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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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` Civil Action No. __________
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` JURY TRIAL DEMANDED
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`) ) ) ) ) ) ) ) ) )
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`GODO KAISHA IP BRIDGE 1
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`Plaintiff,
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`VS.
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`OMNIVISION TECHNOLOGIES, INC.
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`Defendant.
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`
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`COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff Godo Kaisha IP Bridge 1, by and through its undersigned counsel, files this
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`action for patent infringement against OmniVision Technologies, Inc. as follows:
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`THE PARTIES
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`1.
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`Godo Kaisha IP Bridge 1 (“IP Bridge” or “Plaintiff”) is a Japanese corporation
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`having a principal address of c/o Sakura Sogo Jimusho, 1-11 Kanda Jimbocho, Chiyoda-ku,
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`Tokyo 101-0051 Japan.
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`2.
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`OmniVision Technologies, Inc. (“OmniVision” or “Defendant”) is a corporation
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`organized under the laws of Delaware with its principal place of business at 4275 Burton Drive,
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`Santa Clara, California 95054.
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`JURISDICTION AND VENUE
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`3.
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`This action arises under the Patent Laws of the United States, 35 U.S.C. § 1, et
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`seq., including 35 U.S.C. §§ 271, 281, 283, 284, and 285. This is a patent infringement lawsuit,
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`over which this Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and 1338(a).
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`4.
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`OmniVision is subject to general personal jurisdiction in this Court because it is a
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`Case 1:16-cv-00290-JFB-SRF Document 1 Filed 04/22/16 Page 2 of 27 PageID #: 2
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`Delaware corporation. OmniVision has a registered agent for service of process in this State. It
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`has conducted and does conduct business in and through this State.
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`5.
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`If the Court finds it cannot exercise general jurisdiction, it has specific personal
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`jurisdiction over OmniVision. Directly or through intermediaries (including distributors,
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`retailers, and others), OmniVision ships, distributes, offers for sale, and/or sells its products in
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`the United States and in the State of Delaware. OmniVision has purposefully and voluntarily
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`placed one or more of its infringing products into the stream of commerce with the expectation
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`that they will be purchased by consumers in the state of Delaware. Upon information and belief,
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`OmniVision has committed acts of patent infringement within the State of Delaware.
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`6.
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`Venue is proper in this district under 28 U.S.C. §§ 1391(b)(1), (b)(2), and/or (c),
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`as well as 28 U.S.C. § 1400(b).
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`PATENTS-IN-SUIT
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`7.
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`On March 25, 2003, the United States Patent and Trademark Office issued U.S.
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`Patent No. US 6,538,324 entitled “Multi-layered wiring layer and method of fabricating the
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`same” (the “’324 Patent”). A true and correct copy of the ’324 Patent is attached hereto as
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`Exhibit A.
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`8.
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`On September 21, 2004, the United States Patent and Trademark Office issued
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`U.S. Patent No. US 6,794,677 entitled “Semiconductor integrated circuit device and method for
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`fabricating the same” (the “’677 Patent”). A true and correct copy of the ’677 Patent is attached
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`hereto as Exhibit B.
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`9.
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`On March 23, 2004, the United States Patent and Trademark Office issued U.S.
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`Patent No. US 6,709,950 entitled “Semiconductor device and method of manufacturing the
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`same” (the “’950 Patent”). A true and correct copy of the ’950 Patent is attached hereto as
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`2
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`Case 1:16-cv-00290-JFB-SRF Document 1 Filed 04/22/16 Page 3 of 27 PageID #: 3
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`Exhibit C.
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`10.
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`On October 24, 2006, the United States Patent and Trademark Office issued U.S.
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`Patent No. US 7,126,174 entitled “Semiconductor device and method of manufacturing the
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`same” (the “’174 Patent”). A true and correct copy of the ’174 Patent is attached hereto as
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`Exhibit D.
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`11.
`
`On December 27, 2011, the United States Patent and Trademark Office issued
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`U.S. Patent No. US 8,084,796 entitled “Solid state imaging apparatus, method for driving the
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`same and camera using the same” (the “’796 Patent”). A true and correct copy of the ’796 Patent
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`is attached hereto as Exhibit E.
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`12.
`
`On January 31, 2012, the United States Patent and Trademark Office issued U.S.
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`Patent No. US 8,106,431 entitled “Solid state imaging apparatus, method for driving the same
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`and camera using the same” (the “’431 Patent”). A true and correct copy of the ’431 Patent is
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`attached hereto as Exhibit F.
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`13.
`
`On February 19, 2013, the United States Patent and Trademark Office issued U.S.
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`Patent No. US 8,378,401 entitled “Solid state imaging apparatus, method for driving the same
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`and camera using the same” (the “’401 Patent”). A true and correct copy of the ’401 Patent is
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`attached hereto as Exhibit G.
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`14.
`
`On October 9, 2007, the United States Patent and Trademark Office issued U.S.
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`Patent No. US 7,279,727 entitled “Semiconductor device” (the “’727 Patent”). A true and correct
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`copy of the ’727 Patent is attached hereto as Exhibit H.
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`15.
`
`On May 4, 2010 the United States Patent and Trademark Office issued U.S.
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`Patent No. US 7,709,900 entitled “Semiconductor device” (the “’900 Patent”). A true and correct
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`copy of the ’900 Patent is attached hereto as Exhibit I.
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`3
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`Case 1:16-cv-00290-JFB-SRF Document 1 Filed 04/22/16 Page 4 of 27 PageID #: 4
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`16.
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`On October 26, 2010, the United States Patent and Trademark Office issued U.S.
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`Reissue Patent No. 41,867 entitled “MOS image pick-up device and camera incorporating same”
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`(the “’867 Patent”). A true and correct copy of the ’867 Patent is attached hereto as Exhibit J.
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`17.
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`The ’324 Patent, ’677 Patent, ’950 Patent, ’174 Patent, ’796 Patent, ’431 Patent,
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`’401 Patent, ’727 Patent, ’900 Patent, and ’867 Patent are collectively referred to herein as the
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`“IP Bridge Patents.”
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`NOTICE AND PRE-SUIT NEGOTIATIONS
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`18.
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`As a matter of policy, IP Bridge does not file lawsuits before first making great
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`efforts to negotiate a reasonable license. As part of that policy, on or before March 1, 2016,
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`counsel for IP Bridge contacted OmniVision’s counsel and informed the latter that an
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`undisclosed entity had several patents that it was going to assert against multiple OmniVision
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`CMOS image sensing products, but would agree to forego suing if OmniVision would agree to
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`exchange information and meet in good faith in advance. OmniVision’s counsel called back and
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`confirmed that his client would prefer to meet pre-suit. Over the next several days, IP Bridge’s
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`counsel, directly as a result of OmniVision’s agreement to meet and negotiate pre-suit, identified
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`IP Bridge as the assignee of the patents. Thus, no later than early March 2016, IP Bridge
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`contacted OmniVision to meet to discuss OmniVision’s back side illumination (“BSI”) image
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`sensors that infringe the patents-in-suit.
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`19.
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`On March 11, 2016, OmniVision’s counsel again confirmed his client’s
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`willingness to meet, and based upon that agreement IP Bridge’s counsel sent OmniVision’s
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`counsel a draft Forbearance Agreement. On March 15, 2016, OmniVision’s attorney sent a
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`revised form of the Forbearance Agreement and requested claim charts for the patents to be
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`asserted. By March 18, 2016, in reliance upon OmniVision’s promises to meet and negotiate in
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`4
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`good faith, IP Bridge executed a final Forbearance Agreement and sent a copy of the executed
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`agreement to OmniVision.
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`20.
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`For much of the rest of March, the parties continued discussing mutually
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`convenient dates for conferring in person. In addition, to facilitate discussions and in reliance on
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`OmniVision’s agreement to meet, IP Bridge sent claim charts for the patents-in-suit to
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`OmniVision under the nondisclosure terms of the agreement.
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`21.
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`Specifically relying upon OmniVision’s promises to meet in good faith, on March
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`28, 2016, IP Bridge’s counsel sent OmniVision’s counsel a cover letter and a secure file transfer
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`protocol link to claim charts and each of the patents in suit. The claim charts identified the
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`OmniVision PureCel CMOS part no. OV8858 as a product that infringed one or more claims of
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`each of the 10 patents in suit. Therefore, OmniVision had notice of its infringement of each
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`patent in suit no later than March 28, 2016.
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`22.
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`Specifically relying upon OmniVision’s promises to meet in good faith, on March
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`29, March 30, March 31 and April 7, IP Bridge’s counsel sent OmniVision’s counsel cover
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`letters and additional claim charts that read one or more claims of the patents in suit on the
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`OmniVision PureCel-S CMOS part no. OV23850 (March 29 letter), OmniVision OmniBSI-2
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`CMOS part nos. OV4689 and OV8850 (March 30 letter), OmniVision OmniBSI CMOS part nos.
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`OV5650 and OV10640 (March 31 letter), and an additional claim chart for the OV8850 part
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`(April 7 letter).
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`23.
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`On April 1, 2016, OmniVision’s counsel asked IP Bridge to confirm that all claim
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`charts for discussion had been sent. By this time, the parties had agreed to a meeting on April 20,
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`2016 at OmniVision’s headquarters in California. Arrangements had been made for IP Bridge
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`personnel to fly from Japan to California for the meeting.
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`
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`5
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`Case 1:16-cv-00290-JFB-SRF Document 1 Filed 04/22/16 Page 6 of 27 PageID #: 6
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`24.
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`On or about April 8, 2016, after receiving the executed Forbearance Agreement
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`and the claim charts, OmniVision unilaterally canceled the April 20, 2016 meeting. By this point,
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`OmniVision had hired new counsel. Despite being repeatedly contacted by IP Bridge’s counsel
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`demanding either return of the material (and destruction of all copies) or a rescheduling of the
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`meeting, OmniVision’s new counsel refused to reschedule any meeting, refused to return or
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`destroy any of the confidential information that IP Bridge provided based upon OmniVision’s
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`repeated promises to meet in good faith, and refused to even discuss the matter over the
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`telephone. When IP Bridge contacted the replaced counsel on April 8, 2016 to discuss the broken
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`promises and agreements by subsequent counsel, his response was “all I can say is no comment.”
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`25.
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`IP Bridge repeatedly communicated to OmniVision’s new counsel that unless a
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`meeting was rescheduled or OmniVision returned the confidential material, IP Bridge would
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`consider all prior agreements between the parties materially breached and rescinded by
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`OmniVision and therefore null and void, and that IP Bridge would immediately file suit.
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`OmniVision refused to reschedule the meeting or return the confidential information so this suit
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`was prepared and filed.
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`COUNT I
`PATENT INFRINGEMENT OF U.S. PATENT NO. 6,538,324
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`IP Bridge repeats and re-alleges the allegations in paragraphs 1-25 as though fully
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`26.
`
`set forth herein.
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`27.
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`IP Bridge is the owner of all rights, title, and interest in and under the ’324 Patent
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`with full right to bring suit to enforce the patent, including the right to recover for past
`
`infringement damages.
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`28.
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`The ’324 Patent is valid and enforceable.
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`29.
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`OmniVision has at no time, either expressly or impliedly, been licensed under the
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`
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`6
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`Case 1:16-cv-00290-JFB-SRF Document 1 Filed 04/22/16 Page 7 of 27 PageID #: 7
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`’324 Patent.
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`30.
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`Upon information and belief, OmniVision has been and now is directly, literally
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`under 35 U.S.C. § 271(a), and/or equivalently under the doctrine of equivalents, infringing the
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`’324 Patent by making, using, selling, offering for sale, and/or importing in or into the United
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`States, without authority, products that fall within the scope of one or more claims of the ’324
`
`Patent including, but not limited to, BSI sensors incorporating OmniBSI-2 and/or PureCel
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`technologies, and devices that perform substantially the same function as an invention claimed in
`
`the ’324 Patent in substantially the same way to achieve substantially the same result. Upon
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`information and belief, image sensors that infringe the ’324 Patent include, but are not limited to,
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`OmniBSI-2 OV4689 (claims 1, 5, 9), and PureCel OV8858 (claims 1, 2, 3, 5, 6, 7, 9). To
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`illustrate the infringements, a claim chart demonstrating how at least one claim of the ’324 Patent
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`covers at least one infringing instrumentality is attached hereto as Exhibit K and incorporated
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`herein by reference.
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`31.
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`OmniVision has had actual notice of its infringement of the ’324 Patent since no
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`later than March 28, 2016.
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`32.
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`OmniVision has and is continuing to actively and knowingly induce, with specific
`
`intent, infringement of the ’324 Patent under 35 U.S.C. § 271(b) and contributes to the
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`infringement of the ’324 Patent under 35 U.S.C. § 271(c), by making, using, offering for sale,
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`selling, and/or importing image sensors. OmniVision encourages and facilitates infringing sales
`
`and uses of image sensors through the creation and dissemination of promotional and marketing
`
`materials, instructional materials, product manuals, and/or technical materials to manufacturers
`
`and/or distributors. OmniVision contributes to infringement by others, including manufacturers,
`
`distributors, and end users, knowing that its image sensors constitute a material part of the
`
`
`
`7
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`Case 1:16-cv-00290-JFB-SRF Document 1 Filed 04/22/16 Page 8 of 27 PageID #: 8
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`inventions of the ’324 Patent, knowing those image sensors to be especially made or adapted to
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`infringe the ’324 Patent, and knowing that those image sensors are not staple articles or
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`commodities of commerce suitable for substantial non-infringing use. OmniVision knew, or
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`should have known, that its encouragement would result in infringement of at least one claim of
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`the ’324 Patent.
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`33.
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`OmniVision has and is continuing to willfully infringe the ’324 Patent by, at
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`minimum, continuing to engage in infringing activities after IP Bridge notified it of its
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`infringement. For that reason, OmniVision has acted despite an objectively high likelihood that
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`its actions constituted infringement of a valid patent and such objective risk of infringement was
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`known to OmniVision or so obvious that OmniVision should have known it.
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`COUNT II
`PATENT INFRINGEMENT OF U.S. PATENT NO. 6,794,677
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`IP Bridge repeats and re-alleges the allegations in paragraphs 1-33 as though fully
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`34.
`
`set forth herein.
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`35.
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`IP Bridge is the owner of all rights, title, and interest in and under the ’677 Patent
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`with full right to bring suit to enforce the patent, including the right to recover for past
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`infringement damages.
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`36.
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`The ’677 Patent is valid and enforceable.
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`37.
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`OmniVision has at no time, either expressly or impliedly, been licensed under the
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`’677 Patent.
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`38.
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`Upon information and belief, OmniVision has been and now is directly, literally
`
`under 35 U.S.C. § 271(a), and/or equivalently under the doctrine of equivalents, infringing the
`
`’677 Patent by making, using, selling, offering for sale, and/or importing in or into the United
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`States, without authority, products that fall within the scope of one or more claims of the ’677
`
`
`
`8
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`
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`Case 1:16-cv-00290-JFB-SRF Document 1 Filed 04/22/16 Page 9 of 27 PageID #: 9
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`Patent including, but not limited to, BSI image sensors incorporating OmniBSI, OmniBSI-2,
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`and/or PureCel technologies, and devices that perform substantially the same function as an
`
`invention claimed in the ’677 Patent in substantially the same way to achieve substantially the
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`same result. Upon information and belief, image sensors that infringe the ’677 Patent include,
`
`but are not limited to, OmniBSI OV5650 (claims 1, 2, 4, 5), OmniBSI OV8850 (claims 1, 2, 4,
`
`5), and PureCel OV8858 (claims 1, 2, 4, 5). To illustrate the infringements, a claim chart
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`demonstrating how at least one claim of the ’677 Patent covers at least one infringing
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`instrumentality is attached hereto as Exhibit L and incorporated herein by reference.
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`39.
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`OmniVision has had actual notice of its infringement of the ’677 Patent since no
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`later than March 28, 2016.
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`40.
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`OmniVision is continuing to actively and knowingly induce, with specific intent,
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`infringement of the ’677 Patent under 35 U.S.C. § 271(b) and contributes to the infringement of
`
`the ’677 Patent under 35 U.S.C. § 271(c), by making, using, offering for sale, selling, and/or
`
`importing image sensors. OmniVision encourages and facilitates infringing sales and uses of
`
`image sensors through the creation and dissemination of promotional and marketing materials,
`
`instructional materials, product manuals, and/or technical materials to manufacturers and/or
`
`distributors. OmniVision contributes to infringement by others, including manufacturers,
`
`distributors, and end users, knowing that its image sensors constitute a material part of the
`
`inventions of the ’677 Patent, knowing those image sensors to be especially made or adapted to
`
`infringe the ’677 Patent, and knowing that those image sensors are not staple articles or
`
`commodities of commerce suitable for substantial non-infringing use. OmniVision knew, or
`
`should have known, that its encouragement would result in infringement of at least one claim of
`
`the ’677 Patent.
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`
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`9
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`Case 1:16-cv-00290-JFB-SRF Document 1 Filed 04/22/16 Page 10 of 27 PageID #: 10
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`41.
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`OmniVision has and is continuing to willfully infringe the ’677 Patent by, at
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`minimum, continuing to engage in infringing activities after IP Bridge notified it of its
`
`infringement. For that reason, OmniVision has acted despite an objectively high likelihood that
`
`its actions constituted infringement of a valid patent and such objective risk of infringement was
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`known to OmniVision or so obvious that OmniVision should have known it.
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`COUNT III
`PATENT INFRINGEMENT OF U.S. PATENT NO. 6,709,950
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`IP Bridge repeats and re-alleges the allegations in paragraphs 1-41 as though fully
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`42.
`
`set forth herein.
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`43.
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`IP Bridge is the owner of all rights, title, and interest in and under the ’950 Patent
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`with full right to bring suit to enforce the patent, including the right to recover for past
`
`infringement damages.
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`44.
`
`The ’950 Patent is valid and enforceable.
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`45.
`
`OmniVision has at no time, either expressly or impliedly, been licensed under the
`
`’950 Patent.
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`46.
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`Upon information and belief, OmniVision has been and now is directly, literally
`
`under 35 U.S.C. §§ 271(a) and/or 271(g), and/or equivalently under the doctrine of equivalents,
`
`infringing the ’950 Patent by making, using, selling, offering for sale, and/or importing in or into
`
`the United States, without authority, products made by one or more processes that fall within the
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`scope of one or more claims of the ’950 Patent including, but not limited to, BSI image sensors
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`incorporating OmniBSI-2 and/or PureCel technologies, and devices made by one or more
`
`processes that perform substantially the same function as an invention claimed in the ’950 Patent
`
`in substantially the same way to achieve substantially the same result. Such infringement has
`
`occurred during the term of the ’950 Patent. Upon information and belief, image sensors made
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`10
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`Case 1:16-cv-00290-JFB-SRF Document 1 Filed 04/22/16 Page 11 of 27 PageID #: 11
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`by one or more processes that infringe the ’950 Patent include, but are not limited to, OmniBSI
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`OV4689 (claims 17-19, 21) and PureCel OV8858 (claims 12, 13, 15, 17-19, 21), and are neither
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`materially changed by subsequent processes nor do they become trivial or nonessential
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`components of another product. To illustrate the infringements, a claim chart demonstrating how
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`at least one claim of the ’950 Patent covers at least one infringing instrumentality is attached
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`hereto as Exhibit M and incorporated herein by reference.
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`47.
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`OmniVision has had actual notice of its infringement of the ’950 Patent since no
`
`later than March 28, 2016.
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`48.
`
`OmniVision has been and is continuing to actively and knowingly induce, with
`
`specific intent, infringement of the ’950 Patent under 35 U.S.C. § 271(b) and contributes to the
`
`infringement of the ’950 Patent under 35 U.S.C. § 271(c), by making, using, offering for sale,
`
`selling, and/or importing image sensors. OmniVision encourages and facilitates infringing sales
`
`and uses of image sensors through the creation and dissemination of promotional and marketing
`
`materials, instructional materials, product manuals, and/or technical materials to manufacturers
`
`and/or distributors. OmniVision contributes to infringement by others, including manufacturers,
`
`distributors, and end users, knowing that its image sensors constitute a material part of the
`
`inventions of the ’950 Patent, knowing those image sensors to be especially made or adapted to
`
`infringe the ’950 Patent, and knowing that those image sensors are not staple articles or
`
`commodities of commerce suitable for substantial non-infringing use. OmniVision knew, or
`
`should have known, that its encouragement would result in infringement of at least one claim of
`
`the ’950 Patent.
`
`49.
`
`OmniVision has and is continuing to willfully infringe the ’950 Patent by, at
`
`minimum, continuing to engage in infringing activities after IP Bridge notified it of its
`
`
`
`11
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`
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`Case 1:16-cv-00290-JFB-SRF Document 1 Filed 04/22/16 Page 12 of 27 PageID #: 12
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`infringement. For that reason, OmniVision has acted despite an objectively high likelihood that
`
`its actions constituted infringement of a valid patent and such objective risk of infringement was
`
`known to OmniVision or so obvious that OmniVision should have known it.
`
`
`
`COUNT IV
`PATENT INFRINGEMENT OF U.S. PATENT NO. 7,126,174
`
`IP Bridge repeats and re-alleges the allegations in paragraphs 1-49 as though fully
`
`50.
`
`set forth herein.
`
`51.
`
`IP Bridge is the owner of all rights, title, and interest in and under the ’174 Patent
`
`with full right to bring suit to enforce the patent, including the right to recover for past
`
`infringement damages.
`
`52.
`
`The ’174 Patent is valid and enforceable.
`
`53.
`
`OmniVision has at no time, either expressly or impliedly, been licensed under the
`
`’174 Patent.
`
`54.
`
`Upon information and belief, OmniVision has been and now is directly, literally
`
`under 35 U.S.C. § 271(a), and/or equivalently under the doctrine of equivalents, infringing the
`
`’174 Patent by making, using, selling, offering for sale, and/or importing in or into the United
`
`States, without authority, products that fall within the scope of one or more claims of the ’174
`
`Patent including, but not limited to, BSI image sensors incorporating OmniBSI, OmniBSI-2,
`
`PureCel, and/or PureCel-S technologies, and devices that perform substantially the same
`
`function as an invention claimed in the ’174 Patent in substantially the same way to achieve
`
`substantially the same result. Upon information and belief, image sensors that infringe the ’174
`
`Patent include, but are not limited to, OmniBSI OV10640 (claims 1, 4, 5, 8, 11, 12, 14),
`
`OmniBSI OV5650 (claims 1, 3, 4, 5, 8, 11, 12, 14), OmniBSI-2 OV 8850 (claims 1, 4, 5, 8-12,
`
`
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`12
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`
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`Case 1:16-cv-00290-JFB-SRF Document 1 Filed 04/22/16 Page 13 of 27 PageID #: 13
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`14), PureCel OV8858 (claims 1, 3, 4, 5, 8-12, 14), and PureCel-S OV2380 (claims 1, 4, 5, 8-12,
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`14). To illustrate the infringements, a claim chart demonstrating how at least one claim of the
`
`’174 Patent covers at least one infringing instrumentality is attached hereto as Exhibit N and
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`incorporated herein by reference.
`
`55.
`
`OmniVision has had actual notice of its infringement of the ’174 Patent since no
`
`later than March 28, 2016.
`
`56.
`
`OmniVision has been and is continuing to actively and knowingly induce, with
`
`specific intent, infringement of the ’174 Patent under 35 U.S.C. § 271(b) and contributes to the
`
`infringement of the ’174 Patent under 35 U.S.C. § 271(c), by making, using, offering for sale,
`
`selling, and/or importing image sensors. OmniVision encourages and facilitates infringing sales
`
`and uses of image sensors through the creation and dissemination of promotional and marketing
`
`materials, instructional materials, product manuals, and/or technical materials to manufacturers
`
`and/or distributors. OmniVision contributes to infringement by others, including manufacturers,
`
`distributors, and end users, knowing that its image sensors constitute a material part of the
`
`inventions of the ’174 Patent, knowing those image sensors to be especially made or adapted to
`
`infringe the ’174 Patent, and knowing that those image sensors are not staple articles or
`
`commodities of commerce suitable for substantial non-infringing use. OmniVision knew, or
`
`should have known, that its encouragement would result in infringement of at least one claim of
`
`the ’174 Patent.
`
`57.
`
`OmniVision has and is continuing to willfully infringe the ’174 Patent by, at
`
`minimum, continuing to engage in infringing activities after IP Bridge notified it of its
`
`infringement. For that reason, OmniVision has acted despite an objectively high likelihood that
`
`its actions constituted infringement of a valid patent and such objective risk of infringement was
`
`
`
`13
`
`
`
`Case 1:16-cv-00290-JFB-SRF Document 1 Filed 04/22/16 Page 14 of 27 PageID #: 14
`
`known to OmniVision or so obvious that OmniVision should have known it.
`
`COUNT V
`PATENT INFRINGEMENT OF U.S. PATENT NO. 8,084,796
`
`IP Bridge repeats and re-alleges the allegations in paragraphs 1-57 as though fully
`
`58.
`
`set forth herein.
`
`59.
`
`IP Bridge is the owner of all rights, title, and interest in and under the ’796 Patent
`
`with full right to bring suit to enforce the patent, including the right to recover for past
`
`infringement damages.
`
`60.
`
`The ’796 Patent is valid and enforceable.
`
`61.
`
`OmniVision has at no time, either expressly or impliedly, been licensed under the
`
`’796 Patent.
`
`62.
`
`Upon information and belief, OmniVision has been and now is directly, literally
`
`under 35 U.S.C. § 271(a), and/or equivalently under the doctrine of equivalents, infringing the
`
`’796 Patent by making, using, selling, offering for sale, and/or importing in or into the United
`
`States, without authority, products that fall within the scope of one or more claims of the ’796
`
`Patent including, but not limited to, BSI image sensors incorporating PureCel and/or PureCel-S
`
`technologies, and devices that perform substantially the same function as an invention claimed in
`
`the ’796 Patent in substantially the same way to achieve substantially the same result. Upon
`
`information and belief, image sensors that infringe the ’796 Patent include, but are not limited to,
`
`PureCel OV8858 (claims 1-4) and PureCel-S OV23850 (claims 1-4). To illustrate the
`
`infringements, a claim chart demonstrating how at least one claim of the ’796 Patent covers at
`
`least one infringing instrumentality is attached hereto as Exhibit O and incorporated herein by
`
`reference.
`
`63.
`
`OmniVision has had actual notice of its infringement of the ’796 Patent since no
`
`
`
`14
`
`
`
`Case 1:16-cv-00290-JFB-SRF Document 1 Filed 04/22/16 Page 15 of 27 PageID #: 15
`
`later than March 28, 2016.
`
`64.
`
`OmniVision has been and is continuing to actively and knowingly induce, with
`
`specific intent, infringement of the ’796 Patent under 35 U.S.C. § 271(b) and contributes to the
`
`infringement of the ’796 Patent under 35 U.S.C. § 271(c), by making, using, offering for sale,
`
`selling, and/or importing image sensors. OmniVision encourages and facilitates infringing sales
`
`and uses of image sensors through the creation and dissemination of promotional and marketing
`
`materials, instructional materials, product manuals, and/or technical materials to manufacturers
`
`and/or distributors. OmniVision contributes to infringement by others, including manufacturers,
`
`distributors, and end users, knowing that its image sensors constitute a material part of the
`
`inventions of the ’796 Patent, knowing those image sensors to be especially made or adapted to
`
`infringe the ’796 Patent, and knowing that those image sensors are not staple articles or
`
`commodities of commerce suitable for substantial non-infringing use. OmniVision knew, or
`
`should have known, that its encouragement would result in infringement of at least one claim of
`
`the ’796 Patent.
`
`65.
`
`OmniVision has and is continuing to willfully infringe the ’796 Patent by, at
`
`minimum, continuing to engage in infringing activities after IP Bridge notified it of its
`
`infringement. For that reason, OmniVision has acted despite an objectively high likelihood that
`
`its actions constituted infringement of a valid patent and such objective risk of infringement was
`
`known to OmniVision or so obvious that OmniVision should have known it.
`
`
`
`
`
`
`
`15
`
`
`
`Case 1:16-cv-00290-JFB-SRF Document 1 Filed 04/22/16 Page 16 of 27 PageID #: 16
`
`COUNT VI
`PATENT INFRINGEMENT OF U.S. PATENT NO. 8,106,431
`
`IP Bridge repeats and re-alleges the allegations in paragraphs 1-65 as though fully
`
`66.
`
`set forth herein.
`
`67.
`
`IP Bridge is the owner of all rights, title, and interest in and under the ’431 Patent
`
`with full right to bring suit to enforce the patent, including the right to recover for past
`
`infringement damages.
`
`68.
`
`The ’431 Patent is valid and enforceable.
`
`69.
`
`OmniVision has at no time, either expressly or impliedly, been licensed under the
`
`’431 Patent.
`
`70.
`
`Upon information and belief, OmniVision has been and now is directly, literally
`
`under 35 U.S.C. § 271(a), and/or equivalently under the doctrine of equivalents, infringing the
`
`’431 Patent by making, using, selling, offering for sale, and/or importing in or into the United
`
`States, without authority, products that fall within the scope of one or more claims of the ’431
`
`Patent including, but not limited to, BSI image sensors incorporating OmniBSI, OmniBSI-2,
`
`PureCel, and/or PureCel-S technologies, and devices that perform substantially the same
`
`function as an invention claimed in the ’431 Patent in substantially the same way to achieve
`
`substantially the same result. Upon information and belief, image sensors that infringe the ’431
`
`Patent include, but are not limited to, OmniBSI OV5650 (claim 5), OmniBSI-2 OV8850 (claim
`
`5), PureCel OV8858 (claims 1, 3, 4, 9, 11, 12), and PureCel-S OV23850 (claims 1, 3, 4, 9, 11,
`
`12). To illustrate the infringements, a claim chart demonstrating how at least one claim of the
`
`’431 Patent covers at least one infringing instrumentality is attached hereto as Exhibit P and
`
`incorporated herein by reference.
`
`71.
`
`OmniVision has had actual notice of its infringement of the ’431 Patent since no
`
`
`
`16
`
`
`
`Case 1:16-cv-00290-JFB-SRF Document 1 Filed 04/22/16 Page 17 of 27 PageID #: 17
`
`later than March 28, 2016.
`
`72.
`
`OmniVision has been and is continuing to actively and knowingly induce, with
`
`specific intent, infringement of the ’431 Patent under 35 U.S.C. § 271(b) and contributes to the
`
`infringement of the ’431 Patent under 35 U.S.C. § 271(c), by making, using, offering for sale,
`
`selling, and/or importing image sensors. OmniVision encourages and facilitates infringing sales
`
`and uses of image sensors through the creation and dissemination of promotional and marketing
`
`materials, instructional materials, product manuals, and/or technical materials to manufacturers
`
`and/or distributors. OmniVision contributes to infringement by others, including manufacturers,
`
`distributors, and end users, knowing that its image sensors constitute a material part of the
`
`inventions of the ’431 Patent, knowing those image sensors to be especially made or adapted to
`
`infringe the ’431 Patent, and knowing that those image sensors are not staple articles or
`
`commodities of commerce suitable for substantial non-infringing use. OmniVision knew, or
`
`should have known, that its encouragement would result in infringement of at least one claim of
`
`the ’431 Patent.
`
`73.
`
`OmniVision has and is continuing to willfully infringe the ’431 Patent by, at
`
`minimum, continuing to engage in infringing activities after IP Bridge notified it of its
`
`infringement. For that reason, OmniVision has acted despite an objectively high likelihood that
`
`its actions constituted infringement of a valid patent and such objective risk of infringement was
`
`known to OmniVision or so obvious that OmniVision should have known it.
`
`COUNT VII
`PATENT INFRINGEMENT OF U.S. PATENT NO. 8,378,401
`
`IP Bridge repeats and re-alleges the allegations in paragraphs 1-73 as though fully
`
`74.
`
`set forth herein.
`
`75.
`
`IP Bridge is the owner of all rights, title, and interest in and under the ’401 Pat