of smart phones, including, but not limited to HTC One, Vivid, Desire, Butterfly, EVO, Rezound, Sensation, Trophy, Rhyme, and Hero families, HTCs family of tablets, including, but not limited to Jetstream, EVO View, and Flyer families, and other similar products that infringe the patent claims involved in this action or by transacting other business in this District. COUNT ONE PATENT INFRINGEMENT BY HTC 17. Plaintiffs incorporate by reference paragraphs 1-16 as if fully set forth
herein. As described below, HTC has infringed and/or continues to infringe the 551, 937, 298, 973, 131, 591, and 572 Patents. 18. At least the HTC Mobile Communication Devices infringe at least claim 1
of the 551 Patent. HTC makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these products and thus directly infringes one or more claims of the 551 Patent, including at least claim 1. 19. HTC indirectly infringes the 551 patent by inducing infringement by
others, such as resellers, of at least claim 1 in accordance with 35 U.S.C. 271(b) in this 5
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District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of the HTC Mobile Communication Devices. HTC had actual notice of the 551 Patent at least by October 24, 2012, in view of a communication from Rockstar, and/or its predecessors-in-interest to HTC, and also received knowledge as of the date this lawsuit was filed. 20. HTCs affirmative acts of selling HTC Mobile Communication Devices,
causing the HTC Mobile Communication Devices to be manufactured and distributed, and providing instruction manuals for HTC Mobile Communication Devices induced HTCs manufacturers and resellers to make or use HTC Mobile Communication Devices in their normal and customary way to infringe the 551 patent. Through its manufacture and sales of HTC Mobile Communication Devices, HTC specifically intended its resellers and manufacturers to infringe the 551 patent; further, HTC was aware that these normal and customary activities would infringe the 551 patent. HTC performed the acts that constitute induced infringement, and would induce actual infringement, with the knowledge of the 551 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 21. Accordingly, a reasonable inference is that HTC specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of the 551 Patent in the United States because HTC has knowledge of the 551 Patent and HTC actually induces others, such as resellers and end-use customers, to directly infringe the 551 patent, by using, selling, exporting, supplying and/or distributing within the United States, HTC Mobile Communication Devices for resale to others, such as resellers
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and end-use customers. HTC knew or should have known that such actions would induce actual infringement. 22. HTC indirectly infringes the 551 Patent by contributing to infringement
by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of HTC Mobile Communication Devices. HTC had actual notice of the 551 Patent at least by October 24, 2012, in view of a communication from Rockstar, and/or its predecessors-in-interest to HTC, and also received knowledge as of the date this lawsuit was filed. 23. HTC Mobile Communication Devices include at least one electronic
package comprising a component that is located between an EMI shield and a ground member for performing shielding operations. The EMI shield is incorporated into the electronic package, which is then mounted to a circuit board in HTC Mobile Communication Devices, and on information and belief, the electronic component does not function in an acceptable manner absent the EMI shielding. Furthermore, the
electronic package incorporating the EMI shield does not operate in isolation, but is designed to operate within the Mobile Communication Device, and absent the EMI shielding of the electronic component, HTC Mobile Communication Devices would not function in an acceptable manner. 24. A reasonable inference to be drawn from the facts set forth is that the EMI
shielded electronic package in HTC Mobile Communication Devices is especially made or especially adapted to operate in a HTC Mobile Communication Device as an EMI shield. 7
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25.
A reasonable inference to be drawn from the facts set forth is that the EMI
shielded electronic package is not a staple article or commodity of commerce and that the use of the EMI shielded electronic package is required for operation of HTC Mobile Communication Devices. Any other use would be unusual, far-fetched, illusory,
impractical, occasional, aberrant, or experimental. 26. The EMI shielded electronic package in HTC Mobile Communication
Devices are each a material part of the invention of the 551 patent and are especially made for the infringing manufacture, sale, and use of HTC Mobile Communication Devices. HTC Mobile Communication Devices, including the EMI shielded electronic package, are especially made or adapted as an electronic package that infringes the 551 patent. Because the sales and manufacture of HTC Mobile Communication Devices including the EMI shielded electronic package infringe the 551 patent, HTCs sales of its infringing products have no substantial non-infringing uses. 27. Accordingly, a reasonable inference is that HTC offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. HTC provides to others HTC Mobile Communication Devices with distinct and separate components, including hardware components, which have no substantial non-infringing use. 28. At least HTC Mobile Communication Devices with an operating system
configured and installed by HTC to support Gallery, Email, Maps and Browser 8
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functionality, infringe at least claim 13 of the 937 Patent. HTC makes, uses, tests, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claim 13 of the 937 Patent. 29. HTC indirectly infringes the 937 patent by inducing infringement by
others of at least claim 13, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the HTC Mobile Communication Devices. HTC received actual notice of the 937 Patent at least by January 12, 2010 from a communication from Rockstar, and/or its predecessors-ininterest, to HTC, and also received knowledge as of the date this lawsuit was filed. 30. HTCs affirmative acts of selling HTC Mobile Communication Devices,
causing the HTC Mobile Communication Devices to be manufactured, and providing instruction manuals for HTC Mobile Communication Devices induced HTCs manufacturers and resellers to make or use the HTC Mobile Communication Devices in their normal and customary way to infringe the 937 patent. Through its manufacture and sales of HTC Mobile Communication Devices, HTC specifically intended its resellers and manufacturers to infringe the 937 patent; further, HTC was aware that these normal and customary activities would infringe the 937 patent. HTC performed the acts that constitute induced infringement, and would induce actual infringement, with knowledge of the 937 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 31. Accordingly, a reasonable inference is that HTC specifically intends for
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the 937 patent in the United States because HTC has knowledge of the 937 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, HTC Communication Devices for resale to others, such as resellers and end-use customers. HTC knew or should have known that such actions would induce actual infringement. 32. The use of at least HTC Mobile Communication Devices with an
operating system configured and installed by HTC to support Gallery, Email, Maps and Browser functionality as intended by HTC infringes at least method claim 1 of the 937 Patent. HTC uses these products and thus directly infringes at least method claim 1 of the 937 Patent. 33. In addition, HTC provides at least HTC Mobile Communication Devices
with an operating system configured and installed by HTC to support Gallery, Email, Maps, and Browser functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claim 1 of the 937 Patent. 34. HTC indirectly infringes the 937 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of the HTC Mobile Communication Devices. HTC received actual notice of the 937 Patent at least by January 12, 2010, in view of a communication from Rockstar, and/or its predecessors-ininterest, to HTC, and also received knowledge as of the date this lawsuit was filed.
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35.
HTC provides at least HTC Mobile Communication Devices with an
operating system configured and installed by HTC to support Gallery, Email, Maps and Browser functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe the 937 Patent. Through its
manufacture and sales of HTC Mobile Communication Devices, HTC specifically intended its resellers and manufacturers to infringe the 937 patent. 36. HTC specifically intends for others, such as resellers and end-use
customers, to directly infringe one or more claims of the 937 Patent in the United States. For example, HTC provides instructions to resellers and end-use customers regarding the use and operation of HTCs products in an infringing way. Such instructions include at least Your HTC Jetstream User Guide, available on HTCs web site at http://dl3.htc.com/htc_na/user_guides/htc-jetstream-att-ug.pdf, Your HTC One S User Guide, available on HTCs web site at
http://dl4.htc.com/web_materials/Manual/HTC_One_S/HTC_One_S_User_Guide.pdf, Your HTC One X+ User Guide, available on HTCs web site at
http://dl4.htc.com/web_materials/Manual/HTC_One_X_plus/HTC_One_X_plus_User_G uide.pdf, and Your HTC Vivid User Guide, available on HTCs web site at http://dl3.htc.com/htc_na/user_guides/htc_vivid_att_userguide_0409.pdf. When resellers and end-use customers follow such instructions, they directly infringe the 937 Patent. HTC knows that by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 937 Patent. HTC thus knows that its actions induce the infringement.
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37.
HTC performed the acts that constitute induced infringement, and would
induce actual infringement, with the knowledge of the 937 patent and with knowledge or willful blindness that the induced acts would constitute infringement. 38. HTC indirectly infringes the 937 patent, by contributing to infringement
by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of HTC Mobile Communication Devices. HTC received actual notice of the 937 Patent at least by January 12, 2010, in view of a communication from Rockstar, and/or its predecessors-ininterest to HTC, and also received knowledge as of the date this lawsuit was filed. 39. HTC Mobile Communication Devices include functionality that, inter alia,
displays a navigable graphical user interface (navigable GUI) that permits a user to manipulate and control the contents of the display to maximize the use of display real estate. This navigable GUI is included in HTC Mobile Communication Devices with an operating system configured and installed by HTC to support at least the Gallery, Email, Maps, and Browser functionalities. On information and belief, these functionalities
cannot operate in an acceptable manner absent the navigable GUI, as it is included in every HTC Mobile Communication Device. 40. A reasonable inference to be drawn from the facts set forth is that the
navigable GUI as included in HTC Mobile Communication Devices is especially made or especially adapted to operate on a HTC Mobile Communication Device as a navigable GUI that permits a user to manipulate or control the contents of the display to maximize the use of display real estate on the users HTC Mobile Communication Devices. 12
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41.
navigable GUI as included in the Mobile Communication Device is not a staple article or commodity of commerce and that the use of the navigable GUI in HTC Mobile Communication Devices is required for the operation of HTC Mobile Communication Devices. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 42. HTC Mobile Communication Devices with the navigable GUI are each a
material part of the invention of the 937 patent and are especially made for the infringing manufacture, sale, and use of HTC Mobile Communication Devices. HTC Mobile
Communication Devices with the navigable GUI are especially made or adapted as a navigable GUI that infringes the 937 patent. Because the sales and manufacture of HTC Mobile Communication Devices with a navigable GUI infringes the 937 patent, HTCs sales of its infringing products have no substantial non-infringing uses. 43. Accordingly, a reasonable inference is that HTC offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing the 937 patent, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. HTC provides to others, HTC Mobile Communication Devices with distinct and separate components, including software components, which have no substantial non-infringing use. 44. At least HTC Mobile Communication Devices with an operating system
configured and installed by HTC to support the Mobile Hotspot functionality infringe at 13
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least claims 27 and 31 of the 298 Patent. HTC makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claims 27 and 31 of the 298 Patent. 45. HTC indirectly infringes the 298 patent by inducing infringement by
others of at least claim 27 and 31, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the HTC Mobile Communication Devices. HTC had actual notice of the 298 Patent at least by July 29, 2012 from a communication from Rockstar, and/or its predecessors-in-interest, to HTC, and also received knowledge as of the date this lawsuit was filed. 46. HTCs affirmative acts of selling HTC Mobile Communication Devices,
causing the HTC Mobile Communication Devices to be manufactured, and providing instruction manuals for HTC Mobile Communication Devices induced HTCs manufacturers and resellers to make or use the HTC Mobile Communication Devices in their normal and customary way to infringe the 298 patent. Through its manufacture and sales of HTC Mobile Communication Devices, HTC specifically intended its resellers and manufacturers to infringe the 298 patent; further, HTC was aware that these normal and customary activities would infringe the 298 patent. HTC performed the acts that constitute induced infringement, and would induce actual infringement, with the knowledge of the 298 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 47. Accordingly, a reasonable inference is that HTC specifically intends for
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the 298 patent in the United States because HTC has knowledge of the 298 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, HTC Communication Devices for resale to others, such as resellers and end-use customers. HTC knew or should have known that such actions would induce actual infringement. 48. The use of at least HTC Mobile Communication Devices that support the
Mobile Hotspot functionality as intended by HTC infringes at least method claims 14 and 24 of the 298 Patent. HTC uses these products and thus directly infringes at least method claims 14 and 24 of the 298 Patent. 49. In addition, HTC provides at least HTC Mobile Communication Devices
that support the Mobile Hotspot functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claims 14 and 24 of the 298 Patent. 50. HTC indirectly infringes the 298 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of HTC Mobile Communication Devices in their intended use, including a customers use of the Mobile Hotspot functionality. HTC received actual notice of the 298 Patent at least by July 29, 2012, in view of a communincation from Rockstar, and/or its predecessors-in-interest, to HTC, and also received knowledge as of the date this lawsuit was filed. 51. HTCs affirmative acts of selling its HTC Mobile Communication Devices
and providing instruction manuals induced the end-users of HTC Mobile Communication 15
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Devices to use HTC Mobile Communication Devices in their normal and customary way to infringe the 298 patent at least through using Mobile Hotspot functionality. HTC also provides instructions, including at leastYour HTC Jetstream User Guide, available on HTCs web site at http://dl3.htc.com/htc_na/user_guides/htc-jetstream-att-ug.pdf, Your HTC One S User Guide, available on HTCs web site at
http://dl4.htc.com/web_materials/Manual/HTC_One_X_plus/HTC_One_X_plus_User_G uide.pdf, and Your HTC Vivid User Guide, available on HTCs web site at http://dl3.htc.com/htc_na/user_guides/htc_vivid_att_userguide_0409.pdf for using the Mobile Hotspot functionality. Through its sales of HTC Mobile Communication Devices with Mobile Hotspot functionality, HTC specifically intended the end-users of HTC Mobile Communication Devices to infringe the 298 patent; further, HTC was aware that the normal and customary use of Mobile Hotspot functionality would infringe the 298 patent. HTC also enticed its end-users to use the Mobile Hotspot functionality by
providing instruction manuals and also providing Mobile Hotspot functionality. HTC performed the acts that constituted induced infringement, and would induce actual infringement, with the knowledge of the 298 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 52. Accordingly, a reasonable inference is that HTC actively induces
infringement of the 298 Patent by others, such as resellers and end-use customers. HTC specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 298 Patent in the United States because HTC had 16
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knowledge of the 298 Patent, and HTC actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of HTC Mobile Communication Devices in an infringing way. Such instructions include at least Your HTC Jetstream User Guide, available on HTCs web site at
http://dl3.htc.com/htc_na/user_guides/htc-jetstream-att-ug.pdf, Your HTC One S User Guide, available on HTCs web site at
http://dl4.htc.com/web_materials/Manual/HTC_One_X_plus/HTC_One_X_plus_User_G uide.pdf, and Your HTC Vivid User Guide, available on HTCs web site at http://dl3.htc.com/htc_na/user_guides/htc_vivid_att_userguide_0409.pdf. When resellers and end-use customers follow such instructions, they directly infringe the 298 Patent. HTC knows that by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 298 Patent. HTC thus knows that its actions induce the infringement. 53. HTC indirectly infringes the 298 Patent by contributing to infringement
by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of HTC Mobile Communication Devices in their intended use, including a customers use of the Mobile Hotspot functionality. HTC received actual notice of the 298 Patent at least by July 29, 2012, in view of a communication from Rockstar, and/or its predecessors-in-interest, to HTC, and also received knowledge as of the date this lawsuit was filed. 17
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54.
HTC Mobile Communication Devices with the Mobile Hotspot
functionality allow wireless devices from a first, or private, network to connect to a second, or public, network such as the Internet. The Mobile Hotspot functionality is designed to route data packets between wireless devices tethered to the Mobile Hotspot to nodes on a public network such as the Internet, and cannot function in a manner that does not utilize the Mobile Hotspot functionality available to HTC Mobile Communication Devices. Upon information and belief, the Mobile Hotspot functionality is designed to entice a user to access nodes in a second, or public, network such as the Internet. 55. A reasonable inference to be drawn from the facts set forth is that the
Mobile Hotspot functionality is not a staple article or commodity of commerce and that the use of the Mobile Hotspot functionality of HTC Mobile Communication Devices is for interfacing first and second data communications networks, e.g., a private network and a public network such as the Internet. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 57. HTC Mobile Communication Devices with Mobile Hotspot functionality
are each a material part of the 298 patent and especially made for the infringing use of the Mobile Hotspot functionality for interfacing private and public data communication networks. HTC Mobile Communication Devices with the Mobile Hotspot functionality are especially made or adapted to provide access for wireless devices in a first, or private, 18
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network through the Mobile Communication Device, to nodes in a second, or public, network that perform or facilitate performance of the steps that infringe the 298 patent. Furthermore, HTC provides user manuals describing the uses of HTC Mobile Communication Devices that infringe the 298 patent. Because the sales and
manufacture of HTC Mobile Communication Devices with Mobile Hotspot functionality infringes the 298 patent, HTCs sales of its infringement products have no substantial non-infringing uses. 58. Accordingly, a reasonable inference is that HTC offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. HTC provides to others, HTC Mobile Communication Devices with an operating system configured and installed by HTC to support Mobile Hotspot functionality. HTC installs and configures HTC Mobile Communication Devices with distinct and separate components, including software components, which are used only to perform the infringing method claims. 59. At least HTC Mobile Communication Devices with an operating system
configured and installed by HTC to support an integrated notification message center functionality infringe at least claims 1 and 21 of the 973 Patent. HTC makes, uses, sells, tests, uses, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes one or more claims of the 973 patent, including at least claims 1 and 21. 19
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60.
HTC indirectly infringes the 973 patent by inducing infringement by
others of at least claim 1 and 21, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the HTC Mobile Communication Devices. HTC had actual notice of the 973 Patent at least by March 12, 2012 from a communication from Rockstar, and/or its predecessors-in-interest, to HTC, and also received knowledge as of the date this lawsuit was filed. 61. HTCs affirmative acts of selling HTC Mobile Communication Devices,
others, such as resellers and end-use customers, to directly infringe one or more claims of the 973 patent in the United States because HTC has knowledge of the 973 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, HTC 20
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Communication Devices for resale to others, such as resellers and end-use customers. HTC knew or should have known that such actions would induce actual infringement. 63. The use of at least HTC Mobile Communication Devices with an
operating system configured and installed by HTC to support an integrated notification message center functionality as intended by HTC infringes at least method claim 8 of the 973 Patent. HTC uses these devices within the United States and thus directly infringes one or more claims of the 973 patent, including at least claim 8. 64. HTC indirectly infringes the 973 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of HTC Mobile Communication Devices. HTC received actual notice of the 973 Patent at least by March 12, 2012, in view of a communication from Rockstar, and/or its predecessors-ininterest, to HTC, and also received knowledge as of the date this lawsuit was filed. 65. HTC provides at least HTC Mobile Communication Devices with an
operating system configured and installed by HTC to support integrated notification message center functionality to others, such as resellers and end-use customers, in the United States who, in turn, use HTC Mobile Communication Devices to infringe at least method claim 8 of the 973 Patent. Through its manufacture and sales of HTC Mobile Communication Devices, HTC specifically intended its resellers and manufacturers to infringe the 973 patent. 66. HTC specifically intends for others, such as resellers and end-use
customers, to directly infringe one or more claims of the 973 Patent in the United States. 21
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For example, HTC provides instructions to resellers and end-use customers regarding the use and operation of HTC Mobile Communication Devices in an infringing way. Such instructions include at least Your HTC Jetstream User Guide, available on HTCs web site at http://dl3.htc.com/htc_na/user_guides/htc-jetstream-att-ug.pdf, Your HTC One S User Guide, available on HTCs web site at
http://dl4.htc.com/web_materials/Manual/HTC_One_X_plus/HTC_One_X_plus_User_G uide.pdf, and Your HTC Vivid User Guide, available on HTCs web site at http://dl3.htc.com/htc_na/user_guides/htc_vivid_att_userguide_0409.pdf. When resellers and end-use customers follow such instructions, they directly infringe the 973 Patent. HTC knows that by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 973 Patent. HTC thus knows that its actions induce the infringement. 67. HTC performed the acts that constitute induced infringement, and would
induce actual infringement, with the knowledge of the 973 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 68. HTC indirectly infringes the 973 patent, by contributing to infringement
by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of HTC Mobile Communication Devices. HTC received actual notice of the 973 Patent at least by
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March 12, 2012, in view of a communication from Rockstar, and/or its predecessors-ininterest, to HTC, and also received knowledge as of the date this lawsuit was filed. 69. HTC Mobile Communication Devices include functionality that, inter alia, The
displays an integrated notification message center contained in a single list.
notification message center is designed to provide a user with a single list of notifications regardless of the types of messages (e.g., email, text, etc) on the users Mobile Communication Device. On information and belief, this functionality cannot operate in an acceptable manner absent the integrated notification message center, as it is included in every HTC Mobile Communication Device. 70. A reasonable inference to be drawn from the facts set forth is that the
integrated message center in HTC Mobile Communication Devices is especially made or especially adapted to operate on a HTC Mobile Communication Device as an integrated notification message center that provides a user with notifications concerning different types of messages on the users Mobile Communication Device. 71. A reasonable inference to be drawn from the facts set forth is that the
integrated notification message center in the Mobile Communication Device is not a staple article or commodity of commerce and that the use of the integrated notification message center in HTC Mobile Communication Devices is required for operation of HTC Mobile Communication Devices. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 72. HTC Mobile Communication Devices with the integrated notification
message center are each a material part of the invention of the 973 patent and are especially made for the infringing manufacture, sale, and use of HTC Mobile 23
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Communication Devices. HTC Mobile Communication Devices, including the integrated notification message center, are especially made or adapted as an integrated notification message center that infringes the 973 patent. Because the sales and manufacture of HTC Mobile Communication Devices with an integrated notification message center infringes the 973 patent, HTCs sales of its infringing products have no substantial non-infringing uses. 73. Accordingly, a reasonable inference is that HTC offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. HTC provides to others, HTC Mobile Communication Devices with distinct and separate components, including software components, which have no substantial non-infringing use. 74. At least HTC Mobile Communication Devices with an operating system
configured and installed by HTC to support Message and Notification functionality infringe at least claim 1 of the 131 Patent. HTC makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claim 1 of the 131 Patent. 75. HTC indirectly infringes the 131 patent by inducing infringement by
others of at least claim 1, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the HTC Mobile 24
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Communication Devices. HTC had actual notice of the 131 Patent at least by November 28, 2012 from a communication from Rockstar, and/or its predecessors-in-interest, to HTC, and also received knowledge as of the date this lawsuit was filed. 76. HTCs affirmative acts of selling HTC Mobile Communication Devices,
others, such as resellers and end-use customers, to directly infringe one or more claims of the 131 patent in the United States because HTC has knowledge of the 131 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, HTC Communication Devices for resale to others, such as resellers and end-use customers. HTC knew or should have known that such actions would induce actual infringement. 78. The use of at least HTC Mobile Communication Devices with an
operating system configured and installed by HTC to support Message and Notification 25
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functionality as intended by HTC infringes at least method claim 5 of the 131 Patent. HTC uses these products and thus directly infringes at least method claim 5 of the 131 Patent. 79. In addition, HTC provides at least HTC Mobile Communication Devices
with an operating system configured and installed by HTC to support Message functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claim 5 of the 131 Patent. 80. HTC indirectly infringes the 131 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of HTC Mobile Communication Devices in their intended use, including a customers use of the Message and Notifications functionality. HTC received actual notice of the 131 Patent at least by November 28, 2012, in view of a communication from Rockstar, and/or its predecessorsin-interest, to HTC, and also received knowledge as of the date this lawsuit was filed. 81. HTCs affirmative acts of selling HTC Mobile Communication Devices
and providing instruction manuals induced the end-users of HTC Mobile Communication Devices to use HTC Mobile Communication Devices in their normal and customary way to infringe the 131 patent at least through using Message and Notifications functionality. HTC also provides instructions, including at least Your HTC Jetstream User Guide, available on HTCs web site at http://dl3.htc.com/htc_na/user_guides/htc-jetstream-attug.pdf, Your HTC One S User Guide, available on HTCs web site at http://dl4.htc.com/web_materials/Manual/HTC_One_S/HTC_One_S_User_Guide.pdf, 26
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Your
HTC
One
X+
User
Guide,
available
on
HTCs
web
site
at
http://dl4.htc.com/web_materials/Manual/HTC_One_X_plus/HTC_One_X_plus_User_G uide.pdf, and Your HTC Vivid User Guide, available on HTCs web site at http://dl3.htc.com/htc_na/user_guides/htc_vivid_att_userguide_0409.pdf, for using the Messaging and Notifications functionality. Through its sales of Mobile Communication Devices with Messaging and Notifications functionality, HTC specifically intended the end-users of HTC Mobile Communication Devices to infringe the 131 patent; further, HTC was aware that the normal and customary use of the Message and Notifications functionality would infringe the 131 patent. HTC also enticed its end-users to use the Messaging and Notifications functionality by providing instruction manuals. HTC
performed the acts that constituted induced infringement, and would induce actual infringement, with the knowledge of the 131 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 82. Accordingly, a reasonable inference is that HTC actively induces
infringement of the 131 Patent by others, such as resellers and end-use customers. HTC specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 131 Patent in the United States because HTC had knowledge of the 131 Patent, and HTC actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of HTC Mobile Communication Devices in an infringing way. Such instructions include at least Your HTC Jetstream User Guide, available on HTCs web site at
http://dl3.htc.com/htc_na/user_guides/htc-jetstream-att-ug.pdf, Your HTC One S User Guide, available on 27

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HTCs
web
site
at
by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of HTC Mobile Communication Devices in their intended use, including a customers use of the Messaging and Notification functionality. HTC received actual notice of the 131 Patent at least by November 28, 2012, in view of a communication from Rockstar, and/or its predecessors-in-interest, to HTC, and also received knowledge as of the date this lawsuit was filed. 84. HTCs Message and Notification functionality receives and displays
message of different types, such as a phone call, voice mail, text message, or email. The Message and Notification Services functionality is designed to notify the user of an incoming communication and to select the format of the message received and cannot function in a manner that does not utilize the messaging functionality available to HTC 28
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Mobile Communication Devices.
Upon information and belief, the Message and
Notifications functionality is designed to entice a user to receive notifications of an incoming communication. 85. A reasonable inference to be drawn from the facts set forth is that the
Message and Notifications functionality especially made or especially adapted to operate on HTC Mobile Communication Devices for notifying a user of an incoming communication. 86. A reasonable inference to be drawn from the facts set forth is that the
Message and Notifications functionality is not a staple article or commodity of commerce and that the use of the Messaging and Notifications functionality of the HTC Mobile Communication Devices is for notifying a user of an incoming communication. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 87. HTC Mobile Communication Devices with Messaging and Notifications
functionality are each a material part of the 131 patent and especially made for the infringing use of the Messaging and Notification functionality to receive and display messages. HTC Mobile Communication Devices including the Messaging and
Notification functionality, are especially made or adapted to notify a user of an incoming communication that perform or facilitate performance of the steps that infringe the 131 patent. Furthermore, HTC provides user manuals describing the uses of its Mobile Communication Devices that infringe the 131 patent. Because the functionality
provided by HTCs Messaging and Notification to notify a user of an incoming
29
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communication infringes the 131 patent, HTCs sales of its infringing products have no substantial non-infringing uses. 88. Accordingly, a reasonable inference is that HTC offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. HTC provides to others, Mobile Communication Devices with an operating system configured and installed by HTC to support Message and Notification functionality. HTC installs and configures on these products distinct and separate components, including software components, which are used only to perform the infringing method claims. 89. At least HTC Mobile Communication Devices with an operating system
configured and installed by HTC to support VPN management functionality, including the HTC Galaxy S III, infringe at least claims 1 and 8 of the 591 Patent. HTC makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claims 1 and 8 of the 591 Patent. 90. HTC indirectly infringes the 591 patent by inducing infringement by
others of at least claims 1 and 8, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the HTC Mobile Communication Devices. HTC had actual notice of the 591 Patent at least by October
30
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24, 2012 from a communication from Rockstar, and/or its predecessors-in-interest, to HTC, and also received knowledge as of the date this lawsuit was filed. 91. HTCs affirmative acts of selling HTC Mobile Communication Devices,
others, such as resellers and end-use customers, to directly infringe one or more claims of the 591 patent in the United States because HTC has knowledge of the 591 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, HTC Communication Devices for resale to others, such as resellers and end-use customers. HTC knew or should have known that such actions would induce actual infringement. 93. The use of at least HTC Mobile Communication Devices with an
operating system configured and installed by HTC to support VPN management functionality as specified and intended by HTC infringes at least claims 1 and 8 of the 31
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591 Patent. HTC uses these products and thus directly infringes at least claims 1 and 8 of the 591 Patent. 94. In addition, HTC provides at least its Mobile Communication Devices
with an operating system configured and installed by HTC to support VPN management functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least claims 1 and 8 of the 591 Patent. 95. HTC indirectly infringes the 591 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of HTC Mobile Communication Devices in their intended use, including a customers use of the VPN management functionality. HTC received actual notice of the 591 Patent at least by October 24, 2012, in view of a communication from Rockstar, and/or its predecessors-ininterest, to HTC, and also received knowledge as of the date this lawsuit was filed. 96. HTCs affirmative acts of selling its Mobile Communication Devices and
providing instruction manuals induced the end-users of HTC Mobile Communication Devices to use HTC Mobile Communication Devices in their normal and customary way to infringe the 591 patent at least through using VPN management functionality. HTC also provides instructions, including at least Your HTC Jetstream User Guide, available on HTCs web site at http://dl3.htc.com/htc_na/user_guides/htc-jetstream-att-ug.pdf, Your HTC One S User Guide, available on HTCs web site at
http://dl4.htc.com/web_materials/Manual/HTC_One_S/HTC_One_S_User_Guide.pdf, Your HTC One X+ User Guide, 32

McKool 940071v1
available
on
HTCs
web
site
at
http://dl4.htc.com/web_materials/Manual/HTC_One_X_plus/HTC_One_X_plus_User_G uide.pdf, and Your HTC Vivid User Guide, available on HTCs web site at http://dl3.htc.com/htc_na/user_guides/htc_vivid_att_userguide_0409.pdf, for using the VPN management functionality. Through its sales of HTC Mobile Communication
Devices with VPN management functionality, HTC specifically intended the end-users of HTC Mobile Communication Devices to infringe the 591 patent; further, HTC was aware that the normal and customary use of VPN management functionality would infringe the 591 patent. HTC also enticed its end-users to use the VPN management functionality by providing instruction manuals. HTC performed the acts that constituted induced infringement, and would induce actual infringement, with the knowledge of the 591 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 97. Accordingly, it is a reasonable inference that HTC actively induces
infringement of the 591 Patent by others, such as resellers and end-use customers. HTC specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 591 Patent in the United States because HTC had knowledge of the 591 Patent, and HTC actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of HTCs products in an infringing way. Such instructions include at least Your HTC Jetstream User Guide, available on HTCs web site at http://dl3.htc.com/htc_na/user_guides/htcjetstream-att-ug.pdf, Your HTC One S User Guide, available on HTCs web site at http://dl4.htc.com/web_materials/Manual/HTC_One_S/HTC_One_S_User_Guide.pdf, Your HTC One X+ User Guide, 33
McKool 940071v1
available
on
HTCs
web
site
at
by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of HTC Mobile Communication Devices in their intended use, including a customers use of the VPN management functionality. HTC received actual notice of the 591 Patent at least by October 24, 2012, in view of a communication from Rockstar, and/or its predecessors-ininterest, to HTC, and also received knowledge as of the date this lawsuit was filed. 99. HTCs VPN management functionality facilitates management of VPNs.
The VPN management functionality is designed for management of VPNs and cannot function in a manner that does not utilize the VPN management functionality available to HTC Mobile Communication Devices. The VPN management functionality is designed upon information and belief to entice a user to manage VPNs. 100. A reasonable inference to be drawn from the facts set forth is that the VPN
functionality is especially made or especially adapted to operate on HTC Mobile Communication Devices for providing VPN management functionality. 34
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101.
A reasonable inference to be drawn from the facts set forth is that the VPN
management functionality is not a staple article or commodity of commerce and that the use of the VPN management functionality of HTC Mobile Communication Devices is for managing VPNs. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 102. HTC Mobile Communication Devices with VPN management
functionality are each a material part of the invention of the 591 patent and especially made for the infringing use of the VPN functionality to receive call trace information. HTC Mobile Communication Devices including the VPN management functionality, are especially made or adapted to provide VPN management functionality that perform or facilitate performance of the steps that infringe the 591 patent. Furthermore, HTC provides user manuals describing the uses of its Mobile Communication Devices that infringe the 591 patent. Because the functionality provided by HTCs VPN management functionality infringes the 591 patent, HTCs sales of its infringing Mobile Communication Devices have no substantial non-infringing uses. 103. Accordingly, a reasonable inference is that HTC offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. HTC provides to others, Mobile Communication Devices with an operating system configured and installed by HTC to support VPN management functionality. 35
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HTC installs and
configures on these products distinct and separate components, including software components, which are used only to infringe the 591 Patent. 104. The use of at least HTC Mobile Communication Devices with an
operating system configured and installed by HTC to support Location Services functionality, as intended by HTC infringes at least method claim 17 of the 572 Patent. HTC uses these Mobile Communication Devices and thus directly infringes at least method claim 17 of the 572 Patent. 105. In addition, HTC provides at least its Mobile Communication Devices
with an operating system configured and installed by HTC to support Location Services functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claim 17 of the 572 Patent. 106. HTC indirectly infringes by inducing infringement by others, such as
resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities
performed by the manufacturers, resellers, and/or end-users of HTC Mobile Communication Devices in their intended use, including a customers use of the Location Services functionality. HTC received actual notice of the 572 Patent at least by May 8, 2012, in view of a communication from Rockstar, and/or its predecessors-in-interest, to HTC, and also received knowledge as of the date this lawsuit was filed. 107. HTCs affirmative acts of selling its Mobile Communication Devices and
providing instruction manuals induced the end-users of HTC Mobile Communication Devices to use HTC Mobile Communication Devices in their normal and customary way to infringe the 572 patent at least through using Location Services functionality. HTC 36
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also provides instructions, including at least Your HTC Jetstream User Guide, available on HTCs web site at http://dl3.htc.com/htc_na/user_guides/htc-jetstream-att-ug.pdf, Your HTC One S User Guide, available on HTCs web site at
http://dl4.htc.com/web_materials/Manual/HTC_One_X_plus/HTC_One_X_plus_User_G uide.pdf, and Your HTC Vivid User Guide, available on HTCs web site at http://dl3.htc.com/htc_na/user_guides/htc_vivid_att_userguide_0409.pdf, for using the Location Services functionality. Through its sales of HTC Mobile Communication
Devices with Location Services functionality, HTC specifically intended the end-users of HTC Mobile Communication Devices to infringe the 572 patent; further, HTC was aware that the normal and customary use of Location Services would infringe the 572 patent. HTC also enticed its end-users to use the Location Services by providing
instruction manuals. HTC performed the acts that constituted induced infringement, and would induce actual infringement, with the knowledge of the 572 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 108. Accordingly, a reasonable inference is that HTC actively induces
infringement of the 572 Patent by others, such as resellers and end-use customers. HTC specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 572 Patent in the United States because HTC had knowledge of the 572 Patent, and HTC actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of HTCs products in an infringing way. Such instructions include at least Your HTC Jetstream 37
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User Guide, available on HTCs web site at http://dl3.htc.com/htc_na/user_guides/htcjetstream-att-ug.pdf, Your HTC One S User Guide, available on HTCs web site at http://dl4.htc.com/web_materials/Manual/HTC_One_S/HTC_One_S_User_Guide.pdf, Your HTC One X+ User Guide, available on HTCs web site at
by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of HTC Mobile Communication Devices in their intended use, including a customers use of the Locations Services functionality. HTC received actual notice of the 572 Patent at least by May 8, 2012, in view of a communication from Rockstar, and/or its predecessors-ininterest, to HTC, and also received knowledge as of the date this lawsuit was filed. 110. HTCs Location Services functionality provides call trace information, i.e.,
a geographic location of HTC Mobile Communication Devices. The Location Services functionality is designed to notify the user of HTC Mobile Communication Devices of call trace information, i.e., a geographic location of the Mobile Communication Devices, 38
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and cannot function in a manner that does not utilize the Location Services functionality available to the Mobile Communication Devices. Upon information and belief, the Location Services functionality is designed to entice a user to access call trace information. 111. A reasonable inference to be drawn from the facts set forth is that the
Location Services functionality is especially made or especially adapted to operate on HTC Mobile Communication Devices for obtaining call trace information, i.e., a geographic location of the Mobile Communication Devices. 112. A reasonable inference to be drawn from the facts set forth is that the
Location Services functionality is not a staple article or commodity of commerce and that the use of the Location Services functionality of HTC Mobile Communication Devices is for providing call trace information. Any other use would be unusual, far-fetched,
illusory, impractical, occasional, aberrant, or experimental. 113. HTC Mobile Communication Devices with Location Services
functionality are each a material part of the 572 patent and especially made for the infringing use of the Location Services functionality to receive call trace information, i.e., a geographic location of the Mobile Communication Devices. The Mobile
Communication Devices including the Location Services functionality are especially made or adapted to provide call trace information that perform or facilitate performance of the steps that infringe the 572 patent. Furthermore, HTC provides user manuals describing the uses of its products that infringe the 572 patent. Because the functionality provided by HTCs Location Services to obtain call trace information, i.e., a geographic
39
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location of the Mobile Communication Devices, infringes the 572 patent, HTCs sales of its infringing products have no substantial non-infringing uses. 114. Accordingly, a reasonable inference is that HTC offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. HTC provides to others, Mobile Communication Devices with an operating system configured and installed by HTC to support Location Services functionality. HTC installs and configures on these products distinct and separate components, including software components, which are used only to perform the infringing method claims. 115. HTCs acts of infringement have caused damage to Rockstar and
MobileStar. Rockstar and MobileStar are entitled to recover from HTC the damages sustained by Rockstar and MobileStar as a result of HTCs wrongful acts in an amount subject to proof at trial. In addition, the infringing acts and practices of HTC have caused, are causing, and, unless such acts and practices are enjoined by the Court, will continue to cause immediate and irreparable harm to Rockstar and MobileStar for which there is no adequate remedy at law, and for which Rockstar and MobileStar are entitled to injunctive relief under 35 U.S.C. 283. 116. HTC received actual notice of its infringement of the 551, 937, 298,
973, 131, 591, and 572 Patents through at least letters sent by Rockstar and/or its predecessors-in-interest, Nortel Networks Ltd. and/or Nortel Networks, Inc., to HTC, and 40
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through meetings between employees of Rockstar and/or its predecessors-in-interest, Nortel Networks Ltd., or Nortel Networks Inc. and HTC. HTC also has knowledge of its infringement of the Patents-in-Suit by way of this Complaint. 117. HTC has willfully infringed and/or does willfully infringe the 551, 937,
298, 973, 131, 591, and 572 Patents. DEMAND FOR JURY TRIAL Rockstar and MobileStar hereby demand a jury trial for all issues so triable. PRAYER FOR RELIEF WHEREFORE, Rockstar and MobileStar pray for the following relief: 1. A judgment that HTC has directly infringed the 551 Patent, contributorily
infringed the 551 Patent, and/or induced the infringement of the 551 Patent. 2. A judgment that HTC has directly infringed the 937 Patent, contributorily
infringed the 572 Patent, and/or induced the infringement of the 572 Patent. 41
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8.
A permanent injunction preventing HTC and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 551 Patent; 9. A permanent injunction preventing HTC and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 937 patent; 10. A permanent injunction preventing HTC and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and
42
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those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 591 patent; 14. A permanent injunction preventing HTC and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 572 patent; 15. A judgment that HTCs infringement of the 551, 937, 298, 973, 131,
591, and 572 Patents has been willful; 16. A ruling that this case be found to be exceptional under 35 U.S.C. 285,
and a judgment awarding Rockstar and MobileStar to its attorneys fees incurred in prosecuting this action; 17. A judgment and order requiring HTC to pay Rockstar and MobileStar
damages under 35 U.S.C. 284, including supplemental damages for any continuing post-verdict infringement up until entry of the final judgment, with an accounting, as needed, and treble damages for willful infringement as provided by 35 U.S.C. 284; 18. A judgment and order requiring HTC to pay Rockstar and MobileStar the
costs of this action (including all disbursements); 19. A judgment and order requiring HTC to pay Rockstar and MobileStar pre-
judgment and post-judgment interest on the damages awarded; 20. A judgment and order requiring that in the event a permanent injunction
preventing future acts of infringement is not granted, that Rockstar and MobileStar be awarded a compulsory ongoing licensing fee; and 21. Such other and further relief as the Court may deem just and proper. 43
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44
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EXHIBIT C
ROCKSTAR CONSORTIUM US LP, AND MOBILESTAR TECHNOLOGIES LLC PLAINTIFFS v. Civil Action No. 2:13-cv-896 HUAWEI INVESTMENT & HOLDING JURY TRIAL REQUESTED CO., LTD., HUAWEI TECHNOLOGIES CO., LTD., HUAWEI DEVICE (HONG KONG) CO., LTD, HUAWEI TECHNOLOGIES USA, INC., HUAWEI DEVICE USA INC., HUAWEI TECHNOLOGIES COOPERATIEF U.A., and FUTUREWEI TECHNOLOGIES, INC. DEFENDANTS.
PLAINTIFFS ROCKSTAR CONSORTIUM US LP AND MOBILESTAR TECHNOLOGIES LLCS ORIGINAL COMPLAINT Plaintiffs Rockstar Consortium US LP (Rockstar) and MobileStar Technologies LLC (MobileStar) file this Original Complaint for patent infringement under 35 U.S.C. 271 and in support thereof would respectfully show the Court the following: PARTIES 1. Plaintiff Rockstar Consortium US LP (Rockstar) is a limited partnership
organized and existing under the laws of the State of Delaware, and maintains its principal place of business at Legacy Town Center 1, 7160 North Dallas Parkway Suite No. 250, Plano, TX 75024.
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2.
Plaintiff MobileStar Technologies LLC (MobileStar) is a subsidiary of
Rockstar and is a limited liability corporation organized and existing under the laws of the State of Delaware, and maintains its principal place of business at Legacy Town Center 1, 7160 North Dallas Parkway Suite No. 250, Plano, TX 75024. 3. Upon information and belief, Defendant Huawei Investment & Holding
Co., Ltd. is a corporation organized and existing under the laws of the Peoples Republic of China with a principal place of business at Bantian, Longgan District, Shenzhen, 518129, China. 4. Upon information and belief, Defendant Huawei Technologies Co., Ltd. is
a corporation organized and existing under the laws of the Peoples Republic of China with a principal place of business at Bantian, Longgan District, Shenzhen, 518129, China, and is a subsidiary of Defendant Huawei Investment & Holding Co., Ltd. 5. Upon information and belief, Defendant Huawei Device (Hong Kong)
Co., Ltd. is a corporation organized and existing under the laws of the Peoples Republic of China with a principal place of business at Bantian, Longgan District, Shenzhen, 518129, China, and is a subsidiary of Defendant Huawei Technologies Co., Ltd. 6. Upon information and belief, Defendant Huawei Technologies USA, Inc.
is a corporation organized and existing under the laws of the State of Texas with a principal place of business at 5700 Tennyson Parkway, Suite #500 Plano, Texas 75024, and is a subsidiary of Huawei Technologies Coperatief U.A. 7. Upon information and belief, Defendant Huawei Device USA Inc. is a
corporation organized and existing under the laws of the State of Texas with a principal
2
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place of business at 5700 Tennyson Parkway, Suite #600 Plano, Texas 75024, and is a subsidiary of Defendant Huawei Device (Hong Kong) Co., Ltd. 8. Upon information and belief, Defendant Huawei Technologies
Coperatief U.A. is a corporation organized and existing under the laws of the Netherlands with a principal place of business at Karspeldreef 4, 1101CJ Amsterdam South, Netherlands, and is a subsidiary of Defendant Huawei Technologies Co., Ltd. 9. Upon information and belief, Defendant Futurewei Technologies Inc. is a
corporation organized and existing under the laws of the State of Texas with a principal place of business at 5700 Tennyson Parkway, Suite #500 Plano, Texas 75024, and is a subsidiary of Defendant Huawei Technologies Coperatief U.A. JURISDICTION AND VENUE 10. This is an action for patent infringement under the Patent Laws of the
United States, 35 U.S.C. 271. This Court has exclusive subject matter jurisdiction over this case for patent infringement under 28 U.S.C. 1338. 11. 12. Venue is proper in this Court pursuant to 28 U S.C. 1391 and 1400(b). This Court has personal jurisdiction over Defendants Huawei Investment
& Holding Co., Ltd., Huawei Technologies Co., Ltd., Huawei Device (Hong Kong) Co., Ltd., Huawei Technologies USA, Inc., Huawei Device USA Inc., Huawei Technologies Coperatief U.A., and Futurewei Technologies Inc. (collectively, Huawei). Huawei has conducted and does conduct business within the State of Texas. Huawei, directly or through subsidiaries or intermediaries (including distributors, retailers, and others), ships, distributes, offers for sale, sells, and advertises (including the provision of an interactive web page) its products (including its infringing products) and/or services in the United 3
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States, the State of Texas, and the Eastern District of Texas. Huawei, directly and through subsidiaries or intermediaries (including distributors, retailers, and others), has purposefully and voluntarily placed one or more of its infringing products and/or services, as described below, into the stream of commerce with the expectation that they will be purchased and used by consumers in the Eastern District of Texas. These
infringing products and/or services have been and continue to be purchased and used by consumers in the Eastern District of Texas. Huawei has committed acts of patent
entitled Electronic Package Carrying an Electronic Component and Assembly of Mother Board and Electronic Package was duly and legally issued with Yee-Ning Chan as the named inventor after full and fair examination. Rockstar owns all rights, title, and interest in and to the 551 Patent and possesses all rights of recovery under the 551 Patent. MobileStar is the exclusive licensee under the 551 Patent. 14. On March 14, 2000, U.S. Patent No. 6,037,937 (the 937 Patent) entitled
entitled Internet Protocol Filter was duly and legally issued with Bruce Anthony 4
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Wootton and William G. Colvin as the named inventors after full and fair examination. Rockstar owns all rights, title, and interest in and to the 298 Patent and possesses all rights of recovery under the 298 Patent. MobileStar is the exclusive licensee under the 298 Patent. 16. On December 25, 2001, U.S. Patent No. 6,333,973 (the 973 Patent)
entitled Integrated Message Center was duly and legally issued with Colin Donald Smith and Brian Finlay Beaton as the named inventors after full and fair examination. MobileStar owns all rights, title, and interest in and to the 973 Patent and possesses all rights of recovery under the 973 Patent. 17. On October 8, 2002, U.S. Patent No. 6,463,131 (the 131 Patent)
entitled Call Trace on a Packet Switched Network was duly and legally issued with Brian B. Egan and Milos Vodsedalek as the named inventors after full and fair 5
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examination. Rockstar owns all rights, title, and interest in and to the 572 Patent and possesses all rights of recovery under the 572 Patent.
GENERAL ALLEGATIONS 20. Huawei has infringed and continues to infringe each of
the 551, 937, 298, 973, 131, 591, and 572 Patents by engaging in acts constituting infringement under 35 U.S.C. 271(b), (b), (c), and/or (f), including but not necessarily limited to one or more of making, using, selling and offering to sell, in this District and elsewhere in the United States, and importing into this District and elsewhere in the United States, certain mobile communication devices having a version (or an adaption thereof) of Android operating system (Huawei Mobile Communication Devices). 21. Huawei is doing business in the United States and, more particularly, in
the Eastern District of Texas by making, using, selling, importing, and/or offering for sale Huawei Mobile Communication Devices, including but not limited to Huaweis family of smart phones, including but not limited to the Huawei M865 MUVE, Huawei Ascend II, and Huawei Premia 4G M931, and Huaweis family of tablets, including but not limited to the Huawei MediaPad and Huawei IDEOS S7 Slim, and other products that infringe the patent claims involved in this action or by transacting other business in this District. COUNT ONE PATENT INFRINGEMENT BY HUAWEI 22. Plaintiffs incorporate by reference paragraphs 1-21 as if fully set forth
herein. As described below, Huawei has infringed and/or continues to infringe the 551, 937, 298, 973, 131, 591, and 572 Patents.
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23.
At least the Huawei Mobile Communication Devices, including the
Huawei Premia 4G M931, infringe at least claim 1 of the 551 Patent. Huawei makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these products and thus directly infringes one or more claims of the 551 Patent, including at least claim 1. 24. Huawei indirectly infringes the 551 patent by inducing infringement by
others, such as resellers, of at least claim 1, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the Huawei Mobile Communication Devices, including the Huawei Premia 4G M931. Huawei had actual notice of the 551 Patent at least by September 11, 2013, in view of a communication from Rockstar and/or its predecessors-in-interest to Huawei. 25. Huaweis affirmative acts of selling Huawei Mobile Communication
Devices, including the Huawei Premia 4G M931, causing the Huawei Mobile Communication Devices to be manufactured and distributed, and providing instruction manuals for Huawei Mobile Communication Devices induced Huaweis manufacturers and resellers to make or use Huawei Mobile Communication Devices in their normal and customary way to infringe the 551 patent. Through its manufacture and sales of Huawei Mobile Communication Devices, Huawei specifically intended its resellers and manufacturers to infringe the 551 patent; further, Huawei was aware that these normal and customary activities would infringe the 551 patent. Huawei performed the acts that constitute induced infringement, and would induce actual infringement, with the
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knowledge of the 551 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 26. Accordingly, a reasonable inference is that Huawei specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of the 551 Patent in the United States because Huawei has knowledge of the 551 Patent and Huawei actually induces others, such as resellers and end-use customers, to directly infringe the 551 patent, by using, by selling, exporting, supplying and/or distributing within the United States, Huawei Mobile Communication Devices for resale to others, such as resellers and end-use customers. Huawei knew or should have known that such actions would induce actual infringement. 27. Huawei indirectly infringes the 551 Patent by contributing to
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Huawei Mobile Communication Devices. Huawei had actual notice of the 551 Patent at least by September 11, 2013, in view of a Rockstar communication to Huawei. 28. Huawei Mobile Communication Devices, including the Huawei Premia
4G M931, include at least one electronic package comprising a component that is located between an EMI shield and a ground member for performing shielding operations. The EMI shield is incorporated into the electronic package, which is then mounted to a circuit board in Huawei Mobile Communication Devices, and on information and belief, the electronic component does not function in an acceptable manner absent the EMI shielding. Furthermore, the electronic package incorporating the EMI shield does not 8
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operate in isolation, but is designed to operate within the Mobile Communication Device, and absent the EMI shielding of the electronic component, Huawei Mobile Communication Devices would not function in an acceptable manner. 29. A reasonable inference to be drawn from the facts set forth is that the EMI
shielded electronic package in Huawei Mobile Communication Devices, including the Huawei Premia 4G M931, is especially made or especially adapted to operate in a Huawei Mobile Communication Device as an EMI shield. 30. A reasonable inference to be drawn from the facts set forth is that the EMI
shielded electronic package is not a staple article or commodity of commerce and that the use of the EMI shielded electronic package is required for operation of Huawei Mobile Communication Devices, including the Huawei Premia 4G M931. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 31. The EMI shielded electronic package in Huawei Mobile Communication
Devices, including the Huawei Premia 4G M931, are each a material part of the invention of the 551 patent and are especially made for the infringing manufacture, sale, and use of Huawei Mobile Communication Devices. Huawei Mobile Communication Devices,
including the EMI shielded electronic package, are especially made or adapted as an electronic package that infringes the 551 patent. Because the sales and manufacture of Huawei Mobile Communication Devices including the EMI shielded electronic package infringe the 551 patent, Huaweis sales of its infringing products have no substantial non-infringing uses. 32. Accordingly, a reasonable inference is that Huawei offers to sell, or sells

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or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. Huawei provides to others Huawei Mobile Communication Devices, including the Huawei Premia 4G M931, with distinct and separate components, including hardware components, which have no substantial non-infringing use. 33. At least Huawei Mobile Communication Devices, including the Huawei
M865 MUVE, with an operating system configured and installed by Huawei to support Gallery, Email, Maps and Browser functionality, infringe at least claim 13 of the 937 Patent. Huawei makes, uses, tests, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claim 13 of the 937 Patent. 34. Huawei indirectly infringes the 937 patent by inducing infringement by
others of at least claim 13, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the Huawei Mobile Communication Devices. Huawei received actual notice of the 937 Patent at least by March 12, 2012 in view of a communication from Rockstar, and/or its predecessors-ininterest, to Huawei. 35. Huaweis affirmative acts of selling Huawei Mobile Communication
Devices, causing the Huawei Mobile Communication Devices to be manufactured, and providing instruction manuals for Huawei Mobile Communication Devices induced 10
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Huaweis manufacturers and resellers to make or use the Huawei Mobile Communication Devices in their normal and customary way to infringe the 937 patent. Through its manufacture and sales of Huawei Mobile Communication Devices, Huawei specifically intended its resellers and manufacturers to infringe the 937 patent; further, Huawei was aware that these normal and customary activities would infringe the 937 patent. Huawei performed the acts that constitute induced infringement, and would induce actual infringement, with knowledge of the 937 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 36. Accordingly, a reasonable inference is that Huawei specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of the 937 patent in the United States because Huawei has knowledge of the 937 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, Huawei Communication Devices for resale to others, such as resellers and end-use customers. Huawei knew or should have known that such actions would induce actual infringement. 37. The use of at least Huawei Mobile Communication Devices, including the
Huawei M865 MUVE, with an operating system configured and installed by Huawei to support Gallery, Email, Maps and Browser functionality as intended by Huawei infringes at least method claim 1 of the 937 Patent. Huawei uses these products and thus directly infringes at least method claim 1 of the 937 Patent. 38. In addition, Huawei provides at least Huawei Mobile Communication
Devices, including the Huawei M865 MUVE, with an operating system configured and 11
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installed by Huawei to support Gallery, Email, Maps, and Browser functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claim 1 of the 937 Patent. 39. Huawei indirectly infringes the 937 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the Huawei Mobile Communication Devices, including the Huawei M865 MUVE. Huawei received actual notice of the 937 Patent at least by March 12, 2012, in view of a communication from Rockstar and/or its predecessors-in-interest to Huawei. 40. Huawei provides at least Huawei Mobile Communication Devices,
including the Huawei M865 MUVE, with an operating system configured and installed by Huawei to support Gallery, Email, Maps and Browser functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe the 937 Patent. Through its manufacture and sales of Huawei Mobile
Communication Devices, Huawei specifically intended its resellers and manufacturers to infringe the 937 patent. 41. Huawei specifically intends for others, such as resellers and end-use
customers, to directly infringe one or more claims of the 937 Patent in the United States. For example, Huawei provides instructions to resellers and end-use customers regarding the use and operation of Huaweis products in an infringing way. Such instructions include, for example, at least the M865 MUVE user guide (available at http://www.huaweidevice.com/worldwide/downloadCenter.do?method=toDownloadFile 12
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&flay=document&softid=NDI4OTk=) (accessed October 30, 2013). When resellers and end-use customers follow such instructions, they directly infringe the 937 Patent. Huawei knows that by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 937 Patent. Huawei thus knows that its actions induce the infringement. 42. Huawei performed the acts that constitute induced infringement, and
would induce actual infringement, with the knowledge of the 937 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 43. Huawei indirectly infringes the 937 patent, by contributing to
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Huawei Mobile Communication Devices including the Huawei M865 MUVE. Huawei received actual notice of the 937 Patent at least by March 12, 2012 in view of a communication from Rockstar and/or its predecessors-in-interest to Huawei, and also received knowledge as of the date this lawsuit was filed. 44. Huawei Mobile Communication Devices, including the Huawei M865
MUVE, include functionality that, inter alia, displays a navigable graphical user interface (navigable GUI) that permits a user to manipulate and control the contents of the display to maximize the use of display real estate. This navigable GUI is included in Huawei Mobile Communication Devices with an operating system configured and installed by Huawei to support at least the Gallery, Email, Maps, and Browser functionalities. On information and belief, these functionalities cannot operate in an 13
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acceptable manner absent the navigable GUI, as it is included in every Huawei Mobile Communication Device. 45. A reasonable inference to be drawn from the facts set forth is that the
navigable GUI as included in Huawei Mobile Communication Devices, including the Huawei M865 MUVE, is especially made or especially adapted to operate on a Huawei Mobile Communication Device as a navigable GUI that permits a user to manipulate or control the contents of the display to maximize the use of display real estate on the users Huawei Mobile Communication Devices. 46. A reasonable inference to be drawn from the facts set forth is that the
navigable GUI as included in the Mobile Communication Device is not a staple article or commodity of commerce and that the use of the navigable GUI in Huawei Mobile Communication Devices is required for the operation of Huawei Mobile Communication Devices, including the Huawei M865 MUVE. Any other use would be unusual, farfetched, illusory, impractical, occasional, aberrant, or experimental. 47. Huawei Mobile Communication Devices, including the Huawei M865
MUVE, with the navigable GUI are each a material part of the invention of the 937 patent and are especially made for the infringing manufacture, sale, and use of Huawei Mobile Communication Devices. Huawei Mobile Communication Devices with the
navigable GUI are especially made or adapted as a navigable GUI that infringes the 937 patent. Because the sales and manufacture of Huawei Mobile Communication Devices with a navigable GUI infringes the 937 patent, Huaweis sales of its infringing products have no substantial non-infringing uses.
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48.
Accordingly, a reasonable inference is that Huawei offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing the 937 patent, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. Huawei provides to others Huawei Mobile Communication Devices, including the Huawei M865 MUVE, with distinct and separate components, including software components, which have no substantial non-infringing use. 49. At least Huawei Mobile Communication Devices, including the Huawei
M865 MUVE and Huawei MediaPad, infringe at least claims 27 and 31 of the 298 Patent. Huawei makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claims 27 and 31 of the 298 Patent. 50. Huawei indirectly infringes the 298 patent by inducing infringement by
others of at least claim 13, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the Huawei Mobile Communication Devices. Huawei received actual notice of the 298 Patent at least by July 29, 2012 in view of a communication from Rockstar, and/or its predecessors-ininterest, to Huawei. 51. Huaweis affirmative acts of selling Huawei Mobile Communication
Devices, causing the Huawei Mobile Communication Devices to be manufactured, and 15

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providing instruction manuals for Huawei Mobile Communication Devices induced Huaweis manufacturers and resellers to make or use the Huawei Mobile Communication Devices in their normal and customary way to infringe the 298 patent. Through its manufacture and sales of Huawei Mobile Communication Devices, Huawei specifically intended its resellers and manufacturers to infringe the 298 patent; further, Huawei was aware that these normal and customary activities would infringe the 298 patent. Huawei performed the acts that constitute induced infringement, and would induce actual infringement, with knowledge of the 298 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 52. Accordingly, a reasonable inference is that Huawei specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of the 298 patent in the United States because Huawei has knowledge of the 298 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, Huawei Communication Devices for resale to others, such as resellers and end-use customers. Huawei knew or should have known that such actions would induce actual infringement. 53. The use of at least Huawei Mobile Communication Devices, including the
Huawei M865 MUVE and Huawei MediaPad, that support the Mobile Hotspot functionality as intended by Huawei infringes at least method claims 14 and 24 of the 298 Patent. Huawei uses these products and thus directly infringes at least method claims 14 and 24 of the 298 Patent.
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54.
In addition, Huawei provides at least Huawei Mobile Communication
Devices, including the Huawei M865 MUVE and Huawei MediaPad, that support the Mobile Hotspot functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claims 14 and 24 of the 298 Patent. 55. Huawei indirectly infringes the 298 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the results of occurs by activities performed by the manufacturers, resellers, and end-users of Huawei Mobile Communication Devices, including the Huawei M865 MUVE and Huawei MediaPad, in their intended use, including a customers use of the Mobile Hotspot functionality. Huawei received actual notice of the 298 Patent at least by July 29, 2012 in view of a communication from Rockstar and/or its predecessors-in-interest to Huawei. 56. Huaweis affirmative acts of selling its Huawei Mobile Communication
Devices, including the Huawei M865 MUVE and Huawei MediaPad, and providing instruction manuals induced the end-users of Huawei Mobile Communication Devices to use Huawei Mobile Communication Devices in their normal and customary way to infringe the 298 patent at least through using Mobile Hotspot functionality. Huawei also provides instructions, including at least the M865 MUVE user guide (available at http://www.huaweidevice.com/worldwide/downloadCenter.do?method=toDownloadFile &flay=document&softid=NDI4OTk=) (accessed October 30, 2013) and the MediaPad User Guide (available at
http://www.huaweidevice.com/worldwide/downloadCenter.do?method=toDownloadFile 17
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&flay=document&softid=NDY2NzQ=) (accessed October 30, 2013) for using the Mobile Hotspot functionality. Through its sales of Huawei Mobile Communication Devices with Mobile Hotspot functionality, Huawei specifically intended the end-users of Huawei Mobile Communication Devices to infringe the 298 patent; further, Huawei was aware that the normal and customary use of Mobile Hotspot functionality would infringe the 298 patent. Huawei also enticed its end-users to use the Mobile Hotspot functionality by providing instruction manuals and also providing Mobile Hotspot functionality. Huawei performed the acts that constituted induced infringement, and would induce actual infringement, with the knowledge of the 298 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 57. Accordingly, a reasonable inference is that Huawei actively induces
infringement of the 298 Patent by others, such as resellers and end-use customers. Huawei specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 298 Patent in the United States because Huawei had knowledge of the 298 Patent, and Huawei actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of Huawei Mobile Communication Devices in an infringing way. Such instructions include at least the M865 MUVE user guide (available at
http://www.huaweidevice.com/worldwide/downloadCenter.do?method=toDownloadFile &flay=document&softid=NDI4OTk=) (accessed October 30, 2013) and the MediaPad User Guide (available at
http://www.huaweidevice.com/worldwide/downloadCenter.do?method=toDownloadFile &flay=document&softid=NDY2NzQ=) (accessed October 30, 2013). When resellers and 18

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end-use customers follow such instructions, they directly infringe the 298 Patent. Huawei knows that by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 298 Patent. Huawei thus knows that its actions induce the infringement. 58. Huawei indirectly infringes the 298 Patent by contributing to
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of occurs by activities performed by the manufacturers, resellers, and end-users of Huawei Mobile Communication Devices, including the Huawei M865 MUVE and Huawei MediaPad, in their intended use, including a customers use of the Mobile Hotspot functionality. Huawei received actual notice of the 298 Patent at least by July 29, 2012 in view of a Rockstar communication to Huawei. 59. Huawei Mobile Communication Devices, including the Huawei M865
MUVE and Huawei MediaPad, with the Mobile Hotspot functionality allow wireless devices from a first, or private, network to connect to a second, or public, network such as the Internet. The Mobile Hotspot functionality is designed to route data packets between wireless devices tethered to the Mobile Hotspot to nodes on a public network such as the Internet, and cannot function in a manner that does not utilize the Mobile Hotspot functionality available to Huawei Mobile Communication Devices. Upon
information and belief, the Mobile Hotspot functionality is designed to entice a user to access nodes in a second, or public, network such as the Internet. 60. A reasonable inference to be drawn from the facts set forth is that the
Mobile Hotspot functionality is especially made or especially adapted to operate on a 19

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mobile communication device for providing access for wireless devices in a first, or private, network to nodes in a second, or public, network. 61. A reasonable inference to be drawn from the facts set forth is that the
Mobile Hotspot functionality is not a staple article or commodity of commerce and that the use of the Mobile Hotspot functionality of Huawei Mobile Communication Devices, including the Huawei M865 MUVE and Huawei MediaPad, is for interfacing first and second data communications networks, e.g., a private network and a public network such as the Internet. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 62. Huawei Mobile Communication Devices with Mobile Hotspot
functionality, including the Huawei M865 MUVE and Huawei MediaPad, are each a material part of the 298 patent and especially made for the infringing use of the Mobile Hotspot functionality for interfacing private and public data communication networks. Huawei Mobile Communication Devices with the Mobile Hotspot functionality are especially made or adapted to provide access for wireless devices in a first, or private, network through the Mobile Communication Device, to nodes in a second, or public, network that perform or facilitate performance of the steps that infringe the 298 patent. Furthermore, Huawei provides user manuals describing the uses of Huawei Mobile Communication Devices that infringe the 298 patent. Because the sales and
manufacture of Huawei Mobile Communication Devices with Mobile Hotspot functionality infringes the 298 patent, Huaweis sales of its infringement products have no substantial non-infringing uses.
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63.
Accordingly, a reasonable inference is that Huawei offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. Huawei provides to others Huawei Mobile Communication Devices, including the Huawei M865 MUVE and Huawei MediaPad, to support Mobile Hotspot functionality. Huawei installs and
configures Huawei Mobile Communication Devices with distinct and separate components, including software components, which are used only to perform the infringing method claims. 64. At least Huawei Mobile Communication Devices, including Huawei
M865 MUVE, with an operating system configured and installed by Huawei to support an integrated notification message center functionality infringe at least claims 1 and 21 of the 973 Patent. Huawei makes, uses, sells, tests, uses, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes one or more claims of the 973 patent, including at least claims 1 and 21. 65. Huawei indirectly infringes the 973 patent by inducing infringement by
others of at least claim 13, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the Huawei Mobile Communication Devices. Huawei received actual notice of the 973 Patent at least by
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March 12, 2012 in view of a communication from Rockstar, and/or its predecessors-ininterest, to Huawei. 66. Huaweis affirmative acts of selling Huawei Mobile Communication
Devices, causing the Huawei Mobile Communication Devices to be manufactured, and providing instruction manuals for Huawei Mobile Communication Devices induced Huaweis manufacturers and resellers to make or use the Huawei Mobile Communication Devices in their normal and customary way to infringe the 973 patent. Through its manufacture and sales of Huawei Mobile Communication Devices, Huawei specifically intended its resellers and manufacturers to infringe the 973 patent; further, Huawei was aware that these normal and customary activities would infringe the 973 patent. Huawei performed the acts that constitute induced infringement, and would induce actual infringement, with knowledge of the 973 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 67. Accordingly, a reasonable inference is that Huawei specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of the 973 patent in the United States because Huawei has knowledge of the 973 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, Huawei Communication Devices for resale to others, such as resellers and end-use customers. Huawei knew or should have known that such actions would induce actual infringement. 68. The use of at least Huawei Mobile Communication Devices, including
Huawei M865 MUVE, with an operating system configured and installed by Huawei to 22
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support an integrated notification message center functionality as intended by Huawei infringes at least method claim 8 of the 973 Patent. Huawei uses these devices within the United States and thus directly infringes one or more claims of the 973 patent, including at least claim 8. 69. Huawei indirectly infringes the 973 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Huawei Mobile Communication Devices, including Huawei M865 MUVE. Huawei received actual
notice of the 973 Patent at least by March 12, 2012 in view of a communication from Rockstar and/or its predecessors-in-interest to Huawei.. 70. Huawei provides at least Huawei Mobile Communication Devices,
including Huawei M865 MUVE, with an operating system configured and installed by Huawei to support integrated notification message center functionality to others, such as resellers and end-use customers, in the United States who, in turn, use Huawei Mobile Communication Devices to infringe at least method claim 8 of the 973 Patent. Through its manufacture and sales of Huawei Mobile Communication Devices, Huawei specifically intended its resellers and manufacturers to infringe the 973 patent. 71. Huawei specifically intends for others, such as resellers and end-use
customers, to directly infringe one or more claims of the 973 Patent in the United States. For example, Huawei provides instructions to resellers and end-use customers regarding the use and operation of Huawei Mobile Communication Devices, including Huawei M865 MUVE, in an infringing way. Such instructions include at least Such instructions 23
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include, for example, at least the M865 MUVE user guide (available at http://www.huaweidevice.com/worldwide/downloadCenter.do?method=toDownloadFile &flay=document&softid=NDI4OTk=) (accessed October 30, 2013). When resellers and end-use customers follow such instructions, they directly infringe the 973 Patent. Huawei knows that by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 973 Patent. Huawei thus knows that its actions induce the infringement. 72. Huawei performed the acts that constitute induced infringement, and
would induce actual infringement, with the knowledge of the 973 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 73. Huawei indirectly infringes the 973 patent, by contributing to
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Huawei Mobile Communication Devices, including Huawei M865 MUVE. Huawei
received actual notice of the 973 Patent at least by March 12, 2012 in view of a communication from Rockstar and/or its predecessors-in-interest to Huawei. 74. Huawei Mobile Communication Devices, including Huawei M865
MUVE, include functionality that, inter alia, displays an integrated notification message center contained in a single list. The notification message center is designed to provide a user with a single list of notifications regardless of the types of messages (e.g., email, text, etc) on the users Mobile Communication Device. On information and belief, this
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functionality cannot operate in an acceptable manner absent the integrated notification message center, as it is included in every Huawei Mobile Communication Device. 75. A reasonable inference to be drawn from the facts set forth is that the
integrated message center in Huawei Mobile Communication Devices, including Huawei M865 MUVE, is especially made or especially adapted to operate on a Huawei Mobile Communication Device as an integrated notification message center that provides a user with notifications concerning different types of messages on the users Mobile Communication Device. 76. A reasonable inference to be drawn from the facts set forth is that the
integrated notification message center in the Mobile Communication Device, including Huawei M865 MUVE, is not a staple article or commodity of commerce and that the use of the integrated notification message center in Huawei Mobile Communication Devices is required for operation of Huawei Mobile Communication Devices. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 77. Huawei Mobile Communication Devices, including Huawei M865
MUVE, with the integrated notification message center are each a material part of the invention of the 973 patent and are especially made for the infringing manufacture, sale, and use of Huawei Mobile Communication Devices. Huawei Mobile Communication Devices, including the integrated notification message center, are especially made or adapted as an integrated notification message center that infringes the 973 patent. Because the sales and manufacture of Huawei Mobile Communication Devices with an
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integrated notification message center infringes the 973 patent, Huaweis sales of its infringing products have no substantial non-infringing uses. 78. Accordingly, a reasonable inference is that Huawei offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. Huawei provides to others Huawei Mobile Communication Devices, including Huawei M865 MUVE, with distinct and separate components, including software components, which have no substantial non-infringing use. 79. At least Huawei Mobile Communication Devices, including Huawei
Ascend II, with an operating system configured and installed by Huawei to support Message and Notification functionality infringe at least claim 1 of the 131 Patent. Huawei makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claim 1 of the 131 Patent. 80. Huawei indirectly infringes the 131 patent by inducing infringement by
others of at least claim 13, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the Huawei Mobile Communication Devices. Huawei received actual notice of the 131 Patent at least by
26
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February 5, 2013 in view of a communication from Rockstar, and/or its predecessors-ininterest, to Huawei. 81. Huaweis affirmative acts of selling Huawei Mobile Communication
others, such as resellers and end-use customers, to directly infringe one or more claims of the 937 patent in the United States because Huawei has knowledge of the 131 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, Huawei Communication Devices for resale to others, such as resellers and end-use customers. Huawei knew or should have known that such actions would induce actual infringement. 83. The use of at least Huawei Mobile Communication Devices, including
Huawei Ascend II, with an operating system configured and installed by Huawei to 27
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support Message and Notification functionality as intended by Huawei infringes at least method claim 5 of the 131 Patent. Huawei uses these products and thus directly
infringes at least method claim 5 of the 131 Patent. 84. In addition, Huawei provides at least Huawei Mobile Communication
Devices, including Huawei Ascend II, with an operating system configured and installed by Huawei to support Message functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claim 5 of the 131 Patent. 85. Huawei indirectly infringes the 131 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Huawei Mobile Communication Devices, including Huawei Ascend II, in their intended use, including a customers use of the Message and Notifications functionality. Huawei received actual notice of the 131 Patent at least by February 5, 2013 in view of a communication from Rockstar and/or its predecessors-in-interest to Huawei. 86. Huaweis affirmative acts of selling Huawei Mobile Communication
Devices, including Huawei Ascend II, and providing instruction manuals induced the end-users of Huawei Mobile Communication Devices, including Huawei Ascend II, to use Huawei Mobile Communication Devices in their normal and customary way to infringe the 131 patent at least through using Message and Notifications functionality. Huawei also provides instructions, including at least Ascend II user guide (available at http://www.huaweideviceusa.com/downloads/1383178216.44726700_b6405ae24c/M865 28
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%20User_Guide%20English.pdf) (accessed October 30, 2013), for using the Messaging and Notifications functionality. Through its sales of Mobile Communication Devices with Messaging and Notifications functionality, Huawei specifically intended the endusers of Huawei Mobile Communication Devices to infringe the 131 patent; further, Huawei was aware that the normal and customary use of the Message and Notifications functionality would infringe the 131 patent. Huawei also enticed its end-users to use the Messaging and Notifications functionality by providing instruction manuals and also providing Messaging and Notifications functionality. Huawei performed the acts that constituted induced infringement, and would induce actual infringement, with the knowledge of the 131 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 87. Accordingly, a reasonable inference is that Huawei actively induces
infringement of the 131 Patent by others, such as resellers and end-use customers. Huawei specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 131 Patent in the United States because Huawei had knowledge of the 131 Patent, and Huawei actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of Huawei Mobile Communication Devices, including Huawei Ascend II, in an infringing way. Such instructions include at least the Ascend II user guide (available at http://www.huaweideviceusa.com/downloads/1383178216.44726700_b6405ae24c/M865 %20User_Guide%20English.pdf) (accessed October 30, 2013). When resellers and enduse customers follow such instructions, they directly infringe the 131 Patent. Huawei knows that by providing such instructions, resellers and end-use customers follow those 29
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instructions, and directly infringe the 131 Patent. Huawei thus knows that its actions induce the infringement. 88. Huawei indirectly infringes the 131 Patent by contributing to
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Huawei Mobile Communication Devices, including Huawei Ascend II, in their intended use, including a customers use of the Messaging and Notification functionality. Huawei received actual notice of the 131 Patent at least by February 5, 2013 in view of a communication from Rockstar and/or its predecessors-in-interest to Huawei. 89. Huaweis Message and Notification functionality receives and displays
message of different types, such as a phone call, voice mail, text message, or email. The Message and Notification Services functionality is designed to notify the user of an incoming communication and to select the format of the message received and cannot function in a manner that does not utilize the messaging functionality available to Huawei Mobile Communication Devices, including Huawei Ascend II. Upon information and belief, the Message and Notifications functionality is designed to entice a user to receive notifications of an incoming communication. 90. A reasonable inference to be drawn from the facts set forth is that the
Message and Notifications functionality especially made or especially adapted to operate on Huawei Mobile Communication Devices, including Huawei Ascend II, for notifying a user of an incoming communication.
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91.
Message and Notifications functionality is not a staple article or commodity of commerce and that the use of the Messaging and Notifications functionality of the Huawei Mobile Communication Devices, including Huawei Ascend II, is for notifying a user of an incoming communication. Any other use would be unusual, far-fetched, illusory,
impractical, occasional, aberrant, or experimental. 92. Huawei Mobile Communication Devices, including Huawei Ascend II,
with Messaging and Notifications functionality are each a material part of the 131 patent and especially made for the infringing use of the Messaging and Notification functionality to receive and display messages. Huawei Mobile Communication Devices including the Messaging and Notification functionality, are especially made or adapted to notify a user of an incoming communication that perform or facilitate performance of the steps that infringe the 131 patent. Furthermore, Huawei provides user manuals
describing the uses of its Mobile Communication Devices that infringe the 131 patent. Because the functionality provided by Huaweis Messaging and Notification to notify a user of an incoming communication infringes the 131 patent, Huaweis sales of its infringing products have no substantial non-infringing uses. 93. Accordingly, a reasonable inference is that Huawei offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. Huawei provides to 31
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others, Mobile Communication Devices, including Huawei Ascend II, with an operating system configured and installed by Huawei to support Message and Notification functionality. Huawei installs and configures on these products distinct and separate components, including software components, which are used only to perform the infringing method claims. 94. At least Huawei Mobile Communication Devices, including Huawei
Premia 4G M931, with an operating system configured and installed by Huawei to support VPN management functionality, including the Huawei Premia 4G M931, infringe at least claims 1 and 8 of the 591 Patent. Huawei makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claims 1 and 8 of the 591 Patent. 95. The use of at least Huawei Mobile Communication Devices, including
Huawei Premia 4G M931, with an operating system configured and installed by Huawei to support VPN management functionality as specified and intended by Huawei infringes at least claims 1 and 8 of the 591 Patent. Huawei uses these products and thus directly infringes at least claims 1 and 8 of the 591 Patent. 96. Huawei indirectly infringes the 591 patent by inducing infringement by
others of at least claim 13, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the Huawei Mobile Communication Devices. Huawei received actual notice of the 591 Patent at least by April 18, 2013 in view of a communication from Rockstar, and/or its predecessors-ininterest, to Huawei. 32
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97.
Huaweis affirmative acts of selling Huawei Mobile Communication
others, such as resellers and end-use customers, to directly infringe one or more claims of the 591 patent in the United States because Huawei has knowledge of the 591 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, Huawei Communication Devices for resale to others, such as resellers and end-use customers. Huawei knew or should have known that such actions would induce actual infringement. 99. In addition, Huawei provides at least its Mobile Communication Devices,
including Huawei Premia 4G M931, with an operating system configured and installed by Huawei to support VPN management functionality to others, such as resellers and
33
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end-use customers, in the United States who, in turn, use these products to infringe at least claims 1 and 8 of the 591 Patent. 100. Huawei indirectly infringes the 591 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Huawei Mobile Communication Devices, including Huawei Premia 4G M931, in their intended use, including a customers use of the VPN management functionality. Huawei received actual notice of the 591 Patent at least by April 18, 2013 in view of a communication from Rockstar and/or its predecessors-in-interest to Huawei. 101. Huaweis affirmative acts of selling its Mobile Communication Devices,
including Huawei Premia 4G M931, and providing instruction manuals induced the endusers of Huawei Mobile Communication Devices, including Huawei Premia 4G M931, to use Huawei Mobile Communication Devices in their normal and customary way to infringe the 591 patent at least through using VPN management functionality. Huawei also provides instructions, including at least the Premia User Guide (available at http://www.huaweideviceusa.com/downloads/1383178470.65582700_d6b1a61435/Premi a%20UG%20En%20Premia.pdf) (accessed October 30, 2013), for using the VPN management functionality. Through its sales of Huawei Mobile Communication Devices with VPN management functionality, Huawei specifically intended the end-users of Huawei Mobile Communication Devices to infringe the 591 patent; further, Huawei was aware that the normal and customary use of VPN management functionality would infringe the 591 patent. Huawei also enticed its end-users to use the VPN management 34
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functionality by providing instruction manuals and also providing VPN management functionality. Huawei performed the acts that constituted induced infringement, and would induce actual infringement, with the knowledge of the 591 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 102. Accordingly, it is a reasonable inference that Huawei actively induces
infringement of the 591 Patent by others, such as resellers and end-use customers. Huawei specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 591 Patent in the United States because Huawei had knowledge of the 591 Patent, and Huawei actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of Huaweis products, including Huawei Premia 4G M931, in an infringing way. Such instructions include at least the Premia User Guide (available at
http://www.huaweideviceusa.com/downloads/1383178470.65582700_d6b1a61435/Premi a%20UG%20En%20Premia.pdf) (accessed October 30, 2013). When resellers and enduse customers follow such instructions, they directly infringe the 591 Patent. Huawei knows that by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 591 Patent. Huawei thus knows that its actions induce the infringement. 103. Huawei indirectly infringes the 591 Patent by contributing to
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Huawei Mobile Communication Devices, including Huawei Premia 4G M931, in their 35
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intended use, including a customers use of the VPN management functionality. Huawei received actual notice of the 591 Patent at least by April 18, 2013 in view of a communication from Rockstar and/or its predecessors-in-interest to Huawei. 104. Huaweis VPN management functionality facilitates management of
VPNs. The VPN management functionality is designed for management of VPNs and cannot function in a manner that does not utilize the VPN management functionality available to Huawei Mobile Communication Devices, including Huawei Premia 4G M931. The VPN management functionality is designed upon information and belief to entice a user to manage VPNs. 105. A reasonable inference to be drawn from the facts set forth is that the VPN
functionality is especially made or especially adapted to operate on Huawei Mobile Communication Devices, including Huawei Premia 4G M931, for providing VPN management functionality. 106. A reasonable inference to be drawn from the facts set forth is that the VPN
management functionality is not a staple article or commodity of commerce and that the use of the VPN management functionality of Huawei Mobile Communication Devices, including Huawei Premia 4G M931, is for managing VPNs. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 107. Huawei Mobile Communication Devices, including Huawei Premia 4G
M931, with VPN management functionality are each a material part of the invention of the 591 patent and especially made for the infringing use of the VPN functionality to receive call trace information. Huawei Mobile Communication Devices including the VPN management functionality, are especially made or adapted to provide VPN 36
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management functionality that perform or facilitate performance of the steps that infringe the 591 patent. Furthermore, Huawei provides user manuals describing the uses of its Mobile Communication Devices that infringe the 591 patent. Because the functionality provided by Huaweis VPN management functionality infringes the 591 patent, Huaweis sales of its infringing Mobile Communication Devices have no substantial noninfringing uses. 108. Accordingly, a reasonable inference is that Huawei offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. Huawei provides to others, Mobile Communication Devices, including Huawei Premia 4G M931, with an operating system configured and installed by Huawei to support VPN management functionality. Huawei installs and configures on these products distinct and separate components, including software components, which are used only to infringe the 591 Patent. 109. The use of at least Huawei Mobile Communication Devices, including the
Huawei M865 MUVE, Huawei MediaPad, and Huawei IDEOS S7 Slim, with an operating system configured and installed by Huawei to support Location Services functionality, as intended by Huawei infringes at least method claim 17 of the 572 Patent. Huawei uses these Mobile Communication Devices and thus directly infringes at least method claim 17 of the 572 Patent. 37
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110.
In addition, Huawei provides at least its Mobile Communication Devices,
including Huawei M865 MUVE, Huawei MediaPad, and Huawei IDEOS S7 Slim, with an operating system configured and installed by Huawei to support Location Services functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claim 17 of the 572 Patent. 111. Huawei indirectly infringes the 572 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Huawei Mobile Communication Devices, including Huawei M865 MUVE, Huawei MediaPad, and Huawei IDEOS S7 Slim, in their intended use, including a customers use of the Location Services functionality. Huawei received actual notice of the 572 Patent at least by August, 10, 2012 in view of a communication from Rockstar and/or its predecessors-ininterest to Huawei. 112. Huaweis affirmative acts of selling its Mobile Communication Devices,
including Huawei M865 MUVE, Huawei MediaPad, and Huawei IDEOS S7 Slim, and providing instruction manuals induced the end-users of Huawei Mobile Communication Devices to use Huawei Mobile Communication Devices in their normal and customary way to infringe the 572 patent at least through using Location Services functionality. Huawei also provides instructions, including at least the M865 MUVE user guide (available at
http://www.huaweidevice.com/worldwide/downloadCenter.do?method=toDownloadFile &flay=document&softid=NDI4OTk=) (accessed October 30, 2013), the MediaPad User 38

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Guide
(available
at
http://www.huaweidevice.com/worldwide/downloadCenter.do?method=toDownloadFile &flay=document&softid=NDY2NzQ=) (accessed October 30, 2013), and the IDEOS S7 Slim User Guide (available at
http://www.huaweidevice.com/worldwide/downloadCenter.do?method=toDownloadFile &flay=document&softid=NDA0NjY=) (accessed October 30, 2013) for using the
Location Services functionality. Through its sales of Huawei Mobile Communication Devices with Location Services functionality, Huawei specifically intended the end-users of Huawei Mobile Communication Devices to infringe the 572 patent; further, Huawei was aware that the normal and customary use of Location Services would infringe the 572 patent. Huawei also enticed its end-users to use the Location Services by providing instruction manuals and also providing Location Services functionality. Huawei
performed the acts that constituted induced infringement, and would induce actual infringement, with the knowledge of the 572 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 113. Accordingly, a reasonable inference is that Huawei actively induces
infringement of the 572 Patent by others, such as resellers and end-use customers. Huawei specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 572 Patent in the United States because Huawei had knowledge of the 572 Patent, and Huawei actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of Huaweis products, including Huawei M865 MUVE, Huawei MediaPad, and Huawei IDEOS S7 Slim, in an infringing way. Such instructions include at least Huawei Score 39
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User
Manual
(available
at
http://www.Huaweiusa.com/media/wysiwyg/CricketScoreTM/Cricket_Score_TM_User_ Manual_English_-_PDF_-_968KB_.pdf) (accessed October 30, 2013) and Huawei Optik User Guide (available at http://www.Huaweiusa.com/media/wysiwyg//HuaweiOptik/Huawei_Optik_User_Manual_English_-_PDF_-_2.98MB_.pdf) (accessed October 30, 2013) Huawei Score User Manual (available at
http://www.Huaweiusa.com/media/wysiwyg/CricketScoreTM/Cricket_Score_TM_User_ Manual_English_-_PDF_-_968KB_.pdf) (accessed October 30, 2013) and Huawei Optik User Guide (available at http://www.Huaweiusa.com/media/wysiwyg//HuaweiOptik/Huawei_Optik_User_Manual_English_-_PDF_-_2.98MB_.pdf) (accessed October 30, 2013). When resellers and end-use customers follow such instructions, they directly infringe the 572 Patent. Huawei knows that by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 572 Patent. Huawei thus knows that its actions induce the infringement. 114. Huawei indirectly infringes the 572 Patent by contributing to
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Huawei Mobile Communication Devices, including Huawei M865 MUVE, Huawei MediaPad, and Huawei IDEOS S7 Slim, in their intended use, including a customers use of the Locations Services functionality. Huawei received actual notice of the 572 Patent at least by August 10, 2012 in view of a communication from Rockstar and/or its predecessors-in-interest to Huawei. 40
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115.
Huaweis Location Services functionality provides call trace information,
i.e., a geographic location of Huawei Mobile Communication Devices, including Huawei M865 MUVE, Huawei MediaPad, and Huawei IDEOS S7 Slim. The Location Services functionality is designed to notify the user of Huawei Mobile Communication Devices of call trace information, i.e., a geographic location of the Mobile Communication Devices, and cannot function in a manner that does not utilize the Location Services functionality available to the Mobile Communication Devices. Upon information and belief, the Location Services functionality is designed to entice a user to access call trace information. 116. A reasonable inference to be drawn from the facts set forth is that the
Location Services functionality is especially made or especially adapted to operate on Huawei Mobile Communication Devices, including Huawei M865 MUVE, Huawei MediaPad, and Huawei IDEOS S7 Slim, for obtaining call trace information, i.e., a geographic location of the Mobile Communication Devices. 117. A reasonable inference to be drawn from the facts set forth is that the
Location Services functionality is not a staple article or commodity of commerce and that the use of the Location Services functionality of Huawei Mobile Communication Devices, including Huawei M865 MUVE, Huawei MediaPad, and Huawei IDEOS S7 Slim, is for providing call trace information. Any other use would be unusual, farfetched, illusory, impractical, occasional, aberrant, or experimental. 118. Huawei Mobile Communication Devices, including Huawei M865
MUVE, Huawei MediaPad, and Huawei IDEOS S7 Slim, with Location Services functionality are each a material part of the 572 patent and especially made for the 41
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infringing use of the Location Services functionality to receive call trace information, i.e., a geographic location of the Mobile Communication Devices. The Mobile
Communication Devices including the Location Services functionality are especially made or adapted to provide call trace information that perform or facilitate performance of the steps that infringe the 572 patent. Furthermore, Huawei provides user manuals describing the uses of its products that infringe the 572 patent. Because the functionality provided by Huaweis Location Services to obtain call trace information, i.e., a geographic location of the Mobile Communication Devices, infringes the 572 patent, Huaweis sales of its infringing products have no substantial non-infringing uses. 119. Accordingly, a reasonable inference is that Huawei offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. Huawei provides to others, Mobile Communication Devices, including Huawei M865 MUVE, Huawei MediaPad, and Huawei IDEOS S7 Slim, with an operating system configured and installed by Huawei to support Location Services functionality. Huawei installs and configures on these products distinct and separate components, including software components, which are used only to perform the infringing method claims. 120. Huaweis acts of infringement have caused damage to Rockstar and
MobileStar. Rockstar and MobileStar are entitled to recover from Huawei the damages sustained by Rockstar and MobileStar as a result of Huaweis wrongful acts in an amount 42
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subject to proof at trial. In addition, the infringing acts and practices of Huawei have caused, are causing, and, unless such acts and practices are enjoined by the Court, will continue to cause immediate and irreparable harm to Rockstar and MobileStar for which there is no adequate remedy at law, and for which Rockstar and MobileStar are entitled to injunctive relief under 35 U.S.C. 283. 121. Huawei received actual notice of its infringement of the 551, 937, 298,
973, 131, 591, and 572 Patents through at least letters sent by Rockstar and/or its predecessors-in-interest, Nortel Networks Ltd. and/or Nortel Networks, Inc., to Huawei, and through meetings between employees of Rockstar and/or its predecessors-in-interest, Nortel Networks Ltd., or Nortel Networks Inc. and Huawei. Huawei also has knowledge of its infringement of the Patents-in-Suit by way of this Complaint. 122. Huawei has willfully infringed and/or does willfully infringe the 551,
937, 298, 973, 131, 591, and 572 Patents. DEMAND FOR JURY TRIAL Rockstar and MobileStar hereby demand a jury trial for all issues so triable. PRAYER FOR RELIEF WHEREFORE, Rockstar and MobileStar pray for the following relief: 1. A judgment that Huawei has directly infringed the 551 Patent,
contributorily infringed the 551 Patent, and/or induced the infringement of the 551 Patent. 2. A judgment that Huawei has directly infringed the 937 Patent,
contributorily infringed the 937 Patent, and/or induced the infringement of the 937 Patent. 43
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3.
A judgment that Huawei has directly infringed the 298 Patent,
contributorily infringed the 572 Patent, and/or induced the infringement of the 572 Patent. 8. A permanent injunction preventing Huawei and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 551 Patent; 9. A permanent injunction preventing Huawei and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 937 patent; 44
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10.
A permanent injunction preventing Huawei and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 298 patent; 11. A permanent injunction preventing Huawei and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 572 patent; 15. A judgment that Huaweis infringement of the 551, 937, 298, 973,
131, 591, and 572 Patents has been willful;
45
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16.
A ruling that this case be found to be exceptional under 35 U.S.C. 285,
and a judgment awarding Rockstar and MobileStar to its attorneys fees incurred in prosecuting this action; 17. A judgment and order requiring Huawei to pay Rockstar and MobileStar
damages under 35 U.S.C. 284, including supplemental damages for any continuing post-verdict infringement up until entry of the final judgment, with an accounting, as needed, and treble damages for willful infringement as provided by 35 U.S.C. 284; 18. A judgment and order requiring Huawei to pay Rockstar and MobileStar
the costs of this action (including all disbursements); 19. A judgment and order requiring Huawei to pay Rockstar and MobileStar
46
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47
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EXHIBIT D
ROCKSTAR CONSORTIUM US LP, AND MOBILESTAR TECHNOLOGIES LLC PLAINTIFFS v. Civil Action No. 2:13-cv-898 LG ELECTRONICS, INC., JURY TRIAL REQUESTED LG ELECTRONICS U.S.A., INC., LG ELECTRONICS MOBILECOMM USA INC. DEFENDANTS. PLAINTIFFS ROCKSTAR CONSORTIUM US LP AND MOBILESTAR TECHNOLOGIES LLCS ORIGINAL COMPLAINT Plaintiffs Rockstar Consortium US LP (Rockstar) and MobileStar Technologies LLC (MobileStar) file this Original Complaint for patent infringement under 35 U.S.C. 271 and in support thereof would respectfully show the Court the following: PARTIES 1. Plaintiff Rockstar Consortium US LP (Rockstar) is a limited partnership
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3.
Upon information and belief, Defendant LG Electronics Inc. is a
corporation organized and existing under the laws of Korea with a principal place of business at 20, Yeouido-dong, Yeongdeungpo-Gu, Seoul 150-721, Republic of Korea. 4. Upon information and belief, Defendant LG Electronics U.S.A., Inc. is a
subsidiary of LGE Inc. and is a corporation organized and existing under the laws of the State of Delaware with a principal place of business at 1000 Sylvan Avenue, Englewood Cliffs, New Jersey 07632. 5. Upon information and belief, Defendant LG Electronics MobileComm
U.S.A., Inc. is a wholly-owned subsidiary of LG Electronics U.S.A., Inc., which is a wholly-owned subsidiary of LG Electronics, Inc., and is a corporation organized and existing under the laws of the State of California with its principal place of business located at 10101 Old Grove Road, San Diego, California 92131. JURISDICTION AND VENUE 6. This is an action for patent infringement under the Patent Laws of the
United States, 35 U.S.C. 271. This Court has exclusive subject matter jurisdiction over this case for patent infringement under 28 U.S.C. 1338. 7. 8. Venue is proper in this Court pursuant to 28 U S.C. 1391 and 1400(b). This Court has personal jurisdiction over Defendants LG Electronics Inc.,
LG Electronics U.S.A., Inc., and LG Electronics MobileComm U.S.A., Inc. (collectively, LG). LG has conducted and does conduct business within the State of Texas. LG, directly or through subsidiaries or intermediaries (including distributors, retailers, and others), ships, distributes, offers for sale, sells, and advertises (including the provision of an interactive web page) its products (including its infringing products) and/or services in 2
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the United States, the State of Texas, and the Eastern District of Texas. LG, directly and through subsidiaries or intermediaries (including distributors, retailers, and others), has purposefully and voluntarily placed one or more of its infringing products and/or services, as described below, into the stream of commerce with the expectation that they will be purchased and used by consumers in the Eastern District of Texas. These
infringing products and/or services have been and continue to be purchased and used by consumers in the Eastern District of Texas. LG has committed acts of patent
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Wootton and William G. Colvin as the named inventors after full and fair examination. Rockstar owns all rights, title, and interest in and to the 298 Patent and possesses all rights of recovery under the 298 Patent. MobileStar is the exclusive licensee of the 298 patent. 12. On December 25, 2001, U.S. Patent No. 6,333,973 (the 973 Patent)
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examination. MobileStar owns all rights, title, and interest in and to the 572 Patent and possesses all rights of recovery under the 572 Patent. GENERAL ALLEGATIONS 16. LG has directly and indirectly infringed and continues to directly and
indirectly infringe each of the 551, 937, 298, 973, 131, 591, and 572 Patents by engaging in acts constituting infringement under 35 U.S.C. 271(a), (b), (c), and/or (f), including but not necessarily limited to one or more of making, using, selling and offering to sell, in this District and elsewhere in the United States, and importing into this District and elsewhere in the United States, certain mobile communication devices having a version (or an adaption thereof) of Android operating system (LG Mobile Communication Devices). 17. LG is doing business in the United States and, more particularly, in the
Eastern District of Texas by making, using, selling, importing, and/or offering for sale LG Mobile Communication Devices, including but not limited to LGs Optimus family of smart phones, including the Optimus P970h, Optimus L9 P769, and Optimus T, the G2, Elite, Enact, Rumor Reflex S, Lucid2, Spirit 4G, Mach, Venice, Escape, Spectrum 2, Splendor, Intuition, Motion 4G, Viper, Lucid, Nitro, Spectrum, Marquee, and Connect 4G families of smart phones and its G Pad family of tablets, and other products that infringe the patent claims involved in this action or by transacting other business in this District. COUNT ONE PATENT INFRINGEMENT BY LG
5
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18.
Plaintiffs incorporate by reference paragraphs 1-17 as if fully set forth
herein. As described below, LG has infringed and/or continues to infringe the 551, 937, 298, 973, 131, 591, and 572 Patents. 19. At least the LG Mobile Communication Devices infringe at least claim 1
of the 551 Patent. LG makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these products and thus directly infringes one or more claims of the 551 Patent, including at least claim 1. 20. LG indirectly infringes the 551 patent by inducing infringement by
others, such as resellers, of at least claim 1 in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by manufacturers, resellers, and/or end-users of the LG Mobile Communication Devices. LG had actual notice of the 551 Patent at least by February 2, 2013, in view of a Rockstar communication to LG, and also received knowledge as of the date this lawsuit was filed. 21. LGs affirmative acts of selling LG Mobile Communication Devices,
causing the LG Mobile Communication Devices to be manufactured and distributed, and providing instruction manuals for LG Mobile Communication Devices induced LGs manufacturers and resellers to make or use LG Mobile Communication Devices in their normal and customary way to infringe the 551 patent. Through its manufacture and sales of LG Mobile Communication Devices, LG specifically intended its resellers and manufacturers to infringe the 551 patent; further, LG was aware that these normal and customary activities would infringe the 551 patent. LG performed the acts that
constitute induced infringement, and would induce actual infringement, with the 6
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knowledge of the 551 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 22. Accordingly, a reasonable inference is that LG specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of the 551 Patent in the United States because LG has knowledge of the 551 Patent and LG actually induces others, such as resellers and end-use customers, to directly infringe the 551 patent, by using, selling, exporting, supplying and/or distributing, within the United States, LG Mobile Communication Devices for resale to others, such as resellers and end-use customers. LG knew or should have known that such actions would induce actual infringement. 23. LG indirectly infringes the 551 Patent by contributing to infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of LG Mobile Communication Devices. LG had actual notice of the 551 Patent at least by February 2, 2013, in view of a Rockstar communication to LG, and also received knowledge as of the date this lawsuit was filed. 24. LG Mobile Communication Devices include at least one electronic
package comprising a component that is located between an EMI shield and a ground member for performing shielding operations. The EMI shield is incorporated into the electronic package, which is then mounted to a circuit board in LG Mobile Communication Devices, and on information and belief, the electronic component does not function in an acceptable manner absent the EMI shielding. 7
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Furthermore, the
electronic package incorporating the EMI shield does not operate in isolation, but is designed to operate within the Mobile Communication Device, and absent the EMI shielding of the electronic component, LG Mobile Communication Devices would not function in an acceptable manner. 25. A reasonable inference to be drawn from the facts set forth is that the EMI
shielded electronic package in LG Mobile Communication Devices is especially made or especially adapted to operate in a LG Mobile Communication Device as an EMI shield. 26. A reasonable inference to be drawn from the facts set forth is that the EMI
shielded electronic package is not a staple article or commodity of commerce and that the use of the EMI shielded electronic package is required for operation of LG Mobile Communication Devices. Any other use would be unusual, far-fetched, illusory,
impractical, occasional, aberrant, or experimental. 27. The EMI shielded electronic package in LG Mobile Communication
Devices are each a material part of the invention of the 551 patent and are especially made for the infringing manufacture, sale, and use of LG Mobile Communication Devices. LG Mobile Communication Devices, including the EMI shielded electronic package, are especially made or adapted as an electronic package that infringes the 551 patent. Because the sales and manufacture of LG Mobile Communication Devices
including the EMI shielded electronic package infringe the 551 patent, LGs sales of its infringing products have no substantial non-infringing uses. 28. Accordingly, a reasonable inference is that LG offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, 8
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constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. LG provides to others LG Mobile Communication Devices with distinct and separate components, including hardware components, which have no substantial non-infringing use. 29. At least LG Mobile Communication Devices with an operating system
configured and installed by LG to support Gallery, Email, Maps and Browser functionality, infringe at least claim 13 of the 937 Patent. LG makes, uses, tests, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claim 13 of the 937 Patent. 30. LG indirectly infringes the 937 patent by inducing infringement by others
of at least claim 13, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the LG Mobile Communication Devices. LG received actual notice of the 937 Patent at least by March 12, 2012 from a communication from Rockstar, and/or its predecessors-in-interest, to LG, and also received knowledge as of the date this lawsuit was filed. 31. LGs affirmative acts of selling LG Mobile Communication Devices,
causing the LG Mobile Communication Devices to be manufactured, and providing instruction manuals for LG Mobile Communication Devices induced LGs manufacturers and resellers to make or use the LG Mobile Communication Devices in their normal and customary way to infringe the 937 patent. Through its manufacture and sales of LG Mobile Communication Devices, LG specifically intended its resellers and manufacturers 9
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to infringe the 937 patent; further, LG was aware that these normal and customary activities would infringe the 937 patent. LG performed the acts that constitute induced infringement, and would induce actual infringement, with knowledge of the 937 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 32. Accordingly, a reasonable inference is that LG specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of the 937 patent in the United States because LG has knowledge of the 937 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, LG Communication Devices for resale to others, such as resellers and end-use customers. LG knew or should have known that such actions would induce actual infringement. 33. The use of at least LG Mobile Communication Devices with an operating
system configured and installed by LG to support Gallery, Email, Maps and Browser functionality as intended by LG infringes at least method claim 1 of the 937 Patent. LG uses these products and thus directly infringes at least method claim 1 of the 937 Patent. 34. In addition, LG provides at least LG Mobile Communication Devices with
an operating system configured and installed by LG to support Gallery, Email, Maps, and Browser functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claim 1 of the 937 Patent. 35. LG indirectly infringes the 937 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in 10
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this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the LG Mobile Communication Devices. LG had actual notice of the 937 Patent at least by March 12, 2012 from a communication from Rockstar and/or its predecessors-in-interest to LG, and also received knowledge as of the date this lawsuit was filed. 36. LG provides at least LG Mobile Communication Devices with an
operating system configured and installed by LG to support Gallery, Email, Maps and Browser functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe the 937 Patent. Through its
manufacture and sales of LG Mobile Communication Devices, LG specifically intended its resellers and manufacturers to infringe the 937 patent. 37. LG specifically intends for others, such as resellers and end-use
customers, to directly infringe one or more claims of the 937 Patent in the United States. For example, LG provides instructions to resellers and end-use customers regarding the use and operation of LGs products in an infringing way. Such instructions include at least User Guide LG Optimus T P509, available on LGEs web site at http://www.lg.com/us/support-mobile/lg-LGP509#. When resellers and end-use
customers follow such instructions, they directly infringe the 937 Patent. LG knows that by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 937 Patent. infringement. LG thus knows that its actions induce the
11
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38.
LG performed the acts that constitute induced infringement, and would
induce actual infringement, with the knowledge of the 937 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 39. LG indirectly infringes the 937 patent, by contributing to infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of LG Mobile Communication Devices. LG had actual notice of the 937 Patent at least by March 12, 2012 from a communication from Rockstar and/or its predecessors-in-interest to LG, and also received knowledge as of the date this lawsuit was filed. 40. LG Mobile Communication Devices include functionality that, inter alia,
displays a navigable graphical user interface (navigable GUI) that permits a user to manipulate and control the contents of the display to maximize the use of display real estate. This navigable GUI is included in LG Mobile Communication Devices with an operating system configured and installed by LG to support at least the Gallery, Email, Maps, and Browser functionalities. On information and belief, these functionalities
cannot operate in an acceptable manner absent the navigable GUI, as it is included in every LG Mobile Communication Device. 41. A reasonable inference to be drawn from the facts set forth is that the
navigable GUI as included in LG Mobile Communication Devices is especially made or especially adapted to operate on a LG Mobile Communication Device as a navigable GUI that permits a user to manipulate or control the contents of the display to maximize the use of display real estate on the users LG Mobile Communication Devices. 12
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42.
navigable GUI as included in the Mobile Communication Device is not a staple article or commodity of commerce and that the use of the navigable GUI in LG Mobile Communication Devices is required for the operation of LG Mobile Communication Devices. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 43. LG Mobile Communication Devices with the navigable GUI are each a
material part of the invention of the 937 patent and are especially made for the infringing manufacture, sale, and use of LG Mobile Communication Devices. LG Mobile
Communication Devices with the navigable GUI are especially made or adapted as a navigable GUI that infringes the 937 patent. Because the sales and manufacture of LG Mobile Communication Devices with a navigable GUI infringes the 937 patent, LGs sales of its infringing products have no substantial non-infringing uses. 44. Accordingly, a reasonable inference is that LG offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing the 937 patent, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. LG provides to others, LG Mobile Communication Devices with distinct and separate components, including software components, which have no substantial non-infringing use. 45. At least LG Mobile Communication Devices with an operating system
configured and installed by LG to support the Mobile Hotspot functionality infringe at 13

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least claims 27 and 31 of the 298 Patent. LG makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claims 27 and 31 of the 298 Patent. 46. LG indirectly infringes the 298 patent by inducing infringement by others
of at least claim 27 and 31, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the LG Mobile Communication Devices. LG had actual notice of the 298 Patent at least by October 22, 2012 from a communication from Rockstar, and/or its predecessors-in-interest, to LG, and also received knowledge as of the date this lawsuit was filed. 47. LGs affirmative acts of selling LG Mobile Communication Devices,
causing the LG Mobile Communication Devices to be manufactured, and providing instruction manuals for LG Mobile Communication Devices induced LGs manufacturers and resellers to make or use the LG Mobile Communication Devices in their normal and customary way to infringe the 298 patent. Through its manufacture and sales of LG Mobile Communication Devices, LG specifically intended its resellers and manufacturers to infringe the 298 patent; further, LG was aware that these normal and customary activities would infringe the 298 patent. LG performed the acts that constitute induced infringement, and would induce actual infringement, with the knowledge of the 298 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 48. Accordingly, a reasonable inference is that LG specifically intends for
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the 298 patent in the United States because LG has knowledge of the 298 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, LG Communication Devices for resale to others, such as resellers and end-use customers. LG knew or should have known that such actions would induce actual infringement. 49. The use of at least LG Mobile Communication Devices that support the
Mobile Hotspot functionality as intended by LG infringes at least method claims 14 and 24 of the 298 Patent. LG uses these products and thus directly infringes at least method claims 14 and 24 of the 298 Patent. 50. In addition, LG provides at least LG Mobile Communication Devices that
support the Mobile Hotspot functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claims 14 and 24 of the 298 Patent. 51. LG indirectly infringes the 298 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of LG Mobile Communication Devices in their intended use, including a customers use of the Mobile Hotspot functionality. LG had actual notice of the 298 Patent at least by October 22, 2012, in view of a Rockstar communication to LG, and also received knowledge as of the date this lawsuit was filed. 52. LGs affirmative acts of selling its LG Mobile Communication Devices
and providing instruction manuals induced the end-users of LG Mobile Communication 15

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Devices to use LG Mobile Communication Devices in their normal and customary way to infringe the 298 patent at least through using Mobile Hotspot functionality. LG also provides instructions, including at least User Guide LG Optimus T P509, available on LGEs web site at http://www.lg.com/us/support-mobile/lg-LGP509# for using the Mobile Hotspot functionality. Through its sales of LG Mobile Communication Devices with Mobile Hotspot functionality, LG specifically intended the end-users of LG Mobile Communication Devices to infringe the 298 patent; further, LG was aware that the normal and customary use of Mobile Hotspot functionality would infringe the 298 patent. LG also enticed its end-users to use the Mobile Hotspot functionality by
providing instruction manuals and also providing Mobile Hotspot functionality. LG performed the acts that constituted induced infringement, and would induce actual infringement, with the knowledge of the 298 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 53. Accordingly, a reasonable inference is that LG actively induces
infringement of the 298 Patent by others, such as resellers and end-use customers. LG specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 298 Patent in the United States because LG had knowledge of the 298 Patent, and LG actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of LG Mobile Communication Devices in an infringing way. Such instructions include at least User Guide LG Optimus T P509 available on LGEs resellers web and site at
http://www.lg.com/us/support-mobile/lg-LGP509#.
When
end-use
customers follow such instructions, they directly infringe the 298 Patent. LG knows that 16
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by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 298 Patent. infringement. 54. LG indirectly infringes the 298 Patent by contributing to infringement by LG thus knows that its actions induce the
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of LG Mobile Communication Devices in their intended use, including a customers use of the Mobile Hotspot functionality. LG had actual notice of the 298 Patent at least by October 22, 2012, in view of a Rockstar communication to LG, and also received knowledge as of the date this lawsuit was filed. 55. LG Mobile Communication Devices with the Mobile Hotspot
functionality allow wireless devices from a first, or private, network to connect to a second, or public, network such as the Internet. The Mobile Hotspot functionality is designed to route data packets between wireless devices tethered to the Mobile Hotspot to nodes on a public network such as the Internet, and cannot function in a manner that does not utilize the Mobile Hotspot functionality available to LG Mobile Communication Devices. Upon information and belief, the Mobile Hotspot functionality is designed to entice a user to access nodes in a second, or public, network such as the Internet. 56. A reasonable inference to be drawn from the facts set forth is that the
Mobile Hotspot functionality is especially made or especially adapted to operate on a mobile communication device for providing access for wireless devices in a first, or private, network to nodes in a second, or public, network. 17
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57.
Mobile Hotspot functionality is not a staple article or commodity of commerce and that the use of the Mobile Hotspot functionality of LG Mobile Communication Devices is for interfacing first and second data communications networks, e.g., a private network and a public network such as the Internet. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 58. LG Mobile Communication Devices with Mobile Hotspot functionality
are each a material part of the 298 patent and especially made for the infringing use of the Mobile Hotspot functionality for interfacing private and public data communication networks. LG Mobile Communication Devices with the Mobile Hotspot functionality are especially made or adapted to provide access for wireless devices in a first, or private, network through the Mobile Communication Device, to nodes in a second, or public, network that perform or facilitate performance of the steps that infringe the 298 patent. Furthermore, LG provides user manuals describing the uses of LG Mobile Communication Devices that infringe the 298 patent. Because the sales and
manufacture of LG Mobile Communication Devices with Mobile Hotspot functionality infringes the 298 patent, LGs sales of its infringement products have no substantial noninfringing uses. 59. Accordingly, a reasonable inference is that LG offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or 18
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commodity of commerce suitable for substantial non-infringing use. LG provides to others, LG Mobile Communication Devices with an operating system configured and installed by LG to support Mobile Hotspot functionality. LG installs and configures LG Mobile Communication Devices with distinct and separate components, including software components, which are used only to perform the infringing method claims. 60. At least LG Mobile Communication Devices with an operating system
configured and installed by LG to support an integrated notification message center functionality infringe at least claims 1 and 21 of the 973 Patent. LG makes, uses, sells, tests, uses, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes one or more claims of the 973 patent, including at least claims 1 and 21. 61. LG indirectly infringes the 973 patent by inducing infringement by others
of at least claim 1 and 21, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the LG Mobile Communication Devices. LG had actual notice of the 973 Patent at least by March 12, 2012 from a communication from Rockstar, and/or its predecessors-in-interest, to LG, and also received knowledge as of the date this lawsuit was filed. 62. LGs affirmative acts of selling LG Mobile Communication Devices,
causing the LG Mobile Communication Devices to be manufactured, and providing instruction manuals for LG Mobile Communication Devices induced LGs manufacturers and resellers to make or use the LG Mobile Communication Devices in their normal and customary way to infringe the 973 patent. Through its manufacture and sales of LG 19
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Mobile Communication Devices, LG specifically intended its resellers and manufacturers to infringe the 973 patent; further, LG was aware that these normal and customary activities would infringe the 973 patent. LG performed the acts that constitute induced infringement, and would induce actual infringement, with the knowledge of the 973 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 63. Accordingly, a reasonable inference is that LG specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of the 973 patent in the United States because LG has knowledge of the 973 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, LG Communication Devices for resale to others, such as resellers and end-use customers. LG knew or should have known that such actions would induce actual infringement. 64. The use of at least LG Mobile Communication Devices with an operating
system configured and installed by LG to support an integrated notification message center functionality as intended by LG infringes at least method claim 8 of the 973 Patent. LG uses these devices within the United States and thus directly infringes one or more claims of the 973 patent, including at least claim 8. 65. LG indirectly infringes the 973 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of LG Mobile Communication Devices. LG had actual notice of the 973 Patent at least by March 12, 20
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2012, in view of a Rockstar communication to LG, and also received knowledge as of the date this lawsuit was filed. 66. LG provides at least LG Mobile Communication Devices with an
operating system configured and installed by LG to support integrated notification message center functionality to others, such as resellers and end-use customers, in the United States who, in turn, use LG Mobile Communication Devices to infringe at least method claim 8 of the 973 Patent. Through its manufacture and sales of LG Mobile Communication Devices, LG specifically intended its resellers and manufacturers to infringe the 973 patent. 67. LG specifically intends for others, such as resellers and end-use
customers, to directly infringe one or more claims of the 973 Patent in the United States. For example, LG provides instructions to resellers and end-use customers regarding the use and operation of LG Mobile Communication Devices in an infringing way. Such instructions include at least User Guide LG Optimus T P509, available on LGEs web site at http://www.lg.com/us/support-mobile/lg-LGP509#. When resellers and end-use customers follow such instructions, they directly infringe the 973 Patent. LG knows that by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 973 Patent. infringement. 68. LG performed the acts that constitute induced infringement, and would LG thus knows that its actions induce the
induce actual infringement, with the knowledge of the 973 patent and with the knowledge or willful blindness that the induced acts would constitute infringement.
21
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69.
LG indirectly infringes the 973 patent, by contributing to infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of LG Mobile Communication Devices. LG had actual notice of the 973 Patent at least by March 12, 2012, in view of a Rockstar communication to LG, and also received knowledge as of the date this lawsuit was filed. 70. LG Mobile Communication Devices include functionality that, inter alia, The
displays an integrated notification message center contained in a single list.
notification message center is designed to provide a user with a single list of notifications regardless of the types of messages (e.g., email, text, etc) on the users Mobile Communication Device. On information and belief, this functionality cannot operate in an acceptable manner absent the integrated notification message center, as it is included in every LG Mobile Communication Device. 71. A reasonable inference to be drawn from the facts set forth is that the
integrated message center in LG Mobile Communication Devices is especially made or especially adapted to operate on a LG Mobile Communication Device as an integrated notification message center that provides a user with notifications concerning different types of messages on the users Mobile Communication Device. 72. A reasonable inference to be drawn from the facts set forth is that the
integrated notification message center in the Mobile Communication Device is not a staple article or commodity of commerce and that the use of the integrated notification message center in LG Mobile Communication Devices is required for operation of LG 22
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Mobile Communication Devices. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 73. LG Mobile Communication Devices with the integrated notification
message center are each a material part of the invention of the 973 patent and are especially made for the infringing manufacture, sale, and use of LG Mobile Communication Devices. LG Mobile Communication Devices, including the integrated notification message center, are especially made or adapted as an integrated notification message center that infringes the 973 patent. Because the sales and manufacture of LG Mobile Communication Devices with an integrated notification message center infringes the 973 patent, LGs sales of its infringing products have no substantial non-infringing uses. 74. Accordingly, a reasonable inference is that LG offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. LG provides to others, LG Mobile Communication Devices with distinct and separate components, including software components, which have no substantial non-infringing use. 75. At least LG Mobile Communication Devices with an operating system
configured and installed by LG to support Message and Notification functionality infringe at least claim 1 of the 131 Patent. LG makes, uses, sells, offers for sale,
23
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imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claim 1 of the 131 Patent. 76. LG indirectly infringes the 131 patent by inducing infringement by others
of at least claim 1, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the LG Mobile Communication Devices. LG had actual notice of the 131 Patent at least by September 13, 2013 from a communication from Rockstar, and/or its predecessors-in-interest, to LG, and also received knowledge as of the date this lawsuit was filed. 77. LGs affirmative acts of selling LG Mobile Communication Devices,
causing the LG Mobile Communication Devices to be manufactured, and providing instruction manuals for LG Mobile Communication Devices induced LGs manufacturers and resellers to make or use the LG Mobile Communication Devices in their normal and customary way to infringe the 131 patent. Through its manufacture and sales of LG Mobile Communication Devices, LG specifically intended its resellers and manufacturers to infringe the 131 patent; further, LG was aware that these normal and customary activities would infringe the 131 patent. LG performed the acts that constitute induced infringement, and would induce actual infringement, with the knowledge of the 131 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 78. Accordingly, a reasonable inference is that LG specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of the 131 patent in the United States because LG has knowledge of the 131 patent and 24
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actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, LG Communication Devices for resale to others, such as resellers and end-use customers. LG knew or should have known that such actions would induce actual infringement. 79. The use of at least LG Mobile Communication Devices with an operating
system configured and installed by LG to support Message and Notification functionality as intended by LG infringes at least method claim 5 of the 131 Patent. LG uses these products and thus directly infringes at least method claim 5 of the 131 Patent. 80. In addition, LG provides at least LG Mobile Communication Devices with
an operating system configured and installed by LG to support Message functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claim 5 of the 131 Patent. 81. LG indirectly infringes the 131 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of LG Mobile Communication Devices in their intended use, including a customers use of the Message and Notifications functionality. LG had actual notice of the 131 Patent at least by September 13, 2013, in view of a Rockstar communication to LG, and also received knowledge as of the date this lawsuit was filed. 82. LGs affirmative acts of selling LG Mobile Communication Devices and
providing instruction manuals induced the end-users of LG Mobile Communication Devices to use LG Mobile Communication Devices in their normal and customary way to 25
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infringe the 131 patent at least through using Message and Notifications functionality. LG also provides instructions, including at least User Guide LG Optimus T P509, available on LGEs web site at http://www.lg.com/us/support-mobile/lg-LGP509#, for using the Messaging and Notifications functionality. Through its sales of Mobile
Communication Devices with Messaging and Notifications functionality, LG specifically intended the end-users of LG Mobile Communication Devices to infringe the 131 patent; further, LG was aware that the normal and customary use of the Message and Notifications functionality would infringe the 131 patent. LG also enticed its end-users to use the Messaging and Notifications functionality by providing instruction manuals. LG performed the acts that constituted induced infringement, and would induce actual infringement, with the knowledge of the 131 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 83. Accordingly, a reasonable inference is that LG actively induces
infringement of the 131 Patent by others, such as resellers and end-use customers. LG specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 131 Patent in the United States because LG had knowledge of the 131 Patent, and LG actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of LG Mobile Communication Devices in an infringing way. Such instructions include at least User Guide LG Optimus T P509, available on LGEs resellers web and site at
http://www.lg.com/us/support-mobile/lg-LGP509#.
When
end-use
customers follow such instructions, they directly infringe the 131 Patent. LG knows that by providing such instructions, resellers and end-use customers follow those instructions, 26
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and directly infringe the 131 Patent. infringement. 84.
LG thus knows that its actions induce the
LG indirectly infringes the 131 Patent by contributing to infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of LG Mobile Communication Devices in their intended use, including a customers use of the Messaging and Notification functionality. LG had actual notice of the 131 Patent at least by September 13, 2013, in view of a Rockstar communication to LG, and also received knowledge as of the date this lawsuit was filed. 85. LGs Message and Notification functionality receives and displays
message of different types, such as a phone call, voice mail, text message, or email. The Message and Notification Services functionality is designed to notify the user of an incoming communication and to select the format of the message received and cannot function in a manner that does not utilize the messaging functionality available to LG Mobile Communication Devices. Upon information and belief, the Message and
Notifications functionality is designed to entice a user to receive notifications of an incoming communication. 86. A reasonable inference to be drawn from the facts set forth is that the
Message and Notifications functionality especially made or especially adapted to operate on LG Mobile Communication Devices for notifying a user of an incoming communication.
27
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87.
Message and Notifications functionality is not a staple article or commodity of commerce and that the use of the Messaging and Notifications functionality of the LG Mobile Communication Devices is for notifying a user of an incoming communication. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 88. LG Mobile Communication Devices with Messaging and Notifications
functionality are each a material part of the 131 patent and especially made for the infringing use of the Messaging and Notification functionality to receive and display messages. LG Mobile Communication Devices including the Messaging and
Notification functionality, are especially made or adapted to notify a user of an incoming communication that perform or facilitate performance of the steps that infringe the 131 patent. Furthermore, LG provides user manuals describing the uses of its Mobile Because the functionality
Communication Devices that infringe the 131 patent.
provided by LGs Messaging and Notification to notify a user of an incoming communication infringes the 131 patent, LGs sales of its infringing products have no substantial non-infringing uses. 89. Accordingly, a reasonable inference is that LG offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. LG provides to 28
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others, Mobile Communication Devices with an operating system configured and installed by LG to support Message and Notification functionality. LG installs and configures on these products distinct and separate components, including software components, which are used only to perform the infringing method claims. 90. At least LG Mobile Communication Devices with an operating system
configured and installed by LG to support VPN management functionality, including the LG Galaxy S III, infringe at least claims 1 and 8 of the 591 Patent. LG makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claims 1 and 8 of the 591 Patent. 91. The use of at least LG Mobile Communication Devices with an operating
system configured and installed by LG to support VPN management functionality as specified and intended by LG infringes at least claims 1 and 8 of the 591 Patent. LG uses these products and thus directly infringes at least claims 1 and 8 of the 591 Patent. 92. LG indirectly infringes the 591 patent by inducing infringement by others
of at least claims 1 and 8, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the LG Mobile Communication Devices. LG had actual notice of the 591 Patent at least by February 2, 2013 from a communication from Rockstar, and/or its predecessors-in-interest, to LG, and also received knowledge as of the date this lawsuit was filed. 93. LGs affirmative acts of selling LG Mobile Communication Devices,
causing the LG Mobile Communication Devices to be manufactured, and providing instruction manuals for LG Mobile Communication Devices induced LGs manufacturers 29
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and resellers to make or use the LG Mobile Communication Devices in their normal and customary way to infringe the 591 patent. Through its manufacture and sales of LG Mobile Communication Devices, LG specifically intended its resellers and manufacturers to infringe the 591 patent; further, LG was aware that these normal and customary activities would infringe the 591 patent. LG performed the acts that constitute induced infringement, and would induce actual infringement, with the knowledge of the 591 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 94. Accordingly, a reasonable inference is that LG specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of the 591 patent in the United States because LG has knowledge of the 591 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, LG Communication Devices for resale to others, such as resellers and end-use customers. LG knew or should have known that such actions would induce actual infringement. 95. In addition, LG provides at least its Mobile Communication Devices with
an operating system configured and installed by LG to support VPN management functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least claims 1 and 8 of the 591 Patent. 96. LG indirectly infringes the 591 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of LG Mobile 30
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Communication Devices in their intended use, including a customers use of the VPN management functionality. LG had actual notice of the 591 Patent at least by February 2, 2013, in view of a Rockstar communication to LG, and also received knowledge as of the date this lawsuit was filed. 97. LGs affirmative acts of selling its Mobile Communication Devices and
providing instruction manuals induced the end-users of LG Mobile Communication Devices to use LG Mobile Communication Devices in their normal and customary way to infringe the 591 patent at least through using VPN management functionality. LG also provides instructions, including at least LG User Guide Optimus L9 available on LGEs website at http://www.lg.com/us/support-mobile/lg-P769#, for using the VPN management functionality. Through its sales of LG Mobile Communication Devices with VPN management functionality, LG specifically intended the end-users of LG Mobile Communication Devices to infringe the 591 patent; further, LG was aware that the normal and customary use of VPN management functionality would infringe the 591 patent. LG also enticed its end-users to use the VPN management functionality by providing instruction manuals. LG performed the acts that constituted induced
infringement, and would induce actual infringement, with the knowledge of the 591 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 98. Accordingly, it is a reasonable inference that LG actively induces
infringement of the 591 Patent by others, such as resellers and end-use customers. LG specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 591 Patent in the United States because LG had 31
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knowledge of the 591 Patent, and LG actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of LGs products in an infringing way. Optimus L9 at page Such instructions include at least LG User Guide 108-115 available on LGEs website at
http://www.lg.com/us/support-mobile/lg-P769#. When resellers and end-use customers follow such instructions, they directly infringe the 591 Patent. LG knows that by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 591 Patent. infringement. 99. LG indirectly infringes the 591 Patent by contributing to infringement by LG thus knows that its actions induce the
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of LG Mobile Communication Devices in their intended use, including a customers use of the VPN management functionality. LG had actual notice of the 591 Patent at least by February 2, 2013, in view of a Rockstar communication to LG, and also received knowledge as of the date this lawsuit was filed. 100. LGs VPN management functionality facilitates management of VPNs.
The VPN management functionality is designed for management of VPNs and cannot function in a manner that does not utilize the VPN management functionality available to LG Mobile Communication Devices. The VPN management functionality is designed upon information and belief to entice a user to manage VPNs.
32
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101.
A reasonable inference to be drawn from the facts set forth is that the VPN
functionality is especially made or especially adapted to operate on LG Mobile Communication Devices for providing VPN management functionality. 102. A reasonable inference to be drawn from the facts set forth is that the VPN
management functionality is not a staple article or commodity of commerce and that the use of the VPN management functionality of LG Mobile Communication Devices is for managing VPNs. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 103. LG Mobile Communication Devices with VPN management functionality
are each a material part of the invention of the 591 patent and especially made for the infringing use of the VPN functionality to receive call trace information. LG Mobile Communication Devices including the VPN management functionality, are especially made or adapted to provide VPN management functionality that perform or facilitate performance of the steps that infringe the 591 patent. Furthermore, LG provides user manuals describing the uses of its Mobile Communication Devices that infringe the 591 patent. Because the functionality provided by LGs VPN management functionality infringes the 591 patent, LGs sales of its infringing Mobile Communication Devices have no substantial non-infringing uses. 104. Accordingly, a reasonable inference is that LG offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or 33
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commodity of commerce suitable for substantial non-infringing use. LG provides to others, Mobile Communication Devices with an operating system configured and installed by LG to support VPN management functionality. LG installs and configures on these products distinct and separate components, including software components, which are used only to infringe the 591 Patent. 105. The use of at least LG Mobile Communication Devices with an operating
system configured and installed by LG to support Location Services functionality, as intended by LG infringes at least method claim 17 of the 572 Patent. LG uses these Mobile Communication Devices and thus directly infringes at least method claim 17 of the 572 Patent. 106. In addition, LG provides at least its Mobile Communication Devices with
an operating system configured and installed by LG to support Location Services functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claim 17 of the 572 Patent. 107. LG indirectly infringes by inducing infringement by others, such as
performed by the manufacturers, resellers, and end-users of LG Mobile Communication Devices in their intended use, including a customers use of the Location Services functionality. LG had actual notice of the 572 Patent at least by May 23, 2012, in view of a Rockstar communication to LG, and also received knowledge as of the date this lawsuit was filed.
34
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108.
LGs affirmative acts of selling its Mobile Communication Devices and
providing instruction manuals induced the end-users of LG Mobile Communication Devices to use LG Mobile Communication Devices in their normal and customary way to infringe the 572 patent at least through using Location Services functionality. LG also provides instructions, including at least User Guide LG Optimus T P509 available on LGEs website at http://www.lg.com/us/support-mobile/lg-LGP509#, for using the Location Services functionality. Through its sales of LG Mobile Communication
Devices with Location Services functionality, LG specifically intended the end-users of LG Mobile Communication Devices to infringe the 572 patent; further, LG was aware that the normal and customary use of Location Services would infringe the 572 patent. LG also enticed its end-users to use the Location Services by providing instruction manuals. LG performed the acts that constituted induced infringement, and would induce actual infringement, with the knowledge of the 572 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 109. Accordingly, a reasonable inference is that LG actively induces
infringement of the 572 Patent by others, such as resellers and end-use customers. LG specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 572 Patent in the United States because LG had knowledge of the 572 Patent, and LG actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of LGs products in an infringing way. Such instructions include at least User Guide LG
Optimus T P509 available on LGEs website at http://www.lg.com/us/supportmobile/lg-LGP509#. When resellers and end-use customers follow such instructions, 35
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they directly infringe the 572 Patent. LG knows that by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 572 Patent. LG thus knows that its actions induce the infringement. 110. LG indirectly infringes the 572 Patent by contributing to infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of LG Mobile Communication Devices in their intended use, including a customers use of the Locations Services functionality. LG had actual notice of the 572 Patent at least by May 23, 2012, in view of a Rockstar communication to LG, and also received knowledge as of the date this lawsuit was filed. 111. LGs Location Services functionality provides call trace information, i.e.,
a geographic location of LG Mobile Communication Devices. The Location Services functionality is designed to notify the user of LG Mobile Communication Devices of call trace information, i.e., a geographic location of the Mobile Communication Devices, and cannot function in a manner that does not utilize the Location Services functionality available to the Mobile Communication Devices. Upon information and belief, the Location Services functionality is designed to entice a user to access call trace information. 112. A reasonable inference to be drawn from the facts set forth is that the
Location Services functionality is especially made or especially adapted to operate on LG Mobile Communication Devices for obtaining call trace information, i.e., a geographic location of the Mobile Communication Devices. 36
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113.
Location Services functionality is not a staple article or commodity of commerce and that the use of the Location Services functionality of LG Mobile Communication Devices is for providing call trace information. Any other use would be unusual, far-fetched,
illusory, impractical, occasional, aberrant, or experimental. 114. LG Mobile Communication Devices with Location Services functionality
are each a material part of the 572 patent and especially made for the infringing use of the Location Services functionality to receive call trace information, i.e., a geographic location of the Mobile Communication Devices. The Mobile Communication Devices including the Location Services functionality are especially made or adapted to provide call trace information that perform or facilitate performance of the steps that infringe the 572 patent. Furthermore, LG provides user manuals describing the uses of its products that infringe the 572 patent. Because the functionality provided by LGs Location Services to obtain call trace information, i.e., a geographic location of the Mobile Communication Devices, infringes the 572 patent, LGs sales of its infringing products have no substantial non-infringing uses. 115. Accordingly, a reasonable inference is that LG offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. LG provides to others, Mobile Communication Devices with an operating system configured and 37
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installed by LG to support Location Services functionality. LG installs and configures on these products distinct and separate components, including software components, which are used only to perform the infringing method claims. 116. LGs acts of infringement have caused damage to Rockstar and
MobileStar. Rockstar and MobileStar are entitled to recover from LG the damages sustained by Rockstar and MobileStar as a result of LGs wrongful acts in an amount subject to proof at trial. In addition, the infringing acts and practices of LG have caused, are causing, and, unless such acts and practices are enjoined by the Court, will continue to cause immediate and irreparable harm to Rockstar and MobileStar for which there is no adequate remedy at law, and for which Rockstar and MobileStar are entitled to injunctive relief under 35 U.S.C. 283. 117. LG received actual notice of its infringement of the 551, 937, 298, 973,
131, 591, and 572 Patents through at least letters sent by Rockstar and/or its predecessors-in-interest, Nortel Networks Ltd. and/or Nortel Networks, Inc., to LG, and through meetings between employees of Rockstar and/or its predecessors-in-interest, Nortel Networks Ltd., or Nortel Networks Inc. and LG. LG also has knowledge of its infringement of the Patents-in-Suit by way of this Complaint. 118. LG has willfully infringed and/or does willfully infringe the 551, 937,
298, 973, 131, 591, and 572 Patents. DEMAND FOR JURY TRIAL Rockstar and MobileStar hereby demand a jury trial for all issues so triable. PRAYER FOR RELIEF WHEREFORE, Rockstar and MobileStar pray for the following relief: 38
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1.
A judgment that LG has directly infringed the 551 Patent, contributorily
infringed the 551 Patent, and/or induced the infringement of the 551 Patent. 2. A judgment that LG has directly infringed the 937 Patent, contributorily
infringed the 572 Patent, and/or induced the infringement of the 572 Patent. 8. A permanent injunction preventing LG and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 551 Patent; 9. A permanent injunction preventing LG and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 937 patent;
39
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10.
A permanent injunction preventing LG and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 298 patent; 11. A permanent injunction preventing LG and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 572 patent; 15. A judgment that LGs infringement of the 551, 937, 298, 973, 131,
591, and 572 Patents has been willful;
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16.
A ruling that this case be found to be exceptional under 35 U.S.C. 285,
and a judgment awarding Rockstar and MobileStar to its attorneys fees incurred in prosecuting this action; 17. A judgment and order requiring LG to pay Rockstar and MobileStar
damages under 35 U.S.C. 284, including supplemental damages for any continuing post-verdict infringement up until entry of the final judgment, with an accounting, as needed, and treble damages for willful infringement as provided by 35 U.S.C. 284; 18. A judgment and order requiring LG to pay Rockstar and MobileStar the
costs of this action (including all disbursements); 19. A judgment and order requiring LG to pay Rockstar and MobileStar pre-
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EXHIBIT E
ROCKSTAR CONSORTIUM US LP, AND MOBILESTAR TECHNOLOGIES LLC PLAINTIFFS v. Civil Action No. 2:13-cv-899 PANTECH CO., LTD., and PANTECH JURY TRIAL REQUESTED WIRELESS, INC., DEFENDANTS. PLAINTIFFS ROCKSTAR CONSORTIUM US LP AND MOBILESTAR TECHNOLOGIES LLCS ORIGINAL COMPLAINT Plaintiffs Rockstar Consortium US LP (Rockstar) and MobileStar Technologies LLC (MobileStar) file this Original Complaint for patent infringement under 35 U.S.C. 271 and in support thereof would respectfully show the Court the following: PARTIES 1. Plaintiff Rockstar Consortium US LP (Rockstar) is a limited partnership
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3.
Upon information and belief, Defendant Pantech Co., Ltd. is a Korean
company with its principal place of business at Pantech R&D Center, I-2 DMC Sangamdong, Mapo-gu, Seoul, 415865, South Korea. 4. Upon information and belief, Defendant Pantech Wireless, Inc. is a
corporation organized and existing under the laws of the State of Georgia with its principal place of business at 5607 Glenridge Drive, Suite 500, Atlanta, Georgia 30342. JURISDICTION AND VENUE 5. This is an action for patent infringement under the Patent Laws of the
United States, 35 U.S.C. 271. This Court has exclusive subject matter jurisdiction over this case for patent infringement under 28 U.S.C. 1338. 6. 7. Venue is proper in this Court pursuant to 28 U S.C. 1391 and 1400(b). This Court has personal jurisdiction over Defendants Pantech Co., Ltd.
and Pantech Wireless, Inc. (collectively, Pantech). Pantech has conducted and does conduct business within the State of Texas. Pantech, directly or through subsidiaries or intermediaries (including distributors, retailers, and others), ships, distributes, offers for sale, sells, and advertises (including the provision of an interactive web page) its products (including its infringing products) and/or services in the United States, the State of Texas, and the Eastern District of Texas. Pantech, directly and through subsidiaries or
intermediaries (including distributors, retailers, and others), has purposefully and voluntarily placed one or more of its infringing products and/or services, as described below, into the stream of commerce with the expectation that they will be purchased and used by consumers in the Eastern District of Texas. These infringing products and/or services have been and continue to be purchased and used by consumers in the Eastern 2
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District of Texas. Pantech has committed acts of patent infringement within the State of Texas and, more particularly, within the Eastern District of Texas. ASSERTED PATENTS 8. On March 14, 2000, U.S. Patent No. 6,037,937 (the 937 Patent) entitled
entitled Internet Protocol Filter was duly and legally issued with Bruce Anthony Wootton and William G. Colvin as the named inventors after full and fair examination. Rockstar owns all rights, title, and interest in and to the 298 Patent and possesses all rights of recovery under the 298 Patent. MobileStar is the exclusive licensee of the 298 patent. 10. On December 25, 2001, U.S. Patent No. 6,333,973 (the 973 Patent)
entitled System and Method for Notifying a User of an Incoming Communication Event was duly and legally issued with Marilyn French-St. George, Mitch A. Brisebois and Laura A. Mahan as the named inventors after full and fair examination. MobileStar 3
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owns all rights, title, and interest in and to the 131 Patent and possesses all rights of recovery under the 131 Patent. 12. On July 20, 2004, U.S. Patent No. 6,765,591 (the 591 Patent) entitled
entitled Call Trace on a Packet Switched Network was duly and legally issued with Brian B. Egan and Milos Vodsedalek as the named inventors after full and fair examination. MobileStar owns all rights, title, and interest in and to the 572 Patent and possesses all rights of recovery under the 572 Patent. GENERAL ALLEGATIONS 14. Pantech has directly and indirectly infringed and continues to directly and
indirectly infringe each of the 937, 298, 973, 131, 591, and 572 Patents by engaging in acts constituting infringement under 35 U.S.C. 271(a), (b), (c), and/or (f), including but not necessarily limited to one or more of making, using, selling and offering to sell, in this District and elsewhere in the United States, and importing into this District and elsewhere in the United States, certain mobile communication devices having a version (or an adaption thereof) of Android operating system (Pantech Mobile Communication Devices). 15. Pantech is doing business in the United States and, more particularly, in
the Eastern District of Texas by making, using, selling, importing, and/or offering for sale 4
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Pantech Mobile Communication Devices, including but not limited to Pantechs Perception, Discover, Flex, Marauder, Burst, and Pocket family of smart phones, and its Element family of tablets, and other products that infringe the patent claims involved in this action or by transacting other business in this District. COUNT ONE PATENT INFRINGEMENT BY PANTECH 16. Plaintiffs incorporate by reference paragraphs 1-16 as if fully set forth
herein. As described below, Pantech has infringed and/or continues to infringe the 937, 298, 973, 131, 591, and 572 Patents. 17. At least Pantech Mobile Communication Devices with an operating
system configured and installed by Pantech to support Gallery, Email, Maps and Browser functionality, infringe at least claim 13 of the 937 Patent. Pantech makes, uses, tests, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claim 13 of the 937 Patent. 18. Pantech indirectly infringes the 937 patent by inducing infringement by
others, such as resellers, of at least claim 13 in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the Pantech Mobile Communication Devices. Pantech received actual notice of the 937 Patent at least by March 12, 2012 from a communication from Rockstar, and/or its predecessors-in-interest, to Pantech, and also received knowledge as of the date this lawsuit was filed. 19. Pantechs affirmative acts of selling Pantech Mobile Communication
Devices, causing the Pantech Mobile Communication Devices to be manufactured, and 5

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providing instruction manuals for Pantech Mobile Communication Devices induced Pantechs manufacturers and resellers to make or use the Pantech Mobile Communication Devices in their normal and customary way to infringe the 937 patent. Through its manufacture and sales of Pantech Mobile Communication Devices, Pantech specifically intended its resellers and manufacturers to infringe the 937 patent; further, Pantech was aware that these normal and customary activities would infringe the 937 patent. Pantech performed the acts that constitute induced infringement, and would induce actual infringement, with knowledge of the 937 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 20. Accordingly, a reasonable inference is that Pantech specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of the 937 patent in the United States because Pantech has knowledge of the 937 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, Pantech Communication Devices for resale to others, such as resellers and end-use customers. Pantech knew or should have known that such actions would induce actual infringement. 21. The use of at least Pantech Mobile Communication Devices with an
operating system configured and installed by Pantech to support Gallery, Email, Maps and Browser functionality as intended by Pantech infringes at least method claim 1 of the 937 Patent. Pantech uses these products and thus directly infringes at least method claim 1 of the 937 Patent.
6
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22.
In addition, Pantech provides at least Pantech Mobile Communication
Devices with an operating system configured and installed by Pantech to support Gallery, Email, Maps, and Browser functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claim 1 of the 937 Patent. 23. Pantech indirectly infringes the 937 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the Pantech Mobile Communication Devices. Pantech received actual notice of the 937 Patent at least by March 12, 2012, in view of a communication from Rockstar, and/or its predecessors-ininterest, to Pantech, and also received knowledge as of the date this lawsuit was filed. 24. Pantech provides at least Pantech Mobile Communication Devices with an
operating system configured and installed by Pantech to support Gallery, Email, Maps and Browser functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe the 937 Patent. Through its manufacture and sales of Pantech Mobile Communication Devices, Pantech specifically intended its resellers and manufacturers to infringe the 937 patent. 25. Pantech specifically intends for others, such as resellers and end-use
customers, to directly infringe one or more claims of the 937 Patent in the United States. For example, Pantech provides instructions to resellers and end-use customers regarding the use and operation of Pantechs products in an infringing way. Such instructions include at least Pantech Burst User Guide available on Pantechs web site at 7
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http://www.pantechusa.com/phones/burst/#support.
When
resellers
and
end-use
customers follow such instructions, they directly infringe the 937 Patent. Pantech knows that by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 937 Patent. Pantech thus knows that its actions induce the infringement. 26. Pantech performed the acts that constitute induced infringement, and
would induce actual infringement, with the knowledge of the 937 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 27. Pantech indirectly infringes the 937 patent, by contributing to
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Pantech Mobile Communication Devices. Pantech received actual notice of the 937 Patent at least by March 12, 2012, in view of a communication from Rockstar, and/or its predecessors-in-interest, to Pantech, and also received knowledge as of the date this lawsuit was filed. 28. Pantech Mobile Communication Devices include functionality that, inter
alia, displays a navigable graphical user interface (navigable GUI) that permits a user to manipulate and control the contents of the display to maximize the use of display real estate. This navigable GUI is included in Pantech Mobile Communication Devices with an operating system configured and installed by Pantech to support at least the Gallery, Email, Maps, and Browser functionalities. On information and belief, these
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functionalities cannot operate in an acceptable manner absent the navigable GUI, as it is included in every Pantech Mobile Communication Device. 29. A reasonable inference to be drawn from the facts set forth is that the
navigable GUI as included in Pantech Mobile Communication Devices is especially made or especially adapted to operate on a Pantech Mobile Communication Device as a navigable GUI that permits a user to manipulate or control the contents of the display to maximize the use of display real estate on the users Pantech Mobile Communication Devices. 30. A reasonable inference to be drawn from the facts set forth is that the
navigable GUI as included in the Mobile Communication Device is not a staple article or commodity of commerce and that the use of the navigable GUI in Pantech Mobile Communication Devices is required for the operation of Pantech Mobile Communication Devices. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 31. Pantech Mobile Communication Devices with the navigable GUI are each
a material part of the invention of the 937 patent and are especially made for the infringing manufacture, sale, and use of Pantech Mobile Communication Devices. Pantech Mobile Communication Devices with the navigable GUI are especially made or adapted as a navigable GUI that infringes the 937 patent. Because the sales and
manufacture of Pantech Mobile Communication Devices with a navigable GUI infringes the 937 patent, Pantechs sales of its infringing products have no substantial noninfringing uses.
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32.
Accordingly, a reasonable inference is that Pantech offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing the 937 patent, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. Pantech provides to others, Pantech Mobile Communication Devices with distinct and separate components, including software components, which have no substantial non-infringing use. 33. At least Pantech Mobile Communication Devices with an operating
system configured and installed by Pantech to support the Portable WiFi Hotspot functionality infringe at least claims 27 and 31 of the 298 Patent. Pantech makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claims 27 and 31 of the 298 Patent. 34. Pantech indirectly infringes the 298 patent by inducing infringement by
others, such as resellers, of at least claims 27 and 31 in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the Pantech Mobile Communication Devices. Pantech received actual notice of the 298 Patent at least by November 29, 2012 from a communication from Rockstar, and/or its predecessors-in-interest, to Pantech, and also received knowledge as of the date this lawsuit was filed. 35. Pantechs affirmative acts of selling Pantech Mobile Communication

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others, such as resellers and end-use customers, to directly infringe one or more claims of the 298 patent in the United States because Pantech has knowledge of the 298 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, Pantech Communication Devices for resale to others, such as resellers and end-use customers. Pantech knew or should have known that such actions would induce actual infringement. 37. The use of at least Pantech Mobile Communication Devices that support
the Portable WiFi Hotspot functionality as intended by Pantech infringes at least method claims 14 and 24 of the 298 Patent. Pantech uses these products and thus directly infringes at least method claims 14 and 24 of the 298 Patent. 38. In addition, Pantech provides at least Pantech Mobile Communication
Devices that support the Portable WiFi Hotspot functionality to others, such as resellers 11
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and end-use customers, in the United States who, in turn, use these products to infringe at least method claims 14 and 24 of the 298 Patent. 39. Pantech indirectly infringes the 298 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Pantech Mobile Communication Devices in their intended use, including a customers use of the Portable WiFi Hotspot functionality. Pantech received actual notice of the 298 Patent at least by November 29, 2012, in view of a communication from Rockstar, and/or its predecessorsin-interest, to Pantech, and also received knowledge as of the date this lawsuit was filed. 40. Pantechs affirmative acts of selling its Pantech Mobile Communication
Devices and providing instruction manuals induced the end-users of Pantech Mobile Communication Devices to use Pantech Mobile Communication Devices in their normal and customary way to infringe the 298 patent at least through using Portable WiFi Hotspot functionality. Pantech also provides instructions, including at least Pantech Burst User Guide available on Pantechs web site at
http://www.pantechusa.com/phones/burst/#support for using the Portable WiFi Hotspot functionality. Through its sales of Pantech Mobile Communication Devices with
Portable WiFi Hotspot functionality, Pantech specifically intended the end-users of Pantech Mobile Communication Devices to infringe the 298 patent; further, Pantech was aware that the normal and customary use of Portable WiFi Hotspot functionality would infringe the 298 patent. Pantech also enticed its end-users to use the Portable WiFi Hotspot functionality by providing instruction manuals and also providing Portable WiFi 12
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Hotspot functionality. Pantech performed the acts that constituted induced infringement, and would induce actual infringement, with the knowledge of the 298 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 41. Accordingly, a reasonable inference is that Pantech actively induces
infringement of the 298 Patent by others, such as resellers and end-use customers. Pantech specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 298 Patent in the United States because Pantech had knowledge of the 298 Patent, and Pantech actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of Pantech Mobile Communication Devices in an infringing way. Such instructions include at least Pantech Burst User Guide available on Pantechs web site at http://www.pantechusa.com/phones/burst/#support. When resellers and end-use
customers follow such instructions, they directly infringe the 298 Patent. Pantech knows that by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 298 Patent. Pantech thus knows that its actions induce the infringement. 42. Pantech indirectly infringes the 298 Patent by contributing to
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Pantech Mobile Communication Devices in their intended use, including a customers use of the Portable WiFi Hotspot functionality. Pantech received actual notice of the 298 Patent at least by November 29, 2012, in view of a communication from Rockstar, 13
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and/or its predecessors-in-interest, to Pantech, and also received knowledge as of the date this lawsuit was filed. 43. Pantech Mobile Communication Devices with the Portable WiFi Hotspot
functionality allow wireless devices from a first, or private, network to connect to a second, or public, network such as the Internet. The Portable WiFi Hotspot functionality is designed to route data packets between wireless devices tethered to the Portable WiFi Hotspot to nodes on a public network such as the Internet, and cannot function in a manner that does not utilize the Portable WiFi Hotspot functionality available to Pantech Mobile Communication Devices. Upon information and belief, the Portable WiFi
Hotspot functionality is designed to entice a user to access nodes in a second, or public, network such as the Internet. 44. A reasonable inference to be drawn from the facts set forth is that the
Portable WiFi Hotspot functionality is especially made or especially adapted to operate on a mobile communication device for providing access for wireless devices in a first, or private, network to nodes in a second, or public, network. 45. A reasonable inference to be drawn from the facts set forth is that the
Portable WiFi Hotspot functionality is not a staple article or commodity of commerce and that the use of the Portable WiFi Hotspot functionality of Pantech Mobile Communication Devices is for interfacing first and second data communications networks, e.g., a private network and a public network such as the Internet. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental.
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46.
Pantech Mobile Communication Devices with Portable WiFi Hotspot
functionality are each a material part of the 298 patent and especially made for the infringing use of the Portable WiFi Hotspot functionality for interfacing private and public data communication networks. Pantech Mobile Communication Devices with the Portable WiFi Hotspot functionality are especially made or adapted to provide access for wireless devices in a first, or private, network through the Mobile Communication Device, to nodes in a second, or public, network that perform or facilitate performance of the steps that infringe the 298 patent. Furthermore, Pantech provides user manuals
describing the uses of Pantech Mobile Communication Devices that infringe the 298 patent. Because the sales and manufacture of Pantech Mobile Communication Devices with Portable WiFi Hotspot functionality infringes the 298 patent, Pantechs sales of its infringement products have no substantial non-infringing uses. 47. Accordingly, a reasonable inference is that Pantech offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. Pantech provides to others, Pantech Mobile Communication Devices with an operating system configured and installed by Pantech to support Portable WiFi Hotspot functionality. Pantech installs and configures Pantech Mobile Communication Devices with distinct and separate components, including software components, which are used only to perform the infringing method claims. 15
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48.
At least Pantech Mobile Communication Devices with an operating
system configured and installed by Pantech to support an integrated notification message center functionality infringe at least claims 1 and 21 of the 973 Patent. Pantech makes, uses, sells, tests, uses, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes one or more claims of the 973 patent, including at least claims 1 and 21. 49. Pantech indirectly infringes the 973 patent by inducing infringement by
others, such as resellers, of at least claims 1 and 21 in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the Pantech Mobile Communication Devices. Pantech received actual notice of the 973 Patent at least by March 12, 2012 from a communication from Rockstar, and/or its predecessors-in-interest, to Pantech, and also received knowledge as of the date this lawsuit was filed. 50. Pantechs affirmative acts of selling Pantech Mobile Communication
Devices, causing the Pantech Mobile Communication Devices to be manufactured, and providing instruction manuals for Pantech Mobile Communication Devices induced Pantechs manufacturers and resellers to make or use the Pantech Mobile Communication Devices in their normal and customary way to infringe the 973 patent. Through its manufacture and sales of Pantech Mobile Communication Devices, Pantech specifically intended its resellers and manufacturers to infringe the 973 patent; further, Pantech was aware that these normal and customary activities would infringe the 973 patent. Pantech performed the acts that constitute induced infringement, and would induce actual 16
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infringement, with knowledge of the 973 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 51. Accordingly, a reasonable inference is that Pantech specifically intends for
operating system configured and installed by Pantech to support an integrated notification message center functionality as intended by Pantech infringes at least method claim 8 of the 973 Patent. Pantech uses these devices within the United States and thus directly infringes one or more claims of the 973 patent, including at least claim 8. 53. Pantech indirectly infringes the 973 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Pantech Mobile Communication Devices. Pantech received actual notice of the 973 Patent at least by March 12, 2012, in view of a communication from Rockstar, and/or its predecessors-ininterest, to Pantech, and also received knowledge as of the date this lawsuit was filed.
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54.
Pantech provides at least Pantech Mobile Communication Devices with an
operating system configured and installed by Pantech to support integrated notification message center functionality to others, such as resellers and end-use customers, in the United States who, in turn, use Pantech Mobile Communication Devices to infringe at least method claim 8 of the 973 Patent. Through its manufacture and sales of Pantech Mobile Communication Devices, Pantech specifically intended its resellers and manufacturers to infringe the 973 patent. 55. Pantech specifically intends for others, such as resellers and end-use
customers, to directly infringe one or more claims of the 973 Patent in the United States. For example, Pantech provides instructions to resellers and end-use customers regarding the use and operation of Pantech Mobile Communication Devices in an infringing way. Such instructions include at least Pantech Burst User Guide available on Pantechs web site at http://www.pantechusa.com/phones/burst/#support. When resellers and end-use customers follow such instructions, they directly infringe the 973 Patent. Pantech knows that by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 973 Patent. Pantech thus knows that its actions induce the infringement. 56. Pantech performed the acts that constitute induced infringement, and
would induce actual infringement, with the knowledge of the 973 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 57. Pantech indirectly infringes the 973 patent, by contributing to
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is 18
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the result of activities performed by the manufacturers, resellers, and end-users of Pantech Mobile Communication Devices. Pantech received actual notice of the 973 Patent at least by March 12, 2012, in view of a communication from Rockstar, and/or its predecessors-in-interest, to Pantech, and also received knowledge as of the date this lawsuit was filed. 58. Pantech Mobile Communication Devices include functionality that, inter
alia, displays an integrated notification message center contained in a single list. The notification message center is designed to provide a user with a single list of notifications regardless of the types of messages (e.g., email, text, etc) on the users Mobile Communication Device. On information and belief, this functionality cannot operate in an acceptable manner absent the integrated notification message center, as it is included in every Pantech Mobile Communication Device. 59. A reasonable inference to be drawn from the facts set forth is that the
integrated message center in Pantech Mobile Communication Devices is especially made or especially adapted to operate on a Pantech Mobile Communication Device as an integrated notification message center that provides a user with notifications concerning different types of messages on the users Mobile Communication Device. 60. A reasonable inference to be drawn from the facts set forth is that the
integrated notification message center in the Mobile Communication Device is not a staple article or commodity of commerce and that the use of the integrated notification message center in Pantech Mobile Communication Devices is required for operation of Pantech Mobile Communication Devices. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 19
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61.
Pantech Mobile Communication Devices with the integrated notification
message center are each a material part of the invention of the 973 patent and are especially made for the infringing manufacture, sale, and use of Pantech Mobile Communication Devices. Pantech Mobile Communication Devices, including the
integrated notification message center, are especially made or adapted as an integrated notification message center that infringes the 973 patent. Because the sales and
manufacture of Pantech Mobile Communication Devices with an integrated notification message center infringes the 973 patent, Pantechs sales of its infringing products have no substantial non-infringing uses. 62. Accordingly, a reasonable inference is that Pantech offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. Pantech provides to others, Pantech Mobile Communication Devices with distinct and separate components, including software components, which have no substantial non-infringing use. 63. At least Pantech Mobile Communication Devices with an operating
system configured and installed by Pantech to support Message and Notification functionality infringe at least claim 1 of the 131 Patent. Pantech makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claim 1 of the 131 Patent.
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64.
Pantech indirectly infringes the 131 patent by inducing infringement by
others, such as resellers, of at least claim 1 in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the Pantech Mobile Communication Devices. Pantech received actual notice of the 131 Patent at least by November 29, 2012 from a communication from Rockstar, and/or its predecessors-ininterest, to Pantech, and also received knowledge as of the date this lawsuit was filed. 65. Pantechs affirmative acts of selling Pantech Mobile Communication
Devices, causing the Pantech Mobile Communication Devices to be manufactured, and providing instruction manuals for Pantech Mobile Communication Devices induced Pantechs manufacturers and resellers to make or use the Pantech Mobile Communication Devices in their normal and customary way to infringe the 131 patent. Through its manufacture and sales of Pantech Mobile Communication Devices, Pantech specifically intended its resellers and manufacturers to infringe the 131 patent; further, Pantech was aware that these normal and customary activities would infringe the 131 patent. Pantech performed the acts that constitute induced infringement, and would induce actual infringement, with knowledge of the 131 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 66. Accordingly, a reasonable inference is that Pantech specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of the 131 patent in the United States because Pantech has knowledge of the 131 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, 21
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Pantech Communication Devices for resale to others, such as resellers and end-use customers. Pantech knew or should have known that such actions would induce actual infringement. 67. The use of at least Pantech Mobile Communication Devices with an
operating system configured and installed by Pantech to support Message and Notification functionality as intended by Pantech infringes at least method claim 5 of the 131 Patent. Pantech uses these products and thus directly infringes at least method claim 5 of the 131 Patent. 68. In addition, Pantech provides at least Pantech Mobile Communication
Devices with an operating system configured and installed by Pantech to support Message functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claim 5 of the 131 Patent. 69. Pantech indirectly infringes the 131 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Pantech Mobile Communication Devices in their intended use, including a customers use of the Message and Notifications functionality. Pantech received actual notice of the 131 Patent at least by November 29, 2012, in view of a communication from Rockstar, and/or its predecessors-in-interest, to Pantech, and also received knowledge as of the date this lawsuit was filed.
22
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70.
Pantechs affirmative acts of selling Pantech Mobile Communication
Devices and providing instruction manuals induced the end-users of Pantech Mobile Communication Devices to use Pantech Mobile Communication Devices in their normal and customary way to infringe the 131 patent at least through using Message and Notifications functionality. Pantech Burst User Pantech also provides instructions, including at least Guide available on for Pantechs using the web site at and
http://www.pantechusa.com/phones/burst/#support,
Messaging
Notifications functionality. Through its sales of Mobile Communication Devices with Messaging and Notifications functionality, Pantech specifically intended the end-users of Pantech Mobile Communication Devices to infringe the 131 patent; further, Pantech was aware that the normal and customary use of the Message and Notifications functionality would infringe the 131 patent. Pantech also enticed its end-users to use the Messaging and Notifications functionality by providing instruction manuals. Pantech performed the acts that constituted induced infringement, and would induce actual infringement, with the knowledge of the 131 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 71. Accordingly, a reasonable inference is that Pantech actively induces
infringement of the 131 Patent by others, such as resellers and end-use customers. Pantech specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 131 Patent in the United States because Pantech had knowledge of the 131 Patent, and Pantech actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of Pantech Mobile Communication Devices in an infringing way. Such instructions 23
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include at least Pantech Burst User Guide available on Pantechs web site at http://www.pantechusa.com/phones/burst/#support. When resellers and end-use
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Pantech Mobile Communication Devices in their intended use, including a customers use of the Messaging and Notification functionality. Pantech received actual notice of the 131 Patent at least by November 29, 2012, in view of a communication from Rockstar, and/or its predecessors-in-interest, to Pantech, and also received knowledge as of the date this lawsuit was filed. 73. Pantechs Message and Notification functionality receives and displays
message of different types, such as a phone call, voice mail, text message, or email. The Message and Notification Services functionality is designed to notify the user of an incoming communication and to select the format of the message received and cannot function in a manner that does not utilize the messaging functionality available to Pantech Mobile Communication Devices. Upon information and belief, the Message and Notifications functionality is designed to entice a user to receive notifications of an incoming communication. 24
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74.
Message and Notifications functionality especially made or especially adapted to operate on Pantech Mobile Communication Devices for notifying a user of an incoming communication. 75. A reasonable inference to be drawn from the facts set forth is that the
Message and Notifications functionality is not a staple article or commodity of commerce and that the use of the Messaging and Notifications functionality of the Pantech Mobile Communication Devices is for notifying a user of an incoming communication. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 76. Pantech Mobile Communication Devices with Messaging and
Notifications functionality are each a material part of the 131 patent and especially made for the infringing use of the Messaging and Notification functionality to receive and display messages. Pantech Mobile Communication Devices including the Messaging and Notification functionality, are especially made or adapted to notify a user of an incoming communication that perform or facilitate performance of the steps that infringe the 131 patent. Furthermore, Pantech provides user manuals describing the uses of its Mobile Communication Devices that infringe the 131 patent. Because the functionality
provided by Pantechs Messaging and Notification to notify a user of an incoming communication infringes the 131 patent, Pantechs sales of its infringing products have no substantial non-infringing uses. 77. Accordingly, a reasonable inference is that Pantech offers to sell, or sells

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or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. Pantech provides to others, Mobile Communication Devices with an operating system configured and installed by Pantech to support Message and Notification functionality. Pantech installs and configures on these products distinct and separate components, including software components, which are used only to perform the infringing method claims. 78. At least Pantech Mobile Communication Devices with an operating
system configured and installed by Pantech to support VPN management functionality, including the Pantech Galaxy S III, infringe at least claims 1 and 8 of the 591 Patent. Pantech makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claims 1 and 8 of the 591 Patent. 79. Pantech indirectly infringes the 591 patent by inducing infringement by
others, such as resellers, of at least claims 1 and 8 in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the Pantech Mobile Communication Devices. Pantech received actual notice of the 591 Patent at least by November 29, 2012 from a communication from Rockstar, and/or its predecessors-ininterest, to Pantech, and also received knowledge as of the date this lawsuit was filed. 80. Pantechs affirmative acts of selling Pantech Mobile Communication

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operating system configured and installed by Pantech to support VPN management functionality as specified and intended by Pantech infringes at least claims 1 and 8 of the 591 Patent. Pantech uses these products and thus directly infringes at least claims 1 and 8 of the 591 Patent.
27
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83.
In addition, Pantech provides at least its Mobile Communication Devices
with an operating system configured and installed by Pantech to support VPN management functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least claims 1 and 8 of the 591 Patent. 84. Pantech indirectly infringes the 591 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Pantech Mobile Communication Devices in their intended use, including a customers use of the VPN management functionality. Pantech received actual notice of the 591 Patent at least by November 29, 2012, in view of a communication from Rockstar, and/or its predecessorsin-interest, to Pantech, and also received knowledge as of the date this lawsuit was filed. 85. Pantechs affirmative acts of selling its Mobile Communication Devices
and providing instruction manuals induced the end-users of Pantech Mobile Communication Devices to use Pantech Mobile Communication Devices in their normal and customary way to infringe the 591 patent at least through using VPN management functionality. Pantech also provides instructions, including at least Pantech Element User Guide available on Pantechs web site at
http://www.pantechusa.com/tablets/element/#support, for using the VPN management functionality. Through its sales of Pantech Mobile Communication Devices with VPN management functionality, Pantech specifically intended the end-users of Pantech Mobile Communication Devices to infringe the 591 patent; further, Pantech was aware that the 28
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normal and customary use of VPN management functionality would infringe the 591 patent. Pantech also enticed its end-users to use the VPN management functionality by providing instruction manuals. Pantech performed the acts that constituted induced
infringement, and would induce actual infringement, with the knowledge of the 591 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 86. Accordingly, it is a reasonable inference that Pantech actively induces
infringement of the 591 Patent by others, such as resellers and end-use customers. Pantech specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 591 Patent in the United States because Pantech had knowledge of the 591 Patent, and Pantech actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of Pantechs products in an infringing way. Such instructions include at least Pantech Element User Guide available on Pantechs web site at
http://www.pantechusa.com/tablets/element/#support.
When resellers and end-use
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of 29
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Pantech Mobile Communication Devices in their intended use, including a customers use of the VPN management functionality. Pantech received actual notice of the 591 Patent at least by November 29, 2012, in view of a communication from Rockstar, and/or its predecessors-in-interest, to Pantech, and also received knowledge as of the date this lawsuit was filed. 88. Pantechs VPN management functionality facilitates management of
VPNs. The VPN management functionality is designed for management of VPNs and cannot function in a manner that does not utilize the VPN management functionality available to Pantech Mobile Communication Devices. The VPN management
functionality is designed upon information and belief to entice a user to manage VPNs. 89. A reasonable inference to be drawn from the facts set forth is that the VPN
functionality is especially made or especially adapted to operate on Pantech Mobile Communication Devices for providing VPN management functionality. 90. A reasonable inference to be drawn from the facts set forth is that the VPN
management functionality is not a staple article or commodity of commerce and that the use of the VPN management functionality of Pantech Mobile Communication Devices is for managing VPNs. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 91. Pantech Mobile Communication Devices with VPN management
functionality are each a material part of the invention of the 591 patent and especially made for the infringing use of the VPN functionality to receive call trace information. Pantech Mobile Communication Devices including the VPN management functionality, are especially made or adapted to provide VPN management functionality that perform or 30
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facilitate performance of the steps that infringe the 591 patent. Furthermore, Pantech provides user manuals describing the uses of its Mobile Communication Devices that infringe the 591 patent. Because the functionality provided by Pantechs VPN
management functionality infringes the 591 patent, Pantechs sales of its infringing Mobile Communication Devices have no substantial non-infringing uses. 92. Accordingly, a reasonable inference is that Pantech offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. Pantech provides to others, Mobile Communication Devices with an operating system configured and installed by Pantech to support VPN management functionality. Pantech installs and configures on these products distinct and separate components, including software components, which are used only to infringe the 591 Patent. 93. The use of at least Pantech Mobile Communication Devices with an
operating system configured and installed by Pantech to support Location Services functionality, as intended by Pantech infringes at least method claim 17 of the 572 Patent. Pantech uses these Mobile Communication Devices and thus directly infringes at least method claim 17 of the 572 Patent. 94. In addition, Pantech provides at least its Mobile Communication Devices
with an operating system configured and installed by Pantech to support Location Services functionality to others, such as resellers and end-use customers, in the United 31
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States who, in turn, use these products to infringe at least method claim 17 of the 572 Patent. 95. Pantech indirectly infringes by inducing infringement by others, such as
performed by the manufacturers, resellers, and end-users of Pantech Mobile Communication Devices in their intended use, including a customers use of the Location Services functionality. Pantech received actual notice of the 572 Patent at least by May 7, 2012, in view of a communication from Rockstar, and/or its predecessors-in-interest, to Pantech, and also received knowledge as of the date this lawsuit was filed. 96. Pantechs affirmative acts of selling its Mobile Communication Devices
and providing instruction manuals induced the end-users of Pantech Mobile Communication Devices to use Pantech Mobile Communication Devices in their normal and customary way to infringe the 572 patent at least through using Location Services functionality. Pantech also provides instructions, including at least Pantech Burst User Guide available on Pantechs web site at
http://www.pantechusa.com/phones/burst/#support, for using the Location Services functionality. Through its sales of Pantech Mobile Communication Devices with
Location Services functionality, Pantech specifically intended the end-users of Pantech Mobile Communication Devices to infringe the 572 patent; further, Pantech was aware that the normal and customary use of Location Services would infringe the 572 patent. Pantech also enticed its end-users to use the Location Services by providing instruction manuals. Pantech performed the acts that constituted induced infringement, and would 32
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induce actual infringement, with the knowledge of the 572 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 97. Accordingly, a reasonable inference is that Pantech actively induces
infringement of the 572 Patent by others, such as resellers and end-use customers. Pantech specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 572 Patent in the United States because Pantech had knowledge of the 572 Patent, and Pantech actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of Pantechs products in an infringing way. Such instructions include at least User Guide Pantech Burst available on Pantechs When resellers website and at
http://www.pantechusa.com/phones/burst/#support.
end-use
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Pantech Mobile Communication Devices in their intended use, including a customers use of the Locations Services functionality. Pantech received actual notice of the 572 Patent at least by May 7, 2012, in view of a communication from Rockstar, and/or its
33
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predecessors-in-interest, to Pantech, and also received knowledge as of the date this lawsuit was filed. 99. Pantechs Location Services functionality provides call trace information,
i.e., a geographic location of Pantech Mobile Communication Devices. The Location Services functionality is designed to notify the user of Pantech Mobile Communication Devices of call trace information, i.e., a geographic location of the Mobile Communication Devices, and cannot function in a manner that does not utilize the Location Services functionality available to the Mobile Communication Devices. Upon information and belief, the Location Services functionality is designed to entice a user to access call trace information. 100. A reasonable inference to be drawn from the facts set forth is that the
Location Services functionality is especially made or especially adapted to operate on Pantech Mobile Communication Devices for obtaining call trace information, i.e., a geographic location of the Mobile Communication Devices. 101. A reasonable inference to be drawn from the facts set forth is that the
Location Services functionality is not a staple article or commodity of commerce and that the use of the Location Services functionality of Pantech Mobile Communication Devices is for providing call trace information. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 102. Pantech Mobile Communication Devices with Location Services
functionality are each a material part of the 572 patent and especially made for the infringing use of the Location Services functionality to receive call trace information, i.e., a geographic location of the Mobile Communication Devices. 34
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The Mobile
Communication Devices including the Location Services functionality are especially made or adapted to provide call trace information that perform or facilitate performance of the steps that infringe the 572 patent. Furthermore, Pantech provides user manuals describing the uses of its products that infringe the 572 patent. Because the functionality provided by Pantechs Location Services to obtain call trace information, i.e., a geographic location of the Mobile Communication Devices, infringes the 572 patent, Pantechs sales of its infringing products have no substantial non-infringing uses. 103. Accordingly, a reasonable inference is that Pantech offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. Pantech provides to others, Mobile Communication Devices with an operating system configured and installed by Pantech to support Location Services functionality. Pantech installs and configures on these products distinct and separate components, including software components, which are used only to perform the infringing method claims. 104. Pantechs acts of infringement have caused damage to Rockstar and
MobileStar. Rockstar and MobileStar are entitled to recover from Pantech the damages sustained by Rockstar and MobileStar as a result of Pantechs wrongful acts in an amount subject to proof at trial. In addition, the infringing acts and practices of Pantech have caused, are causing, and, unless such acts and practices are enjoined by the Court, will continue to cause immediate and irreparable harm to Rockstar and MobileStar for which 35
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there is no adequate remedy at law, and for which Rockstar and MobileStar are entitled to injunctive relief under 35 U.S.C. 283. 105. Pantech received actual notice of its infringement of the 937, 298, 973,
131, 591, and 572 Patents through at least letters sent by Rockstar and/or its predecessors-in-interest, Nortel Networks Ltd. and/or Nortel Networks, Inc., to Pantech, and through meetings between employees of Rockstar and/or its predecessors-in-interest, Nortel Networks Ltd., or Nortel Networks Inc. and Pantech. Pantech also has knowledge of its infringement of the Patents-in-Suit by way of this Complaint. 106. Pantech has willfully infringed and/or does willfully infringe the 937,
298, 973, 131, 591, and 572 Patents. DEMAND FOR JURY TRIAL Rockstar and MobileStar hereby demand a jury trial for all issues so triable. PRAYER FOR RELIEF WHEREFORE, Rockstar and MobileStar pray for the following relief: 1. A judgment that Pantech has directly infringed the 937 Patent,
contributorily infringed the 937 Patent, and/or induced the infringement of the 937 Patent. 2. A judgment that Pantech has directly infringed the 298 Patent,
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4.
A judgment that Pantech has directly infringed the 131 Patent,
contributorily infringed the 572 Patent, and/or induced the infringement of the 572 Patent. 7. A permanent injunction preventing Pantech and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 937 patent; 8. A permanent injunction preventing Pantech and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and 37
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those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 131 patent; 11. A permanent injunction preventing Pantech and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 572 patent; 13. A judgment that Pantechs infringement of the 937, 298, 973, 131,
591, and 572 Patents has been willful; 14. A ruling that this case be found to be exceptional under 35 U.S.C. 285,
and a judgment awarding Rockstar and MobileStar to its attorneys fees incurred in prosecuting this action; 15. A judgment and order requiring Pantech to pay Rockstar and MobileStar
damages under 35 U.S.C. 284, including supplemental damages for any continuing post-verdict infringement up until entry of the final judgment, with an accounting, as needed, and treble damages for willful infringement as provided by 35 U.S.C. 284; 16. A judgment and order requiring Pantech to pay Rockstar and MobileStar
the costs of this action (including all disbursements); 17. A judgment and order requiring Pantech to pay Rockstar and MobileStar
pre-judgment and post-judgment interest on the damages awarded; 38

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18.
A judgment and order requiring that in the event a permanent injunction
39
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40
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EXHIBIT F
ROCKSTAR CONSORTIUM US LP, AND MOBILESTAR TECHNOLOGIES LLC PLAINTIFFS v. Civil Action No. 2:13-cv-900 SAMSUNG ELECTRONICS CO., LTD, JURY TRIAL REQUESTED SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG TELECOMMUNICATIONS AMERICA, LLC DEFENDANTS. PLAINTIFFS ROCKSTAR CONSORTIUM US LP AND MOBILESTAR TECHNOLOGIES LLCS ORIGINAL COMPLAINT Plaintiffs Rockstar Consortium US LP (Rockstar) and MobileStar Technologies LLC (MobileStar) file this Original Complaint for patent infringement under 35 U.S.C. 271 and in support thereof would respectfully show the Court the following: PARTIES 1. Plaintiff Rockstar Consortium US LP (Rockstar) is a limited partnership
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3.
Upon information and belief, Defendant Samsung Electronics Co., Ltd.
(SEC) is a corporation organized and existing under the laws of the Republic of Korea with its principal place of business at 416, Maetan 3-dong, Yeongtong-gu, Suwon-si, Gyeonggi-do 443-742, South Korea. 4. Upon information and belief, Defendant Samsung Electronics America,
Inc. (SEA) is a subsidiary of SEC and is a corporation organized and existing under the laws of the State of New York. Samsung Electronics America, Inc. maintains its
principal place of business at 85 Challenger Road, Ridgefield Park, NJ 07660. 5. Upon information and belief, Defendant Samsung Telecommunications
America, LLC is a subsidiary of SEC and is a limited liability company organized and existing under the laws of the state of Delaware with its principal place of business at 1301 East Lookout Drive, Richardson TX 75082. JURISDICTION AND VENUE 6. This is an action for patent infringement under the Patent Laws of the
United States, 35 U.S.C. 271. This Court has exclusive subject matter jurisdiction over this case for patent infringement under 28 U.S.C. 1338. 7. 8. Venue is proper in this Court pursuant to 28 U S.C. 1391 and 1400(b). This Court has personal jurisdiction over Defendants Samsung Electronics
Co., Ltd, Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively, Samsung). Samsung has conducted and does conduct business within the State of Texas. Samsung, directly or through subsidiaries or
intermediaries (including distributors, retailers, and others), ships, distributes, offers for sale, sells, and advertises (including the provision of an interactive web page) its products 2
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(including its infringing products) and/or services in the United States, the State of Texas, and the Eastern District of Texas. Samsung, directly and through subsidiaries or
intermediaries (including distributors, retailers, and others), has purposefully and voluntarily placed one or more of its infringing products and/or services, as described below, into the stream of commerce with the expectation that they will be purchased and used by consumers in the Eastern District of Texas. These infringing products and/or services have been and continue to be purchased and used by consumers in the Eastern District of Texas. Samsung has committed acts of patent infringement within the State of Texas and, more particularly, within the Eastern District of Texas. ASSERTED PATENTS 9. On November 17, 1998, U.S. Patent No. 5,838,551 (the 551 Patent)
entitled Electronic Package Carrying an Electronic Component and Assembly of Mother Board and Electronic Package was duly and legally issued with Yee-Ning Chan as the named inventor after full and fair examination. Rockstar owns all rights, title, and interest in and to the 551 Patent and possesses all rights of recovery under the 551 Patent. MobileStar is the exclusive licensee of the 551 Patent. 10. On March 14, 2000, U.S. Patent No. 6,037,937 (the 937 Patent) entitled
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Wootton and William G. Colvin as the named inventors after full and fair examination. Rockstar owns all rights, title, and interest in and to the 298 Patent and possesses all rights of recovery under the 298 Patent. MobileStar is the exclusive licensee of the 298 Patent. 12. On December 25, 2001, U.S. Patent No. 6,333,973 (the 973 Patent)
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examination. Rockstar owns all rights, title, and interest in and to the 572 Patent and possesses all rights of recovery under the 572 Patent. GENERAL ALLEGATIONS 16. Samsung has directly and indirectly infringed and continues to directly
and indirectly infringe each of the 551, 937, 298, 973, 131, 591, and 572 Patents by engaging in acts constituting infringement under 35 U.S.C. 271(a), (b), (c), and/or (f), including but not necessarily limited to one or more of making, using, selling and offering to sell, in this District and elsewhere in the United States, and importing into this District and elsewhere in the United States, certain mobile communication devices having a version (or an adaption thereof) of Android operating system (Samsung Mobile Communication Devices). 17. Samsung is doing business in the United States and, more particularly, in
the Eastern District of Texas by making, using, selling, importing, and/or offering for sale Samsung Mobile Communication Devices, including but not limited to Samsungs Galaxy family of smart phones, including the Galaxy S III and Captivate (Galaxy S), and its Galaxy family of tablets, including the Galaxy Tab 8.9, and other products that infringe the patent claims involved in this action or by transacting other business in this District. COUNT ONE PATENT INFRINGEMENT BY SAMSUNG 18. Plaintiffs incorporate by reference paragraphs 1-17 as if fully set forth
herein. As described below, Samsung has infringed and/or continues to infringe the 551, 937, 298, 973, 131, 591, and 572 Patents.
5
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19.
At least the Samsung Mobile Communication Devices infringe at least
claim 1 of the 551 Patent. Samsung makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these products and thus directly infringes one or more claims of the 551 Patent, including at least claim 1. 20. Samsung indirectly infringes the 551 patent by inducing infringement by
others, such as resellers, of at least claim 1 in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of the Samsung Mobile Communication Devices. Samsung had actual notice of the 551 Patent at least by October 15, 2012, in view of a Rockstar communication to Samsung, and also received knowledge as of the date this lawsuit was filed. 21. Samsungs affirmative acts of selling Samsung Mobile Communication
Devices, causing the Samsung Mobile Communication Devices to be manufactured and distributed, and providing instruction manuals for Samsung Mobile Communication Devices induced Samsungs manufacturers and resellers to make or use Samsung Mobile Communication Devices in their normal and customary way to infringe the 551 patent. Through its manufacture and sales of Samsung Mobile Communication Devices, Samsung specifically intended its resellers and manufacturers to infringe the 551 patent; further, Samsung was aware that these normal and customary activities would infringe the 551 patent. Samsung performed the acts that constitute induced infringement, and would induce actual infringement, with the knowledge of the 551 patent and with the knowledge or willful blindness that the induced acts would constitute infringement.
6
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22.
Accordingly, a reasonable inference is that Samsung specifically intends
for others, such as resellers and end-use customers, to directly infringe one or more claims of the 551 Patent in the United States because Samsung has knowledge of the 551 Patent and Samsung actually induces others, such as resellers and end-use customers, to directly infringe the 551 patent, by using, selling, exporting, supplying and/or distributing, within the United States, Samsung Mobile Communication Devices for resale to others, such as resellers and end-use customers. Samsung knew or should have known that such actions would induce actual infringement. 23. Samsung indirectly infringes the 551 Patent by contributing to
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Samsung Mobile Communication Devices. Samsung had actual notice of the 551 Patent at least by October 15, 2012, in view of a Rockstar communication to Samsung, and also received knowledge as of the date this lawsuit was filed. 24. Samsung Mobile Communication Devices include at least one electronic
package comprising a component that is located between an EMI shield and a ground member for performing shielding operations. The EMI shield is incorporated into the electronic package, which is then mounted to a circuit board in Samsung Mobile Communication Devices, and on information and belief, the electronic component does not function in an acceptable manner absent the EMI shielding. Furthermore, the
electronic package incorporating the EMI shield does not operate in isolation, but is designed to operate within the Mobile Communication Device, and absent the EMI 7
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shielding of the electronic component, Samsung Mobile Communication Devices would not function in an acceptable manner. 25. A reasonable inference to be drawn from the facts set forth is that the EMI
shielded electronic package in Samsung Mobile Communication Devices is especially made or especially adapted to operate in a Samsung Mobile Communication Device as an EMI shield. 26. A reasonable inference to be drawn from the facts set forth is that the EMI
shielded electronic package is not a staple article or commodity of commerce and that the use of the EMI shielded electronic package is required for operation of Samsung Mobile Communication Devices. Any other use would be unusual, far-fetched, illusory,
impractical, occasional, aberrant, or experimental. 27. The EMI shielded electronic package in Samsung Mobile Communication
Devices are each a material part of the invention of the 551 patent and are especially made for the infringing manufacture, sale, and use of Samsung Mobile Communication Devices. Samsung Mobile Communication Devices, including the EMI shielded
electronic package, are especially made or adapted as an electronic package that infringes the 551 patent. Because the sales and manufacture of Samsung Mobile Communication Devices including the EMI shielded electronic package infringe the 551 patent, Samsungs sales of its infringing products have no substantial non-infringing uses. 28. Accordingly, a reasonable inference is that Samsung offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or 8
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especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. Samsung provides to others Samsung Mobile Communication Devices with distinct and separate components, including hardware components, which have no substantial non-infringing use. 29. At least Samsung Mobile Communication Devices with an operating
system configured and installed by Samsung to support Gallery, Email, Maps and Browser functionality, infringe at least claim 13 of the 937 Patent. Samsung makes, uses, tests, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claim 13 of the 937 Patent. 30. Samsung indirectly infringes the 937 patent by inducing infringement by
others of at least claim 13, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the Samsung Mobile Communication Devices. Samsung received actual notice of the 937 Patent at least by September 3, 2009 from a communication from Rockstar, and/or its predecessors-ininterest, to Samsung, and also received knowledge as of the date this lawsuit was filed. 31. Samsungs affirmative acts of selling Samsung Mobile Communication
Devices, causing the Samsung Mobile Communication Devices to be manufactured, and providing instruction manuals for Samsung Mobile Communication Devices induced Samsungs manufacturers and resellers to make or use the Samsung Mobile Communication Devices in their normal and customary way to infringe the 937 patent. 9
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Through its manufacture and sales of Samsung Mobile Communication Devices, Samsung specifically intended its resellers and manufacturers to infringe the 937 patent; further, Samsung was aware that these normal and customary activities would infringe the 937 patent. Samsung performed the acts that constitute induced infringement, and would induce actual infringement, with knowledge of the 937 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 32. Accordingly, a reasonable inference is that Samsung specifically intends
for others, such as resellers and end-use customers, to directly infringe one or more claims of the 937 patent in the United States because Samsung has knowledge of the 937 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, Samsung Communication Devices for resale to others, such as resellers and end-use customers. Samsung knew or should have known that such actions would induce actual infringement. 33. The use of at least Samsung Mobile Communication Devices with an
operating system configured and installed by Samsung to support Gallery, Email, Maps and Browser functionality as intended by Samsung infringes at least method claim 1 of the 937 Patent. Samsung uses these products and thus directly infringes at least method claim 1 of the 937 Patent. 34. In addition, Samsung provides at least Samsung Mobile Communication
Devices with an operating system configured and installed by Samsung to support Gallery, Email, Maps, and Browser functionality to others, such as resellers and end-use
10
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customers, in the United States who, in turn, use these products to infringe at least method claim 1 of the 937 Patent. 35. Samsung indirectly infringes the 937 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the Samsung Mobile Communication Devices. Samsung received actual notice of the 937 Patent at least by September 3, 2009 in view of a communication from Rockstar, and/or its predecessors-in-interest, to Samsung, and also received knowledge as of the date this lawsuit was filed. 36. Samsung provides at least Samsung Mobile Communication Devices with
an operating system configured and installed by Samsung to support Gallery, Email, Maps and Browser functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe the 937 Patent. Through its manufacture and sales of Samsung Mobile Communication Devices, Samsung specifically intended its resellers and manufacturers to infringe the 937 patent. 37. Samsung specifically intends for others, such as resellers and end-use
customers, to directly infringe one or more claims of the 937 Patent in the United States. For example, Samsung provides instructions to resellers and end-use customers regarding the use and operation of Samsungs products in an infringing way. Such instructions include at least Samsung Captivate Mobile Phone User Manual (available at http://downloadcenter.samsung.com/content/UM/201201/20120117231631844/ATT_i89 7_Captivate_English_User_Manual.pdf). When resellers and end-use customers follow 11
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such instructions, they directly infringe the 937 Patent.
Samsung knows that by
providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 937 Patent. Samsung thus knows that its actions induce the infringement. 38. Samsung performed the acts that constitute induced infringement, and
would induce actual infringement, with knowledge of the 937 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 39. Samsung indirectly infringes the 937 patent, by contributing to
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Samsung Mobile Communication Devices. Samsung received actual notice of the 937 Patent at least by September 3, 2009 in view of a communication from Rockstar and/or its predecessors-in-interest to Samsung, and also received knowledge as of the date this lawsuit was filed. 40. Samsung Mobile Communication Devices include functionality that, inter
alia, displays a navigable graphical user interface (navigable GUI) that permits a user to manipulate and control the contents of the display to maximize the use of display real estate. This navigable GUI is included in Samsung Mobile Communication Devices with an operating system configured and installed by Samsung to support at least the Gallery, Email, Maps, and Browser functionalities. On information and belief, these
functionalities cannot operate in an acceptable manner absent the navigable GUI, as it is included in every Samsung Mobile Communication Device. 12
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41.
navigable GUI as included in Samsung Mobile Communication Devices is especially made or especially adapted to operate on a Samsung Mobile Communication Device as a navigable GUI that permits a user to manipulate or control the contents of the display to maximize the use of display real estate on the users Samsung Mobile Communication Devices. 42. A reasonable inference to be drawn from the facts set forth is that the
navigable GUI as included in the Mobile Communication Device is not a staple article or commodity of commerce and that the use of the navigable GUI in Samsung Mobile Communication Devices is required for the operation of Samsung Mobile Communication Devices. Any other use would be unusual, far-fetched, illusory,
impractical, occasional, aberrant, or experimental. 43. Samsung Mobile Communication Devices with the navigable GUI are
each a material part of the invention of the 937 patent and are especially made for the infringing manufacture, sale, and use of Samsung Mobile Communication Devices. Samsung Mobile Communication Devices with the navigable GUI are especially made or adapted as a navigable GUI that infringes the 937 patent. Because the sales and
manufacture of Samsung Mobile Communication Devices with a navigable GUI infringes the 937 patent, Samsungs sales of its infringing products have no substantial noninfringing uses. 44. Accordingly, a reasonable inference is that Samsung offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing the 937 patent, 13
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constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. Samsung provides to others, Samsung Mobile Communication Devices with distinct and separate components, including software components, which have no substantial non-infringing use. 45. At least Samsung Mobile Communication Devices with an operating
system configured and installed by Samsung to support the Mobile Hotspot functionality infringe at least claims 27 and 31 of the 298 Patent. Samsung makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claims 27 and 31 of the 298 Patent. 46. Samsung indirectly infringes the 298 patent by inducing infringement by
others of at least claims 27 and 31, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the Samsung Mobile Communication Devices. Samsung received actual notice of the 298 Patent at least by July 29, 2012 from a communication from Rockstar, and/or its predecessors-in-interest, to Samsung, and also received knowledge as of the date this lawsuit was filed. 47. Samsungs affirmative acts of selling Samsung Mobile Communication
Devices, causing the Samsung Mobile Communication Devices to be manufactured, and providing instruction manuals for Samsung Mobile Communication Devices induced Samsungs manufacturers and resellers to make or use the Samsung Mobile 14
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Communication Devices in their normal and customary way to infringe the 298 patent. Through its manufacture and sales of Samsung Mobile Communication Devices, Samsung specifically intended its resellers and manufacturers to infringe the 298 patent; further, Samsung was aware that these normal and customary activities would infringe the 298 patent. Samsung performed the acts that constitute induced infringement, and would induce actual infringement, with knowledge of the 298 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 48. Accordingly, a reasonable inference is that Samsung specifically intends
for others, such as resellers and end-use customers, to directly infringe one or more claims of the 298 patent in the United States because Samsung has knowledge of the 298 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, Samsung Communication Devices for resale to others, such as resellers and end-use customers. Samsung knew or should have known that such actions would induce actual infringement. 49. The use of at least Samsung Mobile Communication Devices that support
the Mobile Hotspot functionality as intended by Samsung infringes at least method claims 14 and 24 of the 298 Patent. Samsung uses these products and thus directly infringes at least method claims 14 and 24 of the 298 Patent. 50. In addition, Samsung provides at least Samsung Mobile Communication
Devices that support the Mobile Hotspot functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claims 14 and 24 of the 298 Patent. 15
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51.
Samsung indirectly infringes the 298 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities of the manufacturers, resellers, and end-users of Samsung Mobile Communication Devices in their intended use, including a customers use of the Mobile Hotspot functionality. Samsung received actual notice of the 298 Patent at least by July 29, 2012 from a Rockstar communication to Samsung, and also received knowledge as of the date this lawsuit was filed. 52. Samsungs affirmative acts of selling its Samsung Mobile Communication
Devices and providing instruction manuals induced the end-users of Samsung Mobile Communication Devices to use Samsung Mobile Communication Devices in their normal and customary way to infringe the 298 patent at least through using Mobile Hotspot functionality. Manual Samsung also provides instructions, including at least Verizon User Galaxy S III available on Samsungs website at
Samsung
http://www.samsung.com/us/support/owners/product/SCH-I535MBCVZW, for using the Mobile Hotspot functionality. Through its sales of Samsung Mobile Communication Devices with Mobile Hotspot functionality, Samsung specifically intended the end-users of Samsung Mobile Communication Devices to infringe the 298 patent; further, Samsung was aware that the normal and customary use of Mobile Hotspot functionality would infringe the 298 patent. Samsung also enticed its end-users to use the Mobile Hotspot functionality by providing instruction manuals and also providing Mobile Hotspot functionality. Samsung performed the acts that constituted induced
infringement, and would induce actual infringement, with the knowledge of the 298 16
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patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 53. Accordingly, a reasonable inference is that Samsung actively induces
infringement of the 298 Patent by others, such as resellers and end-use customers. Samsung specifically intends for others, including such as resellers and end-use customers, to directly infringe one or more claims of the 298 Patent in the United States because Samsung had knowledge of the 298 Patent, and Samsung actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of Samsung Mobile Communication Devices in an infringing way. Such instructions include at least Verizon User Manual Samsung Galaxy S III available at http://www.samsung.com/us/support/owners/product/SCH-I535MBCVZW. When
resellers and end-use customers follow such instructions, they directly infringe the 298 Patent. Samsung knows that by providing such instructions, resellers and end-use
customers follow those instructions, and directly infringe the 298 Patent. Samsung thus knows that its actions induce the infringement. 54. Samsung indirectly infringes the 298 Patent by contributing to
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Samsung Mobile Communication Devices in their intended use, including a customers use of the Mobile Hotspot functionality. Samsung received actual notice of the 298 Patent at least by July 29, 2012 from a Rockstar communication to Samsung, and also received knowledge as of the date this lawsuit was filed. 17
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55.
Samsung Mobile Communication Devices with the Mobile Hotspot
functionality allow wireless devices from a first, or private, network to connect to a second, or public, network such as the Internet. The Mobile Hotspot functionality is designed to route data packets between wireless devices tethered to the Mobile Hotspot to nodes on a public network such as the Internet, and cannot function in a manner that does not utilize the Mobile Hotspot functionality available to Samsung Mobile Communication Devices. Upon information and belief, the Mobile Hotspot functionality is designed to entice a user to access nodes in a second, or public, network such as the Internet. 56. A reasonable inference to be drawn from the facts set forth is that the
Mobile Hotspot functionality is not a staple article or commodity of commerce and that the use of the Mobile Hotspot functionality of Samsung Mobile Communication Devices is for interfacing first and second data communications networks, e.g., a private network and a public network such as the Internet. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 58. Samsung Mobile Communication Devices with Mobile Hotspot
functionality are each a material part of the 298 patent and especially made for the infringing use of the Mobile Hotspot functionality for interfacing private and public data communication networks. Samsung Mobile Communication Devices with the Mobile 18
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Hotspot functionality are especially made or adapted to provide access for wireless devices in a first, or private, network through the Mobile Communication Device, to nodes in a second, or public, network that perform or facilitate performance of the steps that infringe the 298 patent. Furthermore, Samsung provides user manuals describing the uses of Samsung Mobile Communication Devices that infringe the 298 patent. Because the sales and manufacture of Samsung Mobile Communication Devices with Mobile Hotspot functionality infringes the 298 patent, Samsungs sales of its infringement products have no substantial non-infringing uses. 59. Accordingly, a reasonable inference is that Samsung offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. Samsung provides to others, Samsung Mobile Communication Devices with an operating system configured and installed by Samsung to support Mobile Hotspot functionality. Samsung installs and configures Samsung Mobile Communication Devices with distinct and separate components, including software components, which are used only to perform the infringing method claims. 60. At least Samsung Mobile Communication Devices with an operating
system configured and installed by Samsung to support an integrated notification message center functionality infringe at least claims 1 and 21 of the 973 Patent. Samsung makes, uses, sells, tests, uses, offers for sale, imports, exports, supplies and/or 19
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distributes within the United States these devices and thus directly infringes one or more claims of the 973 patent, including at least claims 1 and 21. 61. Samsung indirectly infringes the 973 patent by inducing infringement by
others, such as resellers, of at least claims 1 and 21 in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the Samsung Mobile Communication Devices. Samsung received actual notice of the 973 Patent at least by March 12, 2012 from a communication from Rockstar, and/or its predecessors-in-interest, to Samsung, and also received knowledge as of the date this lawsuit was filed. 62. Samsungs affirmative acts of selling Samsung Mobile Communication
Devices, causing the Samsung Mobile Communication Devices to be manufactured, and providing instruction manuals for Samsung Mobile Communication Devices induced Samsungs manufacturers and resellers to make or use the Samsung Mobile Communication Devices in their normal and customary way to infringe the 973 patent. Through its manufacture and sales of Samsung Mobile Communication Devices, Samsung specifically intended its resellers and manufacturers to infringe the 973 patent; further, Samsung was aware that these normal and customary activities would infringe the 973 patent. Samsung performed the acts that constitute induced infringement, and would induce actual infringement, with knowledge of the 973 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 63. Accordingly, a reasonable inference is that Samsung specifically intends
for others, such as resellers and end-use customers, to directly infringe one or more 20
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claims of the 973 patent in the United States because Samsung has knowledge of the 973 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, Samsung Communication Devices for resale to others, such as resellers and end-use customers. Samsung knew or should have known that such actions would induce actual infringement. 64. The use of at least Samsung Mobile Communication Devices with an
operating system configured and installed by Samsung to support an integrated notification message center functionality as intended by Samsung infringes at least method claim 8 of the 973 Patent. Samsung uses these devices within the United States and thus directly infringes one or more claims of the 973 patent, including at least claim 8. 65. Samsung indirectly infringes the 973 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Samsung Mobile Communication Devices. Samsung received actual notice of the 973 Patent at least by March 12, 2012 in view of a Rockstar communication to Samsung, and also received knowledge as of the date this lawsuit was filed. 66. Samsung provides at least Samsung Mobile Communication Devices with
an operating system configured and installed by Samsung to support integrated notification message center functionality to others, such as resellers and end-use customers, in the United States who, in turn, use Samsung Mobile Communication 21
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Devices to infringe at least method claim 8 of the 973 Patent. Through its manufacture and sales of Samsung Mobile Communication Devices, Samsung specifically intended its resellers and manufacturers to infringe the 973 patent. 67. Samsung specifically intends for others, such as resellers and end-use
customers, to directly infringe one or more claims of the 973 Patent in the United States. For example, Samsung provides instructions to resellers and end-use customers regarding the use and operation of Samsung Mobile Communication Devices in an infringing way. Such instructions include at least Samsung Captivate Mobile Phone User Manual (available at
http://downloadcenter.samsung.com/content/UM/201201/20120117231631844/ATT_i89 7_Captivate_English_User_Manual.pdf, accessed October 30, 2013). When resellers and end-use customers follow such instructions, they directly infringe the 973 Patent. Samsung knows that by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 973 Patent. Samsung thus knows that its actions induce the infringement. 68. Samsung performed the acts that constitute induced infringement, and
would induce actual infringement, with the knowledge of the 973 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 69. Samsung indirectly infringes the 973 patent, by contributing to
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Samsung Mobile Communication Devices. Samsung received actual notice of the 973 22
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Patent at least by March 12, 2012 from a Rockstar communication to Samsung, and also received knowledge as of the date this lawsuit was filed. 70. Samsung Mobile Communication Devices include functionality that, inter
alia, displays an integrated notification message center contained in a single list. The notification message center is designed to provide a user with a single list of notifications regardless of the types of messages (e.g., email, text, etc) on the users Mobile Communication Device. On information and belief, this functionality cannot operate in an acceptable manner absent the integrated notification message center, as it is included in every Samsung Mobile Communication Device. 71. A reasonable inference to be drawn from the facts set forth is that the
integrated message center in Samsung Mobile Communication Devices is especially made or especially adapted to operate on a Samsung Mobile Communication Device as an integrated notification message center that provides a user with notifications concerning different types of messages on the users Mobile Communication Device. 72. A reasonable inference to be drawn from the facts set forth is that the
integrated notification message center in the Mobile Communication Device is not a staple article or commodity of commerce and that the use of the integrated notification message center in Samsung Mobile Communication Devices is required for operation of Samsung Mobile Communication Devices. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 73. Samsung Mobile Communication Devices with the integrated notification
message center are each a material part of the invention of the 973 patent and are especially made for the infringing manufacture, sale, and use of Samsung Mobile 23
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Communication Devices.
Samsung Mobile Communication Devices, including the
manufacture of Samsung Mobile Communication Devices with an integrated notification message center infringes the 973 patent, Samsungs sales of its infringing products have no substantial non-infringing uses. 74. Accordingly, a reasonable inference is that Samsung offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. Samsung provides to others, Samsung Mobile Communication Devices with distinct and separate components, including software components, which have no substantial non-infringing use. 75. At least Samsung Mobile Communication Devices with an operating
system configured and installed by Samsung to support Message and Notification functionality infringe at least claim 1 of the 131 Patent. Samsung makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claim 1 of the 131 Patent. 76. Samsung indirectly infringes the 131 patent by inducing infringement by
others, such as resellers, of at least claim 1 in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities 24
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performed by the manufacturers, resellers, and end-users of the Samsung Mobile Communication Devices. Samsung received actual notice of the 131 Patent at least by November 30, 2012 from a communication from Rockstar, and/or its predecessors-ininterest, to Samsung, and also received knowledge as of the date this lawsuit was filed. 77. Samsungs affirmative acts of selling Samsung Mobile Communication
for others, such as resellers and end-use customers, to directly infringe one or more claims of the 131 patent in the United States because Samsung has knowledge of the 131 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, Samsung Communication Devices for resale to others, such as resellers and end-use customers. Samsung knew or should have known that such actions would induce actual infringement. 25
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79.
The use of at least Samsung Mobile Communication Devices with an
operating system configured and installed by Samsung to support Message and Notification functionality as intended by Samsung infringes at least method claim 5 of the 131 Patent. Samsung uses these products and thus directly infringes at least method claim 5 of the 131 Patent. 80. In addition, Samsung provides at least Samsung Mobile Communication
Devices with an operating system configured and installed by Samsung to support Message functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claim 5 of the 131 Patent. 81. Samsung indirectly infringes the 131 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Samsung Mobile Communication Devices in their intended use, including a customers use of the Message and Notifications functionality. Samsung received actual notice of the 131 Patent at least by November 30, 2012 in view of a Rockstar communication to Samsung, and also received knowledge as of the date this lawsuit was filed. 82. Samsungs affirmative acts of selling Samsung Mobile Communication
Devices and providing instruction manuals induced the end-users of Samsung Mobile Communication Devices to use Samsung Mobile Communication Devices in their normal and customary way to infringe the 131 patent at least through using Message and Notifications functionality. Samsung also provides instructions, including at least 26
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Verizon Samsung Galaxy S III User Guide available on Samsungs website at http://www.samsung.com/us/support/owners/product/SCH-I535MBCVZW, for using the Messaging and Notifications functionality. Through its sales of Mobile Communication Devices with Messaging and Notifications functionality, Samsung specifically intended the end-users of Samsung Mobile Communication Devices to infringe the 131 patent; further, Samsung was aware that the normal and customary use of the Message and Notifications functionality would infringe the 131 patent. Samsung also enticed its endusers to use the Messaging and Notifications functionality by providing instruction manuals. Samsung performed the acts that constituted induced infringement, and would induce actual infringement, with the knowledge of the 131 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 83. Accordingly, a reasonable inference is that Samsung actively induces
infringement of the 131 Patent by others, such as resellers and end-use customers. Samsung specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 131 Patent in the United States because Samsung had knowledge of the 131 Patent, and Samsung actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of Samsung Mobile Communication Devices in an infringing way. Such
instructions include at least Verizon Samsung Galaxy S III User Guide available at http://www.samsung.com/us/support/owners/product/SCH-I535MBCVZW. When
27
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infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Samsung Mobile Communication Devices in their intended use, including a customers use of the Messaging and Notification functionality. Samsung received actual notice of the 131 Patent at least by November 30, 2012 in view of a Rockstar communication to Samsung, and also received knowledge as of the date this lawsuit was filed. 85. Samsungs Message and Notification functionality receives and displays
message of different types, such as a phone call, voice mail, text message, or email. The Message and Notification Services functionality is designed to notify the user of an incoming communication and to select the format of the message received and cannot function in a manner that does not utilize the messaging functionality available to Samsung Mobile Communication Devices. Upon information and belief, the Message and Notifications functionality is designed to entice a user to receive notifications of an incoming communication. 86. A reasonable inference to be drawn from the facts set forth is that the
Message and Notifications functionality especially made or especially adapted to operate on Samsung Mobile Communication Devices for notifying a user of an incoming communication.
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87.
Message and Notifications functionality is not a staple article or commodity of commerce and that the use of the Messaging and Notifications functionality of the Samsung Mobile Communication Devices is for notifying a user of an incoming communication. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 88. Samsung Mobile Communication Devices with Messaging and
Notifications functionality are each a material part of the 131 patent and especially made for the infringing use of the Messaging and Notification functionality to receive and display messages. Samsung Mobile Communication Devices including the Messaging and Notification functionality, are especially made or adapted to notify a user of an incoming communication that perform or facilitate performance of the steps that infringe the 131 patent. Furthermore, Samsung provides user manuals describing the uses of its Mobile Communication Devices that infringe the 131 patent. Because the functionality provided by Samsungs Messaging and Notification to notify a user of an incoming communication infringes the 131 patent, Samsungs sales of its infringing products have no substantial non-infringing uses. 89. Accordingly, a reasonable inference is that Samsung offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. Samsung provides 29
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to others, Mobile Communication Devices with an operating system configured and installed by Samsung to support Message and Notification functionality. Samsung
installs and configures on these products distinct and separate components, including software components, which are used only to perform the infringing method claims. 90. At least Samsung Mobile Communication Devices with an operating
system configured and installed by Samsung to support VPN management functionality, including the Samsung Galaxy S III, infringe at least claims 1 and 8 of the 591 Patent. Samsung makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claims 1 and 8 of the 591 Patent. 91. The use of at least Samsung Mobile Communication Devices with an
operating system configured and installed by Samsung to support VPN management functionality as specified and intended by Samsung infringes at least claims 1 and 8 of the 591 Patent. Samsung uses these products and thus directly infringes at least claims 1 and 8 of the 591 Patent. 92. Samsung indirectly infringes the 591 patent by inducing infringement by
others, such as resellers, of at least claims 1 and 8 in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the Samsung Mobile Communication Devices. Samsung received actual notice of the 591 Patent at least by October 15, 2012 from a communication from Rockstar, and/or its predecessorsin-interest, to Samsung, and also received knowledge as of the date this lawsuit was filed.
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93.
Samsungs affirmative acts of selling Samsung Mobile Communication
for others, such as resellers and end-use customers, to directly infringe one or more claims of the 591 patent in the United States because Samsung has knowledge of the 591 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, Samsung Communication Devices for resale to others, such as resellers and end-use customers. Samsung knew or should have known that such actions would induce actual infringement. 95. In addition, Samsung provides at least its Mobile Communication Devices
with an operating system configured and installed by Samsung to support VPN management functionality to others, such as resellers and end-use customers, in the
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United States who, in turn, use these products to infringe at least claims 1 and 8 of the 591 Patent. 96. Samsung indirectly infringes the 591 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Samsung Mobile Communication Devices in their intended use, including a customers use of the VPN management functionality. Samsung received actual notice of the 591 Patent at least by October 15, 2012 from a Rockstar communication to Samsung, and also received knowledge as of the date this lawsuit was filed. 97. Samsungs affirmative acts of selling its Mobile Communication Devices
and providing instruction manuals induced the end-users of Samsung Mobile Communication Devices to use Samsung Mobile Communication Devices in their normal and customary way to infringe the 591 patent at least through using VPN management functionality. Samsung also provides instructions, including at least Verizon Samsung Galaxy S III User Manual available on Samsungs website at
http://www.samsung.com/us/support/owners/product/SCH-I535MBCVZW, for using the VPN management functionality. Through its sales of Samsung Mobile Communication Devices with VPN management functionality, Samsung specifically intended the endusers of Samsung Mobile Communication Devices to infringe the 591 patent; further, Samsung was aware that the normal and customary use of VPN management functionality would infringe the 591 patent. Samsung also enticed its end-users to use the VPN management functionality by providing instruction manuals. 32
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Samsung
performed the acts that constituted induced infringement, and would induce actual infringement, with the knowledge of the 591 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 98. Accordingly, it is a reasonable inference that Samsung actively induces
infringement of the 591 Patent by others, such as resellers and end-use customers. Samsung specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 591 Patent in the United States because Samsung had knowledge of the 591 Patent, and Samsung actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of Samsungs products in an infringing way. Such instructions include at least Verizon Samsung Galaxy S III User Manual available on Samsungs website at http://www.samsung.com/us/support/owners/product/SCH-I535MBCVZW. When
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Samsung Mobile Communication Devices in their intended use, including a customers use of the VPN management functionality. Samsung received actual notice of the 591
33
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Patent at least by October 15, 2012 in view of a Rockstar communication to Samsung, and also received knowledge as of the date this lawsuit was filed. 100. Samsungs VPN management functionality facilitates management of
VPNs. The VPN management functionality is designed for management of VPNs and cannot function in a manner that does not utilize the VPN management functionality available to Samsung Mobile Communication Devices. The VPN management
functionality is designed upon information and belief to entice a user to manage VPNs. 101. A reasonable inference to be drawn from the facts set forth is that the VPN
functionality is especially made or especially adapted to operate on Samsung Mobile Communication Devices for providing VPN management functionality. 102. A reasonable inference to be drawn from the facts set forth is that the VPN
management functionality is not a staple article or commodity of commerce and that the use of the VPN management functionality of Samsung Mobile Communication Devices is for managing VPNs. Any other use would be unusual, far-fetched, illusory,
impractical, occasional, aberrant, or experimental. 103. Samsung Mobile Communication Devices with VPN management
functionality are each a material part of the invention of the 591 patent and especially made for the infringing use of the VPN functionality to receive call trace information. Samsung Mobile Communication Devices including the VPN management functionality, are especially made or adapted to provide VPN management functionality that perform or facilitate performance of the steps that infringe the 591 patent. Furthermore, Samsung provides user manuals describing the uses of its Mobile Communication Devices that infringe the 591 patent. Because the functionality provided by Samsungs VPN 34
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management functionality infringes the 591 patent, Samsungs sales of its infringing Mobile Communication Devices have no substantial non-infringing uses. 104. Accordingly, a reasonable inference is that Samsung offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. Samsung provides to others, Mobile Communication Devices with an operating system configured and installed by Samsung to support VPN management functionality. Samsung installs and configures on these products distinct and separate components, including software components, which are used only to infringe the 591 Patent. 105. The use of at least Samsung Mobile Communication Devices with an
operating system configured and installed by Samsung to support Location Services functionality, as intended by Samsung infringes at least method claim 17 of the 572 Patent. Samsung uses these Mobile Communication Devices and thus directly infringes at least method claim 17 of the 572 Patent. 106. In addition, Samsung provides at least its Mobile Communication Devices
with an operating system configured and installed by Samsung to support Location Services functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claim 17 of the 572 Patent.
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107.
Samsung indirectly infringes by inducing infringement by others, such as
performed by the manufacturers, resellers, and end-users of Samsung Mobile Communication Devices in their intended use, including a customers use of the Location Services functionality. Samsung received actual notice of the 572 Patent at least by May 2, 2012 in view of a Rockstar communication to Samsung, and also received knowledge as of the date this lawsuit was filed. 108. Samsungs affirmative acts of selling its Mobile Communication Devices
and providing instruction manuals induced the end-users of Samsung Mobile Communication Devices to use Samsung Mobile Communication Devices in their normal and customary way to infringe the 572 patent at least through using Location Services functionality. Samsung also provides instructions, including at least GT-P7300 User Manual available on Samsungs website at
http://downloadcenter.samsung.com/content/UM/201209/20120922095036620/GTP7300_UM_Open_HongKong_Icecream_Eng_Rev.1.0_120817_Screen.pdf, for using the Location Services functionality. Through its sales of Samsung Mobile
Communication Devices with Location Services functionality, Samsung specifically intended the end-users of Samsung Mobile Communication Devices to infringe the 572 patent; further, Samsung was aware that the normal and customary use of Location Services would infringe the 572 patent. Samsung also enticed its end-users to use the Location Services by providing instruction manuals. Samsung performed the acts that constituted induced infringement, and would induce actual infringement, with the 36
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knowledge of the 572 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 109. Accordingly, a reasonable inference is that Samsung actively induces
infringement of the 572 Patent by others, such as resellers and end-use customers. Samsung specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 572 Patent in the United States because Samsung had knowledge of the 572 Patent, and Samsung actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of Samsungs products in an infringing way. Such instructions include at least GT-P7300 User Manual available on Samsungs website at
http://downloadcenter.samsung.com/content/UM/201209/20120922095036620/GTP7300_UM_Open_HongKong_Icecream_Eng_Rev.1.0_120817_Screen.pdf. When
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Samsung Mobile Communication Devices in their intended use, including a customers use of the Locations Services functionality. Samsung received actual notice of the 572
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Patent at least by May 2, 2012 in view of a Rockstar communication to Samsung, and also received knowledge as of the date this lawsuit was filed. 111. Samsungs Location Services functionality provides call trace information,
i.e., a geographic location of Samsung Mobile Communication Devices. The Location Services functionality is designed to notify the user of Samsung Mobile Communication Devices of call trace information, i.e., a geographic location of the Mobile Communication Devices, and cannot function in a manner that does not utilize the Location Services functionality available to the Mobile Communication Devices. Upon information and belief, the Location Services functionality is designed to entice a user to access call trace information. 112. A reasonable inference to be drawn from the facts set forth is that the
Location Services functionality is especially made or especially adapted to operate on Samsung Mobile Communication Devices for obtaining call trace information, i.e., a geographic location of the Mobile Communication Devices. 113. A reasonable inference to be drawn from the facts set forth is that the
Location Services functionality is not a staple article or commodity of commerce and that the use of the Location Services functionality of Samsung Mobile Communication Devices is for providing call trace information. Any other use would be unusual, farfetched, illusory, impractical, occasional, aberrant, or experimental. 114. Samsung Mobile Communication Devices with Location Services
functionality are each a material part of the 572 patent and especially made for the infringing use of the Location Services functionality to receive call trace information, i.e., a geographic location of the Mobile Communication Devices. 38
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The Mobile
Communication Devices including the Location Services functionality are especially made or adapted to provide call trace information that perform or facilitate performance of the steps that infringe the 572 patent. Furthermore, Samsung provides user manuals describing the uses of its products that infringe the 572 patent. Because the functionality provided by Samsungs Location Services to obtain call trace information, i.e., a geographic location of the Mobile Communication Devices, infringes the 572 patent, Samsungs sales of its infringing products have no substantial non-infringing uses. 115. Accordingly, a reasonable inference is that Samsung offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. Samsung provides to others, Mobile Communication Devices with an operating system configured and installed by Samsung to support Location Services functionality. Samsung installs and configures on these products distinct and separate components, including software components, which are used only to perform the infringing method claims. 116. Samsungs acts of infringement have caused damage to Rockstar and
MobileStar. Rockstar and MobileStar are entitled to recover from Samsung the damages sustained by Rockstar and MobileStar as a result of Samsungs wrongful acts in an amount subject to proof at trial. In addition, the infringing acts and practices of Samsung have caused, are causing, and, unless such acts and practices are enjoined by the Court, will continue to cause immediate and irreparable harm to Rockstar and MobileStar for 39
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which there is no adequate remedy at law, and for which Rockstar and MobileStar are entitled to injunctive relief under 35 U.S.C. 283. 117. Samsung received actual notice of its infringement of the 551, 937, 298,
973, 131, 591, and 572 Patents through at least letters sent by Rockstar and/or its predecessors-in-interest, Nortel Networks Ltd. and/or Nortel Networks, Inc., to Samsung, and through meetings between employees of Rockstar and/or its predecessors-in-interest, Nortel Networks Ltd., or Nortel Networks Inc. and Samsung. Samsung also has
knowledge of its infringement of the Patents-in-Suit by way of this Complaint. 118. Samsung has willfully infringed and/or does willfully infringe the 551,
937, 298, 973, 131, 591, and 572 Patents. DEMAND FOR JURY TRIAL Rockstar and MobileStar hereby demand a jury trial for all issues so triable. PRAYER FOR RELIEF WHEREFORE, Rockstar and MobileStar pray for the following relief: 1. A judgment that Samsung has directly infringed the 551 Patent,
contributorily infringed the 551 Patent, and/or induced the infringement of the 551 Patent. 2. A judgment that Samsung has directly infringed the 937 Patent,
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4.
A judgment that Samsung has directly infringed the 973 Patent,
contributorily infringed the 572 Patent, and/or induced the infringement of the 572 Patent. 8. A permanent injunction preventing Samsung and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 551 Patent; 9. A permanent injunction preventing Samsung and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 937 patent; 10. A permanent injunction preventing Samsung and its respective officers,
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those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 298 patent; 11. A permanent injunction preventing Samsung and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 572 patent; 15. A judgment that Samsungs infringement of the 551, 937, 298, 973,
131, 591, and 572 Patents has been willful; 16. A ruling that this case be found to be exceptional under 35 U.S.C. 285,
and a judgment awarding Rockstar and MobileStar to its attorneys fees incurred in prosecuting this action; 42
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17.
A judgment and order requiring Samsung to pay Rockstar and MobileStar
damages under 35 U.S.C. 284, including supplemental damages for any continuing post-verdict infringement up until entry of the final judgment, with an accounting, as needed, and treble damages for willful infringement as provided by 35 U.S.C. 284; 18. A judgment and order requiring Samsung to pay Rockstar and MobileStar
the costs of this action (including all disbursements); 19. A judgment and order requiring Samsung to pay Rockstar and MobileStar
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44
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EXHIBIT G
ROCKSTAR CONSORTIUM US LP, AND MOBILESTAR TECHNOLOGIES LLC PLAINTIFFS v. Civil Action No. 2:13-cv-901 ZTE CORPORATION, ZTE (USA) INC., and ZTE SOLUTIONS, INC. JURY TRIAL REQUESTED DEFENDANTS. PLAINTIFFS ROCKSTAR CONSORTIUM US LP AND MOBILESTAR TECHNOLOGIES LLCS ORIGINAL COMPLAINT Plaintiffs Rockstar Consortium US LP (Rockstar) and MobileStar Technologies LLC (MobileStar) file this Original Complaint for patent infringement under 35 U.S.C. 271 and in support thereof would respectfully show the Court the following: PARTIES 1. Plaintiff Rockstar Consortium US LP (Rockstar) is a limited partnership
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3.
Upon information and belief, Defendant ZTE Corporation is a corporation
organized and existing under the laws of China with its principal place of business at ZTE Plaza, No. 55 Hi-Tech Road South, Hi-Tech Industrial Park, Nanshan District, Shenzhen, Guangdong Province 518057, China, P.R.C. 4. Upon information and belief, Defendant ZTE (USA) Inc. is a corporation
organized and existing under the laws of the State of New Jersey and maintains its principal place of business at 2425 N. Central Expy., Ste. 323, Richardson, TX 75080. 5. Upon information and belief, Defendant ZTE Solutions, Inc. is a
corporation organized and existing under the laws of the state of Delaware and maintains its principal place of business at 2425 N. Central Expy., Ste. 323, Richardson, TX 75080. JURISDICTION AND VENUE 6. This is an action for patent infringement under the Patent Laws of the
United States, 35 U.S.C. 271. This Court has exclusive subject matter jurisdiction over this case for patent infringement under 28 U.S.C. 1338. 7. 8. Venue is proper in this Court pursuant to 28 U S.C. 1391 and 1400(b). This Court has personal jurisdiction over Defendants ZTE Corporation,
ZTE (USA) Inc., and ZTE Solutions, Inc. (collectively, ZTE). ZTE has conducted and does conduct business within the State of Texas. ZTE, directly or through subsidiaries or intermediaries (including distributors, retailers, and others), ships, distributes, offers for sale, sells, and advertises (including the provision of an interactive web page) its products (including its infringing products) and/or services in the United States, the State of Texas, and the Eastern District of Texas. ZTE, directly and through subsidiaries or
intermediaries (including distributors, retailers, and others), has purposefully and 2

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voluntarily placed one or more of its infringing products and/or services, as described below, into the stream of commerce with the expectation that they will be purchased and used by consumers in the Eastern District of Texas. These infringing products and/or services have been and continue to be purchased and used by consumers in the Eastern District of Texas. ZTE has committed acts of patent infringement within the State of Texas and, more particularly, within the Eastern District of Texas. ASSERTED PATENTS 9. On March 14, 2000, U.S. Patent No. 6,037,937 (the 937 Patent) entitled
entitled Internet Protocol Filter was duly and legally issued with Bruce Anthony Wootton and William G. Colvin as the named inventors after full and fair examination. Rockstar owns all rights, title, and interest in and to the 298 Patent and possesses all rights of recovery under the 298 Patent. MobileStar is the exclusive licensee under the 298 Patent. 11. On December 25, 2001, U.S. Patent No. 6,333,973 (the 973 Patent)
entitled Integrated Message Center was duly and legally issued with Colin Donald Smith and Brian Finlay Beaton as the named inventors after full and fair examination. MobileStar owns all rights, title, and interest in and to the 973 Patent and possesses all rights of recovery under the 973 Patent. 3
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12.
On October 8, 2002, U.S. Patent No. 6,463,131 (the 131 Patent)
entitled Call Trace on a Packet Switched Network was duly and legally issued with Brian B. Egan and Milos Vodsedalek as the named inventors after full and fair examination. Rockstar owns all rights, title, and interest in and to the 572 Patent and possesses all rights of recovery under the 572 Patent.
GENERAL ALLEGATIONS 15. ZTE has directly and indirectly infringed and continues to directly and
indirectly infringe the 937, 298, 973, 131, 591, and 572 Patents by engaging in acts constituting infringement under 35 U.S.C. 271(a), (b), (c), and/or (f), including but not necessarily limited to one or more of making, using, selling and offering to sell, in this District and elsewhere in the United States, and importing into this District and elsewhere 4
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in the United States, certain mobile communication devices having a version (or an adaption thereof) of Android operating system (ZTE Mobile Communication Devices). 16. ZTE is doing business in the United States and, more particularly, in the
Eastern District of Texas by making, using, selling, importing, and/or offering for sale ZTE Mobile Communication Devices, including but not limited to ZTEs family of smart phones, including but not limited to the ZTE Score and ZTE Flash, and ZTEs family of tablets, including but not limited to the ZTE Optik, ZTEs 4G Mobile Hotspot product, and other products that infringe the patent claims involved in this action or by transacting other business in this District. COUNT ONE PATENT INFRINGEMENT BY ZTE 17. Plaintiffs incorporate by reference paragraphs 1-17 as if fully set forth
herein. As described below, ZTE has infringed and/or continues to infringe the 937, 298, 973, 131, 591, and 572 Patents. 18. At least ZTE Mobile Communication Devices, including the ZTE Score
and ZTE Optik, with an operating system configured and installed by ZTE to support Gallery, Email, Maps and Browser functionality, infringe at least claim 13 of the 937 Patent. ZTE makes, uses, tests, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claim 13 of the 937 Patent. 19. ZTE indirectly infringes the 937 patent by inducing infringement by
others of at least claim 13, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities 5
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performed by the manufacturers, resellers, and end-users of the ZTE Mobile Communication Devices. ZTE received actual notice of the 937 Patent at least by March 12, 2012 in view of a communication from Rockstar, and/or its predecessors-ininterest, to ZTE. 20. ZTEs affirmative acts of selling ZTE Mobile Communication Devices,
causing the ZTE Mobile Communication Devices to be manufactured, and providing instruction manuals for ZTE Mobile Communication Devices induced ZTEs manufacturers and resellers to make or use the ZTE Mobile Communication Devices in their normal and customary way to infringe the 937 patent. Through its manufacture and sales of ZTE Mobile Communication Devices, ZTE specifically intended its resellers and manufacturers to infringe the 937 patent; further, ZTE was aware that these normal and customary activities would infringe the 937 patent. ZTE performed the acts that
constitute induced infringement, and would induce actual infringement, with knowledge of the 937 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 21. Accordingly, a reasonable inference is that ZTE specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of the 937 patent in the United States because ZTE has knowledge of the 937 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, ZTE Communication Devices for resale to others, such as resellers and end-use customers. ZTE knew or should have known that such actions would induce actual infringement.
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22.
The use of at least ZTE Mobile Communication Devices, including the
ZTE Score and ZTE Optik, with an operating system configured and installed by ZTE to support Gallery, Email, Maps and Browser functionality as intended by ZTE infringes at least method claim 1 of the 937 Patent. ZTE uses these products and thus directly infringes at least method claim 1 of the 937 Patent. 23. In addition, ZTE provides at least ZTE Mobile Communication Devices,
including the ZTE Score and ZTE Optik, with an operating system configured and installed by ZTE to support Gallery, Email, Maps, and Browser functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claim 1 of the 937 Patent. 24. ZTE indirectly infringes the 937 patent by inducing infringement by
others of at least claim 13, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is a result of activities performed by the manufacturers, resellers, and end-users of the ZTE Mobile Communication Devices, including the ZTE Score and ZTE Optik. ZTE received actual notice of the 937 Patent at least by March 12, 2012 in view of a communication from Rockstar and/or its predecessors-in-interest to ZTE. 25. ZTE provides at least ZTE Mobile Communication Devices, including the
ZTE Score and ZTE Optik, with an operating system configured and installed by ZTE to support Gallery, Email, Maps and Browser functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe the 937 Patent. Through its manufacture and sales of ZTE Mobile Communication Devices, ZTE specifically intended its resellers and manufacturers to infringe the 937 patent. 7
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26.
ZTE specifically intends for others, such as resellers and end-use
customers, to directly infringe one or more claims of the 937 Patent in the United States. For example, ZTE provides instructions to resellers and end-use customers regarding the use and operation of ZTEs products in an infringing way. Such instructions include, for example, at least ZTE Score User Manual (available at
http://www.zteusa.com/media/wysiwyg/CricketScoreTM/Cricket_Score_TM_User_Man ual_English_-_PDF_-_968KB_.pdf) (accessed October 30, 2013) and ZTE Optik User Guide (available at http://www.zteusa.com/media/wysiwyg//ZTE-
Optik/ZTE_Optik_User_Manual_English_-_PDF_-_2.98MB_.pdf) (accessed October 30, 2013). When resellers and end-use customers follow such instructions, they directly infringe the 937 Patent. ZTE knows that by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 937 Patent. ZTE thus knows that its actions induce the infringement. 27. ZTE performed the acts that constitute induced infringement, and would
induce actual infringement, with the knowledge of the 937 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 28. ZTE indirectly infringes the 937 patent, by contributing to infringement
by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is a result of activities performed by the manufacturers, resellers, and end-users of ZTE Mobile Communication Devices, including the ZTE Score and ZTE Optik. ZTE received actual notice of the 937 Patent at least by March 12, 2012 in view of a communication from Rockstar and/or its predecessors-in-interest to ZTE. 8
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29.
ZTE Mobile Communication Devices, including the ZTE Score and ZTE
Optik, include functionality that, inter alia, displays a navigable graphical user interface (navigable GUI) that permits a user to manipulate and control the contents of the display to maximize the use of display real estate. This navigable GUI is included in ZTE Mobile Communication Devices with an operating system configured and installed by ZTE to support at least the Gallery, Email, Maps, and Browser functionalities. On information and belief, these functionalities cannot operate in an acceptable manner absent the navigable GUI, as it is included in every ZTE Mobile Communication Device. 30. A reasonable inference to be drawn from the facts set forth is that the
navigable GUI as included in ZTE Mobile Communication Devices, including the ZTE Score and ZTE Optik, is especially made or especially adapted to operate on a ZTE Mobile Communication Device as a navigable GUI that permits a user to manipulate or control the contents of the display to maximize the use of display real estate on the users ZTE Mobile Communication Devices. 31. A reasonable inference to be drawn from the facts set forth is that the
navigable GUI as included in the Mobile Communication Device is not a staple article or commodity of commerce and that the use of the navigable GUI in ZTE Mobile Communication Devices is required for the operation of ZTE Mobile Communication Devices, including the ZTE Score and ZTE Optik. Any other use would be unusual, farfetched, illusory, impractical, occasional, aberrant, or experimental. 32. ZTE Mobile Communication Devices, including the ZTE Score and ZTE
Optik, with the navigable GUI are each a material part of the invention of the 937 patent and are especially made for the infringing manufacture, sale, and use of ZTE Mobile 9
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Communication Devices. ZTE Mobile Communication Devices with the navigable GUI are especially made or adapted as a navigable GUI that infringes the 937 patent. Because the sales and manufacture of ZTE Mobile Communication Devices with a navigable GUI infringes the 937 patent, ZTEs sales of its infringing products have no substantial non-infringing uses. 33. Accordingly, a reasonable inference is that ZTE offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing the 937 patent, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. ZTE provides to others ZTE Mobile Communication Devices, including the ZTE Score and ZTE Optik, with distinct and separate components, including software components, which have no substantial non-infringing use. 34. At least ZTE Mobile Communication Devices, including the ZTE 4G
Mobile Hotspot, infringe at least claims 27 and 31 of the 298 Patent. ZTE makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claims 27 and 31 of the 298 Patent. 35. ZTE indirectly infringes the 298 patent by inducing infringement by
others, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the ZTE Mobile Communication
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Devices. ZTE received actual notice of the 298 Patent at least by October 31, 2012 in view of a communication from Rockstar, and/or its predecessors-in-interest, to ZTE. 36. ZTEs affirmative acts of selling ZTE Mobile Communication Devices,
others, such as resellers and end-use customers, to directly infringe one or more claims of the 298 patent in the United States because ZTE has knowledge of the 298 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, ZTE Communication Devices for resale to others, such as resellers and end-use customers. ZTE knew or should have known that such actions would induce actual infringement. 38. The use of at least ZTE Mobile Communication Devices, including the
ZTE 4G Mobile Hotspot, that support the Mobile Hotspot functionality as intended by
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ZTE infringes at least method claims 14 and 24 of the 298 Patent. ZTE uses these products and thus directly infringes at least method claims 14 and 24 of the 298 Patent. 39. In addition, ZTE provides at least ZTE Mobile Communication Devices,
including the ZTE 4G Mobile Hotspot, that support the Mobile Hotspot functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claims 14 and 24 of the 298 Patent. 40. ZTE indirectly infringes the 298 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is a result of activities performed by the manufacturers, resellers, and end-users of ZTE Mobile Communication Devices, including the ZTE 4G Mobile Hotspot, in their intended use, including a customers use of the Mobile Hotspot functionality. ZTE received actual notice of the 298 Patent at least by October 31, 2012 in view of a communication from Rockstar, and/or its predecessors-in-interest, to ZTE. 41. ZTEs affirmative acts of selling its ZTE Mobile Communication Devices,
including the ZTE 4G Mobile Hotspot, and providing instruction manuals induced the end-users of ZTE Mobile Communication Devices to use ZTE Mobile Communication Devices in their normal and customary way to infringe the 298 patent at least through using Mobile Hotspot functionality. ZTE also provides instructions, including at least the 4g Mobile Hotspot Manual (available on ZTEs website at
http://www.zteusa.com/media/wysiwyg/TMobile-4GMobileHotspot/TMobile_4G_Mobile_Hotspot_Start_Guide_English_-_PDF_-_461KB_.pdf) (accessed
October 30, 2013) for using the Mobile Hotspot functionality. Through its sales of ZTE 12
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Mobile Communication Devices with Mobile Hotspot functionality, ZTE specifically intended the end-users of ZTE Mobile Communication Devices to infringe the 298 patent; further, ZTE was aware that the normal and customary use of Mobile Hotspot functionality would infringe the 298 patent. ZTE also enticed its end-users to use the Mobile Hotspot functionality by providing instruction manuals and also providing Mobile Hotspot functionality. ZTE performed the acts that constituted induced infringement, and would induce actual infringement, with the knowledge of the 298 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 42. Accordingly, a reasonable inference is that ZTE actively induces
infringement of the 298 Patent by others, such as resellers and end-use customers. ZTE specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 298 Patent in the United States because ZTE had knowledge of the 298 Patent, and ZTE actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of ZTE Mobile Communication Devices in an infringing way. Such instructions include at least (available on ZTEs website at http://www.zteusa.com/media/wysiwyg/TMobile4GMobileHotspot/T-Mobile_4G_Mobile_Hotspot_Start_Guide_English_-_PDF__461KB_.pdf) (accessed October 30, 2013). When resellers and end-use customers follow such instructions, they directly infringe the 298 Patent. ZTE knows that by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 298 Patent. infringement. ZTE thus knows that its actions induce the
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43.
ZTE indirectly infringes the 298 Patent by contributing to infringement
by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is a result of activities performed by the manufacturers, resellers, and end-users of ZTE Mobile Communication Devices, including the ZTE 4G Mobile Hotspot, in their intended use, including a customers use of the Mobile Hotspot functionality. ZTE received actual notice of the 298 Patent at least by October 31, 2012 in view of a communication from Rockstar and/or its predecessors-in-interest to ZTE. 44. ZTE Mobile Communication Devices, including the ZTE 4G Mobile
Hotspot, with the Mobile Hotspot functionality allow wireless devices from a first, or private, network to connect to a second, or public, network such as the Internet. The Mobile Hotspot functionality is designed to route data packets between wireless devices tethered to the Mobile Hotspot to nodes on a public network such as the Internet, and cannot function in a manner that does not utilize the Mobile Hotspot functionality available to ZTE Mobile Communication Devices. Upon information and belief, the Mobile Hotspot functionality is designed to entice a user to access nodes in a second, or public, network such as the Internet. 45. A reasonable inference to be drawn from the facts set forth is that the
Mobile Hotspot functionality is not a staple article or commodity of commerce and that 14
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the use of the Mobile Hotspot functionality of ZTE Mobile Communication Devices, including the ZTE 4G Mobile Hotspot, is for interfacing first and second data communications networks, e.g., a private network and a public network such as the Internet. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 47. ZTE Mobile Communication Devices with Mobile Hotspot functionality,
including the ZTE 4G Mobile Hotspot, are each a material part of the 298 patent and especially made for the infringing use of the Mobile Hotspot functionality for interfacing private and public data communication networks. ZTE Mobile Communication Devices with the Mobile Hotspot functionality are especially made or adapted to provide access for wireless devices in a first, or private, network through the Mobile Communication Device, to nodes in a second, or public, network that perform or facilitate performance of the steps that infringe the 298 patent. Furthermore, ZTE provides user manuals
describing the uses of ZTE Mobile Communication Devices that infringe the 298 patent. Because the sales and manufacture of ZTE Mobile Communication Devices with Mobile Hotspot functionality infringes the 298 patent, ZTEs sales of its infringement products have no substantial non-infringing uses. 48. Accordingly, a reasonable inference is that ZTE offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. ZTE provides to 15
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others ZTE Mobile Communication Devices, including the ZTE 4G Mobile Hotspot, to support Mobile Hotspot functionality. ZTE installs and configures ZTE Mobile
Communication Devices with distinct and separate components, including software components, which are used only to perform the infringing method claims. 49. At least ZTE Mobile Communication Devices, including ZTE Score, with
an operating system configured and installed by ZTE to support an integrated notification message center functionality infringe at least claims 1 and 21 of the 973 Patent. ZTE makes, uses, sells, tests, uses, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes one or more claims of the 973 patent, including at least claims 1 and 21. 50. ZTE indirectly infringes the 973 patent by inducing infringement by
others, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the ZTE Mobile Communication Devices. ZTE received actual notice of the 973 Patent at least by March 12, 2012 in view of a communication from Rockstar, and/or its predecessors-in-interest, to ZTE. 51. ZTEs affirmative acts of selling ZTE Mobile Communication Devices,
causing the ZTE Mobile Communication Devices to be manufactured, and providing instruction manuals for ZTE Mobile Communication Devices induced ZTEs manufacturers and resellers to make or use the ZTE Mobile Communication Devices in their normal and customary way to infringe the 973 patent. Through its manufacture and sales of ZTE Mobile Communication Devices, ZTE specifically intended its resellers and manufacturers to infringe the 973 patent; further, ZTE was aware that these normal and 16
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customary activities would infringe the 973 patent.
ZTE performed the acts that
others, such as resellers and end-use customers, to directly infringe one or more claims of the 973 patent in the United States because ZTE has knowledge of the 973 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, ZTE Communication Devices for resale to others, such as resellers and end-use customers. ZTE knew or should have known that such actions would induce actual infringement. 53. The use of at least ZTE Mobile Communication Devices, including ZTE
Score, with an operating system configured and installed by ZTE to support an integrated notification message center functionality as intended by ZTE infringes at least method claim 8 of the 973 Patent. ZTE uses these devices within the United States and thus directly infringes one or more claims of the 973 patent, including at least claim 8. 54. ZTE indirectly infringes the 973 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is a result of activities performed by the manufacturers, resellers, and end-users of ZTE Mobile Communication Devices, including ZTE Score. ZTE received actual notice of the 973 Patent at least by March 12, 2012 in view of a communication from Rockstar and/or its predecessors-in-interest to ZTE. 17
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55.
ZTE provides at least ZTE Mobile Communication Devices, including
ZTE Score, with an operating system configured and installed by ZTE to support integrated notification message center functionality to others, such as resellers and enduse customers, in the United States who, in turn, use ZTE Mobile Communication Devices to infringe at least method claim 8 of the 973 Patent. Through its manufacture and sales of ZTE Mobile Communication Devices, ZTE specifically intended its resellers and manufacturers to infringe the 973 patent. 56. ZTE specifically intends for others, such as resellers and end-use
customers, to directly infringe one or more claims of the 973 Patent in the United States. For example, ZTE provides instructions to resellers and end-use customers regarding the use and operation of ZTE Mobile Communication Devices, including ZTE Score, in an infringing way. Manual Such instructions include, for example, at least ZTE Score User (available at
http://www.zteusa.com/media/wysiwyg/CricketScoreTM/Cricket_Score_TM_User_Man ual_English_-_PDF_-_968KB_.pdf) (accessed October 30, 2013). When resellers and end-use customers follow such instructions, they directly infringe the 973 Patent. ZTE knows that by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 973 Patent. ZTE thus knows that its actions induce the infringement. 57. ZTE performed the acts that constitute induced infringement, and would
induce actual infringement, with the knowledge of the 973 patent and with the knowledge or willful blindness that the induced acts would constitute infringement.
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58.
ZTE indirectly infringes the 973 patent, by contributing to infringement
by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is a result of activities performed by the manufacturers, resellers, and end-users of ZTE Mobile Communication Devices, including ZTE Score. ZTE received actual notice of the 973 Patent at least by March 12, 2012 in view of a communication in view of a communication from Rockstar and/or its predecessors-in-interest to ZTE. 59. ZTE Mobile Communication Devices, including ZTE Score, include
functionality that, inter alia, displays an integrated notification message center contained in a single list. The notification message center is designed to provide a user with a single list of notifications regardless of the types of messages (e.g., email, text, etc) on the users Mobile Communication Device. On information and belief, this functionality cannot operate in an acceptable manner absent the integrated notification message center, as it is included in every ZTE Mobile Communication Device. 60. A reasonable inference to be drawn from the facts set forth is that the
integrated message center in ZTE Mobile Communication Devices, including ZTE Score, is especially made or especially adapted to operate on a ZTE Mobile Communication Device as an integrated notification message center that provides a user with notifications concerning different types of messages on the users Mobile Communication Device. 61. A reasonable inference to be drawn from the facts set forth is that the
integrated notification message center in the Mobile Communication Device, including ZTE Score, is not a staple article or commodity of commerce and that the use of the integrated notification message center in ZTE Mobile Communication Devices is 19
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required for operation of ZTE Mobile Communication Devices. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 62. ZTE Mobile Communication Devices, including ZTE Score, with the
integrated notification message center are each a material part of the invention of the 973 patent and are especially made for the infringing manufacture, sale, and use of ZTE Mobile Communication Devices. ZTE Mobile Communication Devices, including the integrated notification message center, are especially made or adapted as an integrated notification message center that infringes the 973 patent. Because the sales and
manufacture of ZTE Mobile Communication Devices with an integrated notification message center infringes the 973 patent, ZTEs sales of its infringing products have no substantial non-infringing uses. 63. Accordingly, a reasonable inference is that ZTE offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. ZTE provides to others ZTE Mobile Communication Devices, including ZTE Score, with distinct and separate components, including software components, which have no substantial noninfringing use. 64. At least ZTE Mobile Communication Devices, including ZTE Flash, with
an operating system configured and installed by ZTE to support Message and Notification functionality infringe at least claim 1 of the 131 Patent. ZTE makes, uses, 20
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sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claim 1 of the 131 Patent. 65. ZTE indirectly infringes the 131 patent by inducing infringement by
others, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the ZTE Mobile Communication Devices. ZTE received actual notice of the 131 Patent at least by December 4, 2012 in view of a communication from Rockstar, and/or its predecessors-in-interest, to ZTE. 66. ZTEs affirmative acts of selling ZTE Mobile Communication Devices,
others, such as resellers and end-use customers, to directly infringe one or more claims of the 131 patent in the United States because ZTE has knowledge of the 131 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by 21
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using, selling, exporting, supplying and/or distributing within the United States, ZTE Communication Devices for resale to others, such as resellers and end-use customers. 68. The use of at least ZTE Mobile Communication Devices, including ZTE
Flash, with an operating system configured and installed by ZTE to support Message and Notification functionality as intended by ZTE infringes at least method claim 5 of the 131 Patent. ZTE uses these products and thus directly infringes at least method claim 5 of the 131 Patent. 69. In addition, ZTE provides at least ZTE Mobile Communication Devices,
including ZTE Flash, with an operating system configured and installed by ZTE to support Message functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claim 5 of the 131 Patent. 70. ZTE indirectly infringes the 131 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is a result of activities performed by the manufacturers, resellers, and end-users of ZTE Mobile Communication Devices, including ZTE Flash, in their intended use, including a customers use of the Message and Notifications functionality. ZTE received actual notice of the 131 Patent at least by December 4, 2012 in view of a communication from Rockstar and/or its predecessors-in-interest to ZTE. 71. ZTEs affirmative acts of selling ZTE Mobile Communication Devices,
including ZTE Flash, and providing instruction manuals induced the end-users of ZTE Mobile Communication Devices, including ZTE Flash, to use ZTE Mobile 22
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Communication Devices in their normal and customary way to infringe the 131 patent at least through using Message and Notifications functionality. ZTE also provides
instructions, including at least the Sprint Flash User Guide (available at http://www.zteusa.com/media/wysiwyg//SprintFlash/Sprint_Flash_User_Guide_English_ -_PDF_-_3.86MB_.pdf) (accessed October 30, 2013), for using the Messaging and Notifications functionality. Through its sales of Mobile Communication Devices with Messaging and Notifications functionality, ZTE specifically intended the end-users of ZTE Mobile Communication Devices to infringe the 131 patent; further, ZTE was aware that the normal and customary use of the Message and Notifications functionality would infringe the 131 patent. ZTE also enticed its end-users to use the Messaging and Notifications functionality by providing instruction manuals and also providing Messaging and Notifications functionality. ZTE performed the acts that constituted induced infringement, and would induce actual infringement, with the knowledge of the 131 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 72. Accordingly, a reasonable inference is that ZTE actively induces
infringement of the 131 Patent by others, such as resellers and end-use customers. ZTE specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 131 Patent in the United States because ZTE had knowledge of the 131 Patent, and ZTE actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of ZTE Mobile Communication Devices, including ZTE Flash, in an infringing way. instructions include at least the Sprint 23
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Such at
Flash
User
Guide
(available
http://www.zteusa.com/media/wysiwyg//SprintFlash/Sprint_Flash_User_Guide_English_ -_PDF_-_3.86MB_.pdf) (accessed October 30, 2013). When resellers and end-use
customers follow such instructions, they directly infringe the 131 Patent. ZTE knows that by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 131 Patent. ZTE thus knows that its actions induce the infringement. 73. ZTE indirectly infringes the 131 Patent by contributing to infringement
by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is a result of activities performed by the manufacturers, resellers, and end-users of ZTE Mobile Communication Devices, including ZTE Flash, in their intended use, including a customers use of the Messaging and Notification functionality. ZTE received actual notice of the 131 Patent at least by December 4, 2012 in view of a communication from Rockstar and/or its predecessors-in-interest to ZTE. 74. ZTEs Message and Notification functionality receives and displays
message of different types, such as a phone call, voice mail, text message, or email. The Message and Notification Services functionality is designed to notify the user of an incoming communication and to select the format of the message received and cannot function in a manner that does not utilize the messaging functionality available to ZTE Mobile Communication Devices, including ZTE Flash. Upon information and belief, the Message and Notifications functionality is designed to entice a user to receive notifications of an incoming communication.
24
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75.
Message and Notifications functionality especially made or especially adapted to operate on ZTE Mobile Communication Devices, including ZTE Flash, for notifying a user of an incoming communication. 76. A reasonable inference to be drawn from the facts set forth is that the
Message and Notifications functionality is not a staple article or commodity of commerce and that the use of the Messaging and Notifications functionality of the ZTE Mobile Communication Devices, including ZTE Flash, is for notifying a user of an incoming communication. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 77. ZTE Mobile Communication Devices, including ZTE Flash, with
Messaging and Notifications functionality are each a material part of the 131 patent and especially made for the infringing use of the Messaging and Notification functionality to receive and display messages. ZTE Mobile Communication Devices including the
Messaging and Notification functionality, are especially made or adapted to notify a user of an incoming communication that perform or facilitate performance of the steps that infringe the 131 patent. Furthermore, ZTE provides user manuals describing the uses of its Mobile Communication Devices that infringe the 131 patent. Because the
functionality provided by ZTEs Messaging and Notification to notify a user of an incoming communication infringes the 131 patent, ZTEs sales of its infringing products have no substantial non-infringing uses. 78. Accordingly, a reasonable inference is that ZTE offers to sell, or sells

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or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. ZTE provides to others, Mobile Communication Devices, including ZTE Flash, with an operating system configured and installed by ZTE to support Message and Notification functionality. ZTE installs and configures on these products distinct and separate components, including software components, which are used only to perform the infringing method claims. 79. At least ZTE Mobile Communication Devices, including ZTE Flash, with
an operating system configured and installed by ZTE to support VPN management functionality, infringe at least claims 1 and 8 of the 591 Patent. ZTE makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claims 1 and 8 of the 591 Patent. 80. The use of at least ZTE Mobile Communication Devices, including ZTE
Flash, with an operating system configured and installed by ZTE to support VPN management functionality as specified and intended by ZTE infringes at least claims 1 and 8 of the 591 Patent. ZTE uses these products and thus directly infringes at least claims 1 and 8 of the 591 Patent. 81. ZTE indirectly infringes the 591 patent by inducing infringement by
others, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the ZTE Mobile Communication
26
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Devices. ZTE received actual notice of the 591 Patent at least by December 4, 2012 in view of a communication from Rockstar, and/or its predecessors-in-interest, to ZTE. 82. ZTEs affirmative acts of selling ZTE Mobile Communication Devices,
others, such as resellers and end-use customers, to directly infringe one or more claims of the 591 patent in the United States because ZTE has knowledge of the 591 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, ZTE Communication Devices for resale to others, such as resellers and end-use customers. 84. In addition, ZTE provides at least its Mobile Communication Devices,
including ZTE Flash, with an operating system configured and installed by ZTE to support VPN management functionality to others, such as resellers and end-use
27
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customers, in the United States who, in turn, use these products to infringe at least claims 1 and 8 of the 591 Patent. 85. ZTE indirectly infringes the 591 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is a result of activities performed by the manufacturers, resellers, and end-users of ZTE Mobile Communication Devices, including ZTE Flash, in their intended use, including a customers use of the VPN management functionality. ZTE received actual notice of the 591 Patent at least by December 4, 2012 in view of a communication from Rockstar and/or its predecessors-in-interest to ZTE. 86. ZTEs affirmative acts of selling its Mobile Communication Devices,
including ZTE Flash, and providing instruction manuals induced the end-users of ZTE Mobile Communication Devices, including ZTE Flash, to use ZTE Mobile Communication Devices in their normal and customary way to infringe the 591 patent at least through using VPN management functionality. ZTE also provides instructions, including at least Sprint Flash User Guide (available at
http://www.zteusa.com/media/wysiwyg//SprintFlash/Sprint_Flash_User_Guide_English_ -_PDF_-_3.86MB_.pdf) (accessed October 30, 2013), for using the VPN management functionality. Through its sales of ZTE Mobile Communication Devices with VPN management functionality, ZTE specifically intended the end-users of ZTE Mobile Communication Devices to infringe the 591 patent; further, ZTE was aware that the normal and customary use of VPN management functionality would infringe the 591 patent. ZTE also enticed its end-users to use the VPN management functionality by 28
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providing instruction manuals and also providing VPN management functionality. ZTE performed the acts that constituted induced infringement, and would induce actual infringement, with the knowledge of the 591 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 87. Accordingly, it is a reasonable inference that ZTE actively induces
infringement of the 591 Patent by others, such as resellers and end-use customers. ZTE specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 591 Patent in the United States because ZTE had knowledge of the 591 Patent, and ZTE actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of ZTEs products, including ZTE Flash, in an infringing way. Such instructions include at least Sprint Flash User Guide (available at
http://www.zteusa.com/media/wysiwyg//SprintFlash/Sprint_Flash_User_Guide_English_ -_PDF_-_3.86MB_.pdf) (accessed October 30, 2013). When resellers and end-use
customers follow such instructions, they directly infringe the 591 Patent. ZTE knows that by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 591 Patent. ZTE thus knows that its actions induce the infringement. 88. ZTE indirectly infringes the 591 Patent by contributing to infringement
by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is a result of activities performed by the manufacturers, resellers, and end-users of ZTE Mobile Communication Devices, including ZTE Flash, in their intended use, including a 29
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customers use of the VPN management functionality. ZTE received actual notice of the 591 Patent at least by December 4, 2012 in view of a communication from Rockstar and/or its predecessors-in-interest to ZTE. 89. ZTEs VPN management functionality facilitates management of VPNs.
The VPN management functionality is designed for management of VPNs and cannot function in a manner that does not utilize the VPN management functionality available to ZTE Mobile Communication Devices, including ZTE Flash. The VPN management functionality is designed upon information and belief to entice a user to manage VPNs. 90. A reasonable inference to be drawn from the facts set forth is that the VPN
functionality is especially made or especially adapted to operate on ZTE Mobile Communication Devices, including ZTE Flash, for providing VPN management functionality. 91. A reasonable inference to be drawn from the facts set forth is that the VPN
management functionality is not a staple article or commodity of commerce and that the use of the VPN management functionality of ZTE Mobile Communication Devices, including ZTE Flash, is for managing VPNs. Any other use would be unusual, farfetched, illusory, impractical, occasional, aberrant, or experimental. 92. ZTE Mobile Communication Devices, including ZTE Flash, with VPN
management functionality are each a material part of the invention of the 591 patent and especially made for the infringing use of the VPN functionality to receive call trace information. ZTE Mobile Communication Devices including the VPN management
functionality, are especially made or adapted to provide VPN management functionality that perform or facilitate performance of the steps that infringe the 591 patent. 30
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Furthermore, ZTE provides user manuals describing the uses of its Mobile Communication Devices that infringe the 591 patent. Because the functionality
provided by ZTEs VPN management functionality infringes the 591 patent, ZTEs sales of its infringing Mobile Communication Devices have no substantial non-infringing uses. 93. Accordingly, a reasonable inference is that ZTE offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. ZTE provides to others, Mobile Communication Devices, including ZTE Flash, with an operating system configured and installed by ZTE to support VPN management functionality. ZTE installs and configures on these products distinct and separate components, including software components, which are used only to infringe the 591 Patent. 94. The use of at least ZTE Mobile Communication Devices, including ZTE
Score and ZTE Optik, with an operating system configured and installed by ZTE to support Location Services functionality, as intended by ZTE infringes at least method claim 17 of the 572 Patent. ZTE uses these Mobile Communication Devices and thus directly infringes at least method claim 17 of the 572 Patent. 95. In addition, ZTE provides at least its Mobile Communication Devices,
including ZTE Score and ZTE Optik, with an operating system configured and installed by ZTE to support Location Services functionality to others, such as resellers and end-use
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customers, in the United States who, in turn, use these products to infringe at least method claim 17 of the 572 Patent. 96. ZTE indirectly infringes by inducing infringement by others, such as
resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is a result of activities performed by the manufacturers, resellers, and end-users of ZTE Mobile Communication Devices, including ZTE Score and ZTE Optik, in their intended use, including a customers use of the Location Services functionality. ZTE received actual notice of the 572 Patent at least by May 11, 2012 in view of a communication from Rockstar and/or its predecessors-in-interest to ZTE. 97. ZTEs affirmative acts of selling its Mobile Communication Devices,
including ZTE Score and ZTE Optik, and providing instruction manuals induced the endusers of ZTE Mobile Communication Devices to use ZTE Mobile Communication Devices in their normal and customary way to infringe the 572 patent at least through using Location Services functionality. ZTE also provides instructions, including at least ZTE Score User Manual (available at
Optik/ZTE_Optik_User_Manual_English_-_PDF_-_2.98MB_.pdf) (accessed October 30, 2013), for using the Location Services functionality. Through its sales of ZTE Mobile Communication Devices with Location Services functionality, ZTE specifically intended the end-users of ZTE Mobile Communication Devices to infringe the 572 patent; further, 32
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ZTE was aware that the normal and customary use of Location Services would infringe the 572 patent. ZTE also enticed its end-users to use the Location Services by providing instruction manuals and also providing Location Services functionality. ZTE performed the acts that constituted induced infringement, and would induce actual infringement, with the knowledge of the 572 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 98. Accordingly, a reasonable inference is that ZTE actively induces
infringement of the 572 Patent by others, such as resellers and end-use customers. ZTE specifically intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 572 Patent in the United States because ZTE had knowledge of the 572 Patent, and ZTE actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of ZTEs products, including ZTE Score and ZTE Optik, in an infringing way. Such instructions include at least ZTE Score User Manual (available at
Optik/ZTE_Optik_User_Manual_English_-_PDF_-_2.98MB_.pdf) (accessed October 30, 2013) ZTE Score User Manual (available at
Optik/ZTE_Optik_User_Manual_English_-_PDF_-_2.98MB_.pdf) (accessed October 30, 33

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2013). When resellers and end-use customers follow such instructions, they directly infringe the 572 Patent. ZTE knows that by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 572 Patent. ZTE thus knows that its actions induce the infringement. 99. ZTE indirectly infringes the 572 Patent by contributing to infringement
by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is a result of activities performed by the manufacturers, resellers, and end-users of ZTE Mobile Communication Devices, including ZTE Score and ZTE Optik, in their intended use, including a customers use of the Locations Services functionality. ZTE received actual notice of the 572 Patent at least by May 11, 2012 in view of a communication from Rockstar and/or its predecessors-in-interest to ZTE. 100. ZTEs Location Services functionality provides call trace information, i.e.,
a geographic location of ZTE Mobile Communication Devices, including ZTE Score and ZTE Optik. The Location Services functionality is designed to notify the user of ZTE Mobile Communication Devices of call trace information, i.e., a geographic location of the Mobile Communication Devices, and cannot function in a manner that does not utilize the Location Services functionality available to the Mobile Communication Devices. Upon information and belief, the Location Services functionality is designed to entice a user to access call trace information. 101. A reasonable inference to be drawn from the facts set forth is that the
Location Services functionality is especially made or especially adapted to operate on ZTE Mobile Communication Devices, including ZTE Score and ZTE Optik, for 34
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obtaining call trace information, i.e., a geographic location of the Mobile Communication Devices. 102. A reasonable inference to be drawn from the facts set forth is that the
Location Services functionality is not a staple article or commodity of commerce and that the use of the Location Services functionality of ZTE Mobile Communication Devices, including ZTE Score and ZTE Optik, is for providing call trace information. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 103. ZTE Mobile Communication Devices, including ZTE Score and ZTE
Optik, with Location Services functionality are each a material part of the 572 patent and especially made for the infringing use of the Location Services functionality to receive call trace information, i.e., a geographic location of the Mobile Communication Devices. The Mobile Communication Devices including the Location Services functionality are especially made or adapted to provide call trace information that perform or facilitate performance of the steps that infringe the 572 patent. Furthermore, ZTE provides user manuals describing the uses of its products that infringe the 572 patent. Because the functionality provided by ZTEs Location Services to obtain call trace information, i.e., a geographic location of the Mobile Communication Devices, infringes the 572 patent, ZTEs sales of its infringing products have no substantial non-infringing uses. 104. Accordingly, a reasonable inference is that ZTE offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or 35
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especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use. ZTE provides to others, Mobile Communication Devices, including ZTE Score and ZTE Optik, with an operating system configured and installed by ZTE to support Location Services functionality. ZTE installs and configures on these products distinct and separate
components, including software components, which are used only to perform the infringing method claims. 105. ZTEs acts of infringement have caused damage to Rockstar and
MobileStar. Rockstar and MobileStar are entitled to recover from ZTE the damages sustained by Rockstar and MobileStar as a result of ZTEs wrongful acts in an amount subject to proof at trial. In addition, the infringing acts and practices of ZTE have caused, are causing, and, unless such acts and practices are enjoined by the Court, will continue to cause immediate and irreparable harm to Rockstar and MobileStar for which there is no adequate remedy at law, and for which Rockstar and MobileStar are entitled to injunctive relief under 35 U.S.C. 283. 106. ZTE received actual notice of its infringement of the 937, 298, 973,
131, 591, and 572 Patents through at least letters sent by Rockstar and/or its predecessors-in-interest, Nortel Networks Ltd. and/or Nortel Networks, Inc., to ZTE, and through meetings between employees of Rockstar and/or its predecessors-in-interest, Nortel Networks Ltd., or Nortel Networks Inc. and ZTE. ZTE also has knowledge of its infringement of the Patents-in-Suit by way of this Complaint. 107. ZTE has willfully infringed and/or does willfully infringe the 937, 298,
973, 131, 591, and 572 Patents. 36

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DEMAND FOR JURY TRIAL Rockstar and MobileStar hereby demand a jury trial for all issues so triable. PRAYER FOR RELIEF WHEREFORE, Rockstar and MobileStar pray for the following relief: 1. A judgment that ZTE has directly infringed the 937 Patent, contributorily
infringed the 937 Patent, and/or induced the infringement of the 937 Patent. 2. A judgment that ZTE has directly infringed the 298 Patent, contributorily
infringed the 572 Patent, and/or induced the infringement of the 572 Patent. 7. A permanent injunction preventing ZTE and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 937 patent; 8. A permanent injunction preventing ZTE and its respective officers,
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those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 298 patent; 9. A permanent injunction preventing ZTE and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 572 patent; 13. A judgment that ZTEs infringement of the 937, 298, 973, 131, 591,
and 572 Patents has been willful; 14. A ruling that this case be found to be exceptional under 35 U.S.C. 285,
and a judgment awarding Rockstar and MobileStar to its attorneys fees incurred in prosecuting this action; 38
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15.
A judgment and order requiring ZTE to pay Rockstar and MobileStar
damages under 35 U.S.C. 284, including supplemental damages for any continuing post-verdict infringement up until entry of the final judgment, with an accounting, as needed, and treble damages for willful infringement as provided by 35 U.S.C. 284; 16. A judgment and order requiring ZTE to pay Rockstar and MobileStar the
costs of this action (including all disbursements); 17. A judgment and order requiring ZTE to pay Rockstar and MobileStar pre-
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40
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Case 2:13-cv-00900-JRG Case4:13-cv-05933-CW Document Document20-10 26-2 Filed 02/10/14 Filed01/23/14 Page 744Page1 of 826of PageID 68 #: 931
EXHIBIT H
Case Case 2:13-cv-00900-JRG 2:13-cv-00900-JRG Case4:13-cv-05933-CW Document Document Document20-10 26-2 19 Filed Filed 02/10/14 12/31/13 Filed01/23/14 Page Page 745 1 of Page2 of67 826 PageID of PageID 68 #: #: 85932
ROCKSTAR CONSORTIUM US LP, AND MOBILESTAR TECHNOLOGIES LLC PLAINTIFFS v. Civil Action No. 2:13-cv-00900-JRG SAMSUNG ELECTRONICS CO., LTD, JURY TRIAL REQUESTED SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG TELECOMMUNICATIONS AMERICA, LLC DEFENDANTS.
PLAINTIFFS ROCKSTAR CONSORTIUM US LP AND MOBILESTAR TECHNOLOGIES LLCS (First) AMENDED COMPLAINT Plaintiffs Rockstar Consortium US LP (Rockstar) and MobileStar Technologies LLC (MobileStar) file this Amended Complaint for patent infringement under 35 U.S.C. 271 and in support thereof would respectfully show the Court the following: PARTIES 1. Plaintiff Rockstar Consortium US LP (Rockstar) is a limited
partnership organized and existing under the laws of the State of Delaware, and maintains its principal place of business at Legacy Town Center 1, 7160 North Dallas Parkway Suite No. 250, Plano, TX 75024. 2. Plaintiff MobileStar Technologies LLC (MobileStar) is a
subsidiary of Rockstar and is a limited liability corporation organized and existing under
the laws of the State of Delaware, and maintains its principal place of business at Legacy Town Center 1, 7160 North Dallas Parkway Suite No. 250, Plano, TX 75024. 3. Upon information and belief, Defendant Samsung Electronics Co.,
Ltd. (SEC) is a corporation organized and existing under the laws of the Republic of Korea with its principal place of business at 416, Maetan 3-dong, Yeongtong-gu, Suwonsi, Gyeonggi-do 443-742, South Korea. 4. Upon information and belief, Defendant Samsung Electronics
America, Inc. (SEA) is a subsidiary of SEC and is a corporation organized and existing under the laws of the State of New York. Samsung Electronics America, Inc. maintains its principal place of business at 85 Challenger Road, Ridgefield Park, NJ 07660. 5. Upon information and belief, Defendant Samsung
Telecommunications America, LLC is a subsidiary of SEC and is a limited liability company organized and existing under the laws of the state of Delaware with its principal place of business at 1301 East Lookout Drive, Richardson TX 75082. 6. Upon information and belief, Defendant Google, Inc. (Google) is
a corporation organized and existing under the laws of the state of Delaware, with its principal place of business at 1600 Amphitheatre Parkway, Mountain View, California, 94043.
BACKGROUND FACTS 7. Nortel Networks, a previous assignee of the patents-in-suit,
conducted an auction for Nortels patent portfolio.. The auction included the patents asserted herein. 8. Nortels portfolio. 9. Google made its first bid for the Nortel patent portfolio on April 4, During the various auction dates Google, among others, bid for
2011. (See http://googleblog.blogspot.com/2011/04/patents-and-innovation.html). 10. initial bid. 11. Google placed an initial bid of $900,000,000 for the patents-in-suit Google was aware of the patents asserted herein at the time of its
and the rest of the Nortel portfolio. Google subsequently increased its bid multiple times, ultimately bidding as high as $4.4 billion. That price was insufficient to win the auction, as a group led by the current shareholders of Rockstar purchased the portfolio for $4.5 billion. 12. Despite losing in its attempt to acquire the patents-in-suit at
auction, Google has infringed and continues to infringe the patents-in-suit, including, but not limited to, the sale and offer for sale of its Google Nexus line of devices in the United States, including in this District.
13.
The Nexus devices include, but are not limited to, the Nexus 5,
Nexus 7, Nexus 10, and Galaxy Nexus. On information and belief, the Nexus 10 and Galaxy Nexus are manufactured by Samsung.
JURISDICTION AND VENUE 14. This is an action for patent infringement under the Patent Laws of
the United States, 35 U.S.C. 271. This Court has exclusive subject matter jurisdiction over this case for patent infringement under 28 U.S.C. 1338. 15. 1400(b). 16. Electronics Co., This Court has personal jurisdiction over Defendants Samsung Ltd, Samsung Electronics America, Inc., and Samsung Venue is proper in this Court pursuant to 28 U S.C. 1391 and
Telecommunications America, LLC (collectively, Samsung). Samsung has conducted and does conduct business within the State of Texas. Samsung, directly or through subsidiaries or intermediaries (including distributors, retailers, and others), ships, distributes, offers for sale, sells, and advertises (including the provision of an interactive web page) its products (including its infringing products) and/or services in the United States, the State of Texas, and the Eastern District of Texas. Samsung, directly and through subsidiaries or intermediaries (including distributors, retailers, and others), has purposefully and voluntarily placed one or more of its infringing products and/or services, as described below, into the stream of commerce with the expectation that they will be purchased and used by consumers in the Eastern District of Texas. 4 These
infringing products and/or services have been and continue to be purchased and used by consumers in the Eastern District of Texas. Samsung has committed acts of patent infringement within the State of Texas and, more particularly, within the Eastern District of Texas. 17. This Court has personal jurisdiction over Defendant Google.
Google has conducted and does conduct business within the State of Texas. Google, directly or through subsidiaries or intermediaries (including distributors, retailers, and others), ships, distributes, offers for sale, sells, and advertises (including the provision of an interactive web page) its products (including its Nexus line of products) and/or services in the United States, the State of Texas, and the Eastern District of Texas. Google, directly and through subsidiaries or intermediaries (including distributors, retailers, and others), has purposefully and voluntarily placed one or more of its infringing products and/or services, as described below, into the stream of commerce with the expectation that they will be purchased and used by consumers in the Eastern District of Texas. These infringing products and/or services have been and continue to be purchased and used by consumers in the Eastern District of Texas. Google has
committed acts of patent infringement within the State of Texas and, more particularly, within the Eastern District of Texas. ASSERTED PATENTS 18. On November 17, 1998, U.S. Patent No. 5,838,551 (the 551
Patent) entitled Electronic Package Carrying an Electronic Component and Assembly of Mother Board and Electronic Package was duly and legally issued with Yee-Ning Chan as the named inventor after full and fair examination. Rockstar owns all rights, 5
title, and interest in and to the 551 Patent and possesses all rights of recovery under the 551 Patent. MobileStar is the exclusive licensee of the 551 Patent. 19. On March 14, 2000, U.S. Patent No. 6,037,937 (the 937 Patent)
entitled Navigation Tool for Graphical User Interface was duly and legally issued with Brian Finlay Beaton, Colin Donald Smith, and Bruce Dale Stalkie as the named inventors after full and fair examination. MobileStar owns all rights, title, and interest in and to the 937 Patent and possesses all rights of recovery under the 937 Patent. 20. On October 3, 2000, U.S. Patent No. 6,128,298 (the 298 Patent)
entitled Internet Protocol Filter was duly and legally issued with Bruce Anthony Wootton and William G. Colvin as the named inventors after full and fair examination. Rockstar owns all rights, title, and interest in and to the 298 Patent and possesses all rights of recovery under the 298 Patent. MobileStar is the exclusive licensee of the 298 Patent. 21. On December 25, 2001, U.S. Patent No. 6,333,973 (the 973
Patent) entitled Integrated Message Center was duly and legally issued with Colin Donald Smith and Brian Finlay Beaton as the named inventors after full and fair examination. MobileStar owns all rights, title, and interest in and to the 973 Patent and possesses all rights of recovery under the 973 Patent. 22. On October 8, 2002, U.S. Patent No. 6,463,131 (the 131 Patent)
entitled System and Method for Notifying a User of an Incoming Communication Event was duly and legally issued with Marilyn French-St. George, Mitch A. Brisebois and Laura A. Mahan as the named inventors after full and fair examination. MobileStar
owns all rights, title, and interest in and to the 131 Patent and possesses all rights of recovery under the 131 Patent. 23. On July 20, 2004, U.S. Patent No. 6,765,591 (the 591 Patent)
entitled Managing a Virtual Private Network was duly and legally issued with Matthew W. Poisson, Melissa L. Desroches, and James M. Milillo as the named inventors after full and fair examination. MobileStar owns all rights, title, and interest in and to the 591 Patent and possesses all rights of recovery under the 591 Patent. 24. On August 30, 2005, U.S. Patent No. 6,937,572 (the 572 Patent)
entitled Call Trace on a Packet Switched Network was duly and legally issued with Brian B. Egan and Milos Vodsedalek as the named inventors after full and fair examination. Mobilestar owns all rights, title, and interest in and to the 572 Patent and possesses all rights of recovery under the 572 Patent. GENERAL ALLEGATIONS 25. Samsung has directly and indirectly infringed and continues to
directly and indirectly infringe each of the 551, 937, 298, 973, 131, 591, and 572 Patents by engaging in acts constituting infringement under 35 U.S.C. 271(a), (b), (c), and/or (f), including but not necessarily limited to one or more of making, using, selling and offering to sell, in this District and elsewhere in the United States, and importing into this District and elsewhere in the United States, certain mobile communication devices having a version (or an adaption thereof) of Android operating system (Samsung Mobile Communication Devices). 26. Samsung is doing business in the United States and, more
particularly, in the Eastern District of Texas by making, using, selling, importing, and/or 7
offering for sale Samsung Mobile Communication Devices, including but not limited to Samsungs Galaxy family of smart phones, including the Galaxy S III and Captivate (Galaxy S), and its Galaxy family of tablets, including the Galaxy Tab 8.9, and other products that infringe the patent claims involved in this action or by transacting other business in this District. 27. Google has directly and indirectly infringed and continues to
directly and indirectly infringe each of the 937, 131, and 591 Patents by engaging in acts constituting infringement under 35 U.S.C. 271(a), (b), (c), and/or (f), including but not necessarily limited to one or more of making, using, selling and offering to sell, in this District and elsewhere in the United States, and importing into this District and elsewhere in the United States, certain mobile communication devices having a version (or an adaption thereof) of Android operating system (Google Mobile Communication Devices), including Googles Nexus 5, Nexus 7, Nexus 10, and Galaxy Nexus devices (Google Nexus Devices). . 28. Google is doing business in the United States and, more
particularly, in the Eastern District of Texas by making, using, selling, importing, and/or offering for sale Google Mobile Communication Devices, including but not limited to the Google Nexus Devices and other products that infringe the patent claims involved in this action or by transacting other business in this District. 29. On information and belief, Google is a customer of one or more of
one or more of Samsung Electronics Co., Ltd, Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC.
Case Case 2:13-cv-00900-JRG 2:13-cv-00900-JRG Case4:13-cv-05933-CW Document Document Document20-10 26-2 19 Filed Filed 02/10/14 12/31/13 Filed01/23/14 Page Page 753 9Page10 of of67 826 PageID of PageID 68 #: #: 93940
30.
More specifically, and on information and belief, one or more of
Samsung Electronics Co., Ltd, Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC serve as a manufacturer of the Google Nexus 10 and Galaxy Nexus tablet. 31. On information and belief, Google uses, sells, and offers for sale at
least Nexus 10 devices in the United States, including in this District. The Nexus 10 and Galaxy Nexus device include the Android operating system. 32. Google also uses, sells, and offers for sale Nexus 5 and Nexus 7
devices in the United States, including in this District. 1 The Nexus 5 and Nexus 7 include the Android operating system.
COUNT ONE PATENT INFRINGEMENT BY SAMSUNG 33. Plaintiffs incorporate by reference paragraphs 1-32 as if fully set
forth herein. As described below, Samsung has infringed and/or continues to infringe the 551, 937, 298, 131, 591, and 572 Patents. 34. At least the Samsung Mobile Communication Devices infringe at
least claim 1 of the 551 Patent. Samsung makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these products and thus directly infringes one or more claims of the 551 Patent, including at least claim 1.
1
On information and belief, one or more of LG Electronics Inc.,LG Electronics U.S.A., Inc., and LG Electronics MobileComm U.S.A., Inc. (collectively LGE) is an OEM for Googles Nexus 5 device, and one or both of ASUSTeK Computer, Inc. and ASUS Computer International, Inc. (collectively, ASUS) is an OEM for Googles Nexus 7 device. Rockstar has brought actions for patent infringement against LGE and Asus in this District on the 551, 937, 298, 973, 131, 591, and 572 Patents. 9
Case Case 2:13-cv-00900-JRG 2:13-cv-00900-JRG Case4:13-cv-05933-CW Document Document Document20-10 26-2 19 Filed Filed02/10/14 12/31/13 Filed01/23/14 Page Page754 10 Page11 of of 67 826 PageID of PageID 68 #:#:94 941
35.
Samsung indirectly infringes the 551 patent by inducing
infringement by others, such as resellers, of at least claim 1 in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and/or end-users of the Samsung Mobile Communication Devices. Samsung had actual notice of the 551 Patent at least by October 15, 2012, in view of a Rockstar communication to Samsung, and also received knowledge as of the date this lawsuit was filed. 36. Samsungs affirmative acts of selling Samsung Mobile
Communication Devices, causing the Samsung Mobile Communication Devices to be manufactured and distributed, and providing instruction manuals for Samsung Mobile Communication Devices induced Samsungs manufacturers and resellers to make or use Samsung Mobile Communication Devices in their normal and customary way to infringe the 551 patent. Through its manufacture and sales of Samsung Mobile Communication Devices, Samsung specifically intended its resellers and manufacturers to infringe the 551 patent; further, Samsung was aware that these normal and customary activities would infringe the 551 patent. Samsung performed the acts that constitute induced infringement, and would induce actual infringement, with the knowledge of the 551 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 37. Accordingly, a reasonable inference is that Samsung specifically
intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 551 Patent in the United States because Samsung has knowledge of the 551 Patent and Samsung actually induces others, such as resellers and end-use 10
customers, to directly infringe the 551 patent, by using, selling, exporting, supplying and/or distributing, within the United States, Samsung Mobile Communication Devices for resale to others, such as resellers and end-use customers. Samsung knew or should have known that such actions would induce actual infringement. 38. Samsung indirectly infringes the 551 Patent by contributing to
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Samsung Mobile Communication Devices. Samsung had actual notice of the 551 Patent at least by October 15, 2012, in view of a Rockstar communication to Samsung, and also received knowledge as of the date this lawsuit was filed. 39. Samsung Mobile Communication Devices include at least one
electronic package comprising a component that is located between an EMI shield and a ground member for performing shielding operations. The EMI shield is incorporated into the electronic package, which is then mounted to a circuit board in Samsung Mobile Communication Devices, and on information and belief, the electronic component does not function in an acceptable manner absent the EMI shielding. Furthermore, the
electronic package incorporating the EMI shield does not operate in isolation, but is designed to operate within the Mobile Communication Device, and absent the EMI shielding of the electronic component, Samsung Mobile Communication Devices would not function in an acceptable manner. 40. A reasonable inference to be drawn from the facts set forth is that
the EMI shielded electronic package in Samsung Mobile Communication Devices is 11
especially made or especially adapted to operate in a Samsung Mobile Communication Device as an EMI shield. 41. A reasonable inference to be drawn from the facts set forth is that
the EMI shielded electronic package is not a staple article or commodity of commerce and that the use of the EMI shielded electronic package is required for operation of Samsung Mobile Communication Devices. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 42. The EMI shielded electronic package in Samsung Mobile
Communication Devices are each a material part of the invention of the 551 patent and are especially made for the infringing manufacture, sale, and use of Samsung Mobile Communication Devices. Samsung Mobile Communication Devices, including the EMI shielded electronic package, are especially made or adapted as an electronic package that infringes the 551 patent. Because the sales and manufacture of Samsung Mobile
Communication Devices including the EMI shielded electronic package infringe the 551 patent, Samsungs sales of its infringing products have no substantial non-infringing uses. 43. Accordingly, a reasonable inference is that Samsung offers to sell,
or sells within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing uses. Samsung provides to others Samsung Mobile Communication Devices with distinct and separate
12
components, including hardware components, which have no substantial non-infringing uses. 44. At least Samsung Mobile Communication Devices with an
operating system configured and installed by Samsung to support Gallery, Email, Maps and Browser functionality, infringe at least claim 13 of the 937 Patent. Samsung makes, uses, tests, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claim 13 of the 937 Patent. 45. Samsung indirectly infringes the 937 patent by inducing
infringement by others of at least claim 13, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the Samsung Mobile Communication Devices. Samsung received actual notice of the 937 Patent at least by September 3, 2009 from a communication from Rockstar, and/or its predecessors-in-interest, to Samsung, and also received knowledge as of the date this lawsuit was filed. 46. Samsungs affirmative acts of selling Samsung Mobile
Communication Devices, causing the Samsung Mobile Communication Devices to be manufactured, and providing instruction manuals for Samsung Mobile Communication Devices induced Samsungs manufacturers and resellers to make or use the Samsung Mobile Communication Devices in their normal and customary way to infringe the 937 patent. Through its manufacture and sales of Samsung Mobile Communication Devices, Samsung specifically intended its resellers and manufacturers to infringe the 937 patent; 13
further, Samsung was aware that these normal and customary activities would infringe the 937 patent. Samsung performed the acts that constitute induced infringement, and would induce actual infringement, with knowledge of the 937 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 47. Accordingly, a reasonable inference is that Samsung specifically
intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 937 patent in the United States because Samsung has knowledge of the 937 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, Samsung Communication Devices for resale to others, such as resellers and end-use customers. Samsung knew or should have known that such actions would induce actual infringement. 48. The use of at least Samsung Mobile Communication Devices with
an operating system configured and installed by Samsung to support Gallery, Email, Maps and Browser functionality as intended by Samsung infringes at least method claim 1 of the 937 Patent. Samsung uses these products and thus directly infringes at least method claim 1 of the 937 Patent. 49. In addition, Samsung provides at least Samsung Mobile
Communication Devices with an operating system configured and installed by Samsung to support Gallery, Email, Maps, and Browser functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claim 1 of the 937 Patent.
14
50.
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the Samsung Mobile Communication Devices. Samsung received actual notice of the 937 Patent at least by September 3, 2009 in view of a communication from Rockstar, and/or its predecessors-in-interest, to Samsung, and also received knowledge as of the date this lawsuit was filed. 51. Samsung provides at least Samsung Mobile Communication
Devices with an operating system configured and installed by Samsung to support Gallery, Email, Maps and Browser functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe the 937 Patent. Through its manufacture and sales of Samsung Mobile Communication Devices, Samsung specifically intended its resellers and manufacturers to infringe the 937 patent. 52. Samsung specifically intends for others, such as resellers and end-
use customers, to directly infringe one or more claims of the 937 Patent in the United States. For example, Samsung provides instructions to resellers and end-use customers regarding the use and operation of Samsungs products in an infringing way. Such instructions include at least Samsung Captivate Mobile Phone User Manual (available at http://downloadcenter.samsung.com/content/UM/201201/20120117231631844/ATT_i89 7_Captivate_English_User_Manual.pdf). When resellers and end-use customers follow such instructions, they directly infringe the 937 Patent. 15 Samsung knows that by
providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 937 Patent. Samsung thus knows that its actions induce the infringement. 53. Samsung performed the acts that constitute induced infringement,
and would induce actual infringement, with knowledge of the 937 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 54. Samsung indirectly infringes the 937 patent, by contributing to
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Samsung Mobile Communication Devices. Samsung received actual notice of the 937 Patent at least by September 3, 2009 in view of a communication from Rockstar and/or its predecessors-in-interest to Samsung, and also received knowledge as of the date this lawsuit was filed. 55. Samsung Mobile Communication Devices include functionality
that, inter alia, displays a navigable graphical user interface (navigable GUI) that permits a user to manipulate and control the contents of the display to maximize the use of display real estate. This navigable GUI is included in Samsung Mobile
Communication Devices with an operating system configured and installed by Samsung to support at least the Gallery, Email, Maps, and Browser functionalities. On information and belief, these functionalities cannot operate in an acceptable manner absent the navigable GUI, as it is included in every Samsung Mobile Communication Device.
16
56.
A reasonable inference to be drawn from the facts set forth is that
the navigable GUI as included in Samsung Mobile Communication Devices is especially made or especially adapted to operate on a Samsung Mobile Communication Device as a navigable GUI that permits a user to manipulate or control the contents of the display to maximize the use of display real estate on the users Samsung Mobile Communication Devices. 57. A reasonable inference to be drawn from the facts set forth is that
the navigable GUI as included in the Mobile Communication Device is not a staple article or commodity of commerce and that the use of the navigable GUI in Samsung Mobile Communication Devices is required for the operation of Samsung Mobile Communication Devices. Any other use would be unusual, far-fetched, illusory,
impractical, occasional, aberrant, or experimental. 58. Samsung Mobile Communication Devices with the navigable GUI
are each a material part of the invention of the 937 patent and are especially made for the infringing manufacture, sale, and use of Samsung Mobile Communication Devices. Samsung Mobile Communication Devices with the navigable GUI are especially made or adapted as a navigable GUI that infringes the 937 patent. Because the sales and
manufacture of Samsung Mobile Communication Devices with a navigable GUI infringes the 937 patent, Samsungs sales of its infringing products have no substantial noninfringing uses. 59. Accordingly, a reasonable inference is that Samsung offers to sell,
or sells within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing the 937 17
patent, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing uses. Samsung provides to others, Samsung Mobile Communication Devices with distinct and separate components, including software components, which have no substantial non-infringing uses. 60. At least Samsung Mobile Communication Devices with an
operating system configured and installed by Samsung to support the Mobile Hotspot functionality infringe at least claims 27 and 31 of the 298 Patent. Samsung makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claims 27 and 31 of the 298 Patent. 61. Samsung indirectly infringes the 298 patent by inducing
infringement by others of at least claims 27 and 31, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct
infringement is the result of activities performed by the manufacturers, resellers, and endusers of the Samsung Mobile Communication Devices. Samsung received actual notice of the 298 Patent at least by July 29, 2012 from a communication from Rockstar, and/or its predecessors-in-interest, to Samsung, and also received knowledge as of the date this lawsuit was filed. 62. Samsungs affirmative acts of selling Samsung Mobile
Communication Devices, causing the Samsung Mobile Communication Devices to be manufactured, and providing instruction manuals for Samsung Mobile Communication Devices induced Samsungs manufacturers and resellers to make or use the Samsung 18
Mobile Communication Devices in their normal and customary way to infringe the 298 patent. Through its manufacture and sales of Samsung Mobile Communication Devices, Samsung specifically intended its resellers and manufacturers to infringe the 298 patent; further, Samsung was aware that these normal and customary activities would infringe the 298 patent. Samsung performed the acts that constitute induced infringement, and would induce actual infringement, with knowledge of the 298 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 63. Accordingly, a reasonable inference is that Samsung specifically
intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 298 patent in the United States because Samsung has knowledge of the 298 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, Samsung Communication Devices for resale to others, such as resellers and end-use customers. Samsung knew or should have known that such actions would induce actual infringement. 64. The use of at least Samsung Mobile Communication Devices that
support the Mobile Hotspot functionality as intended by Samsung infringes at least method claims 14 and 24 of the 298 Patent. Samsung uses these products and thus directly infringes at least method claims 14 and 24 of the 298 Patent. 65. In addition, Samsung provides at least Samsung Mobile
Communication Devices that support the Mobile Hotspot functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claims 14 and 24 of the 298 Patent. 19
66.
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities of the manufacturers, resellers, and end-users of Samsung Mobile Communication Devices in their intended use, including a customers use of the Mobile Hotspot functionality. Samsung received actual notice of the 298 Patent at least by July 29, 2012 from a Rockstar communication to Samsung, and also received knowledge as of the date this lawsuit was filed. 67. Samsungs affirmative acts of selling its Samsung Mobile
Communication Devices and providing instruction manuals induced the end-users of Samsung Mobile Communication Devices to use Samsung Mobile Communication Devices in their normal and customary way to infringe the 298 patent at least through using Mobile Hotspot functionality. Samsung also provides instructions, including at least Verizon User Manual Samsung Galaxy S III available on Samsungs website at http://www.samsung.com/us/support/owners/product/SCH-I535MBCVZW, for using the Mobile Hotspot functionality. Through its sales of Samsung Mobile Communication Devices with Mobile Hotspot functionality, Samsung specifically intended the end-users of Samsung Mobile Communication Devices to infringe the 298 patent; further, Samsung was aware that the normal and customary use of Mobile Hotspot functionality would infringe the 298 patent. Samsung also enticed its end-users to use the Mobile Hotspot functionality by providing instruction manuals and also providing Mobile Hotspot functionality. Samsung performed the acts that constituted induced
infringement, and would induce actual infringement, with the knowledge of the 298 20
patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 68. Accordingly, a reasonable inference is that Samsung actively
induces infringement of the 298 Patent by others, such as resellers and end-use customers. Samsung specifically intends for others, including such as resellers and enduse customers, to directly infringe one or more claims of the 298 Patent in the United States because Samsung had knowledge of the 298 Patent, and Samsung actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of Samsung Mobile Communication Devices in an infringing way. Such instructions include at least Verizon User Manual Samsung
Galaxy S III available at http://www.samsung.com/us/support/owners/product/SCHI535MBCVZW. When resellers and end-use customers follow such instructions, they directly infringe the 298 Patent. Samsung knows that by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 298 Patent. Samsung thus knows that its actions induce the infringement. 69. Samsung indirectly infringes the 298 Patent by contributing to
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Samsung Mobile Communication Devices in their intended use, including a customers use of the Mobile Hotspot functionality. Samsung received actual notice of the 298 Patent at least by July 29, 2012 from a Rockstar communication to Samsung, and also received knowledge as of the date this lawsuit was filed. 21
70.
Samsung Mobile Communication Devices with the Mobile
Hotspot functionality allow wireless devices from a first, or private, network to connect to a second, or public, network such as the Internet. The Mobile Hotspot functionality is designed to route data packets between wireless devices tethered to the Mobile Hotspot to nodes on a public network such as the Internet, and cannot function in a manner that does not utilize the Mobile Hotspot functionality available to Samsung Mobile Communication Devices. Upon information and belief, the Mobile Hotspot functionality is designed to entice a user to access nodes in a second, or public, network such as the Internet. 71. A reasonable inference to be drawn from the facts set forth is that
the Mobile Hotspot functionality is especially made or especially adapted to operate on a mobile communication device for providing access for wireless devices in a first, or private, network to nodes in a second, or public, network. 72. A reasonable inference to be drawn from the facts set forth is that
the Mobile Hotspot functionality is not a staple article or commodity of commerce and that the use of the Mobile Hotspot functionality of Samsung Mobile Communication Devices is for interfacing first and second data communications networks, e.g., a private network and a public network such as the Internet. Any other use would be unusual, farfetched, illusory, impractical, occasional, aberrant, or experimental. 73. Samsung Mobile Communication Devices with Mobile Hotspot
functionality are each a material part of the 298 patent and especially made for the infringing use of the Mobile Hotspot functionality for interfacing private and public data communication networks. Samsung Mobile Communication Devices with the Mobile 22
Hotspot functionality are especially made or adapted to provide access for wireless devices in a first, or private, network through the Mobile Communication Device, to nodes in a second, or public, network that perform or facilitate performance of the steps that infringe the 298 patent. Furthermore, Samsung provides user manuals describing the uses of Samsung Mobile Communication Devices that infringe the 298 patent. Because the sales and manufacture of Samsung Mobile Communication Devices with Mobile Hotspot functionality infringes the 298 patent, Samsungs sales of its infringement products have no substantial non-infringing uses. 74. Accordingly, a reasonable inference is that Samsung offers to sell,
or sells within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing uses. Samsung provides to others, Samsung Mobile Communication Devices with an operating system configured and installed by Samsung to support Mobile Hotspot functionality. Samsung installs and configures Samsung Mobile Communication Devices with distinct and separate components, including software components, which are used only to perform the infringing method claims. 75. At least Samsung Mobile Communication Devices with an
operating system configured and installed by Samsung to support an integrated notification message center functionality infringe at least claims 1 and 21 of the 973 Patent. Samsung makes, uses, sells, tests, uses, offers for sale, imports, exports, supplies 23
and/or distributes within the United States these devices and thus directly infringes one or more claims of the 973 patent, including at least claims 1 and 21. 76. Samsung indirectly infringes the 973 patent by inducing
infringement by others, such as resellers, of at least claims 1 and 21 in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct
infringement is the result of activities performed by the manufacturers, resellers, and endusers of the Samsung Mobile Communication Devices. Samsung received actual notice of the 973 Patent at least by March 12, 2012 from a communication from Rockstar, and/or its predecessors-in-interest, to Samsung, and also received knowledge as of the date this lawsuit was filed. 77. Samsungs affirmative acts of selling Samsung Mobile
Communication Devices, causing the Samsung Mobile Communication Devices to be manufactured, and providing instruction manuals for Samsung Mobile Communication Devices induced Samsungs manufacturers and resellers to make or use the Samsung Mobile Communication Devices in their normal and customary way to infringe the 973 patent. Through its manufacture and sales of Samsung Mobile Communication Devices, Samsung specifically intended its resellers and manufacturers to infringe the 973 patent; further, Samsung was aware that these normal and customary activities would infringe the 973 patent. Samsung performed the acts that constitute induced infringement, and would induce actual infringement, with knowledge of the 973 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 78. Accordingly, a reasonable inference is that Samsung specifically
intends for others, such as resellers and end-use customers, to directly infringe one or 24
more claims of the 973 patent in the United States because Samsung has knowledge of the 973 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, Samsung Communication Devices for resale to others, such as resellers and end-use customers. Samsung knew or should have known that such actions would induce actual infringement. 79. The use of at least Samsung Mobile Communication Devices with
an operating system configured and installed by Samsung to support an integrated notification message center functionality as intended by Samsung infringes at least method claim 8 of the 973 Patent. Samsung uses these devices within the United States and thus directly infringes one or more claims of the 973 patent, including at least claim 8. 80. Samsung indirectly infringes the 973 patent by inducing
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Samsung Mobile Communication Devices. Samsung received actual notice of the 973 Patent at least by March 12, 2012 in view of a Rockstar communication to Samsung, and also received knowledge as of the date this lawsuit was filed. 81. Samsung provides at least Samsung Mobile Communication
Devices with an operating system configured and installed by Samsung to support integrated notification message center functionality to others, such as resellers and enduse customers, in the United States who, in turn, use Samsung Mobile Communication 25
Devices to infringe at least method claim 8 of the 973 Patent. Through its manufacture and sales of Samsung Mobile Communication Devices, Samsung specifically intended its resellers and manufacturers to infringe the 973 patent. 82. Samsung specifically intends for others, such as resellers and end-
use customers, to directly infringe one or more claims of the 973 Patent in the United States. For example, Samsung provides instructions to resellers and end-use customers regarding the use and operation of Samsung Mobile Communication Devices in an infringing way. Such instructions include at least Samsung Captivate Mobile Phone User Manual (available at
http://downloadcenter.samsung.com/content/UM/201201/20120117231631844/ATT_i89 7_Captivate_English_User_Manual.pdf, accessed October 30, 2013). When resellers and end-use customers follow such instructions, they directly infringe the 973 Patent. Samsung knows that by providing such instructions, resellers and end-use customers follow those instructions, and directly infringe the 973 Patent. Samsung thus knows that its actions induce the infringement. 83. Samsung performed the acts that constitute induced infringement,
and would induce actual infringement, with the knowledge of the 973 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 84. Samsung indirectly infringes the 973 patent, by contributing to
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Samsung Mobile Communication Devices. Samsung received actual notice of the 973 26
Patent at least by March 12, 2012 from a Rockstar communication to Samsung, and also received knowledge as of the date this lawsuit was filed. 85. Samsung Mobile Communication Devices include functionality
that, inter alia, displays an integrated notification message center contained in a single list. The notification message center is designed to provide a user with a single list of notifications regardless of the types of messages (e.g., email, text, etc) on the users Mobile Communication Device. On information and belief, this functionality cannot operate in an acceptable manner absent the integrated notification message center, as it is included in every Samsung Mobile Communication Device. 86. A reasonable inference to be drawn from the facts set forth is that
the integrated message center in Samsung Mobile Communication Devices is especially made or especially adapted to operate on a Samsung Mobile Communication Device as an integrated notification message center that provides a user with notifications concerning different types of messages on the users Mobile Communication Device. 87. A reasonable inference to be drawn from the facts set forth is that
the integrated notification message center in the Mobile Communication Device is not a staple article or commodity of commerce and that the use of the integrated notification message center in Samsung Mobile Communication Devices is required for operation of Samsung Mobile Communication Devices. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 88. Samsung Mobile Communication Devices with the integrated
notification message center are each a material part of the invention of the 973 patent and are especially made for the infringing manufacture, sale, and use of Samsung Mobile 27
Communication Devices.
Samsung Mobile Communication Devices, including the
manufacture of Samsung Mobile Communication Devices with an integrated notification message center infringes the 973 patent, Samsungs sales of its infringing products have no substantial non-infringing uses. 89. Accordingly, a reasonable inference is that Samsung offers to sell,
or sells within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing uses. Samsung provides to others, Samsung Mobile Communication Devices with distinct and separate components, including software components, which have no substantial non-infringing uses. 90. At least Samsung Mobile Communication Devices with an
operating system configured and installed by Samsung to support Message and Notification functionality infringe at least claim 1 of the 131 Patent. Samsung makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claim 1 of the 131 Patent. 91. Samsung indirectly infringes the 131 patent by inducing
infringement by others, such as resellers, of at least claim 1 in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the 28
result of activities performed by the manufacturers, resellers, and end-users of the Samsung Mobile Communication Devices. Samsung received actual notice of the 131 Patent at least by November 30, 2012 from a communication from Rockstar, and/or its predecessors-in-interest, to Samsung, and also received knowledge as of the date this lawsuit was filed. 92. Samsungs affirmative acts of selling Samsung Mobile
intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 131 patent in the United States because Samsung has knowledge of the 131 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, Samsung Communication Devices for resale to others, such as resellers
29
and end-use customers. Samsung knew or should have known that such actions would induce actual infringement. 94. The use of at least Samsung Mobile Communication Devices with
an operating system configured and installed by Samsung to support Message and Notification functionality as intended by Samsung infringes at least method claim 5 of the 131 Patent. Samsung uses these products and thus directly infringes at least method claim 5 of the 131 Patent. 95. In addition, Samsung provides at least Samsung Mobile
Communication Devices with an operating system configured and installed by Samsung to support Message functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claim 5 of the 131 Patent. 96. Samsung indirectly infringes the 131 patent by inducing
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Samsung Mobile Communication Devices in their intended use, including a customers use of the Message and Notifications functionality. Samsung received actual notice of the 131 Patent at least by November 30, 2012 in view of a Rockstar communication to Samsung, and also received knowledge as of the date this lawsuit was filed. 97. Samsungs affirmative acts of selling Samsung Mobile
Communication Devices and providing instruction manuals induced the end-users of Samsung Mobile Communication Devices to use Samsung Mobile Communication 30
Devices in their normal and customary way to infringe the 131 patent at least through using Message and Notifications functionality. Samsung also provides instructions,
including at least Verizon Samsung Galaxy S III User Guide available on Samsungs website at http://www.samsung.com/us/support/owners/product/SCH-I535MBCVZW, for using the Messaging and Notifications functionality. Through its sales of Mobile Communication Devices with Messaging and Notifications functionality, Samsung specifically intended the end-users of Samsung Mobile Communication Devices to infringe the 131 patent; further, Samsung was aware that the normal and customary use of the Message and Notifications functionality would infringe the 131 patent. Samsung also enticed its end-users to use the Messaging and Notifications functionality by providing instruction manuals. Samsung performed the acts that constituted induced infringement, and would induce actual infringement, with the knowledge of the 131 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 98. Accordingly, a reasonable inference is that Samsung actively
induces infringement of the 131 Patent by others, such as resellers and end-use customers. Samsung specifically intends for others, such as resellers and end-use
customers, to directly infringe one or more claims of the 131 Patent in the United States because Samsung had knowledge of the 131 Patent, and Samsung actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of Samsung Mobile Communication Devices in an infringing way. Such instructions include at least Verizon Samsung Galaxy S III User Guide available at http://www.samsung.com/us/support/owners/product/SCH-I535MBCVZW. 31 When
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Samsung Mobile Communication Devices in their intended use, including a customers use of the Messaging and Notification functionality. Samsung received actual notice of the 131 Patent at least by November 30, 2012 in view of a Rockstar communication to Samsung, and also received knowledge as of the date this lawsuit was filed. 100. Samsungs Message and Notification functionality receives and
displays message of different types, such as a phone call, voice mail, text message, or email. The Message and Notification Services functionality is designed to notify the user of an incoming communication and to select the format of the message received and cannot function in a manner that does not utilize the messaging functionality available to Samsung Mobile Communication Devices. Upon information and belief, the Message and Notifications functionality is designed to entice a user to receive notifications of an incoming communication. 101. A reasonable inference to be drawn from the facts set forth is that
the Message and Notifications functionality especially made or especially adapted to
32
operate on Samsung Mobile Communication Devices for notifying a user of an incoming communication. 102. A reasonable inference to be drawn from the facts set forth is that
the Message and Notifications functionality is not a staple article or commodity of commerce and that the use of the Messaging and Notifications functionality of the Samsung Mobile Communication Devices is for notifying a user of an incoming communication. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 103. Samsung Mobile Communication Devices with Messaging and
Notifications functionality are each a material part of the 131 patent and especially made for the infringing use of the Messaging and Notification functionality to receive and display messages. Samsung Mobile Communication Devices including the Messaging and Notification functionality, are especially made or adapted to notify a user of an incoming communication that perform or facilitate performance of the steps that infringe the 131 patent. Furthermore, Samsung provides user manuals describing the uses of its Mobile Communication Devices that infringe the 131 patent. Because the functionality provided by Samsungs Messaging and Notification to notify a user of an incoming communication infringes the 131 patent, Samsungs sales of its infringing products have no substantial non-infringing uses. 104. Accordingly, a reasonable inference is that Samsung offers to sell,
or sells within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially 33
made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing uses. Samsung provides to others, Mobile Communication Devices with an operating system configured and installed by Samsung to support Message and Notification functionality. Samsung installs and configures on these products distinct and separate components, including software components, which are used only to perform the infringing method claims. 105. At least Samsung Mobile Communication Devices with an
operating system configured and installed by Samsung to support VPN management functionality, including the Samsung Galaxy S III, infringe at least claims 1 and 8 of the 591 Patent. Samsung makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claims 1 and 8 of the 591 Patent. 106. The use of at least Samsung Mobile Communication Devices with
an operating system configured and installed by Samsung to support VPN management functionality as specified and intended by Samsung infringes at least claims 1 and 8 of the 591 Patent. Samsung uses these products and thus directly infringes at least claims 1 and 8 of the 591 Patent. 107. Samsung indirectly infringes the 591 patent by inducing
infringement by others, such as resellers, of at least claims 1 and 8 in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the Samsung Mobile Communication Devices. Samsung received actual notice of the 591 Patent at least by October 15, 2012 from a communication from Rockstar, and/or its 34
predecessors-in-interest, to Samsung, and also received knowledge as of the date this lawsuit was filed. 108. Samsungs affirmative acts of selling Samsung Mobile
intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 591 patent in the United States because Samsung has knowledge of the 591 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, Samsung Communication Devices for resale to others, such as resellers and end-use customers. Samsung knew or should have known that such actions would induce actual infringement. 110. In addition, Samsung provides at least its Mobile Communication
Devices with an operating system configured and installed by Samsung to support VPN 35
management functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least claims 1 and 8 of the 591 Patent. 111. Samsung indirectly infringes the 591 patent by inducing
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Samsung Mobile Communication Devices in their intended use, including a customers use of the VPN management functionality. Samsung received actual notice of the 591 Patent at least by October 15, 2012 from a Rockstar communication to Samsung, and also received knowledge as of the date this lawsuit was filed. 112. Samsungs affirmative acts of selling its Mobile Communication
Devices and providing instruction manuals induced the end-users of Samsung Mobile Communication Devices to use Samsung Mobile Communication Devices in their normal and customary way to infringe the 591 patent at least through using VPN management functionality. Samsung also provides instructions, including at least Verizon Samsung Galaxy S III User Manual available on Samsungs website at
http://www.samsung.com/us/support/owners/product/SCH-I535MBCVZW, for using the VPN management functionality. Through its sales of Samsung Mobile Communication Devices with VPN management functionality, Samsung specifically intended the endusers of Samsung Mobile Communication Devices to infringe the 591 patent; further, Samsung was aware that the normal and customary use of VPN management functionality would infringe the 591 patent. Samsung also enticed its end-users to use 36
the VPN management functionality by providing instruction manuals.
Samsung
performed the acts that constituted induced infringement, and would induce actual infringement, with the knowledge of the 591 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 113. Accordingly, it is a reasonable inference that Samsung actively
customers, to directly infringe one or more claims of the 591 Patent in the United States because Samsung had knowledge of the 591 Patent, and Samsung actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of Samsungs products in an infringing way. Such instructions include at least Verizon Samsung Galaxy S III User Manual available on Samsungs website at http://www.samsung.com/us/support/owners/product/SCH-I535MBCVZW. When
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Samsung Mobile Communication Devices in their intended use, including a customers use of the VPN management functionality. Samsung received actual notice of the 591 37
Patent at least by October 15, 2012 in view of a Rockstar communication to Samsung, and also received knowledge as of the date this lawsuit was filed. 115. Samsungs VPN management functionality facilitates management
of VPNs. The VPN management functionality is designed for management of VPNs and cannot function in a manner that does not utilize the VPN management functionality available to Samsung Mobile Communication Devices. The VPN management
functionality is designed upon information and belief to entice a user to manage VPNs. 116. A reasonable inference to be drawn from the facts set forth is that
the VPN functionality is especially made or especially adapted to operate on Samsung Mobile Communication Devices for providing VPN management functionality. 117. A reasonable inference to be drawn from the facts set forth is that
the VPN management functionality is not a staple article or commodity of commerce and that the use of the VPN management functionality of Samsung Mobile Communication Devices is for managing VPNs. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 118. Samsung Mobile Communication Devices with VPN management
functionality are each a material part of the invention of the 591 patent and especially made for the infringing use of the VPN functionality. Samsung Mobile Communication Devices including the VPN management functionality, are especially made or adapted to provide VPN management functionality that perform or facilitate performance of the steps that infringe the 591 patent. Furthermore, Samsung provides user manuals
describing the uses of its Mobile Communication Devices that infringe the 591 patent. Because the functionality provided by Samsungs VPN management functionality 38
infringes the 591 patent, Samsungs sales of its infringing Mobile Communication Devices have no substantial non-infringing uses. 119. Accordingly, a reasonable inference is that Samsung offers to sell,
or sells within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing uses. Samsung provides to others, Mobile Communication Devices with an operating system configured and installed by Samsung to support VPN management functionality. Samsung installs and configures on these products distinct and separate components, including software components, which are used only to infringe the 591 Patent. 120. The use of at least Samsung Mobile Communication Devices with
an operating system configured and installed by Samsung to support Location Services functionality, as intended by Samsung infringes at least method claim 17 of the 572 Patent. Samsung uses these Mobile Communication Devices and thus directly infringes at least method claim 17 of the 572 Patent. 121. In addition, Samsung provides at least its Mobile Communication
Devices with an operating system configured and installed by Samsung to support Location Services functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claim 17 of the 572 Patent.
39
122.
Samsung indirectly infringes by inducing infringement by others,
such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Samsung Mobile Communication Devices in their intended use, including a customers use of the Location Services functionality. Samsung received actual notice of the 572 Patent at least by May 2, 2012 in view of a Rockstar communication to Samsung, and also received knowledge as of the date this lawsuit was filed. 123. Samsungs affirmative acts of selling its Mobile Communication
Devices and providing instruction manuals induced the end-users of Samsung Mobile Communication Devices to use Samsung Mobile Communication Devices in their normal and customary way to infringe the 572 patent at least through using Location Services functionality. Samsung also provides instructions, including at least GT-P7300 User Manual available on Samsungs website at
http://downloadcenter.samsung.com/content/UM/201209/20120922095036620/GTP7300_UM_Open_HongKong_Icecream_Eng_Rev.1.0_120817_Screen.pdf, for using the Location Services functionality. Through its sales of Samsung Mobile
Communication Devices with Location Services functionality, Samsung specifically intended the end-users of Samsung Mobile Communication Devices to infringe the 572 patent; further, Samsung was aware that the normal and customary use of Location Services would infringe the 572 patent. Samsung also enticed its end-users to use the Location Services by providing instruction manuals. Samsung performed the acts that constituted induced infringement, and would induce actual infringement, with the 40
knowledge of the 572 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 124. Accordingly, a reasonable inference is that Samsung actively
customers, to directly infringe one or more claims of the 572 Patent in the United States because Samsung had knowledge of the 572 Patent, and Samsung actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of Samsungs products in an infringing way. Such instructions include at least GT-P7300 User Manual available on Samsungs website at
http://downloadcenter.samsung.com/content/UM/201209/20120922095036620/GTP7300_UM_Open_HongKong_Icecream_Eng_Rev.1.0_120817_Screen.pdf. When
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Samsung Mobile Communication Devices in their intended use, including a customers use of the Locations Services functionality. Samsung received actual notice of the 572
41
Patent at least by May 2, 2012 in view of a Rockstar communication to Samsung, and also received knowledge as of the date this lawsuit was filed. 126. Samsungs Location Services functionality provides call trace
information, i.e., a geographic location of Samsung Mobile Communication Devices. The Location Services functionality is designed to notify the user of Samsung Mobile Communication Devices of call trace information, i.e., a geographic location of the Mobile Communication Devices, and cannot function in a manner that does not utilize the Location Services functionality available to the Mobile Communication Devices. Upon information and belief, the Location Services functionality is designed to entice a user to access call trace information. 127. A reasonable inference to be drawn from the facts set forth is that
the Location Services functionality is especially made or especially adapted to operate on Samsung Mobile Communication Devices for obtaining call trace information, i.e., a geographic location of the Mobile Communication Devices. 128. A reasonable inference to be drawn from the facts set forth is that
the Location Services functionality is not a staple article or commodity of commerce and that the use of the Location Services functionality of Samsung Mobile Communication Devices is for providing call trace information. Any other use would be unusual, farfetched, illusory, impractical, occasional, aberrant, or experimental. 129. Samsung Mobile Communication Devices with Location Services
functionality are each a material part of the 572 patent and especially made for the infringing use of the Location Services functionality to receive call trace information, i.e., a geographic location of the Mobile Communication Devices. 42 The Mobile
Communication Devices including the Location Services functionality are especially made or adapted to provide call trace information that perform or facilitate performance of the steps that infringe the 572 patent. Furthermore, Samsung provides user manuals describing the uses of its products that infringe the 572 patent. Because the functionality provided by Samsungs Location Services to obtain call trace information, i.e., a geographic location of the Mobile Communication Devices, infringes the 572 patent, Samsungs sales of its infringing products have no substantial non-infringing uses. 130. Accordingly, a reasonable inference is that Samsung offers to sell,
or sells within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing uses. Samsung provides to others Mobile Communication Devices with an operating system configured and installed by Samsung to support Location Services functionality. Samsung installs and configures on these products distinct and separate components, including software components, which are used only to perform the infringing method claims. 131. Samsungs acts of infringement have caused damage to Rockstar
and MobileStar. Rockstar and MobileStar are entitled to recover from Samsung the damages sustained by Rockstar and MobileStar as a result of Samsungs wrongful acts in an amount subject to proof at trial. In addition, the infringing acts and practices of Samsung have caused, are causing, and, unless such acts and practices are enjoined by the Court, will continue to cause immediate and irreparable harm to Rockstar and 43
MobileStar for which there is no adequate remedy at law, and for which Rockstar and MobileStar are entitled to injunctive relief under 35 U.S.C. 283. 132. Samsung received actual notice of its infringement of the 551,
937, 298, 973, 131, 591, and 572 Patents through at least letters sent by Rockstar and/or its predecessors-in-interest, Nortel Networks Ltd. and/or Nortel Networks, Inc., to Samsung, and through meetings between employees of Rockstar and/or its predecessorsin-interest, Nortel Networks Ltd., or Nortel Networks Inc. and Samsung. Samsung also has knowledge of its infringement of the Patents-in-Suit by way of this Complaint. 133. Samsung has willfully infringed and/or does willfully infringe the
551, 937, 298, 973, 131, 591, and 572 Patents. 134. Samsungs acts of infringement have caused damage to Rockstar
and MobileStar. Rockstar and MobileStar are entitled to recover from Samsung the damages sustained by Rockstar and MobileStar as a result of Samsungs wrongful acts in an amount subject to proof at trial. In addition, the infringing acts and practices of Samsung have caused, are causing, and, unless such acts and practices are enjoined by the Court, will continue to cause immediate and irreparable harm to Rockstar and MobileStar for which there is no adequate remedy at law, and for which Rockstar and MobileStar are entitled to injunctive relief under 35 U.S.C. 283. COUNT TWO PATENT INFRINGEMENT BY GOOGLE 135. Plaintiffs incorporate by reference paragraphs 1-134 as if fully set
forth herein. As described below, Google has infringed and/or continues to infringe the 937, 131, and 591 Patents. 44
136.
At least Google Mobile Communication Devices with an operating
system configured and installed by Google to support Gallery, Email, Maps and Browser functionality, infringe at least claim 13 of the 937 Patent. Google makes, uses, tests, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claim 13 of the 937 Patent. 137. Google indirectly infringes the 937 patent by inducing
infringement by others of at least claim 13, such as resellers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the Google Mobile Communication Devices. Google received actual notice of the 937 Patent at least by April 4, 2011, when it placed its initial bid for the Nortel patent portfolio containing each of the patents asserted herein, and further has knowledge of its infringement of the Patents-in-Suit by way of this Complaint. 138. Googles affirmative acts of selling Google Mobile
Communication Devices, causing the Google Mobile Communication Devices to be manufactured, and providing instruction manuals for Google Mobile Communication Devices induced Googles manufacturers and resellers to make or use the Google Mobile Communication Devices in their normal and customary way to infringe the 937 patent. Through its manufacture and sales of Google Mobile Communication Devices, Google specifically intended its resellers and manufacturers to infringe the 937 patent; further, Google was aware that these normal and customary activities would infringe the 937 patent. Google performed the acts that constitute induced infringement, and would
45
induce actual infringement, with knowledge of the 937 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 139. Accordingly, a reasonable inference is that Google specifically
intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 937 patent in the United States because Google has knowledge of the 937 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, Google Communication Devices for resale to others, such as resellers and end-use customers. Google knew or should have known that such actions would induce actual infringement. 140. The use of at least Google Mobile Communication Devices with an
operating system configured and installed by Google to support Gallery, Email, Maps and Browser functionality as intended by Google infringes at least method claim 1 of the 937 Patent. Google uses these products and thus directly infringes at least method claim 1 of the 937 Patent. 141. In addition, Google provides at least Google Mobile
Communication Devices with an operating system configured and installed by Google to support Gallery, Email, Maps, and Browser functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claim 1 of the 937 Patent. 142. Google indirectly infringes the 937 patent by inducing
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is 46
the result of activities performed by the manufacturers, resellers, and end-users of the Google Mobile Communication Devices. Google received actual notice at least by April 4, 2011, when it placed its initial bid for the Nortel patent portfolio containing each of the patents asserted herein, and further has knowledge of its infringement of the Patents-inSuit by way of this Complaint. 143. Google provides at least Google Mobile Communication Devices
with an operating system configured and installed by Google to support Gallery, Email, Maps and Browser functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe the 937 Patent. Through its manufacture and sales of Google Mobile Communication Devices, Google specifically intended its resellers and manufacturers to infringe the 937 patent. 144. Google specifically intends for others, such as resellers and end-
use customers, to directly infringe one or more claims of the 937 Patent in the United States. For example, Google provides instructions to resellers and end-use customers regarding the use and operation of Googles products in an infringing way. instructions include at least Google Nexus Help (available Such at
https://support.google.com/nexus/?hl=en&topic=2765972#topic=3415518l).
When
resellers and end-use customers follow such instructions, they directly infringe the 937 Patent. Google knows that by providing such instructions, resellers and end-use
customers follow those instructions, and directly infringe the 937 Patent. Google thus knows that its actions induce the infringement.
47
145.
Google performed the acts that constitute induced infringement,
and would induce actual infringement, with knowledge of the 937 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 146. Google indirectly infringes the 937 patent, by contributing to
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Google Mobile Communication Devices. Google received actual notice of the 937 Patent at least by April 4, 2011, when it placed its initial bid for the Nortel patent portfolio containing each of the patents asserted herein, and further has knowledge of its infringement of the Patents-in-Suit by way of this Complaint as of the date this lawsuit was filed. 147. Google Mobile Communication Devices include functionality that,
inter alia, displays a navigable graphical user interface (navigable GUI) that permits a user to manipulate and control the contents of the display to maximize the use of display real estate. This navigable GUI is included in Google Mobile Communication Devices with an operating system configured and installed by Google to support at least the Gallery, Email, Maps, and Browser functionalities. On information and belief, these functionalities cannot operate in an acceptable manner absent the navigable GUI, as it is included in every Google Mobile Communication Device. 148. A reasonable inference to be drawn from the facts set forth is that
the navigable GUI as included in Google Mobile Communication Devices is especially made or especially adapted to operate on a Google Mobile Communication Device as a 48
navigable GUI that permits a user to manipulate or control the contents of the display to maximize the use of display real estate on the users Google Mobile Communication Devices. 149. A reasonable inference to be drawn from the facts set forth is that
the navigable GUI as included in the Mobile Communication Device is not a staple article or commodity of commerce and that the use of the navigable GUI in Google Mobile Communication Devices is required for the operation of Google Mobile Communication Devices. Any other use would be unusual, far-fetched, illusory,
impractical, occasional, aberrant, or experimental. 150. Google Mobile Communication Devices with the navigable GUI
are each a material part of the invention of the 937 patent and are especially made for the infringing manufacture, sale, and use of Google Mobile Communication Devices. Google Mobile Communication Devices with the navigable GUI are especially made or adapted as a navigable GUI that infringes the 937 patent. Because the sales and
manufacture of Google Mobile Communication Devices with a navigable GUI infringes the 937 patent, Googles sales of its infringing products have no substantial noninfringing uses. 151. Accordingly, a reasonable inference is that Google offers to sell, or
sells within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing the 937 patent, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing uses. Google 49
provides to others, Google Mobile Communication Devices with distinct and separate components, including software components, which have no substantial non-infringing uses. 152. At least Google Mobile Communication Devices with an operating
system configured and installed to support Message and Notification functionality infringe at least claim 1 of the 131 Patent. Google makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United States these devices and thus directly infringes at least claim 1 of the 131 Patent. 153. Google indirectly infringes the 131 patent by inducing
infringement by others, such as resellers, of at least claim 1 in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the Google Mobile Communication Devices. Google received actual notice of the 131 Patent at least by April 4, 2011, when it placed its initial bid for the Nortel patent portfolio containing each of the patents asserted herein, and further has knowledge of its infringement of the Patents-in-Suit by way of this Complaint. 154. Googles affirmative acts of selling Google Mobile
Communication Devices, causing the Google Mobile Communication Devices to be manufactured, and providing instruction manuals for Google Mobile Communication Devices induced Googles manufacturers and resellers to make or use the Google Mobile Communication Devices in their normal and customary way to infringe the 131 patent. Through its manufacture and sales of Google Mobile Communication Devices, Google specifically intended its resellers and manufacturers to infringe the 131 patent; further, 50
Google was aware that these normal and customary activities would infringe the 131 patent. Google performed the acts that constitute induced infringement, and would
intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 131 patent in the United States because Google has knowledge of the 131 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, Google Communication Devices for resale to others, such as resellers and end-use customers. Google knew or should have known that such actions would induce actual infringement. 156. The use of at least Google Mobile Communication Devices with an
operating system configured and installed by Google to support Message and Notification functionality as intended by Google infringes at least method claim 5 of the 131 Patent. Google uses these products and thus directly infringes at least method claim 5 of the 131 Patent. 157. In addition, Google provides at least Google Mobile
Communication Devices with an operating system configured and installed by Google to support Message functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least method claim 5 of the 131 Patent.
51
158.
Google indirectly infringes the 131 patent by inducing
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Google Mobile Communication Devices in their intended use, including a customers use of the Message and Notifications functionality. Google received actual notice of the 131 Patent at least by April 4, 2011, when it placed its initial bid for the Nortel patent portfolio containing each of the patents asserted herein, and further has knowledge of its infringement of the Patents-in-Suit by way of this Complaint. 159. Googles affirmative acts of selling Google Mobile
Communication Devices and providing instruction manuals induced the end-users of Google Mobile Communication Devices to use Google Mobile Communication Devices in their normal and customary way to infringe the 131 patent at least through using Message and Notifications functionality. Google also provides instructions, including at least Google Nexus Help available on Googles website at
https://support.google.com/nexus/?hl=en&topic=2765972#topic=3415518, for using the Messaging and Notifications functionality. Through its sales of Mobile Communication Devices with Messaging and Notifications functionality, Google specifically intended the end-users of Google Mobile Communication Devices to infringe the 131 patent; further, Google was aware that the normal and customary use of the Message and Notifications functionality would infringe the 131 patent. Google also enticed its end-users to use the Messaging and Notifications functionality by providing instruction manuals. Google performed the acts that constituted induced infringement, and would induce actual 52
infringement, with the knowledge of the 131 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 160. Accordingly, a reasonable inference is that Google actively
induces infringement of the 131 Patent by others, such as resellers and end-use customers. Google specifically intends for others, such as resellers and end-use
customers, to directly infringe one or more claims of the 131 Patent in the United States because Google had knowledge of the 131 Patent, and Google actually induces infringement by providing instructions to resellers and end-use customers regarding the use and operation of Google Mobile Communication Devices in an infringing way. Such instructions include at least Google Nexus Help available at
https://support.google.com/nexus/?hl=en&topic=2765972#topic=3415518.
When
customers follow those instructions, and directly infringe the 131 Patent. Google thus knows that its actions induce the infringement. 161. Google indirectly infringes the 131 Patent by contributing to
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Google Mobile Communication Devices in their intended use, including a customers use of the Messaging and Notification functionality. Google received actual notice of the 131 Patent at least by April 4, 2011, when it placed its initial bid for the Nortel patent
53
portfolio containing each of the patents asserted herein, and further has knowledge of its infringement of the Patents-in-Suit by way of this Complaint. 162. Googles Message and Notification functionality receives and
displays message of different types, such as a phone call, voice mail, text message, or email. The Message and Notification Services functionality is designed to notify the user of an incoming communication and to select the format of the message received and cannot function in a manner that does not utilize the messaging functionality available to Google Mobile Communication Devices. Upon information and belief, the Message and Notifications functionality is designed to entice a user to receive notifications of an incoming communication. 163. A reasonable inference to be drawn from the facts set forth is that
the Message and Notifications functionality especially made or especially adapted to operate on Google Mobile Communication Devices for notifying a user of an incoming communication. 164. A reasonable inference to be drawn from the facts set forth is that
the Message and Notifications functionality is not a staple article or commodity of commerce and that the use of the Messaging and Notifications functionality of the Google Mobile Communication Devices is for notifying a user of an incoming communication. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 165. Google Mobile Communication Devices with Messaging and
Notifications functionality are each a material part of the 131 patent and especially made for the infringing use of the Messaging and Notification functionality to receive and 54
display messages. Google Mobile Communication Devices including the Messaging and Notification functionality, are especially made or adapted to notify a user of an incoming communication that perform or facilitate performance of the steps that infringe the 131 patent. Furthermore, Google provides user manuals describing the uses of its Mobile Communication Devices that infringe the 131 patent. Because the functionality
provided by Googles Messaging and Notification to notify a user of an incoming communication infringes the 131 patent, Googles sales of its infringing products have no substantial non-infringing uses. 166. Accordingly, a reasonable inference is that Google offers to sell, or
sells within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing uses. Google provides to others, Mobile Communication Devices with an operating system configured and installed by Google to support Message and Notification functionality. Google installs and configures on these products distinct and separate components, including software components, which are used only to perform the infringing method claims. 167. At least Google Mobile Communication Devices with an operating
system configured and installed by Google to support VPN management functionality, including the Google Galaxy S III, infringe at least claims 1 and 8 of the 591 Patent. Google makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes
55
within the United States these devices and thus directly infringes at least claims 1 and 8 of the 591 Patent. 168. The use of at least Google Mobile Communication Devices with an
operating system configured and installed by Google to support VPN management functionality as specified and intended by Google infringes at least claims 1 and 8 of the 591 Patent. Google uses these products and thus directly infringes at least claims 1 and 8 of the 591 Patent. 169. Google indirectly infringes the 591 patent by inducing
infringement by others, such as resellers, of at least claims 1 and 8 in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of the Google Mobile Communication Devices. Google received actual notice of the 591 Patent at least by April 4, 2011, when it placed its initial bid for the Nortel patent portfolio containing each of the patents asserted herein, and further has knowledge of its infringement of the Patents-in-Suit by way of this Complaint. 170. Googles affirmative acts of selling Google Mobile
Communication Devices, causing the Google Mobile Communication Devices to be manufactured, and providing instruction manuals for Google Mobile Communication Devices induced Googles manufacturers and resellers to make or use the Google Mobile Communication Devices in their normal and customary way to infringe the 591 patent. Through its manufacture and sales of Google Mobile Communication Devices, Google specifically intended its resellers and manufacturers to infringe the 591 patent; further, Google was aware that these normal and customary activities would infringe the 591 56
patent.
Google performed the acts that constitute induced infringement, and would
intends for others, such as resellers and end-use customers, to directly infringe one or more claims of the 591 patent in the United States because Google has knowledge of the 591 patent and actually induces others, such as resellers and end-use customers, to directly infringe, by using, selling, exporting, supplying and/or distributing within the United States, Google Communication Devices for resale to others, such as resellers and end-use customers. Google knew or should have known that such actions would induce actual infringement. 172. In addition, Google provides at least its Mobile Communication
Devices with an operating system configured and installed by Google to support VPN management functionality to others, such as resellers and end-use customers, in the United States who, in turn, use these products to infringe at least claims 1 and 8 of the 591 Patent. 173. Google indirectly infringes the 591 patent by inducing
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(b) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Google Mobile Communication Devices in their intended use, including a customers use of the VPN management functionality. Google received actual notice of the 591 Patent at least by April 4, 2011, when it placed its initial bid for the Nortel patent portfolio containing 57
each of the patents asserted herein, and further has knowledge of its infringement of the Patents-in-Suit by way of this Complaint. 174. Googles affirmative acts of selling its Mobile Communication
Devices and providing instruction manuals induced the end-users of Google Mobile Communication Devices to use Google Mobile Communication Devices in their normal and customary way to infringe the 591 patent at least through using VPN management functionality. Google also provides instructions, including at least Google Nexus Help available on Googles website at
https://support.google.com/nexus/?hl=en&topic=2765972#topic=3415518, for using the VPN management functionality. Through its sales of Google Mobile Communication Devices with VPN management functionality, Google specifically intended the end-users of Google Mobile Communication Devices to infringe the 591 patent; further, Google was aware that the normal and customary use of VPN management functionality would infringe the 591 patent. Google also enticed its end-users to use the VPN management functionality by providing instruction manuals. Google performed the acts that
constituted induced infringement, and would induce actual infringement, with the knowledge of the 591 patent and with the knowledge or willful blindness that the induced acts would constitute infringement. 175. Accordingly, it is a reasonable inference that Google actively
induces infringement of the 591 Patent by others, such as resellers and end-use customers. Google specifically intends for others, such as resellers and end-use
customers, to directly infringe one or more claims of the 591 Patent in the United States because Google had knowledge of the 591 Patent, and Google actually induces 58
infringement by providing instructions to resellers and end-use customers regarding the use and operation of Googles products in an infringing way. Such instructions include at least Google Nexus Help available on Googles website at When
https://support.google.com/nexus/?hl=en&topic=2765972#topic=3415518.
customers follow those instructions, and directly infringe the 591 Patent. Google thus knows that its actions induce the infringement. 176. Google indirectly infringes the 591 Patent by contributing to
infringement by others, such as resellers and end-use customers, in accordance with 35 U.S.C. 271(c) in this District and elsewhere in the United States. Direct infringement is the result of activities performed by the manufacturers, resellers, and end-users of Google Mobile Communication Devices in their intended use, including a customers use of the VPN management functionality. Google received actual notice of the 591 Patent at least by April 4, 2011, when it placed its initial bid for the Nortel patent portfolio containing each of the patents asserted herein, and further has knowledge of its infringement of the Patents-in-Suit by way of this Complaint. Googles VPN management functionality facilitates management of VPNs. The VPN management functionality is designed for management of VPNs and cannot function in a manner that does not utilize the VPN management functionality available to Google Mobile Communication Devices. The VPN management functionality is designed upon information and belief to entice a user to manage VPNs.
59
177.
A reasonable inference to be drawn from the facts set forth is that
the VPN functionality is especially made or especially adapted to operate on Google Mobile Communication Devices for providing VPN management functionality. 178. A reasonable inference to be drawn from the facts set forth is that
the VPN management functionality is not a staple article or commodity of commerce and that the use of the VPN management functionality of Google Mobile Communication Devices is for managing VPNs. Any other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental. 179. Google Mobile Communication Devices with VPN management
functionality are each a material part of the invention of the 591 patent and especially made for the infringing use of the VPN functionality. Google Mobile Communication Devices including the VPN management functionality, are especially made or adapted to provide VPN management functionality that perform or facilitate performance of the steps that infringe the 591 patent. Furthermore, Google provides user manuals
describing the uses of its Mobile Communication Devices that infringe the 591 patent. Because the functionality provided by Googles VPN management functionality infringes the 591 patent, Googles sales of its infringing Mobile Communication Devices have no substantial non-infringing uses. 180. Accordingly, a reasonable inference is that Google offers to sell, or
sells within the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple 60
article or commodity of commerce suitable for substantial non-infringing uses. Google provides to others, Mobile Communication Devices with an operating system configured and installed by Google to support VPN management functionality. Google installs and configures on these products distinct and separate components, including software components, which are used only to infringe the 591 Patent. 181. Googles acts of infringement have caused damage to Rockstar and
MobileStar. Rockstar and MobileStar are entitled to recover from Google the damages sustained by Rockstar and MobileStar as a result of Googles wrongful acts in an amount subject to proof at trial. In addition, the infringing acts and practices of Google have caused, are causing, and, unless such acts and practices are enjoined by the Court, will continue to cause immediate and irreparable harm to Rockstar and MobileStar for which there is no adequate remedy at law, and for which Rockstar and MobileStar are entitled to injunctive relief under 35 U.S.C. 283. 182. Google received actual notice of its infringement of the 937, 131,
and 591 Patents through at its April 4, 2011 bid for the Nortel patent portfolio. Google also has knowledge of its infringement of the Patents-in-Suit by way of this Complaint. 183. Google has willfully infringed and/or does willfully infringe the
937, 131, and 591 Patents. DEMAND FOR JURY TRIAL Rockstar and MobileStar hereby demand a jury trial for all issues so triable. PRAYER FOR RELIEF
61
WHEREFORE, Rockstar prays for the following relief: 1. A judgment that Samsung has directly infringed the 551 Patent,
8.
A permanent injunction preventing Samsung and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 551 Patent; 9. A permanent injunction preventing Samsung and its respective officers,
63
those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 591 patent; 14. A permanent injunction preventing Samsung and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and those in active concert or participation with any of them, from directly infringing, contributorily infringing, and/or inducing the infringement of the 572 patent; 15. A judgment that Samsungs infringement of the 551, 937, 298, 973,
131, 591, and 572 Patents has been willful; 16. A ruling that this case be found to be exceptional under 35 U.S.C. 285,
and a judgment awarding Rockstar and MobileStar to their attorneys fees incurred in prosecuting this action; 17. A judgment and order requiring Samsung to pay Rockstar and MobileStar
damages under 35 U.S.C. 284, including supplemental damages for any continuing post-verdict infringement up until entry of the final judgment, with an accounting, as needed, and treble damages for willful infringement as provided by 35 U.S.C. 284; 18. A judgment and order requiring Samsung to pay Rockstar and MobileStar
the costs of this action (including all disbursements); 19. A judgment and order requiring Samsung to pay Rockstar and MobileStar
preventing future acts of infringement is not granted, that Rockstar and MobileStar be awarded a compulsory ongoing licensing fee against Samsung;
64
21.
A judgment that Google has directly infringed the 937 Patent,
contributorily infringed the 937 Patent, and/or induced the infringement of the 937 Patent. 22. A judgment that Google has directly infringed the 131 Patent,
contributorily infringed the 131 Patent, and/or induced the infringement of the 131 Patent. 23. A judgment that Google has directly infringed the 591 Patent,
contributorily infringed the 591 Patent, and/or induced the infringement of the 591 Patent. 24. A judgment that Googles infringement of the 937, 131, and 591 Patents
has been willful; 25. A ruling that this case be found to be exceptional under 35 U.S.C. 285,
and a judgment awarding Rockstar and MobileStar to their attorneys fees incurred in prosecuting this action; 26. A judgment and order requiring Google to pay Rockstar and MobileStar
damages under 35 U.S.C. 284, including supplemental damages for any continuing post-verdict infringement up until entry of the final judgment, with an accounting, as needed, and treble damages for willful infringement as provided by 35 U.S.C. 284; 27. A judgment and order requiring Google to pay Rockstar and MobileStar
the costs of this action (including all disbursements); 28. A judgment and order requiring Google to pay Rockstar and MobileStar
pre-judgment and post-judgment interest on the damages awarded;
65
29.
A judgment and order requiring that Rockstar and MobileStar be awarded
a compulsory ongoing licensing fee as to Google; and 30. Such other and further relief as the Court may deem just and proper.
DATED: December 31, 2013.
66
CERTIFICATE OF SERVICE This is to certify that all counsel of record who are deemed to have consented to electronic service are being served with a copy of this document via the Courts CM/ECF system per L.R. CV-5(a)(3) on December 31, 2013. Any other counsel of record will be served via first-class mail. /s/ Theodore Stevenson, III Theodore Stevenson, III
67
EXHIBIT 7
EXHIBIT 8
US006463131B1
(12> Ulllted States Patent

French-St. George et al.
(10) Patent N0.:

(45) Date of Patent:
US 6,463,131 B1
Oct. 8, 2002
(54)
SYSTEM AND METHOD FOR NOTIFYING A USER OF AN INCOMING COMMUNICATION

EVENT
5,608,786 A 5,633,916 A
5,737,395 A
3/1997 Gordon ............... .. 379/100.01 5/1997 Goldhagen et al. .... .. 379/88.13

4/1998 Irribarren ............... .. 379/88.13
5,742,905 A *
4/1998 Pepe et al.
379/211.01
(75)
Inventors: Marilyn French-St. George, Alcove;

A_ Mahan, AI Brisebois, Kanata, an of (CA) Laura
5,751,791 A
5,825,854 5,822,404 A
5,832,221 A
5/1998 Chen 61 IL 10/1998

11/1998
379/88-13
. . . . .. 379/88.13
. . . . .. 379/88.13
Larson Cave . . et . . . . al. .....

Jones . . . . . . . . . . . . .
(73)
(*)
Assigneez Nortel Networks Limited (CA)

Notice: Subject to any disclaimer, the term of this
patent is extended or adjusted under 35
5,946,386 A *
5,987,100 A
8/1999 Rogers et al. ....... .. 379/265.09

Fortman et al. ....... .. 379/88.14
Moon . . . . . . . . . . .. 379/88.12
* 11/1999
1/2001
6,061,570 A *
6,181,928 B1 *
5/2000 Janow ................... .. 455/458

4/2001 Burg ................... .. 379/215.01
U'S'C~ 154(k)) byo days~
6,219,413 B1 *
(21) Appl. No.: 09/477,679
* Cited by examiner
(22) Filed:
Jan. 5, 2000
Primary ExaminerFan Tsang

Related US. Application Data
(62)
(51)
Assistant ExaminerOvidio Esalante
(74) Attorney, Agent, or FirmFinnegan, Henderson,

Division of application No. 08/996,034, ?led on Dec. 22, 1997 now Pat NO 671227348
Int. c1.7 ............................................... .. H04M 1/64
FaraboW, Garrett & Dunner, L.L.P.

(57) ABSTRACT
(52) US. Cl. .............................. .. 379/88.23;337799/81147;

(58) Field of Search ......................... .. 379/88.12, 88.13,
Asystem and method for providing multisensory Signaling

capabilities enables a user to manage the receipt of incoming communication events, after an initial noti?cation sequence,
379/88.14, 88.15, 88.17, 88.19, 88.22, 88.23, 88.25, 100.01, 100.08, 211.01, 211.02,
212.01, 207.16, 201.07
(56) References Cited
US. PATENT DOCUMENTS
5,327,486 A * 7/1994 Wolff et al. .......... .. 379/142.01
using multiple media options. Speci?cally, a remote device

noti?es a user of incoming communication events and offers
real-time coupling of the noti?cations With communication management options. The message is delivered or otherwise processed according to the option selected.
8 Claims, 3 Drawing Sheets
f
129., I
I
105
155 115 I /
/ sERvER
MEMORY
\.100
110
1j5
COMPUTER
140
__
REGISTRATION SOFTWARE
160 /
/
WEARABLE DEvICE
12@\ SEE
E
13o
.
SUBSCRIBER
DATABASE
,_/
165
.
1;11
RECEIVER/
143 / TRANSDUCER
142
COMMUNICATION
K
I K144
SOFTWARE
% TRANSMITFER H PROCESSOR
COMMUNICATION
DATABASE
17
I/O
MEMORY
E
135
III E
E
175
/
180
I /
PORT ~145
150
/
ELECTRONIC MAII. SYSTEM
KIOSK
U.S. Patent
Oct. 8,2002
Sheet 2 of3
US 6,463,131 B1
ALERT RECEIVING PARTY N200

OF COMMUNICATION
EVENT
210
DOES THE PARTY WANT TO RESPOND?
SELECT DEVICE FOR

DELIVERY OF SUBSEQUENT
220
N
INFORMING COMPONENT
ALLOW PARTY TO HEAR OR

SEE MORE INFORMATION
230
~
ABOUT COMMUNICATION EVENT

245
PRESENT COMMUNICATIONS ~24)

MANAGEMENT OPTIONS TO PARTY IN SELECTED MEDIA FORMAT
V
COMMUNICATION MANAGEMENT OPTION FOR EXECUTION
SELECT
FIG. 2
US 6,463,131 B1
1
SYSTEM AND METHOD FOR NOTIFYING A USER OF AN INCOMING COMMUNICATION EVENT
CROSS-REFERENCE TO RELATED APPLICATION
2
then reply. Other disposition options (e.g., forWard, copy,
delete) can only be invoked after the user receives the communication. Currently, there are no products that alloW
a user to intercept a communication during the noti?cation sequence and re-route it to another device or person, or
This is a division of application Ser. No. 08/996,034, ?led Dec. 22,1997, the contents of Which are hereby incorporated
request the sender to alter the communication media. There are some third party service providers that integrate text-based and voice-based communications into a single inbox and then notify the subscriber of their presence.
10
by reference (now US. Pat. No. 6,122,348 issued Sep. 19,
2000).
BACKGROUND OF THE INVENTION
Often times the noti?cation is to a pager or a cell phone. In the latter case, media translation devices can recode a text
?le into speech. Although these services provide uni?ed

noti?cation of all messages, they do not currently respond to
the real-time voice calls, and often restrict access to infor
15
The present invention relates generally to communication management and more particularly, to a multisensory sig
naling structure that enables a user to manage the receipt of incoming communication events, after an initial noti?cation
sequence, using multiple media options.

Recent advancements in communication technology have made push media channels a reality. These channels typi cally push information to a designated receiving device (e.g., pager) Without requiring a user to speci?cally request
20
mation pertaining to the incoming communication to the device subscriber. Therefore, it is desirable to provide a multisensory sig naling structure that is applicable to a variety of receiving
devices to alloW a user to manage incoming communication
events.
It is also desirable to provide the user With a number of
call management options that may be invoked in real-time.

It is further desirable to structure noti?cations of incom
25
the information. This, in conjunction With development of

integrated text and voice at the desktop and in mobile
devices, creates an environment Where users are increas
ing communication events. In addition, it is desirable to couple real-time noti?cations
ingly demanding service strategies that alloW them to pri

oritiZe competing demands on their attention.
With communication management options.

It is further desirable to route an incoming communication event to a receiving device or person of the receivers choice
Not only do busy people need a Way of recogniZing the contextthe Who, What, When, and Whyof an incoming
noti?cation, they also need choices on hoW to respond to the
30
in real-time. It is also desirable to employ personal, Wearable commu
request in real-time. For example, by structuring an alerting

or noti?cation sequence to provide more context about the
nication devices for receiving incoming multimedia noti?

cations and information in a preselected format.
Finally, it is desirable to alloW a user to intercept a
nature of an interruption (i.e., the Who, What, When, and Why) and then integrating communication management
options that are media independent, users may intercept and
direct an incoming communication to a device or person of
communication, during the noti?cation sequence and

35 re-route it to another device or person, or request the sender
to alter the communication media.
their choosing.
On the service delivery side of the equation, service providers are looking for Ways of increasing their presence
to the end user. To facilitate this endeavor, there is a need for a noti?cation/signaling framework that enables service pro viders to con?gure their commercial appearance to the
40
Additional desires, features and advantages of the inven tion Will be set forth in the folloWing description, and Will be apparent from description or may be learned by practic
ing the invention.

SUMMARY OF THE INVENTION
Systems and methods consistent With the present inven

tion meet these desires by alloWing a user to manage the
45
customer and tailor communication management options to maximiZe service availability. For example, With such a frameWork, a sports broadcaster can notify its subscribers of
a particular neWsWorthy event via a multimedia banner. If
the event is on video, the user can then select to receive the
receipt of incoming communication events, after an initial
noti?cation sequence, using multiple media options.

A system consistent With this invention for managing an incoming communication event comprises means for noti
fying a user of the incoming communication event; means
broadcast at their desktop computer, or perhaps listen to the play-by-play via a personal audio device.
50
for providing a plurality of communication management

options to the user; means for receiving a selection of one of
Currently, real-time communication management options

are limited (e.g., live voice calls can only be ignored or
the communication management options; and means for
ansWered). Calling Line Identi?cation (CLID) provides

some real-time information regarding the Who of the incoming-communication but more strictly re?ects the source device rather than the user of the device. Display of
55
taking an action regarding the incoming communication

event consistent With the selected communication manage
ment option.
A method consistent With this invention for managing an
Second Call Waiting Identi?cation (DSCWID) provides

some real-time communication management by enabling
users to put a second call on hold While they ?nish the ?rst.
incoming communication event comprises the steps of noti fying a user of the incoming communication event; provid ing a plurality of communication management options to the
60
HoWever, the constraints of CLID limit this feature by

identifying the connection subscriber rather than the user. In the text domain, there is currently no possibility of
intercepting an e-mail on its Way to an in-box. Text mes
user; receiving a selection of one of the communication
management options; and taking an action regarding the

incoming communication event consistent With the selected
saging services direct data, such as e-mail, to a users inbox and then notify the user of its arrival. If the user Wants to vieW the e-mail or call the sender back, they must ?rst enter
communication management option. Both the foregoing general description and the folloWing
65
the mailbox, select the communication, open it, read it, and
detailed description are exemplary and explanatory and are intended to provide further explanation of the invention as claimed.
US 6,463,131 B1
3
BRIEF DESCRIPTION OF THE DRAWINGS
4
urgent return communication and thus, may choose not to
respond to any neW incoming communications. The user can communicate this information to server 115 When con?g uring a call. Alternatively, system 100 can determine
Whether the call is a neW or return communication based on
The accompanying drawings, Which are incorporated in and constitute a part of the speci?cation, illustrate presently
preferred embodiments of the invention and, together With the preceding general description and the folloWing detailed description, eXplain the principles of the invention. In the draWings:
FIG. 1 illustrates a communications management system
a prior communication betWeen the tWo parties. In this instance, the prior call information is stored in a memory of
server 115 as a pro?le speci?c to the user or communication
event. A communication event is any type of voice or data consistent With the present invention; 10 transfer betWeen tWo or more points. Thus, the communi cation event can be the transfer of video data or a voice FIG. 2 shoWs a ?oWchart of a communications manage message. The user can de?ne the type of communication ment method consistent With the present invention; and link used to transfer the selected information based on the FIG. 3 shoWs a communications management options available communication netWork. For eXample, if the user diagram available to a user of the communications manage 15 Wishes to send a photograph, then the information Would be ment system of FIG. 1.
transferred over a data communication link such as an ATM
DETAILED DESCRIPTION OF THE INVENTION

Reference Will noW be made in detail to the construction
netWork. HoWever, to transfer voice information in real time, the PSTN is the more appropriate selection.
Based on the type of information transferred, the user can
and operation of preferred embodiments consistent With the

present invention that are illustrated in the accompanying
select communication management options for the receiving

party. For eXample, if the user Wishes to transfer a voice message to a receiving party concerning a relatives Wed ding but also has a video of the Wedding, both a voice message option and a video option can be transferred to the
25
draWings. In those draWings, like elements and operations

are designated With the same reference numbers. FIG. 1 illustrates a communications management system
100 including a plurality of source devices 105, terminal

devices 110, and at least one server 115 that controls the transfer of information betWeen source devices 105 and
receiving party. Any data (e.g., video, text) or voice format

can be selected by the user as a communications manage
ment option for the receiving party. This selection is only

limited by the format of the information for transfer.
terminal devices 110. System 100, as illustrated in FIG. 1, provides a framework for implementing communications management functions consistent With the present invention. Other components such as a public sWitched telephone
Preferably, system 100 is capable of automatically choosing

certain communication management options based on the type of information being transferred and information pre
netWork (PSTN) or asynchronous transfer mode (ATM) netWork (not shoWn) are necessary to facilitate the transfer
of information signals betWeen multiple source and desti nation points. These netWorks consist of a series of netWork gateWays that mediate communications betWeen Wireline,
35
viously provided by the user.

Finally, the user chooses a source device 105 for trans
ferring the voice or data information (e.g., facsimile, audio,

etc.). The communication device can be any device capable of transferring information. One feature of the invention is
Wireless, and computer netWorks.

Source devices 105 include a variety of media devices
available to a user of system 100. These source devices may
to signal the user (e.g., using a ringback function) When system 100 noti?es the receiving party of the communica
tion event. The signal may be sent back to the selected source device or a secondary device. For eXample, if the
source device is a computer, the user can select to receive the
include a computer 120, telephone 125, faX machine 130,

video device 135 or any other media source. The user or caller may use one or more of the above devices to transfer information to one or more parties over system 100.
ringback signal on a cellular telephone or pager by selecting
this feature When con?guring a communication event trans Before attempting to contact a party, the user selects the 45 fer With server 115. Preferably, system 100 can automati cally choose the source device based on the type of infor information for transfer, de?nes Whether the call is a neW or
the user.
return communication, chooses the type of communication link (i.e., voice or data), determines any additional receiver
communication management options, and selects a source
mation transferred and information previously provided by

Terminal devices 110 may include a Wearable device 140,
device 105. Preferably, system 100 automatically performs

these functions based on the type of information being
computer 145, kiosk 150, or any other device capable of communicating voice/data signals to a receiving party.
These devices include a transceiver for bidirectional
transferred and information previously provided by the user. In this instance, the user only needs to provide the infor
mation for transfer to system 100. The type of information for transfer over system 100 can
be in any form such as a document or audio message. The format of the information dictates the source device to be
55
communication, and receive and transmit voice and/or teXt

data in real-time over a selected communication link.
used to transfer the information. For eXample, if the user chooses to relay the information verbally or using a prere
Preferably, terminal device 110 is a personal Wearable device 140, such as SoundBeamTM manufactured by Nortel, that incorporates Personal Space Audio Where the audio signal is not broadcast to the entire surrounding environ
ment.
corded voice message, then telephone 125 Would be the

preferred device. Nevertheless, the user may Wish to send a
document or e-mail a ?le to one or more parties, Which
Wearable device 140 includes a receiver/transmitter 141,
processor 142, transducer 143, memory 144, and input/ output (I/O) port 146. Receiver/transmitter 141 receives and
transmits voice and data signals betWeen Wearable device
140 and a remote device such as server 115. Receiver/
65
Would require a faX machine 130 or computer 120, respec
tively.
The user further has the option of de?ning Whether the
call is a neW or return communication. This feature is
transmitter 141 alloWs Wearable device 140 to receive
personal multimedia noti?cations at any time and anyWhere

over a Wireless communication link. Processor 142 can be
important since the receiving party may be expecting an
US 6,463,131 B1
5
any processor capable of controlling the operation of Wear able device 140 by interfacing With components of the device. For example, processor 142 processes incoming
6
Server 115 also establishes a user-centric relational data
signals received through receiver/transmitter 142. Processor

142 then routes the signal to transducer 143 to output the
signal in an audio, tactile, or visual format (e.g., beeping

sound, silent vibration, or text messaging), or memory 144
(e.g., random access memory) for storage. In addition,

processor 142 can route the signal to I/O port 146 Which is con?gured to interface With other terminal devices 110 such as computer 145 or kiosk 150 to output the signal. These terminal devices 110 also include the components of Wear able device 140 to perform functions consistent With the present invention as described herein. Server 115 is a processor-based system that is customiZed to control the information transfer operation of system 100.
10
base. As communication relationships develop betWeen par ties using system 100, categories for each registered user may be formed (e.g., home support services, of?ce, recreational, family) and stored in subscriber database 165. This high level categoriZation is encoded into the alerting sequence of system 100, thus alloWing receivers to differ entiate betWeen cold incoming communications and those
from individuals or organiZations that have established a
relationship With the receiver. As described above, system

100 facilitates the transfer of information from a user to a
receiving party using various communication options and media formats. The folloWing description provides the
method for managing the communication events transferred
15
Preferably, server 115 has high speed processing capability

in order to service a large number of users and includes a
over system 100. FIG. 2 is a ?oWchart illustrating a communication man
memory 155 that stores a variety of softWare and informa
tion. Speci?cally, memory 155 stores registration softWare 160, subscriber database 165, communication softWare 170,
and communication database 175. Server 115 executes registration softWare 160 to register
agement method consistent With the present invention. Speci?cally, the ?oWchart of FIG. 2 illustrates a signaling sequence received at terminal device 110 of the receiving party. The signaling sequence includes an alerting compo
registered devices With one or more subscribers. Server 115 25 event (step 200). The alerting component is brief (typically the duration of a single ring sequence of a traditional phone) stores information about the subscribers in subscriber data
system 100 devices. Registration softWare associates the
nent and informing component. Before transferring information, system 100 alerts a selected receiving party of the incoming communication
base 165 and communicates With system 100 devices using communication softWare 170. Communication softWare 170 includes softWare capable of transferring voice and data signals over any type of communication link. Server 115 stores information (e.g., the communication event) for trans
fer betWeen source devices 105 and terminal devices 110 in communication database 175. Server 115 performs a number of automatic functions
and multisensory, consisting of tactile, auditory, and visual components. System 100 bases the timing of the alerting component on current telephony ring signaling. HoWever, in system 100, only the ?rst ring sounds automatically With subsequent audio and visual output being mediated by the
receiving party.
The receiving party may choose to respond to or ignore
the alert signal based on the audio or visual information sent
35
including user/device recognition, caller recognition, com munication status, and communication management options.
In addition, server 115 provides integrated electronic mail box functions for system 100 subscribers via electronic mail system 180. Electronic mail system 180 can be any elec
during the alerting component (step 210). Server 115 encodes categorical variables (e.g., urgency and synchro
nous communication requests) via the tactile channel, and categorical or continuous variables (e.g., relationship cat
egory or name of caller) via the audio and visual channels. For example, server 115 can encode the distinction betWeen
tronic mail system capable of storing voice, text, or video

mail. Server 115 automatically supports user and device recog nition. Preferably, all user devices are registered With the
an incoming message (Where the sender is not requesting synchronous interaction), and an incoming request for dia logue (e.g., a voice call, or video conference) in the tactile
channel. In addition, server 115 can transmit the relationship
process is benign such that When a registered user commu 45 category (e.g., business, home, recreational) in the audio channel, While the caller name and topic is shoWn on a small nicates With someone via a neW terminal device 110, the
server using registration softWare 160. This registration
device is automatically registered. This assumes that termi nal device 110 has a characteristic signature that de?nes such things as the media channels, the communication protocols, and the bandWidth that it can support. If these
signatures are not de?ned or if a device is not supported by system 100, then server 115 automatically sWitches to a
display during the alerting component of the signaling

sequence.
At the termination of the alerting component, the party

may select a device for delivery of an associated incoming
communication event (step 220). The party selects a device
using a designated input function. For example, Wearable

device 140 may include a voice recognition response system
default setting that enables a standard signaling procedure
(e.g., text messaging for pagers).

using terminal device 110. In this instance, server 115 ?rst
Where the receiving party speaks a predetermined command

include any terminal device registered With server 115.
The selected device alloWs the party to see or hear more
Preferably, unregistered users can subscribe to server 115 55 into the device to make a selection. This selection may
registers the neW subscriber using registration softWare 160

and then stores information about the subscriber in sub scriber database 165. Subscriber information is stored in all formats speci?ed by the user and may include name, address and one or more telephone numbers. These formats might
information about an incoming communication event (step 230). Based on its media format, the incoming communi
cation event routes either to the audio channel or visual
channel of terminal device 110. If the party directs the

communication event to a large display device, such as a computer, the user Will see detailed information about the
65
include photos, videos, text, or audio introduction scripts

that subscribers use via server 115 to con?gure appropriate
header information appearing in the receiving partys alert ing sequence. The header information, stored in subscriber
database 165, alloWs the receiving party to hear or see the name of the calling party.
nature of the incoming communication. In this instance, the selected terminal device dictates the con?guration of audio and visual channels for incoming communication event
output. For example, a user might be seated at their com
US 6,463,131 B1
7
puter When an incoming alert is detected. The computer recognizes that the incoming communication is a return
video message. The tactile channel presents a distinct cadence that the user recogniZes as a message. The audio channel presents a signal that is recogniZed as a reply, While the name of the caller is displayed in a small Wearable
8
Requesting the transmission later 340 prompts server 115
to save the message in communication database 175 for later retrieval. Preferably, server 115 can mediate a later time to send the transmission. In this instance, server 115 initiates
screen, together With a topic line (e.g., video that you requested). At this point, the user touches a predetermined
button on the computer to select the computer or other terminal device on Which to vieW further information
the later transmission at the mediated time. For eXample, When the receiving party selects this communication man
agement option, server 115 can request a more appropriate time to send the communication event and initiate a subse
quent transmission at that time. Alternatively, the receiving

10
regarding the incoming communication event.

If the selected device is not properly con?gured to receive the incoming communication event, system 100 informs the caller through the ringback sequence. For eXample, the caller Would be noti?ed during the ringback sequence if the
receiving party selected a communication device that Was
party may dial into the server using a passWord or other security function to access and retrieve the message at a later time.
Listen to voice message 350 alloWs a receiver to auto
matically request that the caller leave a message rather than

15
complete the requested synchronous dialogue. Server 115

informs the caller through the ringback sequence if the receiver selects this option. Once the voice message is recorded, server 115 then alerts the receiver of the recorded voice message. ForWard communication event to third party 360 alloWs
the receiver to re-route the communication to other people or
not matched to the media con?gurations of the incoming request. If the selected device con?guration is proper, server 115 transmits further information about the communication event to the selected computer, as used in this eXample. The
receiving party then, for eXample, touches a predetermined

button on the computer, preferably located on a mouse, to
vieW the additional information on the computer display. The subsequent information may include a distribution list for the communication or return communication paths pre ferred by the caller for responding to the video message. If the receiving party had decided to listen to the video
25
message, they could have responded to the initial alert by

touching a button associated With a personal audio device
(e. g., Wearable device 140). At that point, server 115 informs
the receiving party that a distribution list and return call paths are available. In addition to the subsequent information, server 115
devices. The other people may be part of a group registered With system 100, such as a business partners category. In this eXample, the receiving party requests server 115 to route the call to the predetermined business partners category so that everyone Within that registered group receives the communication. The communication event may also be forWarded to other devices including mail system 180. The
mail system preferably includes electronic mail, video mail

or voice mail capabilities. System 100 presents one or more
presents the receiving party With communication manage ment options (step 240). These options are described beloW
With respect to FIG. 3. Server 115 then prompts the receiving party to select a communication management option for
35
of these mail options to the receiving party in the commu nications management options menu. System 100 also
alloWs the receiving party to request receipt of any replies to

the forWarded message.
Reject caller 370 alloWs the receiver to deny further

access from one or more callers. This feature is useful to prevent unWanted calls or messages from one or more
execution (step 245). These communication management options alloW the receiving party to control receipt (i.e., hoW
and When) of the communication event. Upon executing the selected option, system 100 completes the communication
functions available to the receiving party. FIG. 3 is a diagram of communications management
options 300 available to the receiving party in a menu
callers. The receiving party may modify the account at a later time to permit subsequent communication With that caller.
System 100 offers versatile communication management

techniques that provide a loW-intrusive solution to modem personal communication needs. System 100 is not only a multisensory signaling structure that can be applied to a
format. These options include ansWering or requesting trans mission of the communications event 310, retrieving and listening to a voice message 350, forWarding or bouncing
the call to one or more parties 360, and rejecting the call 370.
45
AnsWering or requesting transmission of the communi cation event 310 includes the suboptions of requesting the transmission noW 320, requesting a change of communica tions media format 330, and requesting transmission later
340. Requesting the transmission noW 320 provides a real
variety of receiving devices, but also a tool for coupling real-time noti?cations With communication management options. These communication management options alloW a party to control hoW, When and Where to receive incoming
communications events. The party may receive these events
time coupling of the communication event (e.g., video message) With the terminal device selected by the receiving
party. Requesting a change of communications media format
330 alloWs the caller to select the communication event in an
55
in a variety of media formats adding further versatility to the system. Moreover, users of system 100 may receive incom ing communication events on any device capable of receiv
ing and transmitting voice or data signals. Thus, system 100 does not require special equipment to provide effective
communication betWeen tWo or more parties. While there has been illustrated and described What are at
audio or visual format. The format used by the sender and
the capabilities of the terminal device may preclude changes

in media format. HoWever, audio and visual components may be separated for the convenience of the receiving party. For eXample, a party may receive a personal multimedia alert during a meeting indicating that a colleague Wants to talk immediately. Since it is inconvenient to leave the meeting, the party can take advantage of an ansWer option that alloWs for a request to change media. This request
informs the sender that a teXt message should be sent since it is inconvenient to talk right now.
present considered to be preferred embodiments and meth ods of the present invention, those skilled in the art Will understand that various changes and modi?cations may be made, and equivalents may be substituted for elements thereof, Without departing from the true scope of the inven tion. In addition, many modi?cations may be made to adapt a
65
particular element, technique, or implementation to the teachings of the present invention Without departing from
the scope of the invention. Therefore, this invention should
US 6,463,131 B1
10
not be limited to the particular embodiments and methods
disclosed herein, but should include all embodiments falling Within the scope of the appended claims. What is claimed is:
1. A system for notifying a user of an incoming commu
5
4. The system of claim 2 Wherein the characteristic includes a nonsynchronous communication and the selected
noti?cation includes a nontactile alert. 5. A method of notifying a user of an incoming commu
nication event, comprising:

determining a characteristic of the communication event; selecting a noti?cation based on the characteristic;
nication event, comprising:

means for determining a characteristic of the communi
cation event;
means for selecting a noti?cation based on the character
sending the user the selected noti?cation;

1O
istic;
means for sending the user the selected noti?cation;
means for receiving a selection from the user indicating a
receiving a selection from the user indicating a format for
delivery of further information regarding the commu nication event; and
alloWing the further information regarding the communi

cation event to be sent to the user in the selected format.
15
format for delivery of further information regarding the communication event; and means for alloWing the further information regarding the
communication event to be sent to the user in the
6. The method of claim 5 Wherein the selecting includes

a choice betWeen at least a tactile alert and a nontactile alert.
selected format. 2. The system of claim 1 Wherein the means for selecting
includes a choice betWeen at least a tactile alert and a
7. The method of claim 6 Wherein the characteristic includes synchronous communication and the selected noti
?cation includes a tactile alert.
nontactile alert. 3. The system of claim 2 Wherein the characteristic includes synchronous communication and the selected noti
?cation includes a tactile alert.
8. The method of claim 6 Wherein the characteristic includes a nonsynchronous communication and the selected
noti?cation includes a nontactile alert.
UNITED STATES PATENT AND TRADEMARK OFFICE
CERTIFICATE OF CORRECTION
PATENT NO. DATED : 6,463,131 B1 : October 8, 2002 Page 1 of 1
INVENTOR(S) : Marilyn French-St. George et al.

It is certified that error appears in the above-identi?ed patent and that said Letters Patent is hereby corrected as shown below:
Column 9
Lines 14 and 16, after further insert -- notification
Column 10
Lines 11 and 13, after further insert -- notification
Signed and Sealed this
Thirtieth Day of September, 2003
JAMES E. ROGAN
Director ofthe United States Patent and Trademark O?i'ce
Civil Action No. 13-cv-0900-JRG
ORDER GRANTING SAMSUNG DEFENDANTS MOTION TO DISMISS PLAINTIFFS FIRST AMENDED COMPLAINT PURSUANT TO THE FEDERAL RULES OF CIVIL PROCEDURE 12(b)(6) AND 12(b)(1) Before the Court is Defendants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLCs (collectively, Samsung) Motion to Dismiss Plaintiffs First Amended Complaint Pursuant to the Federal Rules of Civil Procedure 12(b)(6) and 12(b)(1) (the Motion). Upon consideration of the Motion, the relief requested therein, and the relevant facts, evidence, and arguments of the parties, the Court finds that the Motion should be and hereby is GRANTED, and claim 5 of the 131 Patent is hereby dismissed with prejudice for failing to satisfy 35 U.S.C. 101, and Plaintiffs First Amended Complaint is hereby dismissed for lack of standing.

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Case 2:13-cv-00900-JRG Document 26 Filed 02/10/14 Page 1 of 22 PageID #: 163

Civil Action No. 13-cv-0900-JRG JURY TRIAL DEMANDED

Case 2:13-cv-00900-JRG Document 26 Filed 02/10/14 Page 2 of 22 PageID #: 164

Case 2:13-cv-00900-JRG Document 26 Filed 02/10/14 Page 3 of 22 PageID #: 165

Case 2:13-cv-00900-JRG Document 26 Filed 02/10/14 Page 4 of 22 PageID #: 166

Case 2:13-cv-00900-JRG Document 26 Filed 02/10/14 Page 5 of 22 PageID #: 167

Case 2:13-cv-00900-JRG Document 26 Filed 02/10/14 Page 6 of 22 PageID #: 168

Case 2:13-cv-00900-JRG Document 26 Filed 02/10/14 Page 7 of 22 PageID #: 169

Case 2:13-cv-00900-JRG Document 26 Filed 02/10/14 Page 8 of 22 PageID #: 170

Case 2:13-cv-00900-JRG Document 26 Filed 02/10/14 Page 9 of 22 PageID #: 171

Case 2:13-cv-00900-JRG Document 26 Filed 02/10/14 Page 10 of 22 PageID #: 172

Case 2:13-cv-00900-JRG Document 26 Filed 02/10/14 Page 11 of 22 PageID #: 173

Case 2:13-cv-00900-JRG Document 26 Filed 02/10/14 Page 12 of 22 PageID #: 174

Case 2:13-cv-00900-JRG Document 26 Filed 02/10/14 Page 13 of 22 PageID #: 175

Case 2:13-cv-00900-JRG Document 26 Filed 02/10/14 Page 14 of 22 PageID #: 176

Case 2:13-cv-00900-JRG Document 26 Filed 02/10/14 Page 15 of 22 PageID #: 177

Case 2:13-cv-00900-JRG Document 26 Filed 02/10/14 Page 16 of 22 PageID #: 178

Claim 5 of the 131 Patent Also Fails the Machine-or-Transformation Test

Case 2:13-cv-00900-JRG Document 26 Filed 02/10/14 Page 17 of 22 PageID #: 179

Case 2:13-cv-00900-JRG Document 26 Filed 02/10/14 Page 18 of 22 PageID #: 180

Case 2:13-cv-00900-JRG Document 26 Filed 02/10/14 Page 19 of 22 PageID #: 181

Case 2:13-cv-00900-JRG Document 26 Filed 02/10/14 Page 20 of 22 PageID #: 182

Case 2:13-cv-00900-JRG Document 26 Filed 02/10/14 Page 21 of 22 PageID #: 183

Dated: February 10, 2014

Case 2:13-cv-00900-JRG Document 26 Filed 02/10/14 Page 22 of 22 PageID #: 184

Case 2:13-cv-00900-JRG Document 26-1 Filed 02/10/14 Page 1 of 3 PageID #: 185

Civil Action No. 13-cv-0900-JRG

rockstar.com website page titled About Rockstar.

Case 2:13-cv-00900-JRG Document 26-1 Filed 02/10/14 Page 2 of 3 PageID #: 186

Dated: February 10, 2014

Case 2:13-cv-00900-JRG Document 26-1 Filed 02/10/14 Page 3 of 3 PageID #: 187

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Patent Assignment Assignor Details

Assignor Name : ROCKSTAR BIDCO, LP

Correspondence name and address

6931053 US20010000456 09729097 6842630 US20030195016 10448373

6549771 US20020028673 09836528 6774719 NO NE 10661603

6687511 US20020012403 09849338 6961328 US20040176088 10800054

8040976 US20070116154 11545765 8619713 US20110096751 12983636

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Correspondence name and address

Correspondence name and address

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