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 A
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 1 of 38 PageID #: 1
UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
ROCKSTAR CONSORTIUM US LP, §
AND MOBILESTAR TECHNOLOGIES §
LLC
§
§
PLAINTIFFS
§
v.
§ Civil Action No. 2:13-cv-894
§
ASUSTEK COMPUTER, INC. AND
§
§ JURY TRIAL REQUESTED
ASUS COMPUTER INTERNATIONAL,
INC.
§
§
DEFENDANTS.
PLAINTIFFS ROCKSTAR CONSORTIUM US LP AND MOBILESTAR
TECHNOLOGIES LLC’S ORIGINAL COMPLAINT
Plaintiffs Rockstar Consortium US LP (“Rockstar”) and MobileStar Technologies
LLC (“MobileStar”) file this Original Complaint for patent infringement under 35 U.S.C.
§ 271 and in support thereof would respectfully show the Court the following:
PARTIES
1.
Plaintiff Rockstar Consortium US LP (“Rockstar”) is a limited partnership
organized and existing under the laws of the State of Delaware, and maintains its
principal place of business at Legacy Town Center 1, 7160 North Dallas Parkway Suite
No. 250, Plano, TX 75024.
2.
Plaintiff MobileStar Technologies LLC (“MobileStar”) is a subsidiary of
Rockstar and is a limited liability corporation organized and existing under the laws of
the State of Delaware, and maintains its principal place of business at Legacy Town
Center 1, 7160 North Dallas Parkway Suite No. 250, Plano, TX 75024.
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 2 of 38 PageID #: 2
3.
Upon information and belief, Defendant ASUSTeK Computer, Inc. is a
corporation organized and existing under the laws of Taiwan with its principal place of
business at 15 Li-Te Rd., Peitou District, Taipei 112, Taiwan.
4.
Upon information and belief, Defendant ASUS Computer International,
Inc. is a subsidiary of ASUSTeK and is a corporation organized and existing under the
laws of California with its principal place of business at 800 Corporate Way, Fremont,
California 94536.
JURISDICTION AND VENUE
5.
This is an action for patent infringement under the Patent Laws of the
United States, 35 U.S.C. § 271. This Court has exclusive subject matter jurisdiction over
this case for patent infringement under 28 U.S.C. § 1338.
6.
Venue is proper in this Court pursuant to 28 U S.C. §§ 1391 and 1400(b).
7.
This Court has personal jurisdiction over Defendants ASUSTeK Computer,
Inc. and ASUS Computer International, Inc. (collectively, “ASUS”). ASUS has
conducted and does conduct business within the State of Texas. ASUS, directly or
through subsidiaries or intermediaries (including distributors, retailers, and others), ships,
distributes, offers for sale, sells, and advertises (including the provision of an interactive
web page) its products (including its infringing products) and/or services in the United
States, the State of Texas, and the Eastern District of Texas. ASUS, directly and through
subsidiaries or intermediaries (including distributors, retailers, and others), has
purposefully and voluntarily placed one or more of its infringing products and/or
services, as described below, into the stream of commerce with the expectation that they
will be purchased and used by consumers in the Eastern District of Texas.
2
McKool 940072v1
These
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 3 of 38 PageID #: 3
infringing products and/or services have been and continue to be purchased and used by
consumers in the Eastern District of Texas.
ASUS has committed acts of patent
infringement within the State of Texas and, more particularly, within the Eastern District
of Texas.
ASSERTED PATENTS
8.
On November 17, 1998, U.S. Patent No. 5,838,551 (“the ’551 Patent”)
entitled “Electronic Package Carrying an Electronic Component and Assembly of Mother
Board and Electronic Package” was duly and legally issued with Yee-Ning Chan as the
named inventor after full and fair examination. Rockstar owns all rights, title, and
interest in and to the ’551 Patent and possesses all rights of recovery under the ’551
Patent. MobileStar is the exclusive licensee of the ’551 patent.
9.
On March 14, 2000, U.S. Patent No. 6,037,937 (“the ’937 Patent”) entitled
“Navigation Tool for Graphical User Interface” was duly and legally issued with Brian
Finlay Beaton, Colin Donald Smith, and Bruce Dale Stalkie as the named inventors after
full and fair examination. MobileStar owns all rights, title, and interest in and to the ’937
Patent and possesses all rights of recovery under the ’937 Patent.
10.
On October 3, 2000, U.S. Patent No. 6,128,298 (“the ’298 Patent”)
entitled “Internet Protocol Filter” was duly and legally issued with Bruce Anthony
Wootton and William G. Colvin as the named inventors after full and fair examination.
Rockstar owns all rights, title, and interest in and to the ’298 Patent and possesses all
rights of recovery under the ‘298 Patent. MobileStar is the exclusive licensee of the ’298
patent.
3
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 4 of 38 PageID #: 4
11.
On October 8, 2002, U.S. Patent No. 6,463,131 (“the ’131 Patent”)
entitled “System and Method for Notifying a User of an Incoming Communication
Event” was duly and legally issued with Marilyn French-St. George, Mitch A. Brisebois
and Laura A. Mahan as the named inventors after full and fair examination. MobileStar
owns all rights, title, and interest in and to the ’131 Patent and possesses all rights of
recovery under the ‘131 Patent.
12.
On July 20, 2004, U.S. Patent No. 6,765,591 (“the ’591 Patent”) entitled
“Managing a Virtual Private Network” was duly and legally issued with Matthew W.
Poisson, Melissa L. Desroches, and James M. Milillo as the named inventors after full
and fair examination. MobileStar owns all rights, title, and interest in and to the ’591
Patent and possesses all rights of recovery under the ‘591 Patent.
13.
On August 30, 2005, U.S. Patent No. 6,937,572 (“the ’572 Patent”)
entitled “Call Trace on a Packet Switched Network” was duly and legally issued with
Brian B. Egan and Milos Vodsedalek as the named inventors after full and fair
examination. Rockstar owns all rights, title, and interest in and to the ’572 Patent and
possesses all rights of recovery under the ‘572 Patent.
GENERAL ALLEGATIONS
14.
ASUS has directly and indirectly infringed and continues to direction and
indirectly infringe each of the ’551, ’937, ’298, ’131, ’591, and ’572 Patents by engaging
in acts constituting infringement under 35 U.S.C. § 271(a), (b), (c), and/or (f), including
but not necessarily limited to one or more of making, using, selling and offering to sell, in
this District and elsewhere in the United States, and importing into this District and
elsewhere in the United States, certain mobile communication devices having a version
4
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 5 of 38 PageID #: 5
(or an adaption thereof) of Android operating system (“ASUS Mobile Communication
Devices”).
15.
ASUS is doing business in the United States and, more particularly, in the
Eastern District of Texas by making, using, selling, importing, and/or offering for sale
ASUS Mobile Communication Devices, including but not limited to ASUS family of
smartphones, including, but not limited to the ASUS FonePad and PadFone product
families, and ASUS family of tablets, including, but not limited to the ASUS Transformer
and /or Transformer Pad (including the Transformer TF201), MeMo Pad, and Nexus 7
product families, and other products that infringe the patent claims involved in this action
or by transacting other business in this District.
COUNT ONE
PATENT INFRINGEMENT BY ASUS
16.
Plaintiffs incorporate by reference paragraphs 1-15 as if fully set forth
herein. As described below, ASUS has infringed and/or continues to infringe the ‘551,
‘937, ‘298, ‘131, ‘591, and ‘572 Patents.
17.
At least the ASUS Mobile Communication Devices infringe at least claim
1 of the ‘551 Patent. ASUS makes, uses, sells, offers for sale, imports, exports, supplies
and/or distributes within the United States these products and thus directly infringes one
or more claims of the ’551 Patent, including at least claim 1.
18.
ASUS indirectly infringes the ’551 patent by inducing infringement by
others, such as resellers, of at least claim 1 in accordance with 35 U.S.C. § 271(b) in this
District and elsewhere in the United States. Direct infringement is the result of activities
performed by the manufacturers, resellers, and/or end-users of the ASUS Mobile
5
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 6 of 38 PageID #: 6
Communication Devices. ASUS had actual notice of the ’551 Patent at least as of the
date this lawsuit was filed.
19.
ASUS’s affirmative acts of selling ASUS Mobile Communication
Devices, causing the ASUS Mobile Communication Devices to be manufactured and
distributed, and providing instruction manuals for ASUS Mobile Communication Devices
induced ASUS’s manufacturers and resellers to make or use ASUS Mobile
Communication Devices in their normal and customary way to infringe the ’551 patent.
Through its manufacture and sales of ASUS Mobile Communication Devices, ASUS
specifically intended its resellers and manufacturers to infringe the ’551 patent; further,
ASUS was aware that these normal and customary activities would infringe the ’551
patent. ASUS performed the acts that constitute induced infringement, and would induce
actual infringement, with the knowledge of the ’551 patent and with the knowledge or
willful blindness that the induced acts would constitute infringement.
20.
Accordingly, a reasonable inference is that ASUS specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of
the ‘551 Patent in the United States because ASUS has knowledge of the ‘551 Patent and
ASUS actually induces others, such as resellers and end-use customers, to directly
infringe the ’551 patent, by using, selling, exporting, supplying and/or distributing within
the United States, ASUS Mobile Communication Devices for resale to others, such as
resellers and end-use customers. ASUS knew or should have known that such actions
would induce actual infringement.
21.
ASUS indirectly infringes the ‘551 Patent by contributing to infringement
by others, such as resellers and end-use customers, in accordance with 35 U.S.C. § 271(c)
6
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 7 of 38 PageID #: 7
in this District and elsewhere in the United States. Direct infringement is the result of
activities performed by the manufacturers, resellers, and/or end-users of ASUS Mobile
Communication Devices. ASUS had actual notice of the ’551 Patent at least as of the
date this lawsuit was filed.
22.
ASUS Mobile Communication Devices include at least one electronic
package comprising a component that is located between an EMI shield and a ground
member for performing shielding operations. The EMI shield is incorporated into the
electronic package, which is then mounted to a circuit board in ASUS Mobile
Communication Devices, and on information and belief, the electronic component does
not function in an acceptable manner absent the EMI shielding.
Furthermore, the
electronic package incorporating the EMI shield does not operate in isolation, but is
designed to operate within the Mobile Communication Device, and absent the EMI
shielding of the electronic component, ASUS Mobile Communication Devices would not
function in an acceptable manner.
23.
A reasonable inference to be drawn from the facts set forth is that the EMI
shielded electronic package in ASUS Mobile Communication Devices is especially made
or especially adapted to operate in an ASUS Mobile Communication Device as an EMI
shield.
24.
A reasonable inference to be drawn from the facts set forth is that the EMI
shielded electronic package is not a staple article or commodity of commerce and that the
use of the EMI shielded electronic package is required for operation of ASUS Mobile
Communication Devices.
Any other use would be unusual, far-fetched, illusory,
impractical, occasional, aberrant, or experimental.
7
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 8 of 38 PageID #: 8
25.
The EMI shielded electronic package in ASUS Mobile Communication
Devices are each a material part of the invention of the ’551 patent and are especially
made for the infringing manufacture, sale, and use of ASUS Mobile Communication
Devices. ASUS Mobile Communication Devices, including the EMI shielded electronic
package, are especially made or adapted as an electronic package that infringes the ’551
patent. Because the sales and manufacture of ASUS Mobile Communication Devices
including the EMI shielded electronic package infringe the ’551 patent, ASUS’s sales of
its infringing products have no substantial non-infringing uses.
26.
Accordingly, a reasonable inference is that ASUS offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination,
or composition, or a material or apparatus for use in practicing a patented process,
constituting a material part of the invention, knowing the same to be especially made or
especially adapted for use in an infringement of such patent, and not a staple article or
commodity of commerce suitable for substantial non-infringing use. ASUS provides to
others ASUS Mobile Communication Devices with distinct and separate components,
including hardware components, which have no substantial non-infringing use.
27.
At least ASUS Mobile Communication Devices with an operating system
configured and installed by ASUS to support Gallery, Email, Maps and Browser
functionality, infringe at least claim 13 of the ‘937 Patent. ASUS makes, uses, tests,
sells, offers for sale, imports, exports, supplies and/or distributes within the United States
these devices and thus directly infringes at least claim 13 of the ‘937 Patent.
28.
ASUS indirectly infringes the ‘937 patent by inducing infringement by
others of at least claim 13, such as resellers, in accordance with 35 U.S.C. § 271(b) in this
8
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 9 of 38 PageID #: 9
District and elsewhere in the United States. Direct infringement is the result of activities
performed by the manufacturers, resellers, and end-users of the ASUS Mobile
Communication Devices. ASUS received actual notice of the ’937 Patent at least by May
14, 2012 from a communication from Rockstar, and/or its predecessors-in-interest, to
ASUS, and also received knowledge as of the date this lawsuit was filed.
29.
ASUS’s affirmative acts of selling ASUS Mobile Communication Devices,
causing the ASUS Mobile Communication Devices to be manufactured, and providing
instruction manuals for ASUS Mobile Communication Devices induced ASUS’s
manufacturers and resellers to make or use the ASUS Mobile Communication Devices in
their normal and customary way to infringe the ‘937 patent. Through its manufacture and
sales of ASUS Mobile Communication Devices, ASUS specifically intended its resellers
and manufacturers to infringe the ‘937 patent; further, ASUS was aware that these normal
and customary activities would infringe the ‘937 patent. ASUS performed the acts that
constitute induced infringement, and would induce actual infringement, with knowledge
of the ‘937 patent and with the knowledge or willful blindness that the induced acts
would constitute infringement.
30.
Accordingly, a reasonable inference is that ASUS specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of
the ‘937 patent in the United States because ASUS has knowledge of the ‘937 patent and
actually induces others, such as resellers and end-use customers, to directly infringe, by
using, selling, exporting, supplying and/or distributing within the United States, ASUS
Communication Devices for resale to others, such as resellers and end-use customers.
ASUS knew or should have known that such actions would induce actual infringement.
9
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 10 of 38 PageID #: 10
31.
The use of at least ASUS Mobile Communication Devices with an
operating system configured and installed by ASUS to support Gallery, Email, Maps and
Browser functionality as intended by ASUS infringes at least method claim 1 of the ‘937
Patent. ASUS uses these products and thus directly infringes at least method claim 1 of
the ‘937 Patent.
32.
In addition, ASUS provides at least ASUS Mobile Communication
Devices with an operating system configured and installed by ASUS to support Gallery,
Email, Maps, and Browser functionality to others, such as resellers and end-use
customers, in the United States who, in turn, use these products to infringe at least
method claim 1 of the ‘937 Patent.
33.
ASUS indirectly infringes the ’937 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. § 271(b) in
this District and elsewhere in the United States. Direct infringement is the result of
activities performed by the manufacturers, resellers, and/or end-users of the ASUS
Mobile Communication Devices. ASUS received actual notice of the ’937 Patent at least
by May 14, 2012, in view of a communication from Rockstar, and/or its predecessors-ininterest, to ASUS, and also received knowledge as of the date this lawsuit was filed.
34.
ASUS provides at least ASUS Mobile Communication Devices with an
operating system configured and installed by ASUS to support Gallery, Email, Maps and
Browser functionality to others, such as resellers and end-use customers, in the United
States who, in turn, use these products to infringe the ’937 Patent.
Through its
manufacture and sales of ASUS Mobile Communication Devices, ASUS specifically
intended its resellers and manufacturers to infringe the ’937 patent.
10
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 11 of 38 PageID #: 11
35.
ASUS specifically intends for others, such as resellers and end-use
customers, to directly infringe one or more claims of the ’937 Patent in the United States.
For example, ASUS provides instructions to resellers and end-use customers regarding
the use and operation of ASUS’s products in an infringing way. Such instructions
include at least “Transformer User Manual TF201” available on ASUS’s web site at
http://dlcdnet.asus.com/pub/ASUS/EeePAD/TF201/TF201_MANUAL_en_20120210.pdf
. When resellers and end-use customers follow such instructions, they directly infringe
the ‘937 Patent. ASUS knows that by providing such instructions, resellers and end-use
customers follow those instructions, and directly infringe the ‘937 Patent. ASUS thus
knows that its actions induce the infringement.
36.
ASUS performed the acts that constitute induced infringement, and would
induce actual infringement with the knowledge of the ’937 patent and with the
knowledge or willful blindness that the induced acts would constitute infringement.
37.
ASUS indirectly infringes the ’937 patent, by contributing to infringement
by others, such as resellers and end-use customers, in accordance with 35 U.S.C. § 271(b)
in this District and elsewhere in the United States. Direct infringement is the result of
activities performed by the manufacturers, resellers, and/or end-users of ASUS Mobile
Communication Devices. ASUS received actual notice of the ’937 Patent at least by May
14, 2012, in view of a communication from Rockstar, and/or its predecessors-in-interest,
to ASUS, and also received knowledge as of the date this lawsuit was filed.
38.
ASUS Mobile Communication Devices include functionality that, inter
alia, displays a navigable graphical user interface (“navigable GUI”) that permits a user
to manipulate and control the contents of the display to maximize the use of display real
11
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 12 of 38 PageID #: 12
estate. This navigable GUI is included in ASUS Mobile Communication Devices with an
operating system configured and installed by ASUS to support at least the Gallery, Email,
Maps, and Browser functionalities.
On information and belief, these functionalities
cannot operate in an acceptable manner absent the navigable GUI, as it is included in
every ASUS Mobile Communication Device.
39.
A reasonable inference to be drawn from the facts set forth is that the
navigable GUI as included in ASUS Mobile Communication Devices is especially made
or especially adapted to operate on an ASUS Mobile Communication Device as a
navigable GUI that permits a user to manipulate or control the contents of the display to
maximize the use of display real estate on the user’s ASUS Mobile Communication
Devices.
40.
A reasonable inference to be drawn from the facts set forth is that the
navigable GUI as included in the Mobile Communication Device is not a staple article or
commodity of commerce and that the use of the navigable GUI in ASUS Mobile
Communication Devices is required for the operation of ASUS Mobile Communication
Devices. Any other use would be unusual, far-fetched, illusory, impractical, occasional,
aberrant, or experimental.
41.
ASUS Mobile Communication Devices with the navigable GUI are each a
material part of the invention of the ’937 patent and are especially made for the infringing
manufacture, sale, and use of ASUS Mobile Communication Devices. ASUS Mobile
Communication Devices with the navigable GUI are especially made or adapted as a
navigable GUI that infringes the ’937 patent. Because the sales and manufacture of
12
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 13 of 38 PageID #: 13
ASUS Mobile Communication Devices with a navigable GUI infringes the ’937 patent,
ASUS’s sales of its infringing products have no substantial non-infringing uses.
42.
Accordingly, a reasonable inference is that ASUS offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination,
or composition, or a material or apparatus for use in practicing the ’937 patent,
constituting a material part of the invention, knowing the same to be especially made or
especially adapted for use in an infringement of such patent, and not a staple article or
commodity of commerce suitable for substantial non-infringing use. ASUS provides to
others, ASUS Mobile Communication Devices with distinct and separate components,
including software components, which have no substantial non-infringing use.
43.
At least ASUS Mobile Communication Devices with an operating system
configured and installed by ASUS to support the Mobile Hotspot functionality infringe at
least claims 27 and 31 of the ‘298 Patent. ASUS makes, uses, sells, offers for sale,
imports, exports, supplies and/or distributes within the United States these devices and
thus directly infringes at least claims 27 and 31 of the ‘298 Patent.
44.
ASUS indirectly infringes the ‘298 patent by inducing infringement by
others of at least claim 27 and 31, such as resellers, in accordance with 35 U.S.C. §
271(b) in this District and elsewhere in the United States. Direct infringement is the
result of activities performed by the manufacturers, resellers, and end-users of the ASUS
Mobile Communication Devices. ASUS had actual notice of the ’298 Patent at least by
September 27, 2013 from a communication from Rockstar to ASUS, and also received
knowledge as of the date this lawsuit was filed.
13
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 14 of 38 PageID #: 14
45.
ASUS’s affirmative acts of selling ASUS Mobile Communication Devices,
causing the ASUS Mobile Communication Devices to be manufactured, and providing
instruction manuals for ASUS Mobile Communication Devices induced ASUS’s
manufacturers and resellers to make or use the ASUS Mobile Communication Devices in
their normal and customary way to infringe the ‘298 patent. Through its manufacture and
sales of ASUS Mobile Communication Devices, ASUS specifically intended its resellers
and manufacturers to infringe the ‘298 patent; further, ASUS was aware that these normal
and customary activities would infringe the ‘298 patent. ASUS performed the acts that
constitute induced infringement, and would induce actual infringement, with the
knowledge of the ‘298 patent and with the knowledge or willful blindness that the
induced acts would constitute infringement.
46.
Accordingly, a reasonable inference is that ASUS specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of
the ‘298 patent in the United States because ASUS has knowledge of the ‘298 patent and
actually induces others, such as resellers and end-use customers, to directly infringe, by
using, selling, exporting, supplying and/or distributing within the United States, ASUS
Communication Devices for resale to others, such as resellers and end-use customers.
ASUS knew or should have known that such actions would induce actual infringement.
47.
The use of at least ASUS Mobile Communication Devices that support the
Mobile Hotspot functionality as intended by ASUS infringes at least method claims 14
and 24 of the ‘298 Patent. ASUS uses these products and thus directly infringes at least
method claims 14 and 24 of the ‘298 Patent.
14
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 15 of 38 PageID #: 15
48.
In addition, ASUS provides at least ASUS Mobile Communication
Devices that support the Mobile Hotspot functionality to others, such as resellers and
end-use customers, in the United States who, in turn, use these products to infringe at
least method claims 14 and 24 of the ‘298 Patent.
49.
ASUS indirectly infringes the ’298 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. § 271(b) in
this District and elsewhere in the United States. Direct infringement is the result of
activities performed by the manufacturers, resellers, and/or end-users of ASUS Mobile
Communication Devices in their intended use, including a customer’s use of the Mobile
Hotspot functionality.
ASUS received actual notice of the ’298 Patent at least by
September 27, 2013, in view of a communication from Rockstar to ASUS, and also
received knowledge as of the date this lawsuit was filed.
50.
ASUS’s affirmative acts of selling its ASUS Mobile Communication
Devices and providing instruction manuals induced the end-users of ASUS Mobile
Communication Devices to use ASUS Mobile Communication Devices in their normal
and customary way to infringe the ’298 patent at least through using Mobile Hotspot
functionality. ASUS also provides instructions, including at least “Transformer User
Manual
TF201”
available
on
ASUS’s
web
site
at
http://dlcdnet.asus.com/pub/ASUS/EeePAD/TF201/TF201_MANUAL_en_20120210.pdf
for using the Mobile Hotspot functionality.
Through its sales of ASUS Mobile
Communication Devices with Mobile Hotspot functionality, ASUS specifically intended
the end-users of ASUS Mobile Communication Devices to infringe the ’298 patent;
further, ASUS was aware that the normal and customary use of Mobile Hotspot
15
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 16 of 38 PageID #: 16
functionality would infringe the ’298 patent. ASUS also enticed its end-users to use the
Mobile Hotspot functionality by providing instruction manuals and also providing Mobile
Hotspot functionality. ASUS performed the acts that constituted induced infringement,
and would induce actual infringement, with the knowledge of the ’298 patent and with
the knowledge or willful blindness that the induced acts would constitute infringement.
51.
Accordingly, a reasonable inference is that ASUS actively induces
infringement of the ‘298 Patent by others, such as resellers and end-use customers.
ASUS specifically intends for others, such as resellers and end-use customers, to directly
infringe one or more claims of the ‘298 Patent in the United States because ASUS had
knowledge of the ‘298 Patent, and ASUS actually induces infringement by providing
instructions to resellers and end-use customers regarding the use and operation of ASUS
Mobile Communication Devices in an infringing way. Such instructions include at least
“Transformer
User
Manual
TF201”
available
on
ASUS’s
web
site
at
http://dlcdnet.asus.com/pub/ASUS/EeePAD/TF201/TF201_MANUAL_en_20120210.pdf
. When resellers and end-use customers follow such instructions, they directly infringe
the ‘298 Patent. ASUS knows that by providing such instructions, resellers and end-use
customers follow those instructions, and directly infringe the ‘298 Patent. ASUS thus
knows that its actions induce the infringement.
52.
ASUS indirectly infringes the ‘298 Patent by contributing to infringement
by others, such as resellers and end-use customers, in accordance with 35 U.S.C. § 271(c)
in this District and elsewhere in the United States. Direct infringement is the result of
activities performed by the manufacturers, resellers, and/or end-users of ASUS Mobile
Communication Devices in their intended use, including a customer’s use of the Mobile
16
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 17 of 38 PageID #: 17
Hotspot functionality.
ASUS received actual notice of the ’298 Patent at least by
September 27, 2013, in view of a Rockstar communication to ASUS, and also received
knowledge as of the date this lawsuit was filed.
53.
ASUS Mobile Communication Devices with the Mobile Hotspot
functionality allow wireless devices from a first, or private, network to connect to a
second, or public, network such as the Internet. The Mobile Hotspot functionality is
designed to route data packets between wireless devices tethered to the Mobile Hotspot to
nodes on a public network such as the Internet, and cannot function in a manner that does
not utilize the Mobile Hotspot functionality available to ASUS Mobile Communication
Devices. Upon information and belief, the Mobile Hotspot functionality is designed to
entice a user to access nodes in a second, or public, network such as the Internet.
54.
A reasonable inference to be drawn from the facts set forth is that the
Mobile Hotspot functionality is especially made or especially adapted to operate on a
mobile communication device for providing access for wireless devices in a first, or
private, network to nodes in a second, or public, network.
55.
A reasonable inference to be drawn from the facts set forth is that the
Mobile Hotspot functionality is not a staple article or commodity of commerce and that
the use of the Mobile Hotspot functionality of ASUS Mobile Communication Devices is
for interfacing first and second data communications networks, e.g., a private network
and a public network such as the Internet. Any other use would be unusual, far-fetched,
illusory, impractical, occasional, aberrant, or experimental.
56.
ASUS Mobile Communication Devices with Mobile Hotspot functionality
are each a material part of the ’298 patent and especially made for the infringing use of
17
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 18 of 38 PageID #: 18
the Mobile Hotspot functionality for interfacing private and public data communication
networks. ASUS Mobile Communication Devices with the Mobile Hotspot functionality
are especially made or adapted to provide access for wireless devices in a first, or private,
network through the Mobile Communication Device, to nodes in a second, or public,
network that perform or facilitate performance of the steps that infringe the ’298 patent.
Furthermore, ASUS provides user manuals describing the uses of ASUS Mobile
Communication Devices that infringe the ’298 patent.
Because the sales and
manufacture of ASUS Mobile Communication Devices with Mobile Hotspot
functionality infringes the ’298 patent, ASUS’s sales of its infringement products have no
substantial non-infringing uses.
57.
Accordingly, a reasonable inference is that ASUS offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination,
or composition, or a material or apparatus for use in practicing a patented process,
constituting a material part of the invention, knowing the same to be especially made or
especially adapted for use in an infringement of such patent, and not a staple article or
commodity of commerce suitable for substantial non-infringing use. ASUS provides to
others, ASUS Mobile Communication Devices with an operating system configured and
installed by ASUS to support Mobile Hotspot functionality.
ASUS installs and
configures ASUS Mobile Communication Devices with distinct and separate
components, including software components, which are used only to perform the
infringing method claims.
58.
At least ASUS Mobile Communication Devices with an operating system
configured and installed by ASUS to support Message and Notification functionality
18
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 19 of 38 PageID #: 19
infringe at least claim 1 of the ‘131 Patent. ASUS makes, uses, sells, offers for sale,
imports, exports, supplies and/or distributes within the United States these devices and
thus directly infringes at least claim 1 of the ‘131 Patent.
59.
ASUS indirectly infringes the ‘131 patent by inducing infringement by
others of at least claim 1, such as resellers, in accordance with 35 U.S.C. § 271(b) in this
District and elsewhere in the United States. Direct infringement is the result of activities
performed by the manufacturers, resellers, and end-users of the ASUS Mobile
Communication Devices.
ASUS had actual notice of the ’131 Patent at least by
September 27, 2013 from a communication from Rockstar to ASUS, and also received
knowledge as of the date this lawsuit was filed.
60.
ASUS’s affirmative acts of selling ASUS Mobile Communication Devices,
causing the ASUS Mobile Communication Devices to be manufactured, and providing
instruction manuals for ASUS Mobile Communication Devices induced ASUS’s
manufacturers and resellers to make or use the ASUS Mobile Communication Devices in
their normal and customary way to infringe the ‘131 patent. Through its manufacture and
sales of ASUS Mobile Communication Devices, ASUS specifically intended its resellers
and manufacturers to infringe the ‘131 patent; further, ASUS was aware that these normal
and customary activities would infringe the ‘131 patent. ASUS performed the acts that
constitute induced infringement, and would induce actual infringement, with the
knowledge of the ‘131 patent and with the knowledge or willful blindness that the
induced acts would constitute infringement.
61.
Accordingly, a reasonable inference is that ASUS specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of
19
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 20 of 38 PageID #: 20
the ‘131 patent in the United States because ASUS has knowledge of the ‘131 patent and
actually induces others, such as resellers and end-use customers, to directly infringe, by
using, selling, exporting, supplying and/or distributing within the United States, ASUS
Communication Devices for resale to others, such as resellers and end-use customers.
ASUS knew or should have known that such actions would induce actual infringement.
62.
The use of at least ASUS Mobile Communication Devices with an
operating system configured and installed by ASUS to support Message and Notification
functionality as intended by ASUS infringes at least method claim 5 of the ‘131 Patent.
ASUS uses these products and thus directly infringes at least method claim 5 of the ‘131
Patent.
63.
In addition, ASUS provides at least ASUS Mobile Communication
Devices with an operating system configured and installed by ASUS to support Message
functionality to others, such as resellers and end-use customers, in the United States who,
in turn, use these products to infringe at least method claim 5 of the ‘131 Patent.
64.
ASUS indirectly infringes the ’131 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. § 271(b) in
this District and elsewhere in the United States. Direct infringement is the result of
activities performed by the manufacturers, resellers, and/or end-users of ASUS Mobile
Communication Devices in their intended use, including a customer’s use of the Message
and Notifications functionality. ASUS received actual notice of the ’131 Patent at least
by September 27, 2013, in view of a Rockstar communication to ASUS, and also
received knowledge as of the date this lawsuit was filed.
20
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 21 of 38 PageID #: 21
65.
ASUS’s affirmative acts of selling ASUS Mobile Communication Devices
and providing instruction manuals induced the end-users of ASUS Mobile
Communication Devices to use ASUS Mobile Communication Devices in their normal
and customary way to infringe the ’131 patent at least through using Message and
Notifications functionality.
“Transformer
User
ASUS also provides instructions, including at least
Manual
TF201”
available
on
ASUS’s
web
site
at
http://dlcdnet.asus.com/pub/ASUS/EeePAD/TF201/TF201_MANUAL_en_20120210.pdf
, for using the Messaging and Notifications functionality. Through its sales of Mobile
Communication Devices with Messaging and Notifications functionality, ASUS
specifically intended the end-users of ASUS Mobile Communication Devices to infringe
the ’131 patent; further, ASUS was aware that the normal and customary use of the
Message and Notifications functionality would infringe the ’131 patent. ASUS also
enticed its end-users to use the Messaging and Notifications functionality by providing
instruction manuals. ASUS performed the acts that constituted induced infringement,
and would induce actual infringement, with the knowledge of the ’131 patent and with
the knowledge or willful blindness that the induced acts would constitute infringement.
66.
Accordingly, a reasonable inference is that ASUS actively induces
infringement of the ‘131 Patent by others, such as resellers and end-use customers.
ASUS specifically intends for others, such as resellers and end-use customers, to directly
infringe one or more claims of the ‘131 Patent in the United States because ASUS had
knowledge of the ‘131 Patent, and ASUS actually induces infringement by providing
instructions to resellers and end-use customers regarding the use and operation of ASUS
Mobile Communication Devices in an infringing way. Such instructions include at least
21
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 22 of 38 PageID #: 22
“Transformer
User
Manual
TF201”
available
on
ASUS’s
web
site
at
http://dlcdnet.asus.com/pub/ASUS/EeePAD/TF201/TF201_MANUAL_en_20120210.pdf
. When resellers and end-use customers follow such instructions, they directly infringe
the ‘131 Patent. ASUS knows that by providing such instructions, resellers and end-use
customers follow those instructions, and directly infringe the ‘131 Patent. ASUS thus
knows that its actions induce the infringement.
67.
ASUS 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/or end-users of ASUS Mobile
Communication Devices in their intended use, including a customer’s use of the
Messaging and Notification functionality. ASUS received actual notice of the ’131
Patent at least by September 27, 2013, in view of a Rockstar communication to ASUS,
and also received knowledge as of the date this lawsuit was filed.
68.
ASUS’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 ASUS
Mobile Communication Devices.
Upon information and belief, the Message and
Notifications functionality is designed to entice a user to receive notifications of an
incoming communication.
22
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 23 of 38 PageID #: 23
69.
A reasonable inference to be drawn from the facts set forth is that the
Message and Notifications functionality especially made or especially adapted to operate
on ASUS Mobile Communication Devices for notifying a user of an incoming
communication.
70.
A reasonable inference to be drawn from the facts set forth is that the
Message and Notifications functionality is not a staple article or commodity of commerce
and that the use of the Messaging and Notifications functionality of the ASUS Mobile
Communication Devices is for notifying a user of an incoming communication. Any
other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or
experimental.
71.
ASUS Mobile Communication Devices with Messaging and Notifications
functionality are each a material part of the ’131 patent and especially made for the
infringing use of the Messaging and Notification functionality to receive and display
messages.
ASUS Mobile Communication Devices including the Messaging and
Notification functionality, are especially made or adapted to notify a user of an incoming
communication that perform or facilitate performance of the steps that infringe the ’131
patent. Furthermore, ASUS provides user manuals describing the uses of its Mobile
Communication Devices that infringe the ’131 patent.
Because the functionality
provided by ASUS’s Messaging and Notification to notify a user of an incoming
communication infringes the ’131 patent, ASUS’s sales of its infringing products have no
substantial non-infringing uses.
72.
Accordingly, a reasonable inference is that ASUS offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination,
23
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 24 of 38 PageID #: 24
or composition, or a material or apparatus for use in practicing a patented process,
constituting a material part of the invention, knowing the same to be especially made or
especially adapted for use in an infringement of such patent, and not a staple article or
commodity of commerce suitable for substantial non-infringing use. ASUS provides to
others, Mobile Communication Devices with an operating system configured and
installed by ASUS to support Message and Notification functionality. ASUS installs and
configures on these products distinct and separate components, including software
components, which are used only to perform the infringing method claims.
73.
At least ASUS Mobile Communication Devices with an operating system
configured and installed by ASUS to support VPN management functionality, including
the ASUS Galaxy S III, infringe at least claims 1 and 8 of the ‘591 Patent. ASUS makes,
uses, sells, offers for sale, imports, exports, supplies and/or distributes within the United
States these devices and thus directly infringes at least claims 1 and 8 of the ‘591 Patent.
74.
ASUS indirectly infringes the ‘591 patent by inducing infringement by
others of at least claims 1 and 8, such as resellers, in accordance with 35 U.S.C. § 271(b)
in this District and elsewhere in the United States. Direct infringement is the result of
activities performed by the manufacturers, resellers, and end-users of the ASUS Mobile
Communication Devices.
ASUS had actual notice of the ’591 Patent at least by
September 27, 2013 from a communication from Rockstar to ASUS, and also received
knowledge as of the date this lawsuit was filed.
75.
ASUS’s affirmative acts of selling ASUS Mobile Communication Devices,
causing the ASUS Mobile Communication Devices to be manufactured, and providing
instruction manuals for ASUS Mobile Communication Devices induced ASUS’s
24
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 25 of 38 PageID #: 25
manufacturers and resellers to make or use the ASUS Mobile Communication Devices in
their normal and customary way to infringe the ‘591 patent. Through its manufacture and
sales of ASUS Mobile Communication Devices, ASUS specifically intended its resellers
and manufacturers to infringe the ‘591 patent; further, ASUS was aware that these normal
and customary activities would infringe the ‘591 patent. ASUS performed the acts that
constitute induced infringement, and would induce actual infringement, with the
knowledge of the ‘591 patent and with the knowledge or willful blindness that the
induced acts would constitute infringement.
76.
Accordingly, a reasonable inference is that ASUS specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of
the ‘591 patent in the United States because ASUS has knowledge of the ‘591 patent and
actually induces others, such as resellers and end-use customers, to directly infringe, by
using, selling, exporting, supplying and/or distributing within the United States, ASUS
Communication Devices for resale to others, such as resellers and end-use customers.
ASUS knew or should have known that such actions would induce actual infringement.
77.
The use of at least ASUS Mobile Communication Devices with an
operating system configured and installed by ASUS to support VPN management
functionality as specified and intended by ASUS infringes at least claims 1 and 8 of the
‘591 Patent. ASUS uses these products and thus directly infringes at least claims 1 and 8
of the ‘591 Patent.
78.
In addition, ASUS provides at least its Mobile Communication Devices
with an operating system configured and installed by ASUS to support VPN management
25
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 26 of 38 PageID #: 26
functionality to others, such as resellers and end-use customers, in the United States who,
in turn, use these products to infringe at least claims 1 and 8 of the ‘591 Patent.
79.
ASUS indirectly infringes the ’591 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. § 271(b) in
this District and elsewhere in the United States. Direct infringement is the result of
activities performed by the manufacturers, resellers, and/or end-users of ASUS Mobile
Communication Devices in their intended use, including a customer’s use of the VPN
management functionality. ASUS received actual notice of the ’591 Patent at least by
September 27, 2013, from a Rockstar communication to ASUS, and also received
knowledge as of the date this lawsuit was filed.
80.
ASUS’s affirmative acts of selling its Mobile Communication Devices and
providing instruction manuals induced the end-users of ASUS Mobile Communication
Devices to use ASUS Mobile Communication Devices in their normal and customary
way to infringe the ’591 patent at least through using VPN management functionality.
ASUS also provides instructions, including at least “Transformer User Manual TF201”
available
on
ASUS’s
web
site
at
http://dlcdnet.asus.com/pub/ASUS/EeePAD/TF201/TF201_MANUAL_en_20120210.pdf
, for using the VPN management functionality. Through its sales of ASUS Mobile
Communication Devices with VPN management functionality, ASUS specifically
intended the end-users of ASUS Mobile Communication Devices to infringe the ’591
patent; further, ASUS was aware that the normal and customary use of VPN management
functionality would infringe the ’591 patent. ASUS also enticed its end-users to use the
VPN management functionality by providing instruction manuals. ASUS performed the
26
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 27 of 38 PageID #: 27
acts that constituted induced infringement, and would induce actual infringement, with
the knowledge of the ’591 patent and with the knowledge or willful blindness that the
induced acts would constitute infringement.
81.
Accordingly, it is a reasonable inference that ASUS actively induces
infringement of the ‘591 Patent by others, such as resellers and end-use customers.
ASUS specifically intends for others, such as resellers and end-use customers, to directly
infringe one or more claims of the ‘591 Patent in the United States because ASUS had
knowledge of the ‘591 Patent, and ASUS actually induces infringement by providing
instructions to resellers and end-use customers regarding the use and operation of
ASUS’s products in an infringing way. Such instructions include at least “Transformer
User
Manual
TF201”
available
on
ASUS’s
web
site
at
http://dlcdnet.asus.com/pub/ASUS/EeePAD/TF201/TF201_MANUAL_en_20120210.pdf
. When resellers and end-use customers follow such instructions, they directly infringe
the ‘591 Patent. ASUS knows that by providing such instructions, resellers and end-use
customers follow those instructions, and directly infringe the ‘591 Patent. ASUS thus
knows that its actions induce the infringement.
82.
ASUS 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/or end-users of ASUS Mobile
Communication Devices in their intended use, including a customer’s use of the VPN
management functionality. ASUS received actual notice of the ’591 Patent at least by
27
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 28 of 38 PageID #: 28
September 27, 2013, in view of a Rockstar communication to ASUS, and also received
knowledge as of the date this lawsuit was filed.
83.
ASUS’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
ASUS Mobile Communication Devices. The VPN management functionality is designed
upon information and belief to entice a user to manage VPNs.
84.
A reasonable inference to be drawn from the facts set forth is that the VPN
functionality is especially made or especially adapted to operate on ASUS Mobile
Communication Devices for providing VPN management functionality.
85.
A reasonable inference to be drawn from the facts set forth is that the VPN
management functionality is not a staple article or commodity of commerce and that the
use of the VPN management functionality of ASUS Mobile Communication Devices is
for managing VPNs. Any other use would be unusual, far-fetched, illusory, impractical,
occasional, aberrant, or experimental.
86.
ASUS
Mobile
Communication
Devices
with
VPN
management
functionality are each a material part of the invention of the ’591 patent and especially
made for the infringing use of the VPN functionality to receive call trace information.
ASUS Mobile Communication Devices including the VPN management functionality,
are especially made or adapted to provide VPN management functionality that perform or
facilitate performance of the steps that infringe the ’591 patent. Furthermore, ASUS
provides user manuals describing the uses of its Mobile Communication Devices that
infringe the ’591 patent.
Because the functionality provided by ASUS’s VPN
28
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 29 of 38 PageID #: 29
management functionality infringes the ’591 patent, ASUS’s sales of its infringing
Mobile Communication Devices have no substantial non-infringing uses.
87.
Accordingly, a reasonable inference is that ASUS offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination,
or composition, or a material or apparatus for use in practicing a patented process,
constituting a material part of the invention, knowing the same to be especially made or
especially adapted for use in an infringement of such patent, and not a staple article or
commodity of commerce suitable for substantial non-infringing use. ASUS provides to
others, Mobile Communication Devices with an operating system configured and
installed by ASUS to support VPN management functionality.
ASUS installs and
configures on these products distinct and separate components, including software
components, which are used only to infringe the ‘591 Patent.
88.
The use of at least ASUS Mobile Communication Devices with an
operating system configured and installed by ASUS to support Location Services
functionality, as intended by ASUS infringes at least method claim 17 of the ‘572 Patent.
ASUS uses these Mobile Communication Devices and thus directly infringes at least
method claim 17 of the ‘572 Patent.
89.
In addition, ASUS provides at least its Mobile Communication Devices
with an operating system configured and installed by ASUS to support Location Services
functionality to others, such as resellers and end-use customers, in the United States who,
in turn, use these products to infringe at least method claim 17 of the ‘572 Patent.
90.
ASUS indirectly infringes by inducing infringement by others, such as
resellers and end-use customers, in accordance with 35 U.S.C. § 271(b) in this District
29
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 30 of 38 PageID #: 30
and elsewhere in the United States.
Direct infringement is the result of activities
performed by the manufacturers, resellers, and/or end-users of ASUS Mobile
Communication Devices in their intended use, including a customer’s use of the Location
Services functionality. ASUS received actual notice of the ’572 Patent at least by May
14, 2012, in view of a communication from Rockstar, and/or its predecessors-in-interest,
to ASUS, and also received knowledge as of the date this lawsuit was filed.
91.
ASUS’s affirmative acts of selling its Mobile Communication Devices and
providing instruction manuals induced the end-users of ASUS Mobile Communication
Devices to use ASUS Mobile Communication Devices in their normal and customary
way to infringe the ’572 patent at least through using Location Services functionality.
ASUS also provides instructions, including at least “Transformer User Manual TF201”
available
on
ASUS’s
web
site
at
http://dlcdnet.asus.com/pub/ASUS/EeePAD/TF201/TF201_MANUAL_en_20120210.pdf
, for using the Location Services functionality. Through its sales of ASUS Mobile
Communication Devices with Location Services functionality, ASUS specifically
intended the end-users of ASUS Mobile Communication Devices to infringe the ’572
patent; further, ASUS was aware that the normal and customary use of Location Services
would infringe the ’572 patent. ASUS also enticed its end-users to use the Location
Services by providing instruction manuals. ASUS performed the acts that constituted
induced infringement, and would induce actual infringement, with the knowledge of the
’572 patent and with the knowledge or willful blindness that the induced acts would
constitute infringement.
30
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 31 of 38 PageID #: 31
92.
Accordingly, a reasonable inference is that ASUS actively induces
infringement of the ‘572 Patent by others, such as resellers and end-use customers.
ASUS specifically intends for others, such as resellers and end-use customers, to directly
infringe one or more claims of the ‘572 Patent in the United States because ASUS had
knowledge of the ‘572 Patent, and ASUS actually induces infringement by providing
instructions to resellers and end-use customers regarding the use and operation of
ASUS’s products in an infringing way. Such instructions include at least “Transformer
User
Manual
TF201”
available
on
ASUS’s
web
site
at
http://dlcdnet.asus.com/pub/ASUS/EeePAD/TF201/TF201_MANUAL_en_20120210.pdf
. When resellers and end-use customers follow such instructions, they directly infringe
the ‘572 Patent. ASUS knows that by providing such instructions, resellers and end-use
customers follow those instructions, and directly infringe the ‘572 Patent. ASUS thus
knows that its actions induce the infringement.
93.
ASUS 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/or end-users of ASUS Mobile
Communication Devices in their intended use, including a customer’s use of the
Locations Services functionality. ASUS received actual notice of the ’572 Patent at least
by May 14, 2012, in view of a communication from Rockstar, and/or its predecessors-ininterest, to ASUS, and also received knowledge as of the date this lawsuit was filed.
94.
ASUS’s Location Services functionality provides call trace information,
i.e., a geographic location of ASUS Mobile Communication Devices. The Location
31
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 32 of 38 PageID #: 32
Services functionality is designed to notify the user of ASUS Mobile Communication
Devices of call trace information, i.e., a geographic location of the Mobile
Communication Devices, and cannot function in a manner that does not utilize the
Location Services functionality available to the Mobile Communication Devices. Upon
information and belief, the Location Services functionality is designed to entice a user to
access call trace information.
95.
A reasonable inference to be drawn from the facts set forth is that the
Location Services functionality is especially made or especially adapted to operate on
ASUS Mobile Communication Devices for obtaining call trace information, i.e., a
geographic location of the Mobile Communication Devices.
96.
A reasonable inference to be drawn from the facts set forth is that the
Location Services functionality is not a staple article or commodity of commerce and that
the use of the Location Services functionality of ASUS Mobile Communication Devices
is for providing call trace information. Any other use would be unusual, far-fetched,
illusory, impractical, occasional, aberrant, or experimental.
97.
ASUS
Mobile
Communication
Devices
with
Location
Services
functionality are each a material part of the ’572 patent and especially made for the
infringing use of the Location Services functionality to receive call trace information, i.e.,
a geographic location of the Mobile Communication Devices.
The Mobile
Communication Devices including the Location Services functionality are especially
made or adapted to provide call trace information that perform or facilitate performance
of the steps that infringe the ’572 patent. Furthermore, ASUS provides user manuals
describing the uses of its products that infringe the ’572 patent. Because the functionality
32
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 33 of 38 PageID #: 33
provided by ASUS’s Location Services to obtain call trace information, i.e., a geographic
location of the Mobile Communication Devices, infringes the ’572 patent, ASUS’s sales
of its infringing products have no substantial non-infringing uses.
98.
Accordingly, a reasonable inference is that ASUS offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination,
or composition, or a material or apparatus for use in practicing a patented process,
constituting a material part of the invention, knowing the same to be especially made or
especially adapted for use in an infringement of such patent, and not a staple article or
commodity of commerce suitable for substantial non-infringing use. ASUS provides to
others, Mobile Communication Devices with an operating system configured and
installed by ASUS to support Location Services functionality.
ASUS installs and
configures on these products distinct and separate components, including software
components, which are used only to perform the infringing method claims.
99.
ASUS’s acts of infringement have caused damage to Rockstar and
MobileStar. Rockstar and MobileStar are entitled to recover from ASUS the damages
sustained by Rockstar and MobileStar as a result of ASUS’s wrongful acts in an amount
subject to proof at trial. In addition, the infringing acts and practices of ASUS have
caused, are causing, and, unless such acts and practices are enjoined by the Court, will
continue to cause immediate and irreparable harm to Rockstar and MobileStar for which
there is no adequate remedy at law, and for which Rockstar and MobileStar are entitled to
injunctive relief under 35 U.S.C. § 283.
100.
ASUS received actual notice of its infringement of the ‘551, ‘937, ‘298,
‘973, ‘131, ‘591, and ‘572 Patents through at least letters sent by Rockstar and/or its
33
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 34 of 38 PageID #: 34
predecessors-in-interest, Nortel Networks Ltd. and/or Nortel Networks, Inc., to ASUS,
and through meetings between employees of Rockstar and/or its predecessors-in-interest,
Nortel Networks Ltd., or Nortel Networks Inc. and ASUS. ASUS also has knowledge of
its infringement of the Patents-in-Suit by way of this Complaint.
101.
ASUS has willfully infringed and/or does willfully infringe the ‘551, ‘937,
‘298, ‘131, ‘591, and ‘572 Patents.
DEMAND FOR JURY TRIAL
Rockstar and MobileStar hereby demand a jury trial for all issues so triable.
PRAYER FOR RELIEF
WHEREFORE, Rockstar and MobileStar pray for the following relief:
1.
A judgment that ASUS has directly infringed the ‘551 Patent,
contributorily infringed the ‘551 Patent, and/or induced the infringement of the ‘551
Patent.
2.
A judgment that ASUS has directly infringed the ‘937 Patent,
contributorily infringed the ‘937 Patent, and/or induced the infringement of the ‘937
Patent.
3.
A judgment that ASUS has directly infringed the ‘298 Patent,
contributorily infringed the ‘298 Patent, and/or induced the infringement of the ‘298
Patent.
4.
A judgment that ASUS has directly infringed the ‘131 Patent,
contributorily infringed the ‘131 Patent, and/or induced the infringement of the ‘131
Patent.
34
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 35 of 38 PageID #: 35
5.
A judgment that ASUS has directly infringed the ‘591 Patent,
contributorily infringed the ‘591 Patent, and/or induced the infringement of the ‘591
Patent.
6.
A judgment that ASUS has directly infringed the ‘572 Patent,
contributorily infringed the ‘572 Patent, and/or induced the infringement of the ‘572
Patent.
7.
A permanent injunction preventing ASUS and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and
those in active concert or participation with any of them, from directly infringing,
contributorily infringing, and/or inducing the infringement of the ’551 Patent;
8.
A permanent injunction preventing ASUS and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and
those in active concert or participation with any of them, from directly infringing,
contributorily infringing, and/or inducing the infringement of the ’937 patent;
9.
A permanent injunction preventing ASUS and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and
those in active concert or participation with any of them, from directly infringing,
contributorily infringing, and/or inducing the infringement of the ’298 patent;
10.
A permanent injunction preventing ASUS and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and
those in active concert or participation with any of them, from directly infringing,
contributorily infringing, and/or inducing the infringement of the ’973 patent;
35
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 36 of 38 PageID #: 36
11.
A permanent injunction preventing ASUS and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and
those in active concert or participation with any of them, from directly infringing,
contributorily infringing, and/or inducing the infringement of the ’131 patent;
12.
A permanent injunction preventing ASUS and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and
those in active concert or participation with any of them, from directly infringing,
contributorily infringing, and/or inducing the infringement of the ’591 patent;
13.
A permanent injunction preventing ASUS and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and
those in active concert or participation with any of them, from directly infringing,
contributorily infringing, and/or inducing the infringement of the ’572 patent;
14.
A judgment that ASUS’s infringement of the ’551, ‘937, ‘298, ‘131, ‘591,
and ‘572 Patents has been willful;
15.
A ruling that this case be found to be exceptional under 35 U.S.C. § 285,
and a judgment awarding Rockstar and MobileStar to its attorneys’ fees incurred in
prosecuting this action;
16.
A judgment and order requiring ASUS to pay Rockstar and MobileStar
damages under 35 U.S.C. § 284, including supplemental damages for any continuing
post-verdict infringement up until entry of the final judgment, with an accounting, as
needed, and treble damages for willful infringement as provided by 35 U.S.C. § 284;
17.
A judgment and order requiring ASUS to pay Rockstar and MobileStar the
costs of this action (including all disbursements);
36
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 37 of 38 PageID #: 37
18.
A judgment and order requiring ASUS to pay Rockstar and MobileStar
pre-judgment and post-judgment interest on the damages awarded;
19.
A judgment and order requiring that in the event a permanent injunction
preventing future acts of infringement is not granted, that Rockstar and MobileStar be
awarded a compulsory ongoing licensing fee; and
20.
Such other and further relief as the Court may deem just and proper.
37
McKool 940072v1
Case 2:13-cv-00894 Document 1 Filed 10/31/13 Page 38 of 38 PageID #: 38
DATED: October 31, 2013.
Respectfully submitted,
MCKOOL SMITH, P.C.
/s/ Theodore Stevenson, III
Mike McKool, Jr.
Texas Bar No. 13732100
mmckool@mckoolsmith.com
Douglas A. Cawley
Texas Bar No. 0403550
dcawley@mckoolsmith.com
Theodore Stevenson, III
Lead Attorney
Texas State Bar No. 19196650
tstevenson@mckoolsmith.com
David Sochia
Texas State Bar No. 00797470
dsochia@mckoolsmith.com
MCKOOL SMITH P.C.
300 Crescent Court, Suite 1500
Dallas, Texas 75201
Telephone: (214) 978-4000
Facsimile: (214) 978-4044
ATTORNEYS FOR PLAINTIFFS
ROCKSTAR CONSORTIUM US,
LP AND MOBILESTAR
TECHNOLOGIES LLC
38
McKool 940072v1
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?