Tse v. Google Inc., et al.

Filing 1

COMPLAINT against All Defendants ( Filing fee $ 350 receipt number 0540-3611342.), filed by Ho Keung TSE. (Attachments: # 1 Civil Cover Sheet, # 2 Exhibit A-US Patent 6665797, # 3 Exhibit B-Notice of Intent to Issue Ex Parte Reexamination Certificate, # 4 Exhibit C-Final State of Claims)(Keung TSE, Ho)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
________________________________________________
)
HO KEUNG, TSE
)
P.O. BOX 80306,
)
CHEUNG SHA WAN POST OFFICE,
)
HONG KONG,
)
[e-mail]
)
608.268.3667
)
)
)
Plaintiff
)
)
vs.
)
)
GOOGLE, INC.,
)
1 Infinite Loop,
)
Cupertino, California 95014,
)
USA,
)
)
SAMSUNG TELECOMMUNICATIONS AMERICA, LLC. )
1301 East Lookout Drive,
)
Richardson, Texas 75081,
)
USA,
)
)
HTC America, Inc.
)
13920 SE Eastgate Way, Suite 400,
)
Bellevue, Washington 98005,
)
USA,
)
)
Defendants
)
________________________________________________)

Civil Action No.

JURY TRIAL DEMANDED

COMPLAINT FOR PATENT INFRINGEMENT
AND PRAY FOR INJUNCTIVE RELIEF
Plaintiff, Ho Keung Tse (“Plaintiff”), files this Complaint against Google, Inc.
(“Google”), Samsung Telecommunications America, LLC, (“Samsung”), HTC America, Inc.
(“HTC”), referred to as “Defendants”, as follows:

PLAINTIFF’S ATTEMPT TO SECURE COUNSEL :
No counsel secured.
No conference held between Plaintiff and any Attorney.

PLAINTIFF’S OTHER LAWSUITS
First Action :
It involves infringement of the same US Patent 6665797, using the user identity
verification technologies covered by the ‘797 Patent, to protect from unauthorized use, music
sold via Internet.
Describe the lawsuit :
a. Date of filing lawsuit : August, 5, 2005
b. Parties
Plaintiff

: Ho Keung, TSE

Defendants

: Apple Computer, Inc., RealNetworks, Inc., MusicMatch, Inc.,
Sony Connect, Inc., and Napster Inc.

c. Court:

The United States District Court for Northern District of California.

d. Docket Number : C 06-06573 SBA
e. Name of Judge to whom the case was assigned : Judge Saundra Brown Armstrong
f. Disposition

: Nil.

g.

: The case was stayed, pending for issuance of certificate of

Status

Reexamination (control number : 90/008,772) of the ‘797 Patent.

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Second Action :
It involves infringement of the same US Patent 6665797, using the user identity
verification technologies covered by the ‘797 Patent to verify the identity of bidders, to prevent
bid shilling in Internet Auctions, as well as to verify identities of free trial users, in providing
Internet services.
Describe the lawsuit :
a.

Date of filing lawsuit : December, 9, 2009

b.

Plaintiff

: Ho Keung, TSE

Defendants

: eBay Inc. (“eBay”), uBid, Inc. (“uBid”), and America Online Inc.
(“AOL”).

c. Court: Initially filed with the United States District Court for Eastern District of
Texas, later transferred to the United States District Court for Northern
District of California on April 14, 2011.
d. Docket Number: originally 2:09-cv-00380-TJW in Eastern District of Texas, then
3:11-cv-01812-WHA in Northern District of California.
e. Name of Judge to whom the case was assigned: Judge John Ward of Eastern District
of Texas; Judge William Alsup of Northern District of California.
f. Disposition : Nil.
g. Status : DISMISSED WITHOUT PREJUDICE to re-filing after final determination of
the validity of the claims of United States patent number 6,665,797 and issuance of a
reexamination certificate, by order of Judge William Alsup on August 29, 2011. The
effect of this order should be in respect of the single asserted claim 21 and Defendants of
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the second action only, as Judge William Alsup incorrectly decided that the claim 21 as
amended in Reexamination (control number : 90/008,772) contains substantive changes
(without any claim construction) and dismissed the case, for reason as “original patented
claim 21 was cancelled in July 2009 — five months before this action was filed — and
the amended version of claim 21 has not yet issued”.

Third Action :
It involves infringement of the same US Patent 6665797, using the user identity
verification technologies covered by the ‘797 Patent, to protect application programs (“Apps”)
sold via Internet from unauthorized use.
Describe the lawsuit :
Date of filing lawsuit : January, 9, 2012
Parties
a.

Plaintiff

: Ho Keung, TSE

b.

Defendants

c.

Court:

: Apple, Inc., Ascedia, Inc (now dismissed).

Initially filed with the United States District Court for Western District of

Wisconsin, later transferred to the United States District Court for Northern District of
California in May 23, 2012.
d.

Docket

Number:

originally

3:12-cv-00021-bbc

in

Western

District

of

Wisconsin,now 5:12-cv-02653-psg in Northern District of California.
e.

Name of Judge to whom the case was assigned: Judge Barbara Brandriff Crabb of

Western District of Wisconsin, now Paul Singh Grewel of Northern District of California.
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f. Disposition : Nil.
g. Status: The case is ongoing.
NATURE OF THE PRESENT ACTION
1.

This is a patent infringement action to stop Defendants’ infringement of Plaintiff’s

United States Patent No. 6,665,797 (the “ ’797 Patent”, a copy of which is attached hereto as Exh.
A), entitled “Computer Apparatus/Software Access Right Management” (corrected by Certificate
of Correction dated January 3, 2006, last page of Exh. A).
2.

Plaintiff seeks injunctive relief and monetary damages.

SOLE PATENT-IN-SUIT
3.

The ‘797 patent is currently under a reexamination (control number : 90/008,772)

before the United States Patent and Trademark Office (PTO), jointly requested by defendants in
above-mentioned first action.
4.

The PTO has issued a “Notice of Intent to Issue Ex Parte Reexamination

Certificate” (Exh.B) on March 14, 2012, confirming patentability of amended claims 1, 3, 16 and
21; unamended claims 2, 4, 5; and new claims 23, 27- 29. A listing of all the claims is submitted
in Exh. C. Only claims 1-5, 13, 16, 17, 20, 23, 27- 29, are asserted against all the Defendants.
Note that claims 13, 17, 20 are un-reexamined and therefore maintained unchanged.

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PARTIES
5.

Plaintiff is the sole inventor, sole patentee and sole owner of the ‘797 Patent duly

and legally issued by the United States Patent and Trademark Office on December 16, 2003.
Plaintiff owns and has at all times owned and has standing to sue for infringement of ‘797 Patent.

6.

Upon information and belief, Defendant Google, Inc. (referred to individually

herein as “Google”) is a Delaware corporation with its principal place of business at 1600
Amphitheater Parkway, Mountain View, California 94043. Google may be served with process
through its registered agent Corporation Service Company (which will do business in California
as CSC - Lawyers Incorporating Service, 2710 Gateway Oaks Drive, Suite 150N, Sacramento,
Ca 95833).
7.

Upon information and belief, Samsung Telecommunications America, LLC

(referred to individually herein as “Samsung”) is a Delaware limited liability company with its
principal place of business at 1301 East Lookout Drive, Richardson, Texas 75081.Samsung may
be served with process through its registered agent Corporation Service Company dba CSCLawyers Incorporating Service Company, 211 E. 7th Street, Suite 620, Austin, Texas, 787013218.
8.

Upon information and belief, HTC America, Inc. (referred to herein as “HTC”) is

a Washington corporation with its principal place of business at 13920 SE Eastgate Way, Suite
400, Bellevue, Washington 98005. HTC may be served with process through its registered agent
National Registered Agents Inc, 1780 Barnes Blvd SW, Tumwater, Washington 98512-0410.

JURISDICTION AND VENUE
9.

This action arises under the Patent Laws of the United States, Title 35 United

States Code, including but not limited to 35 U.S.C. § 271, 281, 283, 284, and 285.
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10.

This Court has jurisdiction of this action under 28 U.S.C. § 1331 (federal question

jurisdiction), 1338(a) (patent jurisdiction).
11.

Defendant Google, is in the business of selling third party application programs

(“Apps”), through its Internet virtual Store, “Android Market” (since Oct 2008), now renamed as
“Google Play” (since March 2012), for use on Android Devices (devices with Android Operating
Systems, or in short, “Android OS”, installed thereon), mostly are tablets or smart phones.
12.

Each Android Device accesses the Google Play, via Internet, by means of

Google’s “Google Play” App (formerly known as “Android Market” App).
13.

At least “Android Market” App or “Google Play” App, Google’s Android digital

rights management application program interfaces (“DRM API”) of Google, herein below
collectively referred to as “Google DRM Software”, containing Digital Rights Management
(DRM) software, for use on Android Devices. Further, the Google DRM Software in the
Android Devices works in a co-operative manner with other DRM software and hardware
(including Internet servers) of Google’s virtual store “Google Play” (formerly known as
“Android Market”), for protecting from unauthorized use, application programs offered to
sell/sold at the stores.
14.

The Google DRM Software in Android Devices and DRM software and hardware

(including Internet servers) of Google’s virtual store “Google Play”, infringes/has infringes on
‘797 Patent.
15.

On information and belief, Google has purposefully, actively, and voluntarily

distributed its Google DRM Software, for to be installed into Android Devices, with the
expectation that such devices will be purchased, used, or licensed by consumers in the Eastern
District of Texas. Android Devices have been and continues to be purchased, used, and licensed
by consumers in the Eastern District of Texas.
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16.

Google, having been notified by Plaintiff of its infringement of ‘797 patent,

continues to solicit, through its website http://developer.android.com, third party developers all
over USA, including Texas and Eastern District of Texas, to develop for and submit to Google,
application programs with infringing DRM software components, dedicated for sales at its
virtual Store “Google Play” (formerly known as “Android Market”), constituting inducing those
third party developers to participating in and profit from infringing the ‘797 Patent.
17.

On information and belief, Samsung’s and HTC’s Android device products,

including cell phones and tablets, with Google’s DRM Software installed therein, are and have
been used, offered for sale/sold, in the Eastern District of Texas. Defendants Google, Samsung
and HTC, directly and/or through its distribution network, places the products within the stream
of commerce directed at the Eastern District of Texas, with the knowledge and/or understanding
that such products will be sold in the Eastern District of Texas.
18.

This Court has general and specific personal jurisdiction over Defendants Google,

Samsung and HTC because they have established substantial contacts with the forum as a result
of conducting substantial business in the State of Texas and within this district.
Venue is proper in this district pursuant to 28 U.S.C. §§ 1391(b), (c), and 1400(b), and
also the Texas Long Arm Statute.

THE CONCEPT OF INVENTION
19.

As readable on the abstract of ‘797 patent, the concept behind the present

invention can be summarized as a method of “using the existence of the EI sub-program in a
computer as a precondition for authorising use of software products on that computer”.
The EI program is for authorizing payment from an account of the rightful user of the
software products desired to be protected, and in the present invention, it is being used as a token
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for identity verification only. No charge is to be made on the account.
Note that other payment information, such as a credit account password, may be used as
an alternative to the EI program. For details of the scope of protection, please refer to the ‘797
Patent itself. (Exh. A)
20.

The present invention is the cornerstone of Digital Rights Management (“DRM”)

technologies of nowadays. Before it, purchased software is generally protected from
unauthorized use, by means of a piece of specific hardware, such as a dongle, not practical for
Internet sales.

COUNT I
INFRINGEMENT OF U.S. PATENT NO. 6665797
BY GOOGLE
21.

Plaintiff incorporates by reference the allegations set forth in Paragraphs 1-20 of

this Complaint as though fully set forth herein.
22.

Google owns/has owned and operates/has operated Internet Virtual Stores, called

as “Android Market”, “Google Play”.
23.

Google provides/has provided “Android Market” App and “Google Play” to the

users of the Android Devices to access Google’s Internet servers and create the virtual Store
“Android Market” or “Google Play”, respectively, on the screens of the Android Devices.
24.

Google also sells Apps, through its website http://play.google.com (formerly

“http://market.android.com”).
25.

Google, through its virtual Stores “Android Market”, “Google Play” and website

http://play.google.com (formerly “http://market.android.com”), has required/requires users to
open accounts with Google and submit information of their financial account, such as credit
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account, to Google, in order that the users can purchase at Google’s virtual stores “Android
Market” and “Google Play”.
26.

Each Google account can be signed in to with a respective username and

password.
27.

Upon receiving a correct username and password of a Google account, Google is

authorized by the account holder, to make use of the financial account information the account
holder previously submitted to Google, to receive payment from his/her financial account, so that
the account holder can purchase application programs from the virtual Stores “Android Market”
or “Google Play”, by using the username and password as a means for authorizing payment.
28.

Once an account holder has purchased an application program, Google allows the

account holder to re-download for an unlimited number of times, the same application program
from the virtual Store “Android Market” or “Google Play”, to any Android Device, without
repaying for/re-purchasing the application program.
29.

Google requires an account holder to sign in to the virtual Stores “Android

Market” or “Google Play”, with the username and password of the account used for the purchase
of a purchased application program, in order that the account holder may re-download the
application program, with no charge on the account, to an Android Device which is not already
signed in.
30.

Google uses/has used DRM software and/or hardware for preventing a user from

using a purchased App on an Android Device other than the one used for making the purchase,
unless the Android Device is authorized to execute the App, by a user using the Android Device
to access the virtual Store “Android Market” or “Google Play”, then signing in with the
username and password of the account used for the purchase. Google doesn’t charge the account
for the authorization.
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31.

Google has engaged/is engaging in making and using Digital Rights Management

(DRM) software and hardware, including but not limited to, the Android OS, “Android Market”
App, “Google Play” App, DRM API, servers of its virtual Store “Android Market” and “Google
Play”, for practicing the methods covered under the claims of the ‘797 Patent, including but not
limited to claims 13, 16, 17, 20 and 21, for protecting from unauthorized use, application
programs offered for sale or sold in its virtual Stores “Android Market” and “Google Play”, to
users of Android Devices.
32.

Google has been given notice by Plaintiff of the ‘797 Patent and its above-

mentioned infringement activities. Google has been and still is infringing the ‘797 Patent, and
will continue to do so unless enjoined by this Court.
33

Google’s infringement of the ‘797 Patent is willful and deliberate, justifying an

increase of damages of up to three times under 35 U.S.C. § 284.
34.

Google’s infringement of the ‘797 Patent is exceptional and entitles Plaintiff to

attorneys’ fees and costs incurred in prosecuting this action under 35 U.S.C. § 285, should
Plaintiff pro se obtains an attorney in the future.
35.

Google, by using the ‘797 patented invention, has without difficulty, successfully

built up its virtual Stores “Android Market” and “Google Play” as one of the greatest Internet
Business, while inflicting irreparable harm to Plaintiff.

COUNT II
GOOGLE INDUCES THIRD PARTY APPLICATION PROGRAM DEVELOPERS
INTO INFRINGING U.S. PATENT NO. 6665797
36.

Plaintiff incorporates by reference the allegations set forth in Paragraphs 1-35 of

this Complaint as though fully set forth herein.
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37.

Google, by using Digital Rights Management (DRM) software and methods

covered under the claims of the ‘797 patent, including but not limited to claims 13, 16, 17, 20
and 21, to protect purchased application programs (“Apps”) from use by an unauthorized user,
Google has infringed/infringing on the ‘797 patent directly itself, while at the same time, has
induced/inducing the infringement of the ‘797 Patent by third party developers in the United
States.
38.

Google

has

engaged/engages

in

soliciting,

through

its

http://developer.android.com, third party developers all over USA, to develop for and submit to
Google, application programs with infringing DRM software components, for sales at its virtual
Stores “Android Market” and “Google Play” exclusively.
39.

Google has offered/offers infringing Android Software Development Kit

(“Android SDK”) to third part developers for developing application programs for to be sold
exclusively at the Stores and executable only on Android Devices. Therefore, constituting
inducing those third party developers to participating in and profit from infringing the ‘797
Patent.
40.

Google through its virtual Stores “Android Market” and “Google Play”, has

offered to sell/sells/has sold Apps supplied from or developed by third party developers in Texas.
41.

Google through its virtual Stores “Android Market” and “Google Play”, has

offered to sell/sells/has sold Apps supplied from or developed by third party developers in the
Eastern District of Texas.
42.

Google has been given notice by Plaintiff of the ‘797 Patent and its above-

mentioned infringement activities. Google has been and still is infringing the ‘797 Patent, and
will continue to do so unless enjoined by this Court.
43.

Google’s infringement of the ‘797 Patent is willful and deliberate, justifying an
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increase of damages of up to three times under 35 U.S.C. § 284.
44.

Google’s infringement of the ‘797 Patent is exceptional and entitles Plaintiff to

attorneys’ fees and costs incurred in prosecuting this action under 35 U.S.C. § 285, should
Plaintiff pro se obtains an attorney in the future.
45.

Google, by using the ‘797 patented invention, has without difficulty, successfully

built up its virtual Stores “Android Market” and “Google Play” as one of the greatest Internet
Business, while inflicting irreparable harm to Plaintiff.

COUNT III
CONTRIBUTORY INFRINGEMENT OF U.S. PATENT NO. 6665797 BY SAMSUNG
46.

Samsung has engaged/is engaging in importing, offering for sale, and selling in

the United States, its Android Device products with software and hardware for DRM purposes,
including but not limited to the Google’s infringing Android OS, “Android Market” App,
“Google Play” App, DRM API installed thereon, for practicing the methods covered under the
claims of the ‘797 patent, including but not limited to claims 13, 16, 17, 20 and 21, for protecting
from unauthorized use, application programs offered for sale/sold at Google’s virtual Stores
“Android Market” and “Google Play”.
47.

Samsung has been given notice by Plaintiff of the ‘797 Patent and its above-

mentioned infringement activities. Samsung has been and still is infringing the ‘797 Patent, and
will continue to do so unless enjoined by this Court.
48.

Samsung’s infringement of the ‘797 Patent is willful and deliberate, justifying an

increase of damages of up to three times under 35 U.S.C. § 284.
49.

Samsung’s infringement of the ‘797 Patent is exceptional and entitles Plaintiff to

attorneys’ fees and costs incurred in prosecuting this action under 35 U.S.C. § 285, should
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Plaintiff pro se obtains an attorney in the future.
50.

Samsung, by using the ‘797 patented invention, has without difficulty,

successfully built up itself as one of the leading suppliers of smart phones and tablets, while
inflicting irreparable harm to Plaintiff.

COUNT IV
CONTRIBUTORY INFRINGEMENT OF U.S. PATENT NO. 6665797 BY HTC
51.

HTC has engaged/is engaging in importing, offering for sale, and selling in the

United States, its Android Device products with software and hardware for DRM purposes,
including but not limited to the Google’s infringing Android OS, “Android Market” App,
“Google Play” App, DRM API installed thereon, for practicing the methods covered under the
claims of the ‘797 patent, including but not limited to claims 13, 16, 17, 20 and 21, for protecting
from unauthorized use, application programs offered for sale/sold in Google’s virtual Stores
“Android Market” and “Google Play”.
52.

HTC has been given notice by Plaintiff of the ‘797 Patent and its above-

mentioned infringement activities. HTC has been and still is infringing the ‘797 Patent, and will
continue to do so unless enjoined by this Court.
53.

HTC’s infringement of the ‘797 Patent is willful and deliberate, justifying an

increase of damages of up to three times under 35 U.S.C. § 284.
54.

HTC’s infringement of the ‘797 Patent is exceptional and entitles Plaintiff to

attorneys’ fees and costs incurred in prosecuting this action under 35 U.S.C. § 285, should
Plaintiff pro se obtains an attorney in the future.
55.

HTC, by using the ‘797 patented invention, has without difficulty, successfully

built up itself as one of the leading suppliers of smart phones and tablets, while inflicting
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irreparable harm to Plaintiff.

PRAYER FOR RELIEF
Defendants Google, Samsung and HTC have infringed and continues to infringe, directly,
indirectly, literally, under the doctrine of equivalents, contributorily, and/or through the
inducement of others, one or more of the claims of the ‘797 Patent.

WHEREFORE, Plaintiff prays for judgment against Defendants as follows:
56.

That Defendants be held to have infringed the ‘797 patent.

57.

That Defendants, their directors, officers, agents, servants, employees and all

other persons in active concert or privity or in participation with them, be enjoined from directly
or indirectly infringing Plaintiff's patent.
58.

That judgment be entered for Plaintiff against Defendants, for Plaintiff's actual

damages according to proof, and for any additional profits attributable to infringements of
Plaintiff's patent.
59.

That judgment be entered for Plaintiff against Defendants, for statutory damages

based upon Defendants' acts of patent infringement and for its other violations of law.
60.

That Defendants be required to account for all gains, profits, and advantages

derived from its acts of infringement and for its other violations of law.
61.

That judgment be entered for Plaintiff and against Defendants, for trebling of the

damages awarded for willful and deliberate patent infringement, justifying an increase of
damages of up to three times under 35 U.S.C. § 284.
62.

That Plaintiff has judgment against the Defendants for Plaintiff's costs and

attorney's fees (should Plaintiff be represented by an attorney later), under 35 U.S.C. § 285.
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63.

That the Court grant such other, further, and different relief as the Court deems

proper under the circumstances.

THIRD PARTY DEVELOPERS MAY BE JOINED LATER
Plaintiff believes that Google is inducing/has induced third party developers in Eastern
District of Texas, to develop Apps for and submit the same to Google, for sales at its virtual
Stores “Android Market” and “Google Play”, Plaintiff is gathering related information, and
reserves all rights to move to join those third part developers into the instant suit as defendants
for contributory infringement of the ‘797 patent.

DEMAND FOR JURY TRIAL
Plaintiff hereby requests and demands a trial by jury on all issues so triable.

Signed this 30th day of May, 2012.

Respectfully submitted,
/s/ Ho Keung TSE
Plaintiff Pro Se

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