Uniloc USA, Inc. et al v. Google, Inc.

Filing 1

COMPLAINT against Google, Inc. ( Filing fee $ 400 receipt number 0540-6215981.), filed by Uniloc USA, Inc., Uniloc Luxembourg, S.A.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Civil Cover Sheet)(Etheridge, James)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
UNILOC USA, INC. and UNILOC
LUXEMBOURG S.A.,

§
§
CIVIL ACTION NO. 2:17-cv-231-JRG
§
Plaintiffs,
§
JURY TRIAL DEMANDED
§
v.
§
§
GOOGLE, INC.,
§
§
§
Defendant.
§
ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
Plaintiffs, Uniloc USA, Inc. and Uniloc Luxembourg, S.A. (together “Uniloc”), as and for
their original complaint against defendant, Google, Inc. (“Defendant”), allege as follows:
THE PARTIES
1.

Uniloc USA, Inc. (“Uniloc USA”) is a Texas corporation having a principal place

of business at Legacy Town Center I, Suite 380, 7160 Dallas Parkway, Plano, Texas 75024. Uniloc
also maintains a place of business at 102 N. College, Suite 603, Tyler, Texas 75702.
2.

Uniloc Luxembourg S.A. (“Uniloc Luxembourg”) is a Luxembourg public limited

liability company having a principal place of business at 15, Rue Edward Steichen, 4th Floor, L2540, Luxembourg (R.C.S. Luxembourg B159161).
3.

Uniloc Luxembourg owns several patents in the field of text/voice instant

messaging.
4.

Upon information and belief, Defendant is a Delaware corporation having a

principal place of business in Mountain View, California and offers its products, including those
accused herein of infringement, to customers and/or potential customers located in Texas and in
the judicial Eastern District of Texas. Among other things, Defendant engages in marketing
1

activities that promote the use of the Google Allo app and its associated system. Defendant may
be served with process through its registered agent: Corporation Service Company, 2711
Centerville Road, Ste. 400, Wilmington, DE 19808.
JURISDICTION AND VENUE
5.

Uniloc brings this action for patent infringement under the patent laws of the

United States, 35 U.S.C. § 271 et seq. This Court has subject matter jurisdiction pursuant to 28
U.S.C. §§ 1331, 1338(a) and 1367.
6.

Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391(c) and

1400(b). Upon information and belief, Defendant is deemed to reside in this judicial district, has
committed acts of infringement in this judicial district, and/or has purposely transacted business
involving the accused products in this judicial district, including sales to one or more customers
in Texas.
7.

Defendant is subject to this Court’s jurisdiction pursuant to due process and/or the

Texas Long Arm Statute due at least to its substantial business in this State and judicial district,
including: (A) at least part of its past infringing activities, (B) regularly doing or soliciting business
in Texas and/or (C) engaging in persistent conduct and/or deriving substantial revenue from goods
and services provided to customers in Texas.
COUNT I
(INFRINGEMENT OF U.S. PATENT NO. 8,724,622)
8.

Uniloc incorporates by reference the above paragraphs.

9.

Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 8,724,622

(“the ‘622 Patent”), entitled SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING that
issued on May 13, 2014. A true and correct copy of the ‘622 Patent is attached as Exhibit A hereto.

2

10.

Uniloc USA is the exclusive licensee of the ‘622 Patent with ownership of all

substantial rights therein, including the right to grant sublicenses, to exclude others, and to enforce,
sue and recover past damages for the infringement thereof.
11.

Defendant has marketed and currently markets a voice and mobile messaging

application (or “app”) under the name “Allo” which can be downloaded to a mobile device through
sites such as Google Play and the Apple App Store and is also pre-installed and sold on certain
mobile devices. Defendant also has systems that support Allo.
12.

Upon information and belief, the following describes, at least in part, how certain

aspects of a representative sample of Defendant’s Allo app and associated system work.
13.

Google has an instant voice messaging system for delivering instant messages

over a packet-switched network. This instant voice message system client is called Allo.
14.

Allo is an IP-based technology as opposed to SMS.

Source: https://productforums.google.com/forum/#!topic/allo/Vz6aQ4jZcUQ

3

15.

A chat in Allo may be started as detailed below:

Source: https://support.google.com/allo/answer/6376089?hl=en&ref_topic=6376118

4

Source: http://beebom.com/how-use-google-allo-smart-messaging-app/

16.

In Allo, one may hold down the microphone icon to record an audio message as

detailed below:

5

Source: http://www.androidpolice.com/2016/08/20/exclusive-google-allos-voice-messaginginterface-looks-awesome-eery-resemblance-whatsapps/

17.

Certain indicators, detailed below, show whether the message has been sent and

read.

Source: https://support.google.com/allo/answer/7078190?hl=en&ref_topic=6376094

Source: http://www.androidpolice.com/2016/08/20/exclusive-google-allos-voice-messaginginterface-looks-awesome-eery-resemblance-whatsapps/

6

18.

Allo conversations are stored on Google servers.

Source: https://support.google.com/allo/answer/6383728

19.

Defendant has directly infringed, and continues to directly infringe one or more

claims of the ‘622 Patent, including at least Claim 3 in this judicial district and elsewhere in Texas,
literally and/or under the doctrine of equivalents, by or through making, using, importing, offering
for sale and/or selling one or more versions of the Allo app and associated system during the
pendency of the ‘622 Patent which software and associated servers perform instant voice
messaging over Wi-Fi and the Internet between persons using cellphones and/or other devices
capable of instant voice messaging; wherein digitized audio files are transmitted between a
plurality of recipients on a packet switched network and a list of one or more currently potential
recipients is displayed on the device.
20.

In addition, should Defendant’s Allo app and associated system be found to not

literally infringe one or more claims of the ‘622 Patent, Defendant’s accused products and
associated system would nevertheless infringe one or more claims of the ‘622 Patent, including at
least Claim 3, under the doctrine of equivalents. More specifically, the accused Allo app and
associated system perform substantially the same function (instant voice messaging), in
substantially the same way (via a digitized audio files in a client/server environment), to yield
substantially the same result (delivering voice messages to available intended recipients).
7

Defendant would thus be liable for direct infringement under the doctrine of equivalents.
21.

Defendant has indirectly infringed and continues to indirectly infringe one or more

claims of the ‘622 Patent, including at least Claim 3, in this judicial district and elsewhere in Texas
by, among other things, actively inducing the using, offering for sale, selling, or importing the
Allo app and associated system. Defendant’s customers who obtain and use the Allo app and
associated system and operate such app in accordance with Defendant’s instructions directly
infringe one or more of the claims of the ’622 Patent in violation of 35 U.S.C. § 271.
22.

Defendant instructs its customers in the use of the Allo app, directly and indirectly,

through training videos, demonstrations, brochures, installation and/or user guides, such as those
located at the following:
https://support.google.com/
https://itunes.apple.com/us/app
https://play.google.com/store
www.youtube.com
Defendant is thereby liable for infringement of the ’622 Patent under 35 U.S.C. § 271(b).
23.

Defendant has indirectly infringed and continues to indirectly infringe one or more

claims of the ‘622 Patent, including at least Claim 3, in this judicial district and elsewhere in the
Texas by, among other things, contributing to the direct infringement by others including, without
limitation customers using the Allo app and associated system, by making, offering to sell, selling
and/or importing into the United States, a component of a patented machine, manufacture or
combination, or an 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
infringing the ’622 Patent and not a staple article or commodity of commerce suitable for

8

substantial non-infringing use.
24.

For example, the Allo app and associated system are a component of a patented

machine, manufacture, or combination, or an apparatus for use in practicing a patent process.
Furthermore, the Allo app and associated system are a material part of the claimed inventions and
upon information and belief is not a staple article or commodity of commerce suitable for
substantial non-infringing use. Defendant is therefore, liable for infringement under 35 U.S.C. §
271(c).
25.

Defendant will have been on notice of the ’622 Patent since at least the service of

this complaint upon Defendant. By the time of trial, Defendant will have known and intended
(since receiving such notice) that its continued actions would actively induce, and contribute to
actual infringement of one or more claims of the ‘622 Patent, including at least Claim 3.
26.

Defendant may have infringed the ‘622 Patent through other software, currently

unknown to Uniloc, utilizing the same or reasonably similar functionality, including other versions
of its Allo app and associated system. Uniloc reserves the right to discover and pursue all such
additional infringing software/devices.
COUNT II
(INFRINGEMENT OF U.S. PATENT NO. 8,995,433)
27.

Uniloc incorporates by reference the above paragraphs.

28.

Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 8,995,433

(“the ‘433 Patent”), entitled SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING that
issued on March 31, 2015. A true and correct copy of the ‘433 Patent is attached as Exhibit B
hereto.
29.

Uniloc USA is the exclusive licensee of the ‘433 Patent with ownership of all

9

substantial rights therein, including the right to grant sublicenses, to exclude others, and to enforce,
sue and recover past damages for the infringement thereof.
30.

Defendant has directly infringed, and continues to directly infringe one or more

claims of the ‘433 Patent, including at least Claim 1 in this judicial district and elsewhere in Texas,
literally and/or under the doctrine of equivalents, by or through making, using, importing, offering
for sale and/or selling one or more versions of the Allo app and associated system during the
pendency of the ‘433 Patent which software and associated servers perform instant voice
messaging over Wi-Fi and the Internet between persons using cellphones and/or other devices
capable of instant voice messaging; wherein digitized audio files are transmitted between a
plurality of recipients on a packet switched network and a list of one or more currently potential
recipients is displayed on the device.
31.

In addition, should Defendant’s Allo app and associated system be found to not

literally infringe one or more claims of the ‘433 Patent, Defendant’s accused products and
associated system would nevertheless infringe one or more claims of the ‘433 Patent, including at
least Claim 1, under the doctrine of equivalents. More specifically, the accused Allo app and
associated system perform substantially the same function (instant voice messaging), in
substantially the same way (via a digitized audio files in a client/server environment), to yield
substantially the same result (delivering voice messages to available intended recipients).
Defendant would thus be liable for direct infringement under the doctrine of equivalents.
32.

Defendant has indirectly infringed and continues to indirectly infringe one or more

claims of the ‘433 Patent, including at least Claim 1, in this judicial district and elsewhere in Texas
by, among other things, actively inducing the using, offering for sale, selling, or importing the
Allo app and associated system. Defendant’s customers who obtain and use the Allo app and

10

associated system and operate such app in accordance with Defendant’s instructions directly
infringe one or more of the claims of the ’433 Patent in violation of 35 U.S.C. § 271.
33.

Defendant instructs its customers in the use of the Allo app, directly and indirectly,

through training videos, demonstrations, brochures, installation and/or user guides, such as those
located at the following:
https://support.google.com/
https://itunes.apple.com/us/app
https://play.google.com/store
www.youtube.com
Defendant is thereby liable for infringement of the ’433 Patent under 35 U.S.C. § 271(b).
34.

Defendant has indirectly infringed and continues to indirectly infringe one or more

claims of the ‘433 Patent, including at least Claim 1, in this judicial district and elsewhere in the
Texas by, among other things, contributing to the direct infringement by others including, without
limitation customers using the Allo app and associated system, by making, offering to sell, selling
and/or importing into the United States, a component of a patented machine, manufacture or
combination, or an 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
infringing the ’433 Patent and not a staple article or commodity of commerce suitable for
substantial non-infringing use.
35.

For example, the Allo app and associated system are a component of a patented

machine, manufacture, or combination, or an apparatus for use in practicing a patent process.
Furthermore, the Allo app and associated system are a material part of the claimed inventions and
upon information and belief is not a staple article or commodity of commerce suitable for

11

substantial non-infringing use. Defendant is therefore, liable for infringement under 35 U.S.C. §
271(c).
36.

Defendant will have been on notice of the ’433 Patent since at least the service of

this complaint upon Defendant. By the time of trial, Defendant will have known and intended
(since receiving such notice) that its continued actions would actively induce, and contribute to
actual infringement of one or more claims of the ‘433 Patent, including at least Claim 1.
37.

Defendant may have infringed the ‘433 Patent through other software, currently

unknown to Uniloc, utilizing the same or reasonably similar functionality, including other versions
of its Allo app and associated system. Uniloc reserves the right to discover and pursue all such
additional infringing software/devices.
COUNT III
(INFRINGEMENT OF U.S. PATENT NO. 7,535,890)
38.

Uniloc incorporates by reference the above paragraphs.

39.

Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 7,535,890

(“the ‘890 Patent”), entitled SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING that
issued on May 19, 2009. A true and correct copy of the ‘890 Patent is attached as Exhibit C hereto.
40.

Uniloc USA is the exclusive licensee of the ‘890 Patent with ownership of all

substantial rights therein, including the right to grant sublicenses, to exclude others, and to enforce,
sue and recover past damages for the infringement thereof.
41.

Defendant has directly infringed, and continues to directly infringe one or more

claims of the ‘890 Patent, including at least Claim 1 in this judicial district and elsewhere in Texas,
literally and/or under the doctrine of equivalents, by or through making, using, importing, offering
for sale and/or selling one or more versions of the Allo app and associated system during the

12

pendency of the ‘890 Patent which software and associated servers perform instant voice
messaging over Wi-Fi and the Internet between persons using cellphones and/or other devices
capable of instant voice messaging; wherein digitized audio files are transmitted between a
plurality of recipients on a packet switched network and a list of one or more currently potential
recipients is displayed on the device.
42.

In addition, should Defendant’s Allo app and associated system be found to not

literally infringe one or more claims of the ‘890 Patent, Defendant’s accused products and
associated system would nevertheless infringe one or more claims of the ‘890 Patent, including at
least Claim 1, under the doctrine of equivalents. More specifically, the accused Allo app and
associated system performs substantially the same function (instant voice messaging), in
substantially the same way (via a digitized audio files in a client/server environment), to yield
substantially the same result (delivering voice messages to available intended recipients).
Defendant would thus be liable for direct infringement under the doctrine of equivalents.
43.

Defendant has indirectly infringed and continues to indirectly infringe one or more

claims of the ‘890 Patent, including at least Claim 1, in this judicial district and elsewhere in Texas
by, among other things, actively inducing the using, offering for sale, selling, or importing the
Allo app and associated system. Defendant’s customers who obtain and use the Allo app and
associated system and operate such app in accordance with Defendant’s instructions directly
infringe one or more of the claims of the ‘890 Patent in violation of 35 U.S.C. § 271.
44.

Defendant instructs its customers in the use of the Allo app, directly and indirectly,

through training videos, demonstrations, brochures, installation and/or user guides, such as those
located at the following:
https://support.google.com/

13

https://itunes.apple.com/us/app
https://play.google.com/store
www.youtube.com
Defendant is thereby liable for infringement of the ‘890 Patent under 35 U.S.C. § 271(b).
45.

Defendant has indirectly infringed and continues to indirectly infringe one or more

claims of the ‘890 Patent, including at least Claim 1, in this judicial district and elsewhere in the
Texas by, among other things, contributing to the direct infringement by others including, without
limitation customers using the Allo app and associated system, by making, offering to sell, selling
and/or importing into the United States, a component of a patented machine, manufacture or
combination, or an 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
infringing the ‘890 Patent and not a staple article or commodity of commerce suitable for
substantial non-infringing use.
46.

For example, the Allo app and associated system are a component of a patented

machine, manufacture, or combination, or an apparatus for use in practicing a patent process.
Furthermore, the Allo app and associated system are a material part of the claimed inventions and
upon information and belief is not a staple article or commodity of commerce suitable for
substantial non-infringing use. Defendant is therefore, liable for infringement under 35 U.S.C. §
271(c).
47.

Defendant will have been on notice of the ‘890 Patent since at least the service of

this complaint upon Defendant. By the time of trial, Defendant will have known and intended
(since receiving such notice) that its continued actions would actively induce, and contribute to
actual infringement of one or more claims of the ‘890 Patent, including at least Claim 1.

14

48.

Defendant may have infringed the ‘890 Patent through other software, currently

unknown to Uniloc, utilizing the same or reasonably similar functionality, including other versions
of its Allo app and associated system. Uniloc reserves the right to discover and pursue all such
additional infringing software/devices.
PRAYER FOR RELIEF
49.

Uniloc requests that the Court find in its favor and against Defendant, and that the

Court grant Uniloc the following relief:
(A)

that Defendant has infringed the ‘622 Patent, ‘433 Patent, and ‘890 Patent;

(B)

awarding Uniloc its damages suffered as a result of Defendant’s infringement of the
‘622 Patent, ‘433 Patent, and ‘890 Patent pursuant to 35 U.S.C. § 284;

(C)

awarding Uniloc its costs, attorneys’ fees, expenses, and interest; and

(D)

granting Uniloc such other and further relief as the Court may deem just and proper.
DEMAND FOR JURY TRIAL

50.

Uniloc hereby demands trial by jury on all issues so triable pursuant to Fed. R.

Civ. P. 38.

15

Dated: March 26, 2017

Respectfully submitted,
/s/ James L. Etheridge
James L. Etheridge
Texas State Bar No. 24059147
Ryan S. Loveless
Texas State Bar No. 24036997
Brett A. Mangrum
Texas State Bar No. 24065671
Travis L. Richins
Texas State Bar No. 24061296
ETHERIDGE LAW GROUP, PLLC
2600 E. Southlake Blvd., Suite 120 / 324
Southlake, Texas 76092
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
Counsel for Plaintiffs Uniloc USA, Inc. and
Uniloc Luxembourg S.A.

16