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 E
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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-899
§
PANTECH CO., LTD., and PANTECH
§
§ JURY TRIAL REQUESTED
WIRELESS, 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.
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3.
Upon information and belief, Defendant Pantech Co., Ltd. is a Korean
company with its principal place of business at Pantech R&D Center, I-2 DMC Sangamdong, Mapo-gu, Seoul, 415865, South Korea.
4.
Upon information and belief, Defendant Pantech Wireless, Inc. is a
corporation organized and existing under the laws of the State of Georgia with its
principal place of business at 5607 Glenridge Drive, Suite 500, Atlanta, Georgia 30342.
JURISDICTION AND VENUE
5.
This is an action for patent infringement under the Patent Laws of the
United States, 35 U.S.C. § 271. This Court has exclusive subject matter jurisdiction over
this case for patent infringement under 28 U.S.C. § 1338.
6.
Venue is proper in this Court pursuant to 28 U S.C. §§ 1391 and 1400(b).
7.
This Court has personal jurisdiction over Defendants Pantech Co., Ltd.
and Pantech Wireless, Inc. (collectively, “Pantech”). Pantech has conducted and does
conduct business within the State of Texas. Pantech, directly or through subsidiaries or
intermediaries (including distributors, retailers, and others), ships, distributes, offers for
sale, sells, and advertises (including the provision of an interactive web page) its products
(including its infringing products) and/or services in the United States, the State of Texas,
and the Eastern District of Texas.
Pantech, directly and through subsidiaries or
intermediaries (including distributors, retailers, and others), has purposefully and
voluntarily placed one or more of its infringing products and/or services, as described
below, into the stream of commerce with the expectation that they will be purchased and
used by consumers in the Eastern District of Texas. These infringing products and/or
services have been and continue to be purchased and used by consumers in the Eastern
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District of Texas. Pantech has committed acts of patent infringement within the State of
Texas and, more particularly, within the Eastern District of Texas.
ASSERTED PATENTS
8.
On March 14, 2000, U.S. Patent No. 6,037,937 (“the ’937 Patent”) entitled
“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.
9.
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.
10.
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.
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
3
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owns all rights, title, and interest in and to the ’131 Patent and possesses all rights of
recovery under the ‘131 Patent.
12.
On July 20, 2004, U.S. Patent No. 6,765,591 (“the ’591 Patent”) entitled
“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. MobileStar owns all rights, title, and interest in and to the ’572 Patent and
possesses all rights of recovery under the ‘572 Patent.
GENERAL ALLEGATIONS
14.
Pantech has directly and indirectly infringed and continues to directly and
indirectly infringe each of the ’937, ’298, ’973, ’131, ’591, and ’572 Patents by engaging
in acts constituting infringement under 35 U.S.C. § 271(a), (b), (c), and/or (f), including
but not necessarily limited to one or more of making, using, selling and offering to sell, in
this District and elsewhere in the United States, and importing into this District and
elsewhere in the United States, certain mobile communication devices having a version
(or an adaption thereof) of Android operating system (“Pantech Mobile Communication
Devices”).
15.
Pantech is doing business in the United States and, more particularly, in
the Eastern District of Texas by making, using, selling, importing, and/or offering for sale
4
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Pantech Mobile Communication Devices, including but not limited to Pantech’s
Perception, Discover, Flex, Marauder, Burst, and Pocket family of smart phones, and its
Element family of tablets, and other products that infringe the patent claims involved in
this action or by transacting other business in this District.
COUNT ONE
PATENT INFRINGEMENT BY PANTECH
16.
Plaintiffs incorporate by reference paragraphs 1-16 as if fully set forth
herein. As described below, Pantech has infringed and/or continues to infringe the ‘937,
‘298, ‘973, ‘131, ‘591, and ‘572 Patents.
17.
At least Pantech Mobile Communication Devices with an operating
system configured and installed by Pantech to support Gallery, Email, Maps and Browser
functionality, infringe at least claim 13 of the ‘937 Patent. Pantech makes, uses, tests,
sells, offers for sale, imports, exports, supplies and/or distributes within the United States
these devices and thus directly infringes at least claim 13 of the ‘937 Patent.
18.
Pantech indirectly infringes the ‘937 patent by inducing infringement by
others, such as resellers, of at least claim 13 in accordance with 35 U.S.C. § 271(b) in this
District and elsewhere in the United States. Direct infringement is the result of activities
performed by the manufacturers, resellers, and end-users of the Pantech Mobile
Communication Devices. Pantech received actual notice of the ’937 Patent at least by
March 12, 2012 from a communication from Rockstar, and/or its predecessors-in-interest,
to Pantech, and also received knowledge as of the date this lawsuit was filed.
19.
Pantech’s affirmative acts of selling Pantech Mobile Communication
Devices, causing the Pantech Mobile Communication Devices to be manufactured, and
5
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providing instruction manuals for Pantech Mobile Communication Devices induced
Pantech’s manufacturers and resellers to make or use the Pantech Mobile Communication
Devices in their normal and customary way to infringe the ‘937 patent. Through its
manufacture and sales of Pantech Mobile Communication Devices, Pantech specifically
intended its resellers and manufacturers to infringe the ‘937 patent; further, Pantech was
aware that these normal and customary activities would infringe the ‘937 patent. Pantech
performed the acts that constitute induced infringement, and would induce actual
infringement, with knowledge of the ‘937 patent and with the knowledge or willful
blindness that the induced acts would constitute infringement.
20.
Accordingly, a reasonable inference is that Pantech specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of
the ‘937 patent in the United States because Pantech has knowledge of the ‘937 patent
and actually induces others, such as resellers and end-use customers, to directly infringe,
by using, selling, exporting, supplying and/or distributing within the United States,
Pantech Communication Devices for resale to others, such as resellers and end-use
customers. Pantech knew or should have known that such actions would induce actual
infringement.
21.
The use of at least Pantech Mobile Communication Devices with an
operating system configured and installed by Pantech to support Gallery, Email, Maps
and Browser functionality as intended by Pantech infringes at least method claim 1 of the
‘937 Patent. Pantech uses these products and thus directly infringes at least method claim
1 of the ‘937 Patent.
6
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22.
In addition, Pantech provides at least Pantech Mobile Communication
Devices with an operating system configured and installed by Pantech to support Gallery,
Email, Maps, and Browser functionality to others, such as resellers and end-use
customers, in the United States who, in turn, use these products to infringe at least
method claim 1 of the ‘937 Patent.
23.
Pantech indirectly infringes the ’937 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. § 271(b) in
this District and elsewhere in the United States. Direct infringement is the result of
activities performed by the manufacturers, resellers, and end-users of the Pantech Mobile
Communication Devices. Pantech received actual notice of the ’937 Patent at least by
March 12, 2012, in view of a communication from Rockstar, and/or its predecessors-ininterest, to Pantech, and also received knowledge as of the date this lawsuit was filed.
24.
Pantech provides at least Pantech Mobile Communication Devices with an
operating system configured and installed by Pantech to support Gallery, Email, Maps
and Browser functionality to others, such as resellers and end-use customers, in the
United States who, in turn, use these products to infringe the ’937 Patent. Through its
manufacture and sales of Pantech Mobile Communication Devices, Pantech specifically
intended its resellers and manufacturers to infringe the ’937 patent.
25.
Pantech specifically intends for others, such as resellers and end-use
customers, to directly infringe one or more claims of the ’937 Patent in the United States.
For example, Pantech provides instructions to resellers and end-use customers regarding
the use and operation of Pantech’s products in an infringing way. Such instructions
include at least “Pantech Burst User Guide” available on Pantech’s web site at
7
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http://www.pantechusa.com/phones/burst/#support.
When
resellers
and
end-use
customers follow such instructions, they directly infringe the ‘937 Patent. Pantech knows
that by providing such instructions, resellers and end-use customers follow those
instructions, and directly infringe the ‘937 Patent. Pantech thus knows that its actions
induce the infringement.
26.
Pantech performed the acts that constitute induced infringement, and
would induce actual infringement, with the knowledge of the ’937 patent and with the
knowledge or willful blindness that the induced acts would constitute infringement.
27.
Pantech indirectly infringes the ’937 patent, by contributing to
infringement by others, such as resellers and end-use customers, in accordance with 35
U.S.C. § 271(b) in this District and elsewhere in the United States. Direct infringement is
the result of activities performed by the manufacturers, resellers, and end-users of
Pantech Mobile Communication Devices. Pantech received actual notice of the ’937
Patent at least by March 12, 2012, in view of a communication from Rockstar, and/or its
predecessors-in-interest, to Pantech, and also received knowledge as of the date this
lawsuit was filed.
28.
Pantech Mobile Communication Devices include functionality that, inter
alia, displays a navigable graphical user interface (“navigable GUI”) that permits a user
to manipulate and control the contents of the display to maximize the use of display real
estate. This navigable GUI is included in Pantech Mobile Communication Devices with
an operating system configured and installed by Pantech to support at least the Gallery,
Email, Maps, and Browser functionalities.
8
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functionalities cannot operate in an acceptable manner absent the navigable GUI, as it is
included in every Pantech Mobile Communication Device.
29.
A reasonable inference to be drawn from the facts set forth is that the
navigable GUI as included in Pantech Mobile Communication Devices is especially
made or especially adapted to operate on a Pantech Mobile Communication Device as a
navigable GUI that permits a user to manipulate or control the contents of the display to
maximize the use of display real estate on the user’s Pantech Mobile Communication
Devices.
30.
A reasonable inference to be drawn from the facts set forth is that the
navigable GUI as included in the Mobile Communication Device is not a staple article or
commodity of commerce and that the use of the navigable GUI in Pantech Mobile
Communication Devices is required for the operation of Pantech Mobile Communication
Devices. Any other use would be unusual, far-fetched, illusory, impractical, occasional,
aberrant, or experimental.
31.
Pantech Mobile Communication Devices with the navigable GUI are each
a material part of the invention of the ’937 patent and are especially made for the
infringing manufacture, sale, and use of Pantech Mobile Communication Devices.
Pantech Mobile Communication Devices with the navigable GUI are especially made or
adapted as a navigable GUI that infringes the ’937 patent.
Because the sales and
manufacture of Pantech Mobile Communication Devices with a navigable GUI infringes
the ’937 patent, Pantech’s sales of its infringing products have no substantial noninfringing uses.
9
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32.
Accordingly, a reasonable inference is that Pantech offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination,
or composition, or a material or apparatus for use in practicing the ’937 patent,
constituting a material part of the invention, knowing the same to be especially made or
especially adapted for use in an infringement of such patent, and not a staple article or
commodity of commerce suitable for substantial non-infringing use. Pantech provides to
others, Pantech Mobile Communication Devices with distinct and separate components,
including software components, which have no substantial non-infringing use.
33.
At least Pantech Mobile Communication Devices with an operating
system configured and installed by Pantech to support the Portable WiFi Hotspot
functionality infringe at least claims 27 and 31 of the ‘298 Patent. Pantech makes, uses,
sells, offers for sale, imports, exports, supplies and/or distributes within the United States
these devices and thus directly infringes at least claims 27 and 31 of the ‘298 Patent.
34.
Pantech indirectly infringes the ‘298 patent by inducing infringement by
others, such as resellers, of at least claims 27 and 31 in accordance with 35 U.S.C. §
271(b) in this District and elsewhere in the United States. Direct infringement is the
result of activities performed by the manufacturers, resellers, and end-users of the
Pantech Mobile Communication Devices. Pantech received actual notice of the ’298
Patent at least by November 29, 2012 from a communication from Rockstar, and/or its
predecessors-in-interest, to Pantech, and also received knowledge as of the date this
lawsuit was filed.
35.
Pantech’s affirmative acts of selling Pantech Mobile Communication
Devices, causing the Pantech Mobile Communication Devices to be manufactured, and
10
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providing instruction manuals for Pantech Mobile Communication Devices induced
Pantech’s manufacturers and resellers to make or use the Pantech Mobile Communication
Devices in their normal and customary way to infringe the ‘298 patent. Through its
manufacture and sales of Pantech Mobile Communication Devices, Pantech specifically
intended its resellers and manufacturers to infringe the ‘298 patent; further, Pantech was
aware that these normal and customary activities would infringe the ‘298 patent. Pantech
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.
36.
Accordingly, a reasonable inference is that Pantech specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of
the ‘298 patent in the United States because Pantech has knowledge of the ‘298 patent
and actually induces others, such as resellers and end-use customers, to directly infringe,
by using, selling, exporting, supplying and/or distributing within the United States,
Pantech Communication Devices for resale to others, such as resellers and end-use
customers. Pantech knew or should have known that such actions would induce actual
infringement.
37.
The use of at least Pantech Mobile Communication Devices that support
the Portable WiFi Hotspot functionality as intended by Pantech infringes at least method
claims 14 and 24 of the ‘298 Patent. Pantech uses these products and thus directly
infringes at least method claims 14 and 24 of the ‘298 Patent.
38.
In addition, Pantech provides at least Pantech Mobile Communication
Devices that support the Portable WiFi Hotspot functionality to others, such as resellers
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and end-use customers, in the United States who, in turn, use these products to infringe at
least method claims 14 and 24 of the ‘298 Patent.
39.
Pantech indirectly infringes the ’298 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. § 271(b) in
this District and elsewhere in the United States. Direct infringement is the result of
activities performed by the manufacturers, resellers, and end-users of Pantech Mobile
Communication Devices in their intended use, including a customer’s use of the Portable
WiFi Hotspot functionality. Pantech received actual notice of the ’298 Patent at least by
November 29, 2012, in view of a communication from Rockstar, and/or its predecessorsin-interest, to Pantech, and also received knowledge as of the date this lawsuit was filed.
40.
Pantech’s affirmative acts of selling its Pantech Mobile Communication
Devices and providing instruction manuals induced the end-users of Pantech Mobile
Communication Devices to use Pantech Mobile Communication Devices in their normal
and customary way to infringe the ’298 patent at least through using Portable WiFi
Hotspot functionality. Pantech also provides instructions, including at least “Pantech
Burst
User
Guide”
available
on
Pantech’s
web
site
at
http://www.pantechusa.com/phones/burst/#support for using the Portable WiFi Hotspot
functionality.
Through its sales of Pantech Mobile Communication Devices with
Portable WiFi Hotspot functionality, Pantech specifically intended the end-users of
Pantech Mobile Communication Devices to infringe the ’298 patent; further, Pantech was
aware that the normal and customary use of Portable WiFi Hotspot functionality would
infringe the ’298 patent. Pantech also enticed its end-users to use the Portable WiFi
Hotspot functionality by providing instruction manuals and also providing Portable WiFi
12
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Hotspot functionality. Pantech performed the acts that constituted induced infringement,
and would induce actual infringement, with the knowledge of the ’298 patent and with
the knowledge or willful blindness that the induced acts would constitute infringement.
41.
Accordingly, a reasonable inference is that Pantech actively induces
infringement of the ‘298 Patent by others, such as resellers and end-use customers.
Pantech specifically intends for others, such as resellers and end-use customers, to
directly infringe one or more claims of the ‘298 Patent in the United States because
Pantech had knowledge of the ‘298 Patent, and Pantech actually induces infringement by
providing instructions to resellers and end-use customers regarding the use and operation
of Pantech Mobile Communication Devices in an infringing way. Such instructions
include at least “Pantech Burst User Guide” available on Pantech’s web site at
http://www.pantechusa.com/phones/burst/#support.
When
resellers
and
end-use
customers follow such instructions, they directly infringe the ‘298 Patent. Pantech knows
that by providing such instructions, resellers and end-use customers follow those
instructions, and directly infringe the ‘298 Patent. Pantech thus knows that its actions
induce the infringement.
42.
Pantech indirectly infringes the ‘298 Patent by contributing to
infringement by others, such as resellers and end-use customers, in accordance with 35
U.S.C. § 271(c) in this District and elsewhere in the United States. Direct infringement is
the result of activities performed by the manufacturers, resellers, and end-users of
Pantech Mobile Communication Devices in their intended use, including a customer’s
use of the Portable WiFi Hotspot functionality. Pantech received actual notice of the
’298 Patent at least by November 29, 2012, in view of a communication from Rockstar,
13
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and/or its predecessors-in-interest, to Pantech, and also received knowledge as of the date
this lawsuit was filed.
43.
Pantech Mobile Communication Devices with the Portable WiFi Hotspot
functionality allow wireless devices from a first, or private, network to connect to a
second, or public, network such as the Internet. The Portable WiFi Hotspot functionality
is designed to route data packets between wireless devices tethered to the Portable WiFi
Hotspot to nodes on a public network such as the Internet, and cannot function in a
manner that does not utilize the Portable WiFi Hotspot functionality available to Pantech
Mobile Communication Devices.
Upon information and belief, the Portable WiFi
Hotspot functionality is designed to entice a user to access nodes in a second, or public,
network such as the Internet.
44.
A reasonable inference to be drawn from the facts set forth is that the
Portable WiFi Hotspot functionality is especially made or especially adapted to operate
on a mobile communication device for providing access for wireless devices in a first, or
private, network to nodes in a second, or public, network.
45.
A reasonable inference to be drawn from the facts set forth is that the
Portable WiFi Hotspot functionality is not a staple article or commodity of commerce and
that the use of the Portable WiFi Hotspot functionality of Pantech Mobile
Communication Devices is for interfacing first and second data communications
networks, e.g., a private network and a public network such as the Internet. Any other
use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or
experimental.
14
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46.
Pantech Mobile Communication Devices with Portable WiFi Hotspot
functionality are each a material part of the ’298 patent and especially made for the
infringing use of the Portable WiFi Hotspot functionality for interfacing private and
public data communication networks. Pantech Mobile Communication Devices with the
Portable WiFi Hotspot functionality are especially made or adapted to provide access for
wireless devices in a first, or private, network through the Mobile Communication Device,
to nodes in a second, or public, network that perform or facilitate performance of the
steps that infringe the ’298 patent.
Furthermore, Pantech provides user manuals
describing the uses of Pantech Mobile Communication Devices that infringe the ’298
patent. Because the sales and manufacture of Pantech Mobile Communication Devices
with Portable WiFi Hotspot functionality infringes the ’298 patent, Pantech’s sales of its
infringement products have no substantial non-infringing uses.
47.
Accordingly, a reasonable inference is that Pantech offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination,
or composition, or a material or apparatus for use in practicing a patented process,
constituting a material part of the invention, knowing the same to be especially made or
especially adapted for use in an infringement of such patent, and not a staple article or
commodity of commerce suitable for substantial non-infringing use. Pantech provides to
others, Pantech Mobile Communication Devices with an operating system configured and
installed by Pantech to support Portable WiFi Hotspot functionality. Pantech installs and
configures Pantech Mobile Communication Devices with distinct and separate
components, including software components, which are used only to perform the
infringing method claims.
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48.
At least Pantech Mobile Communication Devices with an operating
system configured and installed by Pantech to support an integrated notification message
center functionality infringe at least claims 1 and 21 of the ‘973 Patent. Pantech makes,
uses, sells, tests, uses, offers for sale, imports, exports, supplies and/or distributes within
the United States these devices and thus directly infringes one or more claims of the ’973
patent, including at least claims 1 and 21.
49.
Pantech indirectly infringes the ‘973 patent by inducing infringement by
others, such as resellers, of at least claims 1 and 21 in accordance with 35 U.S.C. §
271(b) in this District and elsewhere in the United States. Direct infringement is the
result of activities performed by the manufacturers, resellers, and end-users of the
Pantech Mobile Communication Devices. Pantech received actual notice of the ’973
Patent at least by March 12, 2012 from a communication from Rockstar, and/or its
predecessors-in-interest, to Pantech, and also received knowledge as of the date this
lawsuit was filed.
50.
Pantech’s affirmative acts of selling Pantech Mobile Communication
Devices, causing the Pantech Mobile Communication Devices to be manufactured, and
providing instruction manuals for Pantech Mobile Communication Devices induced
Pantech’s manufacturers and resellers to make or use the Pantech Mobile Communication
Devices in their normal and customary way to infringe the ‘973 patent. Through its
manufacture and sales of Pantech Mobile Communication Devices, Pantech specifically
intended its resellers and manufacturers to infringe the ‘973 patent; further, Pantech was
aware that these normal and customary activities would infringe the ‘973 patent. Pantech
performed the acts that constitute induced infringement, and would induce actual
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infringement, with knowledge of the ‘973 patent and with the knowledge or willful
blindness that the induced acts would constitute infringement.
51.
Accordingly, a reasonable inference is that Pantech specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of
the ‘973 patent in the United States because Pantech 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,
Pantech Communication Devices for resale to others, such as resellers and end-use
customers. Pantech knew or should have known that such actions would induce actual
infringement.
52.
The use of at least Pantech Mobile Communication Devices with an
operating system configured and installed by Pantech to support an integrated notification
message center functionality as intended by Pantech infringes at least method claim 8 of
the ‘973 Patent. Pantech uses these devices within the United States and thus directly
infringes one or more claims of the ’973 patent, including at least claim 8.
53.
Pantech indirectly infringes the ’973 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. § 271(b) in
this District and elsewhere in the United States. Direct infringement is the result of
activities performed by the manufacturers, resellers, and end-users of Pantech Mobile
Communication Devices. Pantech received actual notice of the ’973 Patent at least by
March 12, 2012, in view of a communication from Rockstar, and/or its predecessors-ininterest, to Pantech, and also received knowledge as of the date this lawsuit was filed.
17
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54.
Pantech provides at least Pantech Mobile Communication Devices with an
operating system configured and installed by Pantech to support integrated notification
message center functionality to others, such as resellers and end-use customers, in the
United States who, in turn, use Pantech Mobile Communication Devices to infringe at
least method claim 8 of the ‘973 Patent. Through its manufacture and sales of Pantech
Mobile Communication Devices, Pantech specifically intended its resellers and
manufacturers to infringe the ’973 patent.
55.
Pantech specifically intends for others, such as resellers and end-use
customers, to directly infringe one or more claims of the ‘973 Patent in the United States.
For example, Pantech provides instructions to resellers and end-use customers regarding
the use and operation of Pantech Mobile Communication Devices in an infringing way.
Such instructions include at least “Pantech Burst User Guide” available on Pantech’s web
site at http://www.pantechusa.com/phones/burst/#support. When resellers and end-use
customers follow such instructions, they directly infringe the ‘973 Patent. Pantech knows
that by providing such instructions, resellers and end-use customers follow those
instructions, and directly infringe the ‘973 Patent. Pantech thus knows that its actions
induce the infringement.
56.
Pantech performed the acts that constitute induced infringement, and
would induce actual infringement, with the knowledge of the ’973 patent and with the
knowledge or willful blindness that the induced acts would constitute infringement.
57.
Pantech indirectly infringes the ’973 patent, by contributing to
infringement by others, such as resellers and end-use customers, in accordance with 35
U.S.C. § 271(b) in this District and elsewhere in the United States. Direct infringement is
18
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the result of activities performed by the manufacturers, resellers, and end-users of
Pantech Mobile Communication Devices. Pantech received actual notice of the ’973
Patent at least by March 12, 2012, in view of a communication from Rockstar, and/or its
predecessors-in-interest, to Pantech, and also received knowledge as of the date this
lawsuit was filed.
58.
Pantech Mobile Communication Devices include functionality that, inter
alia, displays an integrated notification message center contained in a single list. The
notification message center is designed to provide a user with a single list of notifications
regardless of the types of messages (e.g., email, text, etc) on the 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 Pantech Mobile Communication Device.
59.
A reasonable inference to be drawn from the facts set forth is that the
integrated message center in Pantech Mobile Communication Devices is especially made
or especially adapted to operate on a Pantech Mobile Communication Device as an
integrated notification message center that provides a user with notifications concerning
different types of messages on the user’s Mobile Communication Device.
60.
A reasonable inference to be drawn from the facts set forth is that the
integrated notification message center in the Mobile Communication Device is not a
staple article or commodity of commerce and that the use of the integrated notification
message center in Pantech Mobile Communication Devices is required for operation of
Pantech Mobile Communication Devices. Any other use would be unusual, far-fetched,
illusory, impractical, occasional, aberrant, or experimental.
19
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61.
Pantech Mobile Communication Devices with the integrated notification
message center are each a material part of the invention of the ’973 patent and are
especially made for the infringing manufacture, sale, and use of Pantech Mobile
Communication Devices.
Pantech Mobile Communication Devices, including the
integrated notification message center, are especially made or adapted as an integrated
notification message center that infringes the ’973 patent.
Because the sales and
manufacture of Pantech Mobile Communication Devices with an integrated notification
message center infringes the ’973 patent, Pantech’s sales of its infringing products have
no substantial non-infringing uses.
62.
Accordingly, a reasonable inference is that Pantech offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination,
or composition, or a material or apparatus for use in practicing a patented process,
constituting a material part of the invention, knowing the same to be especially made or
especially adapted for use in an infringement of such patent, and not a staple article or
commodity of commerce suitable for substantial non-infringing use. Pantech provides to
others, Pantech Mobile Communication Devices with distinct and separate components,
including software components, which have no substantial non-infringing use.
63.
At least Pantech Mobile Communication Devices with an operating
system configured and installed by Pantech to support Message and Notification
functionality infringe at least claim 1 of the ‘131 Patent. Pantech makes, uses, sells,
offers for sale, imports, exports, supplies and/or distributes within the United States these
devices and thus directly infringes at least claim 1 of the ‘131 Patent.
20
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64.
Pantech indirectly infringes the ‘131 patent by inducing infringement by
others, such as resellers, of at least claim 1 in accordance with 35 U.S.C. § 271(b) in this
District and elsewhere in the United States. Direct infringement is the result of activities
performed by the manufacturers, resellers, and end-users of the Pantech Mobile
Communication Devices. Pantech received actual notice of the ’131 Patent at least by
November 29, 2012 from a communication from Rockstar, and/or its predecessors-ininterest, to Pantech, and also received knowledge as of the date this lawsuit was filed.
65.
Pantech’s affirmative acts of selling Pantech Mobile Communication
Devices, causing the Pantech Mobile Communication Devices to be manufactured, and
providing instruction manuals for Pantech Mobile Communication Devices induced
Pantech’s manufacturers and resellers to make or use the Pantech Mobile Communication
Devices in their normal and customary way to infringe the ‘131 patent. Through its
manufacture and sales of Pantech Mobile Communication Devices, Pantech specifically
intended its resellers and manufacturers to infringe the ‘131 patent; further, Pantech was
aware that these normal and customary activities would infringe the ‘131 patent. Pantech
performed the acts that constitute induced infringement, and would induce actual
infringement, with knowledge of the ‘131 patent and with the knowledge or willful
blindness that the induced acts would constitute infringement.
66.
Accordingly, a reasonable inference is that Pantech specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of
the ‘131 patent in the United States because Pantech has knowledge of the ‘131 patent
and actually induces others, such as resellers and end-use customers, to directly infringe,
by using, selling, exporting, supplying and/or distributing within the United States,
21
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Pantech Communication Devices for resale to others, such as resellers and end-use
customers. Pantech knew or should have known that such actions would induce actual
infringement.
67.
The use of at least Pantech Mobile Communication Devices with an
operating system configured and installed by Pantech to support Message and
Notification functionality as intended by Pantech infringes at least method claim 5 of the
‘131 Patent. Pantech uses these products and thus directly infringes at least method claim
5 of the ‘131 Patent.
68.
In addition, Pantech provides at least Pantech Mobile Communication
Devices with an operating system configured and installed by Pantech to support
Message functionality to others, such as resellers and end-use customers, in the United
States who, in turn, use these products to infringe at least method claim 5 of the ‘131
Patent.
69.
Pantech indirectly infringes the ’131 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. § 271(b) in
this District and elsewhere in the United States. Direct infringement is the result of
activities performed by the manufacturers, resellers, and end-users of Pantech Mobile
Communication Devices in their intended use, including a customer’s use of the Message
and Notifications functionality. Pantech received actual notice of the ’131 Patent at least
by November 29, 2012, in view of a communication from Rockstar, and/or its
predecessors-in-interest, to Pantech, and also received knowledge as of the date this
lawsuit was filed.
22
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70.
Pantech’s affirmative acts of selling Pantech Mobile Communication
Devices and providing instruction manuals induced the end-users of Pantech Mobile
Communication Devices to use Pantech Mobile Communication Devices in their normal
and customary way to infringe the ’131 patent at least through using Message and
Notifications functionality.
“Pantech
Burst
User
Pantech also provides instructions, including at least
Guide”
available
http://www.pantechusa.com/phones/burst/#support,
on
Pantech’s
web
site
at
for
using
Messaging
and
the
Notifications functionality. Through its sales of Mobile Communication Devices with
Messaging and Notifications functionality, Pantech specifically intended the end-users of
Pantech Mobile Communication Devices to infringe the ’131 patent; further, Pantech was
aware that the normal and customary use of the Message and Notifications functionality
would infringe the ’131 patent. Pantech also enticed its end-users to use the Messaging
and Notifications functionality by providing instruction manuals. Pantech performed the
acts that constituted induced infringement, and would induce actual infringement, with
the knowledge of the ’131 patent and with the knowledge or willful blindness that the
induced acts would constitute infringement.
71.
Accordingly, a reasonable inference is that Pantech actively induces
infringement of the ‘131 Patent by others, such as resellers and end-use customers.
Pantech specifically intends for others, such as resellers and end-use customers, to
directly infringe one or more claims of the ‘131 Patent in the United States because
Pantech had knowledge of the ‘131 Patent, and Pantech actually induces infringement by
providing instructions to resellers and end-use customers regarding the use and operation
of Pantech Mobile Communication Devices in an infringing way. Such instructions
23
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include at least “Pantech Burst User Guide” available on Pantech’s web site at
http://www.pantechusa.com/phones/burst/#support.
When
resellers
and
end-use
customers follow such instructions, they directly infringe the ‘131 Patent. Pantech knows
that by providing such instructions, resellers and end-use customers follow those
instructions, and directly infringe the ‘131 Patent. Pantech thus knows that its actions
induce the infringement.
72.
Pantech 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
Pantech Mobile Communication Devices in their intended use, including a customer’s
use of the Messaging and Notification functionality. Pantech received actual notice of
the ’131 Patent at least by November 29, 2012, in view of a communication from
Rockstar, and/or its predecessors-in-interest, to Pantech, and also received knowledge as
of the date this lawsuit was filed.
73.
Pantech’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
Pantech Mobile Communication Devices. Upon information and belief, the Message and
Notifications functionality is designed to entice a user to receive notifications of an
incoming communication.
24
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74.
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 Pantech Mobile Communication Devices for notifying a user of an incoming
communication.
75.
A reasonable inference to be drawn from the facts set forth is that the
Message and Notifications functionality is not a staple article or commodity of commerce
and that the use of the Messaging and Notifications functionality of the Pantech Mobile
Communication Devices is for notifying a user of an incoming communication. Any
other use would be unusual, far-fetched, illusory, impractical, occasional, aberrant, or
experimental.
76.
Pantech
Mobile
Communication
Devices
with
Messaging
and
Notifications functionality are each a material part of the ’131 patent and especially made
for the infringing use of the Messaging and Notification functionality to receive and
display messages. Pantech Mobile Communication Devices including the Messaging and
Notification functionality, are especially made or adapted to notify a user of an incoming
communication that perform or facilitate performance of the steps that infringe the ’131
patent. Furthermore, Pantech provides user manuals describing the uses of its Mobile
Communication Devices that infringe the ’131 patent.
Because the functionality
provided by Pantech’s Messaging and Notification to notify a user of an incoming
communication infringes the ’131 patent, Pantech’s sales of its infringing products have
no substantial non-infringing uses.
77.
Accordingly, a reasonable inference is that Pantech offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination,
25
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or composition, or a material or apparatus for use in practicing a patented process,
constituting a material part of the invention, knowing the same to be especially made or
especially adapted for use in an infringement of such patent, and not a staple article or
commodity of commerce suitable for substantial non-infringing use. Pantech provides to
others, Mobile Communication Devices with an operating system configured and
installed by Pantech to support Message and Notification functionality. Pantech installs
and configures on these products distinct and separate components, including software
components, which are used only to perform the infringing method claims.
78.
At least Pantech Mobile Communication Devices with an operating
system configured and installed by Pantech to support VPN management functionality,
including the Pantech Galaxy S III, infringe at least claims 1 and 8 of the ‘591 Patent.
Pantech makes, uses, sells, offers for sale, imports, exports, supplies and/or distributes
within the United States these devices and thus directly infringes at least claims 1 and 8
of the ‘591 Patent.
79.
Pantech indirectly infringes the ‘591 patent by inducing infringement by
others, such as resellers, of at least claims 1 and 8 in accordance with 35 U.S.C. § 271(b)
in this District and elsewhere in the United States. Direct infringement is the result of
activities performed by the manufacturers, resellers, and end-users of the Pantech Mobile
Communication Devices. Pantech received actual notice of the ’591 Patent at least by
November 29, 2012 from a communication from Rockstar, and/or its predecessors-ininterest, to Pantech, and also received knowledge as of the date this lawsuit was filed.
80.
Pantech’s affirmative acts of selling Pantech Mobile Communication
Devices, causing the Pantech Mobile Communication Devices to be manufactured, and
26
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providing instruction manuals for Pantech Mobile Communication Devices induced
Pantech’s manufacturers and resellers to make or use the Pantech Mobile Communication
Devices in their normal and customary way to infringe the ‘591 patent. Through its
manufacture and sales of Pantech Mobile Communication Devices, Pantech specifically
intended its resellers and manufacturers to infringe the ‘591 patent; further, Pantech was
aware that these normal and customary activities would infringe the ‘591 patent. Pantech
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.
81.
Accordingly, a reasonable inference is that Pantech specifically intends for
others, such as resellers and end-use customers, to directly infringe one or more claims of
the ‘591 patent in the United States because Pantech 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,
Pantech Communication Devices for resale to others, such as resellers and end-use
customers. Pantech knew or should have known that such actions would induce actual
infringement.
82.
The use of at least Pantech Mobile Communication Devices with an
operating system configured and installed by Pantech to support VPN management
functionality as specified and intended by Pantech infringes at least claims 1 and 8 of the
‘591 Patent. Pantech uses these products and thus directly infringes at least claims 1 and
8 of the ‘591 Patent.
27
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83.
In addition, Pantech provides at least its Mobile Communication Devices
with an operating system configured and installed by Pantech to support VPN
management functionality to others, such as resellers and end-use customers, in the
United States who, in turn, use these products to infringe at least claims 1 and 8 of the
‘591 Patent.
84.
Pantech indirectly infringes the ’591 patent by inducing infringement by
others, such as resellers and end-use customers, in accordance with 35 U.S.C. § 271(b) in
this District and elsewhere in the United States. Direct infringement is the result of
activities performed by the manufacturers, resellers, and end-users of Pantech Mobile
Communication Devices in their intended use, including a customer’s use of the VPN
management functionality. Pantech received actual notice of the ’591 Patent at least by
November 29, 2012, in view of a communication from Rockstar, and/or its predecessorsin-interest, to Pantech, and also received knowledge as of the date this lawsuit was filed.
85.
Pantech’s affirmative acts of selling its Mobile Communication Devices
and providing instruction manuals induced the end-users of Pantech Mobile
Communication Devices to use Pantech Mobile Communication Devices in their normal
and customary way to infringe the ’591 patent at least through using VPN management
functionality. Pantech also provides instructions, including at least “Pantech Element
User
Guide”
available
on
Pantech’s
web
site
at
http://www.pantechusa.com/tablets/element/#support, for using the VPN management
functionality. Through its sales of Pantech Mobile Communication Devices with VPN
management functionality, Pantech specifically intended the end-users of Pantech Mobile
Communication Devices to infringe the ’591 patent; further, Pantech was aware that the
28
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normal and customary use of VPN management functionality would infringe the ’591
patent. Pantech also enticed its end-users to use the VPN management functionality by
providing instruction manuals.
Pantech performed the acts that constituted induced
infringement, and would induce actual infringement, with the knowledge of the ’591
patent and with the knowledge or willful blindness that the induced acts would constitute
infringement.
86.
Accordingly, it is a reasonable inference that Pantech actively induces
infringement of the ‘591 Patent by others, such as resellers and end-use customers.
Pantech specifically intends for others, such as resellers and end-use customers, to
directly infringe one or more claims of the ‘591 Patent in the United States because
Pantech had knowledge of the ‘591 Patent, and Pantech actually induces infringement by
providing instructions to resellers and end-use customers regarding the use and operation
of Pantech’s products in an infringing way. Such instructions include at least “Pantech
Element
User
Guide”
available
on
http://www.pantechusa.com/tablets/element/#support.
Pantech’s
web
site
at
When resellers and end-use
customers follow such instructions, they directly infringe the ‘591 Patent. Pantech knows
that by providing such instructions, resellers and end-use customers follow those
instructions, and directly infringe the ‘591 Patent. Pantech thus knows that its actions
induce the infringement.
87.
Pantech 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
29
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Pantech Mobile Communication Devices in their intended use, including a customer’s
use of the VPN management functionality. Pantech received actual notice of the ’591
Patent at least by November 29, 2012, in view of a communication from Rockstar, and/or
its predecessors-in-interest, to Pantech, and also received knowledge as of the date this
lawsuit was filed.
88.
Pantech’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 Pantech Mobile Communication Devices.
The VPN management
functionality is designed upon information and belief to entice a user to manage VPNs.
89.
A reasonable inference to be drawn from the facts set forth is that the VPN
functionality is especially made or especially adapted to operate on Pantech Mobile
Communication Devices for providing VPN management functionality.
90.
A reasonable inference to be drawn from the facts set forth is that the VPN
management functionality is not a staple article or commodity of commerce and that the
use of the VPN management functionality of Pantech Mobile Communication Devices is
for managing VPNs. Any other use would be unusual, far-fetched, illusory, impractical,
occasional, aberrant, or experimental.
91.
Pantech Mobile Communication Devices with VPN management
functionality are each a material part of the invention of the ’591 patent and especially
made for the infringing use of the VPN functionality to receive call trace information.
Pantech Mobile Communication Devices including the VPN management functionality,
are especially made or adapted to provide VPN management functionality that perform or
30
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facilitate performance of the steps that infringe the ’591 patent. Furthermore, Pantech
provides user manuals describing the uses of its Mobile Communication Devices that
infringe the ’591 patent.
Because the functionality provided by Pantech’s VPN
management functionality infringes the ’591 patent, Pantech’s sales of its infringing
Mobile Communication Devices have no substantial non-infringing uses.
92.
Accordingly, a reasonable inference is that Pantech offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination,
or composition, or a material or apparatus for use in practicing a patented process,
constituting a material part of the invention, knowing the same to be especially made or
especially adapted for use in an infringement of such patent, and not a staple article or
commodity of commerce suitable for substantial non-infringing use. Pantech provides to
others, Mobile Communication Devices with an operating system configured and
installed by Pantech to support VPN management functionality. Pantech installs and
configures on these products distinct and separate components, including software
components, which are used only to infringe the ‘591 Patent.
93.
The use of at least Pantech Mobile Communication Devices with an
operating system configured and installed by Pantech to support Location Services
functionality, as intended by Pantech infringes at least method claim 17 of the ‘572
Patent. Pantech uses these Mobile Communication Devices and thus directly infringes at
least method claim 17 of the ‘572 Patent.
94.
In addition, Pantech provides at least its Mobile Communication Devices
with an operating system configured and installed by Pantech to support Location
Services functionality to others, such as resellers and end-use customers, in the United
31
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States who, in turn, use these products to infringe at least method claim 17 of the ‘572
Patent.
95.
Pantech indirectly infringes by inducing infringement by others, such as
resellers and end-use customers, in accordance with 35 U.S.C. § 271(b) in this District
and elsewhere in the United States.
Direct infringement is the result of activities
performed by the manufacturers, resellers, and end-users of Pantech Mobile
Communication Devices in their intended use, including a customer’s use of the Location
Services functionality. Pantech received actual notice of the ’572 Patent at least by May
7, 2012, in view of a communication from Rockstar, and/or its predecessors-in-interest, to
Pantech, and also received knowledge as of the date this lawsuit was filed.
96.
Pantech’s affirmative acts of selling its Mobile Communication Devices
and providing instruction manuals induced the end-users of Pantech Mobile
Communication Devices to use Pantech Mobile Communication Devices in their normal
and customary way to infringe the ’572 patent at least through using Location Services
functionality. Pantech also provides instructions, including at least “Pantech Burst User
Guide”
available
on
Pantech’s
web
site
at
http://www.pantechusa.com/phones/burst/#support, for using the Location Services
functionality.
Through its sales of Pantech Mobile Communication Devices with
Location Services functionality, Pantech specifically intended the end-users of Pantech
Mobile Communication Devices to infringe the ’572 patent; further, Pantech was aware
that the normal and customary use of Location Services would infringe the ’572 patent.
Pantech also enticed its end-users to use the Location Services by providing instruction
manuals. Pantech performed the acts that constituted induced infringement, and would
32
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induce actual infringement, with the knowledge of the ’572 patent and with the
knowledge or willful blindness that the induced acts would constitute infringement.
97.
Accordingly, a reasonable inference is that Pantech actively induces
infringement of the ‘572 Patent by others, such as resellers and end-use customers.
Pantech specifically intends for others, such as resellers and end-use customers, to
directly infringe one or more claims of the ‘572 Patent in the United States because
Pantech had knowledge of the ‘572 Patent, and Pantech actually induces infringement by
providing instructions to resellers and end-use customers regarding the use and operation
of Pantech’s products in an infringing way. Such instructions include at least “User
Guide
Pantech
Burst”
available
http://www.pantechusa.com/phones/burst/#support.
on
Pantech’s
When
resellers
website
and
at
end-use
customers follow such instructions, they directly infringe the ‘572 Patent. Pantech knows
that by providing such instructions, resellers and end-use customers follow those
instructions, and directly infringe the ‘572 Patent. Pantech thus knows that its actions
induce the infringement.
98.
Pantech 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
Pantech Mobile Communication Devices in their intended use, including a customer’s
use of the Locations Services functionality. Pantech received actual notice of the ’572
Patent at least by May 7, 2012, in view of a communication from Rockstar, and/or its
33
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predecessors-in-interest, to Pantech, and also received knowledge as of the date this
lawsuit was filed.
99.
Pantech’s Location Services functionality provides call trace information,
i.e., a geographic location of Pantech Mobile Communication Devices. The Location
Services functionality is designed to notify the user of Pantech Mobile Communication
Devices of call trace information, i.e., a geographic location of the Mobile
Communication Devices, and cannot function in a manner that does not utilize the
Location Services functionality available to the Mobile Communication Devices. Upon
information and belief, the Location Services functionality is designed to entice a user to
access call trace information.
100.
A reasonable inference to be drawn from the facts set forth is that the
Location Services functionality is especially made or especially adapted to operate on
Pantech Mobile Communication Devices for obtaining call trace information, i.e., a
geographic location of the Mobile Communication Devices.
101.
A reasonable inference to be drawn from the facts set forth is that the
Location Services functionality is not a staple article or commodity of commerce and that
the use of the Location Services functionality of Pantech Mobile Communication Devices
is for providing call trace information. Any other use would be unusual, far-fetched,
illusory, impractical, occasional, aberrant, or experimental.
102.
Pantech Mobile Communication Devices with Location Services
functionality are each a material part of the ’572 patent and especially made for the
infringing use of the Location Services functionality to receive call trace information, i.e.,
a geographic location of the Mobile Communication Devices.
34
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Communication Devices including the Location Services functionality are especially
made or adapted to provide call trace information that perform or facilitate performance
of the steps that infringe the ’572 patent. Furthermore, Pantech provides user manuals
describing the uses of its products that infringe the ’572 patent. Because the functionality
provided by Pantech’s Location Services to obtain call trace information, i.e., a
geographic location of the Mobile Communication Devices, infringes the ’572 patent,
Pantech’s sales of its infringing products have no substantial non-infringing uses.
103.
Accordingly, a reasonable inference is that Pantech offers to sell, or sells
within the United States a component of a patented machine, manufacture, combination,
or composition, or a material or apparatus for use in practicing a patented process,
constituting a material part of the invention, knowing the same to be especially made or
especially adapted for use in an infringement of such patent, and not a staple article or
commodity of commerce suitable for substantial non-infringing use. Pantech provides to
others, Mobile Communication Devices with an operating system configured and
installed by Pantech to support Location Services functionality. Pantech installs and
configures on these products distinct and separate components, including software
components, which are used only to perform the infringing method claims.
104.
Pantech’s acts of infringement have caused damage to Rockstar and
MobileStar. Rockstar and MobileStar are entitled to recover from Pantech the damages
sustained by Rockstar and MobileStar as a result of Pantech’s wrongful acts in an amount
subject to proof at trial. In addition, the infringing acts and practices of Pantech have
caused, are causing, and, unless such acts and practices are enjoined by the Court, will
continue to cause immediate and irreparable harm to Rockstar and MobileStar for which
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there is no adequate remedy at law, and for which Rockstar and MobileStar are entitled to
injunctive relief under 35 U.S.C. § 283.
105.
Pantech received actual notice of its infringement of the ‘937, ‘298, ‘973,
‘131, ‘591, and ‘572 Patents through at least letters sent by Rockstar and/or its
predecessors-in-interest, Nortel Networks Ltd. and/or Nortel Networks, Inc., to Pantech,
and through meetings between employees of Rockstar and/or its predecessors-in-interest,
Nortel Networks Ltd., or Nortel Networks Inc. and Pantech. Pantech also has knowledge
of its infringement of the Patents-in-Suit by way of this Complaint.
106.
Pantech has willfully infringed and/or does willfully infringe the ‘937,
‘298, ‘973, ‘131, ‘591, and ‘572 Patents.
DEMAND FOR JURY TRIAL
Rockstar and MobileStar hereby demand a jury trial for all issues so triable.
PRAYER FOR RELIEF
WHEREFORE, Rockstar and MobileStar pray for the following relief:
1.
A judgment that Pantech has directly infringed the ‘937 Patent,
contributorily infringed the ‘937 Patent, and/or induced the infringement of the ‘937
Patent.
2.
A judgment that Pantech has directly infringed the ‘298 Patent,
contributorily infringed the ‘298 Patent, and/or induced the infringement of the ‘298
Patent.
3.
A judgment that Pantech has directly infringed the ‘973 Patent,
contributorily infringed the ‘973 Patent, and/or induced the infringement of the ‘973
Patent.
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4.
A judgment that Pantech has directly infringed the ‘131 Patent,
contributorily infringed the ‘131 Patent, and/or induced the infringement of the ‘131
Patent.
5.
A judgment that Pantech has directly infringed the ‘591 Patent,
contributorily infringed the ‘591 Patent, and/or induced the infringement of the ‘591
Patent.
6.
A judgment that Pantech 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 Pantech and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and
those in active concert or participation with any of them, from directly infringing,
contributorily infringing, and/or inducing the infringement of the ’937 patent;
8.
A permanent injunction preventing Pantech and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and
those in active concert or participation with any of them, from directly infringing,
contributorily infringing, and/or inducing the infringement of the ’298 patent;
9.
A permanent injunction preventing Pantech and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and
those in active concert or participation with any of them, from directly infringing,
contributorily infringing, and/or inducing the infringement of the ’973 patent;
10.
A permanent injunction preventing Pantech 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 ’131 patent;
11.
A permanent injunction preventing Pantech and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and
those in active concert or participation with any of them, from directly infringing,
contributorily infringing, and/or inducing the infringement of the ’591 patent;
12.
A permanent injunction preventing Pantech and its respective officers,
directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and
those in active concert or participation with any of them, from directly infringing,
contributorily infringing, and/or inducing the infringement of the ’572 patent;
13.
A judgment that Pantech’s infringement of the ‘937, ‘298, ‘973, ‘131,
‘591, and ‘572 Patents has been willful;
14.
A ruling that this case be found to be exceptional under 35 U.S.C. § 285,
and a judgment awarding Rockstar and MobileStar to its attorneys’ fees incurred in
prosecuting this action;
15.
A judgment and order requiring Pantech to pay Rockstar and MobileStar
damages under 35 U.S.C. § 284, including supplemental damages for any continuing
post-verdict infringement up until entry of the final judgment, with an accounting, as
needed, and treble damages for willful infringement as provided by 35 U.S.C. § 284;
16.
A judgment and order requiring Pantech to pay Rockstar and MobileStar
the costs of this action (including all disbursements);
17.
A judgment and order requiring Pantech to pay Rockstar and MobileStar
pre-judgment and post-judgment interest on the damages awarded;
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18.
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
19.
Such other and further relief as the Court may deem just and proper.
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DATED: October 31, 2013.
Respectfully submitted,
MCKOOL SMITH, P.C.
/s/ Theodore Stevenson, III
Mike McKool, Jr.
Texas Bar No. 13732100
mmckool@mckoolsmith.com
Douglas A. Cawley
Texas Bar No. 0403550
dcawley@mckoolsmith.com
Theodore Stevenson, III
Lead Attorney
Texas State Bar No. 19196650
tstevenson@mckoolsmith.com
David Sochia
Texas State Bar No. 00797470
dsochia@mckoolsmith.com
MCKOOL SMITH P.C.
300 Crescent Court, Suite 1500
Dallas, Texas 75201
Telephone: (214) 978-4000
Facsimile: (214) 978-4044
ATTORNEYS FOR PLAINTIFFS
ROCKSTAR CONSORTIUM US,
LP AND MOBILESTAR
TECHNOLOGIES LLC
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