ThinkOptics, Inc v. Nintendo of America, Inc. et al

Filing 1

COMPLAINT with Jury Demand against Conn Appliances, Inc., DB Roth, Inc., GameStop, Corp., Gearbox Software, LLC, Imation Corp., Intec, Inc., J.C. Penney Company, Inc., JacobsParts, Inc., Nintendo Co., Ltd., Nintendo of America, Inc., Nyko Technologies, Inc., Radioshack Corporation, Sam's East, Inc., Sam's West, Inc., Terminal Reality, Inc., Wal-Mart Stores Texas, LLC, Wal-Mart Stores, Inc. ( Filing fee $ 350 receipt number 0540-3208124.), filed by ThinkOptics, Inc.. (Attachments: # 1 Civil Cover Sheet, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C)(Smith, David)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
ThinkOptics, Inc.,
Plaintiff,
v.
Nintendo of America, Inc.; Nintendo Co.,
Ltd.; Intec, Inc.; NYKO Technologies,
Inc.; Imation Corp.; DB Roth, Inc.;
JacobsParts, Inc.; Wal-Mart Stores, Inc.;
Wal-Mart Stores Texas, LLC; Sam’s
East, Inc.; Sam’s West, Inc.; GameStop
Corp.; RadioShack Corporation; J.C.
Penney Company, Inc.; Conn Appliances,
Inc.; Terminal Reality, Inc.; and Gearbox
Software, LLC,
Defendants.

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CIVIL ACTION NO. ________________
JURY TRIAL DEMANDED

ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT

COMES NOW Plaintiff ThinkOptics, Inc., and files this Original Complaint against
Defendants Nintendo of America, Inc.; Nintendo Co., Ltd.; Intec, Inc.; Nyko Technologies, Inc.;
Imation Corp.; DB Roth, Inc.; JacobsParts, Inc.; Wal-Mart Stores, Inc.; Wal-Mart Stores Texas,
LLC; Sam’s East, Inc.; Sam’s West, Inc.; GameStop Corp.; RadioShack Corporation; J.C.
Penney Company, Inc.; Conn Appliances, Inc.; Terminal Reality, Inc.; and Gearbox Software,
LLC, alleges as follows:
I. NATURE OF THE SUIT

ORIGINAL COMPLAINT FOR COPYRIGHT INFRINGEMENT

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1.

This is a claim for patent infringement arising under the patent laws of the United

States, Title 35 of the United States Code.
II. JURISDICTION AND VENUE
2.

This action arises under the patent laws of the United States, Title 35 of the

United States Code. The Court’s jurisdiction over this action is proper under the above statutes,
including 35 U.S.C. § 271, et seq., 28 U.S.C. § 1331 (federal question jurisdiction) and § 1338
(jurisdiction over patent actions).
3.

Personal jurisdiction exists generally over Defendants pursuant to 28 U.S.C. §

1391 because they have sufficient minimum contacts within the forum as a result of business
conducted within the State of Texas and within this District. Personal jurisdiction also exists
specifically over Defendants because of Defendants’ conduct in making, using, selling, offering
to sell, and/or importing directly or indirectly infringing products or services, and/or Defendants’
contributory infringement or inducement of infringement within the State of Texas and within
this District.
4.

Venue is proper in this Court under 28 U.S.C. § 1391(b), (c), and (d), as well as

28 U.S.C. § 1400(b), for the reasons set forth above. Furthermore, venue is proper because
Defendants actively marketed the infringing works within this District. Each act of Defendants’
directly or indirectly infringing conduct in this District gives rise to proper venue.
III. THE PARTIES
Plaintiff:
5.

Plaintiff ThinkOptics, Inc. (“ThinkOptics” or “Plaintiff”) is a corporation

organized and existing under the laws of the State of California that maintains its principal place
of business at 5568 Del Oro Drive, San Jose, California 95124-6114.

ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT

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Defendants:
Nintendo Defendants:
6.

Defendant Nintendo of America, Inc., is a corporation organized and existing

under the laws of the State of Washington that maintains its principal place of business at 4820
150th Avenue NE, Redmond, Washington 98052-5111. It may be served via its registered agent,
CT Corporation System, at 350 N. Saint Paul St., Suite 2900, Dallas, Texas 75201-4234.
7.

Defendant Nintendo Co., Ltd., is a corporation organized and existing under the

laws of Japan that maintains its principal place of business in Kyoto, Japan. It may be served via
its Officers and/or Directors at its corporate headquarters at 11-1 Kamitoba Hokotate-Cho,
Minami-Ku, Kyoto, Japan, 601-8501. Defendant Nintendo of America, Inc., is a wholly owned
subsidiary of Nintendo Co., Ltd.
8.

Defendants Nintendo of America, Inc., and Nintendo Co., Ltd., are hereinafter

collectively referred to as the Nintendo Defendants or Nintendo.
Other Manufacturer Defendants:
9.

Defendant Intec, Inc. (“Intec”) is a corporation organized and existing under the

laws of the State of Florida that maintains its principal place of business at 7600 NW 19th Street,
Suite 400, Miami, Florida 33126-1219, and may be served at this address.
10.

Defendant NYKO Technologies, Inc. (“Nyko”) is a corporation organized and

existing under the laws of the State of California that maintains its principal place of business at
1990 Westwood Blvd., 3rd Floor, Los Angeles, California 90025, and may be served at this
address.
11.

Defendant Imation Corp. (“Imation”) is a corporation organized and existing

under the laws of the State of Delaware that maintains its principal place of business at 1 Imation

ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT

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Way, Saint Paul, Minnesota 55128-3421, and may be served at this address. Imation sells
products under at least the brand name “Memorex.”
12.

Defendant DB Roth, Inc. (“DB Roth”) is a corporation organized and existing

under the laws of the State of New York that maintains its principal place of business at 2 Bergen
Turnpike, Ridgefield Park, New Jersey 07660-2340, and may be served at this address.
13.

Defendant JacobsParts, Inc. (“JacobsParts”) is a corporation organized and

existing under the laws of the State of Indiana that maintains its principal place of business at
5601 Fortune Circle South, Suite B, Indianapolis, Indiana 46241-5533, and may be served at this
address.
14.

Defendants Intec, NYKO, Imation, DB Roth, and JacobsParts are sometimes

hereinafter collectively referred to as the Other Manufacturer Defendants.
Retail Defendants:
15.

Defendant Wal-Mart Stores, Inc. is a corporation organized and existing under

the laws of the State of Delaware that maintains its principal place of business at 702 SW 8th
Street, Bentonville, Arkansas 72716, and may be served at this address.
16.

Defendant Wal-Mart Stores Texas, LLC is a corporation organized and existing

under the laws of the State of Delaware that maintains its principal place of business at 702 SW
8th Street, Bentonville, Arkansas 72716, and may be served at this address.
17.

Defendants Wal-Mart Stores, Inc., and Wal-Mart Stores Texas, LLC, are

hereinafter collectively referred to as the Wal-Mart Defendants or Wal-Mart.
18.

Defendant Sam’s East, Inc. is a corporation organized and existing under the

laws of the State of Delaware that maintains its principal place of business at 702 SW 8th Street,

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Bentonville, Arkansas 72716, and may be served via its registered agent, CT Corporation
Systems, Inc., 350 North Saint Paul Street, Dallas, Texas 75201.
19.

Defendant Sam’s West, Inc. is a corporation organized and existing under the

laws of the State of Delaware that maintains its principal place of business at 702 SW 8th Street,
Bentonville, Arkansas 72716, and may be served via its registered agent, CT Corporation
Systems, Inc., 350 North Saint Paul Street, Dallas, Texas 75201.
20.

Defendants Sam’s East, Inc., and Sam’s West, Inc. are hereinafter collectively

referred to as Sam’s Club.
21.

Defendant GameStop Corp. (“GameStop”) is a corporation organized and

existing under the laws of the State of Delaware that maintains its principal place of business at
625 Westport Parkway, Grapevine, Texas 76051, and may be served at this address.
22.

Defendant RadioShack Corporation (“RadioShack”) is a corporation organized

and existing under the laws of the State of Delaware that maintains its principal place of business
at 2727 West 7th Street Stop 5022, Fort Worth, Texas, 76107-2218, and may be served at this
address.
23.

Defendant J.C. Penney Company, Inc. (“J.C. Penney”) is a corporation

organized and existing under the laws of the State of Delaware that maintains its principal place
of business at 6501 Legacy Drive, Plano, Texas 75024-3612, and may be served at this address.
24.

Defendant Conn Appliances, Inc. (“Conn’s”) is a corporation organized and

existing under the laws of the State of Texas that maintains its principal place of business at 3295
College Street, Beaumont, Texas 77701-4611, and may be served at this address.
25.

Defendants Wal-Mart, Sam’s Club, GameStop, RadioShack, J.C. Penney, and

Conn’s are sometimes hereinafter collectively referred to as the Retail Defendants.

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Game Defendant:
26.

Defendant Terminal Reality, Inc. (“Terminal Reality”) is a corporation

organized and existing under the laws of the State of Texas that maintains its principal place of
business at 2274 Rockbrook Drive, Lewisville, Texas 75067-3894, and may be served at this
address.
27.

Defendant Gearbox Software, LLC (“Gearbox”) is a corporation organized and

existing under the laws of the State of Texas that maintains its principal place of business at 101
East Park Blvd., Suite 1200, Plano, Texas 75074-8826, and may be served at this address.
28.

Defendants Terminal Reality and Gearbox are sometimes hereinafter

collectively referred to as the Game Defendants.
IV. FACTS COMMON TO ALL CLAIMS FOR RELIEF
Patents at Issue:
29.

This cause of action asserts infringement of United States Patent No. 7,796,116

(“the ’116 Patent”), United States Patent No. 7,852,317 (“the ’317 Patent”), and United States
Patent No. 7,864,159 (“the ’159 Patent”) (collectively, “the Patents-in-Suit”).
30.

The ’116 Patent, entitled “Electronic Equipment for Handheld Vision Based

Absolute Pointing System,” duly and legally issued on September 14, 2010, from U.S. Patent
Application Serial No. 11/187,405, filed on July 21, 2005, naming as inventors Kenneth
Salsman, John Sweetser, and Anders Grunnet-Jepsen. A true and correct copy of the ’116 Patent
is attached hereto as Exhibit A.
31.

The ’116 Patent claims priority to Provisional Patent Application No. 60/593,413,

filed January 12, 2005.

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32.

The ’317 Patent, entitled “Handheld Device for Handheld Vision Based Absolute

Pointing System,” duly and legally issued on December 14, 2010, from U.S. Patent Application
Serial No. 11/187,387, filed on July 21, 2005, naming as inventors Anders Grunnet-Jepsen,
Kenneth Salsman, and John Sweetser. A true and correct copy of the ’317 Patent is attached
hereto as Exhibit B.
33.

The ’317 Patent claims priority to Provisional Patent Application No. 60/593,413,

filed January 12, 2005.
34.

The ’159 Patent, entitled “Handheld Vision Based Absolute Pointing System,”

duly and legally issued on January 4, 2011, from U.S. Patent Application Serial No. 11/187,435,
filed on July 21, 2005, naming as inventors John Sweetser, Anders Grunnet-Jepsen, and Kenneth
Salsman. A true and correct copy of the ’159 Patent is attached hereto as Exhibit C.
35.

The ’159 Patent claims priority to Provisional Patent Application No. 60/593,413,

filed January 12, 2005.
36.

The inventions disclosed and claimed in the Patents-in-Suit were conceived and

reduced to practice prior to the application filing date of each patent. ThinkOptics is therefore
entitled to rely on an invention date for each of the Patents-in-Suit that predates the actual filing
date.
37.

Plaintiff ThinkOptics, Inc., is the owner as assignee of all rights, title, and interest

in and under the ’116 Patent, the ’317 Patent, and the ’159 Patent.
38.

ThinkOptics has standing to sue for infringement of the ’116 Patent, the ’317

Patent, and the ’159 Patent.
39.

ThinkOptics manufactures and sells one or more products that embody one or

more claims of each of the Patents-in-Suit.

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40.

ThinkOptics has and continues to mark products that it manufactures and sells

under the Patents-in-Suit, including the WavitTM and the iWavitTM products.
ThinkOptics:
41.

ThinkOptics is a technology company based in San Jose, California. It has

developed ground-breaking visual detection and tracking technologies to enhance user
experiences related to at least TV, the Internet, and Video Gaming systems. ThinkOptics’s
technological innovations have been granted patent protection by the United States Patent and
Trademark Office, and are embodied in products manufactured and sold by ThinkOptics,
including the WavitTM and iWavitTM remote control devices.
42.

The WavitTM is a handheld wireless remote control that detects infrared light

emitted from a source, such as a sensor bar. The iWavitTM is a newer product that comprises a
plug-in adapter for all iDevices (e.g., iPhone, iPod Touch, or iPad). The iWavitTM allows the
iDevice to serve as a remote control and provides at least the same functional capabilities as the
WavitTM.
43.

ThinkOptics’s patented technology includes the use of a remote sensor to detect

infrared light emitted from a source, such as a sensor bar, and the processing of the data
(including the intensity of the detected light and relative positioning) to determine where the
remote control is pointing.
44.

ThinkOptics released its WavitTM demonstration kits in Fall 2006.

45.

ThinkOptics’s first public display of the WavitTM device and technology was at

the 2006 iHollywood Forum’s Digital Living Room Conference in Foster City, California, on
December 5th and 6th, 2006. As a result of the presentation, ThinkOptics was awarded the
“Fantasy $1 Million Investment” by the conference audience.

ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT

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46.

ThinkOptics presented the WavitTM technology and conducted a product

demonstration at the 2007 Consumer Electronics Show in Las Vegas, Nevada, on January 8–11,
2007.
47.

In May 2007, the WavitTM received FCC Certification and became available for

purchase from ThinkOptics’s website, www.thinkoptics.com.
48.

On November 13, 2007, The WavitTM 3D Media-PC Remote Control won the

Consumer Electronics Show 2008 Innovations Design and Engineering Showcase Honors
Award.
49.

ThinkOptics presented its products again at the 2008 Consumer Electronics Show

in Las Vegas, Nevada, on January 7–11, 2008.
50.

In September of 2009, the iWavitTM was chosen as one of eleven finalists in the

CEA-sponsored i-Stage competition for 2009.
51.

ThinkOptics demonstrated the iWavitTM at the Consumer Electronics Show in Las

Vegas, Nevada, on January 7–10, 2010.
52.

In August 2010, the first iWavitTM applications became available for download

from the Apple Store.
53.

On December 11, 2010, ThinkOptics officially released the iWavitTM. The

iWavitTM Premium Kit became available for purchase from www.iWavit.com and Amazon.com.
54.

ThinkOptics demonstrated the iWavitTM Premium Kit at the MacWorld Expo in

San Francisco, California, on January 27–29, 2011. All available inventory of the iWavitTM
Premium Kit was sold during the Expo.
55.

By April 2011, consumers had downloaded more than 300,000 iWavitTM Apps.
Infringement:

ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT

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56.

Each Defendant named in this lawsuit is liable for infringing one or more claims

of each of the Patents-in-Suit.
Infringement by Nintendo Defendants:
57.

The allegations contained in paragraphs 1–56 above are incorporated by reference

as if fully set forth herein.
58.

The Nintendo Defendants are liable for making, using, selling, offering to sell,

and/or importing the WiiTM gaming system and WiiTM Remote video game controllers, sensor
bars, and games (e.g., the Mario family of WiiTM games) that are designed to be used with the
Nintendo WiiTM gaming system, which infringe and/or are used to infringe one or more claims of
each of the Patents-in-Suit.
59.

Upon information and belief, the Nintendo Defendants have also made, used, and

imported an infringing system known as the Wii UTM, which incorporates technology that
infringes, is used to infringe, or is adapted to infringe one or more claims of each of the Patentsin-Suit. Upon further information and belief, the Nintendo Defendants have or plan to sell and/or
offer for sale the Wii UTM.
60.

Nintendo’s WiiTM gaming system uses, without ThinkOptics’s permission,

ThinkOptics’s infrared sensor-based motion tracking technology to enable the motion gaming
features that have made the system very popular with consumers since its introduction. The
WiiTM system includes a sensor bar that emits infrared light, which is detected by a CMOS sensor
and imaging lens inside the WiiTM Remote (sometimes known as a “Wiimote”). The WiiTM
gaming console uses data transmitted from the WiiTM Remote—including relative positioning
and intensity of the detected infrared light—to calculate the location on the video screen where
the WiiTM Remote is pointing. Nintendo’s WiiTM system and WiiTM Remote video game

ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT

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controllers and sensor bars that are designed to be used with the Nintendo WiiTM gaming system
infringe and/or are used to infringe at least one claim of each of the Patents-in-Suit.
61.

On May 26, 2006, United States Patent Application Serial No. 11/441,146 (“the

’146 Application”) was filed at the United States Patent & Trademark Office (“USPTO”),
naming Hideya Akasaka and Yuki Takahashi as inventors, and naming Defendant Nintendo Co.,
Ltd. as assignee. The ’146 Application published as United States Patent Application Publication
No. US 2007/0060228 A1 (“Nintendo ’146 Application”) on March 15, 2007.
62.

On November 26, 2010, the USPTO issued an Office Action including a non-final

rejection of one or more claims of the ’146 Application.
63.

The USPTO rejected Claims 1, 2, 3, 10–12, 19–21, 27, 28, 32, 44, 45, 53, 54, 61,

77, 78, 85, 86, 103, and 104 under 35 U.S.C. § 103(a) as being “unpatentable over [the ’116
Patent].”
64.

On May 11, 2011, the USPTO issued an Office Action including a Final

Rejection of one or more claims of the ’146 Application.
65.

The USPTO rejected Claims 1–3, 10–12, 19–21, 27, 28, 32, 44, 45, 52–54, 60, 61,

64, 65, 77–78, 85–86, 91, 103, and 104 under 35 U.S.C. § 103(a) as being “unpatentable over
[the ’116 Patent].”
66.

On September 19, 2006, United States Patent Application Serial No. 11/522,997

(“the ’997 Application”) was filed at the United States Patent & Trademark Office (“USPTO”),
naming Keizo Ohta as inventor, and naming Defendant Nintendo Co., Ltd. as assignee. The ’997
Application published as United States Patent Application Publication No. US 2007/0211027 A1
(“Nintendo ’997 Application”) on September 13, 2007.

ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT

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67.

On January 8, 2009, the USPTO issued an Office Action including a non-final

rejection of all pending claims of the ’997 Application.
68.

The USPTO rejected Claims 1, 2, 3, 11, 12, 13, 14, 16, 17, 18, 26, 27, 28, and 29

under 35 U.S.C. § 102(e) “as being anticipated by Salsman et al. [the application that resulted in
the ‘116 Patent].”
69.

The USPTO rejected Claims 4, 5, 6, 7, 8, 9, 10, 15, 19, 20, 21, 22, 23, 24, 25, 28,

and 30 under 35 U.S.C. § 103(a) as being “unpatentable over [the ’116 Patent].” (in view of
Gossweiler, III et al. (U.S. Patent No. 7,379,078).
70.

On June 9, 2009 the USPTO issued an Office Action including a Final Rejection

of all pending claims of the ’997 Application based on the grounds of being anticipated by, or
obvious in light of, the ’116 Patent.
71.

After the applicant requested continued examination of the ‘997 Application and

amended the claims, all pending claims were again rejected by the USPTO under 35 U.S.C. §
103(a) as unpatentable over Salsman. This rejection was made final in an Office Action on
November 15, 2010. After further amendment, Applicant filed an appeal brief on June 30, 2011.
72.

One or more rejected claims of the ’146 and ’997 Applications included features

disclosed in the ’116 Patent.
73.

One or more rejected claims of the ’146 and ’997 Applications included features

claimed in the ’116 Patent.
74.

One or more rejected claims of the ’146 and ’997 Applications included every

element of at least one claim in the ’116 Patent.
75.

Nintendo manufactures one or more products that represent embodiment(s) of the

invention disclosed in the ’146 and ’997 Applications.

ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT

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Infringement by Other Manufacturer Defendants:
76.

The allegations contained in paragraphs 1–75 above are incorporated by reference

as if fully set forth herein.
77.

Each of the Other Manufacturer Defendants is liable for selling, offering to sell,

and/or importing products that are used to infringe one or more claims of each of the Patents-inSuit.
78.

The Other Manufacturer Defendants make, use, sell, offer for sale, and/or import

devices such as video game controllers and sensor bars that are designed to be fully compatible
with the Nintendo WiiTM gaming system and have no substantial non-infringing uses.
79.

Defendant Intec makes, uses, sells, offers for sale, and/or imports devices that

infringe and/or are used to infringe one or more claims of each of the Patents-in-Suit, including
but not limited to remote, hand-held devices adapted to serve as remote controls for the Nintendo
Wii. The products manufactured by Intec are compatible with certain Nintendo products but,
upon information and belief, are not subject to a license agreement with Nintendo.
80.

Defendant Nyko makes, uses, sells, offers for sale, and/or imports devices that

infringe and/or are used to infringe one or more claims of each of the Patents-in-Suit, including
but not limited to remote, hand-held devices adapted to serve as remote controls for the Nintendo
Wii and sensor bars that are compatible with the Nintendo Wii. The products manufactured by
Nyko are compatible with certain Nintendo products but, upon information and belief, are not
subject to a license agreement with Nintendo.
81.

Defendant Imation makes, uses, sells, offers for sale, and/or imports devices that

infringe and/or are used to infringe one or more claims of each of the Patents-in-Suit, including
but not limited to remote, hand-held devices adapted to serve as remote controls for the Nintendo

ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT

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Wii. The products manufactured by Imation are compatible with certain Nintendo products but,
upon information and belief, are not subject to a license agreement with Nintendo.
82.

Defendant DB Roth makes, uses, sells, offers for sale, and/or imports devices that

infringe and/or are used to infringe one or more claims of each of the Patents-in-Suit, including
but not limited to remote, hand-held devices adapted to serve as remote controls for the Nintendo
Wii. The products manufactured by DB Roth are compatible with certain Nintendo products but,
upon information and belief, are not subject to a license agreement with Nintendo.
83.

Defendant JacobsParts makes, uses, sells, offers to sell, and/or imports devices

that infringe and/or are used to infringe one or more claims of each of the Patents-in-Suit,
including but not limited to remote, hand-held devices adapted to serve as remote controls for the
Nintendo Wii. The products manufactured by JacobsParts are compatible with certain Nintendo
products but, upon information and belief, are not subject to a license agreement with Nintendo.
Infringement by Retail Defendants:
84.

The allegations contained in paragraphs 1–83 above are incorporated by reference

as if fully set forth herein.
85.

Each of the Retail Defendants is liable for selling, offering to sell, and/or

importing products that infringe and/or are used to infringe one or more claims of each of the
Patents-in-Suit.
86.

The Retail Defendants sell, offer for sale, and/or import products that are

manufactured by the Nintendo Defendants such as the WiiTM gaming system, remote controllers,
sensor bars, games, and/or other products that infringe or are used to infringe, such as WiiTMcompatible controllers, sensor bars, and games that are manufactured by other parties, including
the Other Manufacturer Defendants and Game Defendants, as described below.

ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT

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87.

The Wal-Mart Defendants use, sell, offer to sell, and/or import products that

infringe and/or are used to infringe one or more claims of each of the Patents-in-Suit, including
at least products manufactured by Power A (the retail consumer products brand of Bensussen
Deutsch & Associates, Inc.), dreamGEAR, LLC, Polaroid Corporation, and Defendants Nyko,
Intec, and Nintendo. The infringing uses and sales occur in this District, the State of Texas, and
in various other states in the United States.
88.

The Sam’s Club Defendants sell, offer to sell, and/or import products that infringe

and/or are used to infringe one or more claims of each of the Patents-in-Suit, including at least
products manufactured by Defendants Imation (under the brand name Memorex), Nyko, Intec,
and Nintendo. The infringing sales occur in this District, the State of Texas, and in various other
states in the United States.
89.

Defendant GameStop uses, sells, offers to sell, and/or imports products that

infringe and/or are used to infringe one or more claims of each of the Patents-in-Suit, including
at least products manufactured by Performance Design Products, LLC, and Defendants Nyko,
Nintendo, Gearbox, and Terminal Reality. The infringing uses and sales occur in this District, the
State of Texas, and in various other states in the United States.
90.

Defendant RadioShack sells, offers to sell, and/or imports products that infringe

and/or are used to infringe one or more claims of each of the Patents-in-Suit, including at least
products manufactured by dreamGEAR, LLC, Performance Design Products, LLC, and
Defendants Intec, Nyko, Nintendo, and Gearbox. The infringing sales occur in this District, the
State of Texas, and in various other states in the United States.
91.

Defendant J.C. Penney sells, offers to sell, and/or imports products that infringe

and/or are used to infringe one or more claims of each of the Patents-in-Suit, including at least

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products manufactured by Defendant Nintendo. The infringing sales occur in this District, the
State of Texas, and in various other states in the United States.
92.

Defendant Conn’s sells, offers to sell, and/or imports products that infringe and/or

are used to infringe one or more claims of each of the Patents-in-Suit, including at least products
manufactured by Defendant Nintendo. The infringing sales occur in this District, the State of
Texas, and in various other states in the United States.
Infringement by Game Defendants:
93.

The allegations contained in paragraphs 1–92 above are incorporated by reference

as if fully set forth herein.
94.

Defendant Terminal Reality is liable for making, using, selling, and/or offering to

sell products, including games (e.g., “Ghostbusters: The Video Game”), that infringe, are used to
infringe, and/or are especially adapted to infringe with no substantial non-infringing use, one or
more claims of each of the Patents-in-Suit.
95.

Defendant Gearbox is liable for making, using, selling, and/or offering to sell

products, including games (e.g., “Brothers in Arms: Double Time”), that infringe, are used to
infringe, and/or are especially adapted to infringe with no substantial non-infringing use, one or
more claims of each of the Patents-in-Suit.
Willfulness:
96.

The allegations contained in paragraphs 1–95 above are incorporated by reference

as if fully set forth herein.
97.

Each Defendant is liable for willfully infringing one or more claims of each of the

Patents-in-Suit.
Knowledge of Patents at Issue:

ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT

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98.

Each Defendant had actual or constructive knowledge of ThinkOptics before the

filing of this lawsuit.
99.

Each Defendant had actual or constructive knowledge of each of the Patents-in-

Suit before the filing of this lawsuit.
100.

Nintendo had knowledge of ThinkOptics and its patents through its own patent

prosecution activities as discussed in paragraphs 61–71, above
101.

In December of 2006, ThinkOptics contacted Nintendo and informed them of

ThinkOptics’s technology and its pending patent applications, which resulted in the Patents-inSuit.
102.

ThinkOptics has and continues to mark its products sold under the Patents-in-Suit,

giving all Defendants at least constructive knowledge of the Patents-in-Suit.
Objective Likelihood of Infringement:
103.

There is an objective likelihood that one or more Nintendo Defendant products

infringe at least one claim of each of the Patents-in-Suit.
104.

The rejection of the ’146 and ’997 Applications—assigned to Nintendo Co.,

Ltd.—based on the ’116 Patent—is objective evidence that one or more of the Nintendo
Defendants’ products likely infringed or infringes at least one claim of at least the ’116 Patent.
105.

There is an objective likelihood that one or more Intec Defendant products

infringe at least one claim of each of the Patents-in-Suit.
106.

There is an objective likelihood that one or more Nyko Defendant products

infringe at least one claim of each of the Patents-in-Suit.
107.

There is an objective likelihood that one or more Imation Defendant products

infringe at least one claim of each of the Patents-in-Suit.

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108.

There is an objective likelihood that one or more DB Roth Defendant products

infringe at least one claim of each of the Patents-in-Suit.
109.

There is an objective likelihood that one or more JacobsParts Defendant products

infringe at least one claim of each of the Patents-in-Suit.
110.

There is an objective likelihood that one or more products used, sold, offered for

sale, and/or imported by the Wal-Mart Defendants infringe at least one claim of each of the
Patents-in-Suit.
111.

There is an objective likelihood that one or more products used, sold, offered for

sale, and/or imported by Sam’s Club infringe at least one claim of each of the Patents-in-Suit.
112.

There is an objective likelihood that one or more products used, sold, offered for

sale, and/or imported by GameStop infringe at least one claim of each of the Patents-in-Suit.
113.

There is an objective likelihood that one or more products used, sold, offered for

sale, and/or imported by RadioShack infringe at least one claim of each of the Patents-in-Suit.
114.

There is an objective likelihood that one or more products used, sold, offered for

sale, and/or imported by J.C. Penney infringe at least one claim of each of the Patents-in-Suit.
115.

There is an objective likelihood that one or more products used, sold, offered for

sale, and/or imported by Conn’s infringe at least one claim of each of the Patents-in-Suit.
116.

There is an objective likelihood that one or more Terminal Reality products

infringe at least one claim of each of the Patents-in-Suit.
117.

There is an objective likelihood that one or more Gearbox products infringe at

least one claim of each of the Patents-in-Suit.
Subjective Knowledge of Risk:

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118.

The Nintendo Defendants knew or should have known of the objective risk of

infringement discussed in Paragraphs 103 and 104, above.
119.

The rejection of the ’146 and ’997 Applications—assigned to Nintendo Co.,

Ltd.—based on the ’116 Patent is proof that the Nintendo Defendants knew or should have
known of the objective risk that one or more of their products infringed at least one claim of at
least the ’116 Patent.
120.

The Intec Defendant knew or should have known of the objective risk of

infringement discussed in Paragraph 105 above.
121.

The Nyko Defendant knew or should have known of the objective risk of

infringement discussed in Paragraph 106 above.
122.

The Imation Defendant knew or should have known of the objective risk of

infringement discussed in Paragraph 107 above.
123.

The DB Roth Defendant knew or should have known of the objective risk of

infringement discussed in Paragraph 108 above.
124.

The JacobsParts Defendant knew or should have known of the objective risk of

infringement discussed in Paragraph 109 above.
125.

The Wal-Mart Defendants knew or should have known of the objective risk of

infringement discussed in Paragraph 110 above.
126.

The Sam’s Club Defendants knew or should have known of the objective risk of

infringement discussed in Paragraph 111 above.
127.

The GameStop Defendant knew or should have known of the objective risk of

infringement discussed in Paragraph 112 above.

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128.

The RadioShack Defendant knew or should have known of the objective risk of

infringement discussed in Paragraph 113 above.
129.

The J.C. Penney Defendant knew or should have known of the objective risk of

infringement discussed in Paragraph 114 above.
130.

The Conn’s Defendant knew or should have known of the objective risk of

infringement discussed in Paragraph 115 above.
131.

The Terminal Reality Defendant knew or should have known of the objective risk

of infringement discussed in Paragraph 116 above.
132.

The Gearbox Defendant knew or should have known of the objective risk of

infringement discussed in Paragraph 117 above.
Damages:
133.

The allegations contained in paragraphs 1–132 above are incorporated by

reference as if fully set forth herein.
134.

Each of Defendants’ acts of infringement has caused damage to ThinkOptics.

135.

Each Defendant is liable to ThinkOptics for such infringement, and as a result,

ThinkOptics seeks recovery of the following damages under 35 U.S.C. § 284:
Lost Profits:
136.

ThinkOptics is in the business of manufacturing and selling products that

represent embodiments of each of the Patents-in-Suit. ThinkOptics contends that, but for
Defendants’ infringement, ThinkOptics would have made additional profits. ThinkOptics
accordingly seeks recovery of those lost profits under 35 U.S.C. § 284.
Reasonable Royalty:

ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT

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137.

Further and in the alternative, ThinkOptics seeks damages to adequately

compensate it for Defendants’ infringement of the Patents-in-Suit. Such damages should be no
less than the amount of a reasonable royalty under 35 U.S.C. § 284.
Enhanced Damages, Attorneys’ Fees, and Expenses:
138.

Based on information and belief, ThinkOptics contends that Defendants’ acts of

infringement have been and are willful. Therefore, under 35 U.S.C. § 284, ThinkOptics seeks a
finding of willfulness and recovery of enhanced damages up to three times the amount of
damages found by the trier of fact. ThinkOptics further seeks recovery of its reasonable
attorneys’ fees and expenses under 35 U.S.C. § 285.
V. CLAIMS FOR RELIEF
139.

The allegations contained in paragraphs 1–138 above are incorporated by

reference as if fully set forth herein.
140.

Based on the above-described services and products, Plaintiff asserts several

causes of action against the Defendants. These causes of action are detailed as follows.
141.

Upon information and belief, each Defendant named herein manufactures, uses,

sells, offers for sale, and/or imports one or more products that: (1) embody one or more claims of
each of the Patents-in-Suit; (2) were manufactured using the method of one or more claims of
each of the Patents-in-Suit; and/or (3) are used in a method of one or more claims of each of the
Patents-in-Suit, without license from ThinkOptics, in the Eastern District of Texas and
throughout the United States.
142.

By manufacturing, using, selling, offering for sale, and/or importing the accused

products, the Nintendo Defendants and each Retail Defendant has directly infringed, and will

ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT

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continue to directly infringe, one or more claims of each of the Patents-in-Suit under 35 U.S.C. §
271(a), (b), (c), and/or (f), literally and/or under the doctrine of equivalents.
a. The Nintendo Defendants have directly infringed at least by manufacturing, using,
selling, offering for sale, and/or importing the WiiTM system.
b. The Retail Defendants have directly infringed at least by using, selling, offering
for sale, and/or importing the WiiTM system.
143.

By selling, offering for sale, and/or importing the accused products, each

Defendant has contributorily infringed, and will continue to contributorily infringe, one or more
claims of each of the Patents-in-Suit under 35 U.S.C. § 271 (c) and/or (f) literally and/or under
the doctrine of equivalents.
a. With pre-suit knowledge of the Patents-in-Suit, the Nintendo Defendants have
contributorily infringed at least by selling, offering for sale, and/or importing
accessories and replacement devices adapted for use with the infringing WiiTM
gaming system, such as remote controllers and sensor bars and games designed
for use with the WiiTM gaming system, all of which infringe, are used to infringe,
and/or are especially adapted to infringe with no substantial non-infringing use,
one or more claims of each of the Patents-in-Suit. They have contributed to the
direct infringement by retailers who sell, offer for sale, and/or import the WiiTM
gaming system, including the Retail Defendants, and by consumer users of the
WiiTM gaming system.
b. With pre-suit knowledge of the Patents-in-Suit, the Other Manufacturer
Defendants have contributorily infringed at least by selling, offering for sale,
and/or importing accessories and replacement devices adapted for use with the

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infringing WiiTM gaming system, such as remote controllers, sensor bars, and
games that infringe, are used to infringe, and/or are especially adapted to infringe
with no substantial non-infringing use, one or more claims of each of the Patentsin-Suit. They have contributed to the direct infringement by retailers who sell,
offer for sale, and/or import the WiiTM gaming system, including the Retail
Defendants, and by consumer users of the WiiTM gaming system.
c. With pre-suit knowledge of the Patents-in-Suit, the Retail Defendants have
contributorily infringed at least by selling, offering for sale, and/or importing
accessories and replacement devices adapted for use with the infringing WiiTM
gaming system, such as remote controllers and sensor bars and games designed
for use with the WiiTM gaming system, all of which infringe, are used to infringe,
and/or are especially adapted to infringe with no substantial non-infringing use,
one or more claims of each of the Patents-in-Suit. They have contributed to the
direct infringement by consumer users of the WiiTM gaming system.
d. With pre-suit knowledge of the Patents-in-Suit, the Game Defendants have
contributorily infringed at least by selling and/or offering for sale video games
designed for the infringing WiiTM gaming system that infringe, are used to
infringe, and/or are especially adapted to infringe with no substantial noninfringing use, one or more claims of each of the Patents-in-Suit. They have
contributed to the direct infringement by consumer users of the WiiTM gaming
system.

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144.

Each of the Defendants has also induced infringement of, and will continue to

induce infringement of, one or more claims of each of the Patents-in-Suit under 35 U.S.C. § 271
(b) and/or (f) literally and/or under the doctrine of equivalents.
a. The Nintendo Defendants have induced infringement of, and will continue to
induce infringement of, one or more claims of each of the Patents-in-Suit under
35 U.S.C. § 271 (b) and/or (f), literally and/or under the doctrine of equivalents
through, among other activities, providing infringing products and/or products
that are used to infringe to consumers without authority and instructing those
consumers how to use the infringing WiiTM system, and inducing the Retail
Defendants to use, sell, and offer to sell infringing products, as discussed above.
b. Each Other Manufacturer Defendant has also induced infringement of, and will
continue to induce infringement of, one or more claims of each of the Patents-inSuit under 35 U.S.C. § 271 (b) and/or (f), literally and/or under the doctrine of
equivalents through, among other activities, providing infringing products and/or
products that are used to infringe to consumers without authority and instructing
those consumers how to use the infringing WiiTM system, and inducing the
Retailer Defendants to use, sell, and offer to sell infringing products, as discussed
above.
c. Each Retail Defendant has also induced infringement of, and will continue to
induce infringement of, one or more claims of each of the Patents-in-Suit under
35 U.S.C. § 271 (b) and/or (f), literally and/or under the doctrine of equivalents
through, among other activities, providing infringing products and/or products

ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT

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that are used to infringe to consumers without authority and instructing those
consumers how to use the infringing WiiTM system.
d. Each Game Defendant has also induced infringement of, and will continue to
induce infringement of, one or more claims of each of the Patents-in-Suit under
35 U.S.C. § 271 (b) and/or (f), literally and/or under the doctrine of equivalents
through, among other activities, providing infringing products and/or products
that are used to infringe to consumers without authority and instructing those
consumers how to use the infringing WiiTM system.
145.

As a direct and proximate consequence of the acts and practices of each of the

Defendants, ThinkOptics has been, is being, and will continue to be injured in its business and
property rights, and has suffered, is suffering, and will continue to suffer injury and damages for
which it is entitled to relief under 35 U.S.C. § 284.
146.

Upon information and belief, each of Defendants’ infringement of each of the

Patents-in-Suit has been, is, and will continue to be willful and deliberate.
VI. DAMAGES ON ALL CLAIMS FOR RELIEF
147.

The allegations contained in paragraphs 1–146 above are incorporated by

reference as if fully set forth herein.
148.

Plaintiffs are entitled to and pray for relief on all claims as follows:

a. A judgment that each of the Patents-in-Suit is infringed, directly and/or indirectly,
either literally and/or under the doctrine of equivalents, by Defendants as
described herein;
b. A judgment and order preliminarily and permanently enjoining each Defendant,
its agents, employees, representatives, successors and assigns, and those acting in

ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT

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privity or in concert with them, from further direct infringement, contributory
infringement, and/or inducing infringement of the each of the Patents-in-Suit in
accordance with 35 U.S.C. § 283;
c. A judgment and order requiring each Defendant to pay ThinkOptics damages
under 35 U.S.C. § 284, including treble damages for willful infringement as
provided by 35 U.S.C. § 284, and supplemental damages for any continuing postverdict infringement up until entry of the final Judgment with an accounting as
needed;
d. A judgment and order requiring each Defendant to pay ThinkOptics pre-judgment
and post-judgment interest on the damages awarded;
e. A judgment and order finding this case to be an exceptional case and requiring
each Defendant to pay the costs of this action (including all disbursements) and
attorneys’ fees as provided by 35 U.S.C. § 285;
f. Such other and further relief as the Court deems just and proper.
JURY TRIAL DEMAND
Plaintiffs hereby request a trial by jury on each claim for relief alleged in this Complaint.
Dated: September 2, 2011.
Respectfully submitted,
____________________________________
D. NEIL SMITH, Attorney in Charge
STATE BAR NO. 00797450
ANTHONY BRUSTER
STATE BAR NO. 24036280
EDWARD CHIN
STATE BAR NO. 50511688
NICOLE REED KLIEWER

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STATE BAR NO. 24041759
ANDREW J. WRIGHT
STATE BAR NO. 24063927
EDWARD B. CLOUTMAN, IV
STATE BAR NO. 24074045
NIX PATTERSON & ROACH, L.L.P.
5215 N. O’Connor Blvd., Suite 1900
Irving, Texas 75039
972.831.1188 (telephone)
972.444.0716 (facsimile)
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
DEREK GILLILAND
STATE BAR NO. 24007239
NIX PATTERSON & ROACH, L.L.P.
205 Linda Drive
Daingerfield, Texas 75638
903.645.7333 (telephone)
903.645.5389 (facsimile)
[e-mail]
STEVEN H. SLATER
STATE BAR NO. 00784985
NATALIE SWIDER
STATE BAR NO. 24063211
ADAM C. DAVENPORT
STATE BAR NO. 24065117
SLATER & MATSIL, L.L.P.
17950 Preston Road, Suite 1000
Dallas, Texas 75252
972.732.1001 (telephone)
972.732.9218 (facsimile)
[e-mail]
[e-mail]
[e-mail]
ATTORNEYS FOR PLAINTIFF
THINKOPTICS, INC.

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