Google Inc. v. Rockstar Consortium US LP et al

Filing 20

MOTION to Dismiss for Lack of Jurisdiction 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 filed by MobileStar Technologies LLC, Rockstar Consortium US LP. Motion Hearing set for 3/13/2014 02:00 PM in Courtroom 2, 4th Floor, Oakland before Hon. Claudia Wilken. Responses due by 2/6/2014. Replies due by 2/13/2014. (Attachments: # 1 Declaration of Afzal Dean, # 2 Proposed Order, # 3 Exhibit A, # 4 Exhibit B, # 5 Exhibit C, # 6 Exhibit D, # 7 Exhibit E, # 8 Exhibit F, # 9 Exhibit G, # 10 Exhibit H)(Reichman, Courtland) (Filed on 1/23/2014)

EXHIBIT H

Case 2:13-cv-00900-JRG Document 19 Filed 12/31/13 Page 1 of 67 PageID #: 85

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-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 LLC’S (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

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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.

2

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BACKGROUND FACTS
7.

Nortel Networks, a previous assignee of the patents-in-suit,

conducted an auction for Nortel’s patent portfolio.. The auction included the patents
asserted herein.
8.

During the various auction dates Google, among others, bid for

Nortel’s portfolio.
9.

Google made its first bid for the Nortel patent portfolio on April 4,

2011. (See http://googleblog.blogspot.com/2011/04/patents-and-innovation.html).
10.

Google was aware of the patents asserted herein at the time of its

initial bid.
11.

Google placed an initial bid of $900,000,000 for the patents-in-suit

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.

3

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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.

Venue is proper in this Court pursuant to 28 U S.C. §§ 1391 and

1400(b).
16.
Electronics

This Court has personal jurisdiction over Defendants Samsung
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 (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

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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

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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

6

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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.
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

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offering for sale Samsung Mobile Communication Devices, including but not limited to
Samsung’s 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 Google’s 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.

8

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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
Google’s Nexus 5 device, and one or both of ASUSTeK Computer, Inc. and ASUS
Computer International, Inc. (collectively, “ASUS”) is an OEM for Google’s 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

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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.

Samsung’s

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 Samsung’s 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

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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

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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, Samsung’s 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

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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.

Samsung’s

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 Samsung’s 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;
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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

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50.

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.
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 Samsung’s 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

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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.

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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 user’s 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, Samsung’s 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

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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.

Samsung’s

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 Samsung’s manufacturers and resellers to make or use the Samsung
18

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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

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66.

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 customer’s 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.

Samsung’s 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 Samsung’s 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

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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 customer’s
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

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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

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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, Samsung’s 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

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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.

Samsung’s

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 Samsung’s 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

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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

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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.
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

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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.
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 user’s
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 user’s 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

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Communication Devices.

Samsung 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 Samsung Mobile Communication Devices with an integrated notification
message center infringes the ’973 patent, Samsung’s 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

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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.

Samsung’s

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 Samsung’s manufacturers and resellers to make or use the Samsung
Mobile Communication Devices in their normal and customary way to infringe the ‘131
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 ‘131 patent. Samsung 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.
93.

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 ‘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

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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 customer’s
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.

Samsung’s

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

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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 Samsung’s
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

Case 2:13-cv-00900-JRG Document 19 Filed 12/31/13 Page 32 of 67 PageID #: 116

resellers and end-use customers follow such instructions, they directly infringe the ‘131
Patent.

Samsung knows that by providing such instructions, resellers and end-use

customers follow those instructions, and directly infringe the ‘131 Patent. Samsung thus
knows that its actions induce the infringement.
99.

Samsung 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
Samsung Mobile Communication Devices in their intended use, including a customer’s
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.

Samsung’s 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

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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 Samsung’s Messaging and Notification to notify a user of an incoming
communication infringes the ’131 patent, Samsung’s 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

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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

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predecessors-in-interest, to Samsung, and also received knowledge as of the date this
lawsuit was filed.
108.

Samsung’s

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 Samsung’s manufacturers and resellers to make or use the Samsung
Mobile Communication Devices in their normal and customary way to infringe the ‘591
patent. Through its manufacture and sales of Samsung Mobile Communication Devices,
Samsung specifically intended its resellers and manufacturers to infringe the ‘591 patent;
further, Samsung was aware that these normal and customary activities would infringe
the ‘591 patent. Samsung performed the acts that constitute induced infringement, and
would induce actual infringement, with knowledge of the ‘591 patent and with the
knowledge or willful blindness that the induced acts would constitute infringement.
109.

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 ‘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

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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 customer’s
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.

Samsung’s 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

Samsung’s

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

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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

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 Samsung’s products in an infringing way. Such instructions include
at least “Verizon Samsung Galaxy S III User Manual” available on Samsung’s website at
http://www.samsung.com/us/support/owners/product/SCH-I535MBCVZW.

When

resellers and end-use customers follow such instructions, they directly infringe the ‘591
Patent.

Samsung knows that by providing such instructions, resellers and end-use

customers follow those instructions, and directly infringe the ‘591 Patent. Samsung thus
knows that its actions induce the infringement.
114.

Samsung 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
Samsung Mobile Communication Devices in their intended use, including a customer’s
use of the VPN management functionality. Samsung received actual notice of the ’591
37

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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.
115.

Samsung’s 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 Samsung’s VPN management functionality
38

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infringes the ’591 patent, Samsung’s 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

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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 customer’s 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.

Samsung’s 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

Samsung’s

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

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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

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 Samsung’s products in an infringing way. Such instructions include
at

least

“GT-P7300

User

Manual”

available

on

Samsung’s

website

at

http://downloadcenter.samsung.com/content/UM/201209/20120922095036620/GTP7300_UM_Open_HongKong_Icecream_Eng_Rev.1.0_120817_Screen.pdf.

When

resellers and end-use customers follow such instructions, they directly infringe the ‘572
Patent.

Samsung knows that by providing such instructions, resellers and end-use

customers follow those instructions, and directly infringe the ‘572 Patent. Samsung thus
knows that its actions induce the infringement.
125.

Samsung 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
Samsung Mobile Communication Devices in their intended use, including a customer’s
use of the Locations Services functionality. Samsung received actual notice of the ’572

41

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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.
126.

Samsung’s 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

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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 Samsung’s Location Services to obtain call trace information, i.e., a
geographic location of the Mobile Communication Devices, infringes the ’572 patent,
Samsung’s 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.

Samsung’s 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 Samsung’s 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

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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.

Samsung’s 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 Samsung’s 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

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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.

Google’s

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 Google’s 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

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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

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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 Google’s products in an infringing way.
instructions

include

at

least

“Google

Nexus

Help”

Such

(available

https://support.google.com/nexus/?hl=en&topic=2765972#topic=3415518l).

at

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

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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

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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 user’s 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, Google’s 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

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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.

Google’s

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 Google’s 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

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Google was aware that these normal and customary activities would infringe the ‘131
patent.

Google 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.
155.

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 ‘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

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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 customer’s 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.

Google’s

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

Google’s

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

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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”

https://support.google.com/nexus/?hl=en&topic=2765972#topic=3415518.

available

at

When

resellers and end-use customers follow such instructions, they directly infringe the ‘131
Patent.

Google knows that by providing such instructions, resellers and end-use

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 customer’s 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

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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.

Google’s 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

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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 Google’s Messaging and Notification to notify a user of an incoming
communication infringes the ’131 patent, Google’s 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

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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.

Google’s

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 Google’s 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
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patent.

Google performed the acts that constitute induced infringement, and would

induce actual infringement, with knowledge of the ‘591 patent and with the knowledge or
willful blindness that the induced acts would constitute infringement.
171.

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 ‘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 customer’s 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
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each of the patents asserted herein, and further has knowledge of its infringement of the
Patents-in-Suit by way of this Complaint.
174.

Google’s 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

Google’s

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
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infringement by providing instructions to resellers and end-use customers regarding the
use and operation of Google’s products in an infringing way. Such instructions include at
least

“Google

Nexus

Help”

available

on

Google’s

https://support.google.com/nexus/?hl=en&topic=2765972#topic=3415518.

website

at
When

resellers and end-use customers follow such instructions, they directly infringe the ‘591
Patent.

Google knows that by providing such instructions, resellers and end-use

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 customer’s 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. Google’s 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.

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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 Google’s VPN management functionality infringes
the ’591 patent, Google’s 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
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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.

Google’s 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 Google’s 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

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WHEREFORE, Rockstar prays 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,

contributorily infringed the ‘937 Patent, and/or induced the infringement of the ‘937
Patent.
3.

A judgment that Samsung has directly infringed the ‘298 Patent,

contributorily infringed the ‘298 Patent, and/or induced the infringement of the ‘298
Patent.
4.

A judgment that Samsung has directly infringed the ‘973 Patent,

contributorily infringed the ‘973 Patent, and/or induced the infringement of the ‘973
Patent.
5.

A judgment that Samsung has directly infringed the ‘131 Patent,

contributorily infringed the ‘131 Patent, and/or induced the infringement of the ‘131
Patent.
6.

A judgment that Samsung has directly infringed the ‘591 Patent,

contributorily infringed the ‘591 Patent, and/or induced the infringement of the ‘591
Patent.
7.

A judgment that Samsung has directly infringed the ‘572 Patent,

contributorily infringed the ‘572 Patent, and/or induced the infringement of the ‘572
Patent.
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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,

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 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 ’973 patent;
12.

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 ’131 patent;
13.

A permanent injunction preventing Samsung and its respective officers,

directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and

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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 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 Samsung’s 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

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 against Samsung;

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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 Google’s 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;

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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.

Respectfully submitted,
MCKOOL SMITH, P.C.
/s/ Theodore Stevenson, III
Mike McKool, Jr.
Texas Bar No. 13732100
[e-mail]
Douglas A. Cawley
Texas Bar No. 0403550
[e-mail]
Theodore Stevenson, III
Lead Attorney
Texas State Bar No. 19196650
[e-mail]
David Sochia
Texas State Bar No. 00797470
[e-mail]
MCKOOL SMITH P.C.
300 Crescent Court, Suite 1500
Dallas, Texas 75201
Telephone: [phone]
Facsimile: [phone]
ATTORNEYS FOR PLAINTIFFS
ROCKSTAR CONSORTIUM US,
LP AND MOBILESTAR
TECHNOLOGIES LLC

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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 Court’s 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