Case 1:16-cv-00290-JFB-SRF Document 45 Filed 11/22/17 Page 1 of 22 PageID #: 1162
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`GODO KAISHA IP BRIDGE 1,
`
`Plaintiff,
`
`v.
`
`
`
`OMNIVISION TECHNOLOGIES,
`INC.,
`
`
`
`Case No. 1:16-cv-00290-JFB-SRF
`
`
`
`FIRST AMENDED COMPLAINT FOR
`PATENT INFRINGEMENT
`
`Defendant.
`
`
`
`
`
`
`Plaintiff Godo Kaisha IP Bridge 1, by and through its undersigned counsel, files this
`
`action for patent infringement against OmniVision Technologies, Inc. as follows:
`
`THE PARTIES
`
`1.
`
`Godo Kaisha IP Bridge 1 (“IP Bridge” or “Plaintiff”) is a Japanese
`
`corporation having a principal address of c/o Sakura Sogo Jimusho, 1-11 Kanda Jimbocho,
`
`Chiyoda-ku, Tokyo 101-0051 Japan.
`
`2.
`
`OmniVision Technologies, Inc. (“OmniVision” or “Defendant”)
`
`is a
`
`corporation organized under the laws of Delaware with its principal place of business at
`
`4275 Burton Drive, Santa Clara, California 95054.
`
`JURISDICTION AND VENUE
`
`3.
`
`This action arises under the Patent Laws of the United States, 35 U.S.C. § 1,
`
`et seq., including 35 U.S.C. §§ 271, 281, 283, 284, and 285. This is a patent infringement
`
`lawsuit, over which this Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and
`
`1338(a).
`
`4.
`
`OmniVision is subject to general personal jurisdiction in this Court because it
`
`is a Delaware corporation. OmniVision has a registered agent for service of process in this
`
`FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT – PAGE 1
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`State. It has conducted and does conduct business in and through this State.
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`5.
`
`If the Court finds it cannot exercise general jurisdiction, it has specific
`
`personal jurisdiction over OmniVision. Directly or through intermediaries (including
`
`distributors, retailers, and others), OmniVision ships, distributes, offers for sale, and/or sells
`
`its products in the United States and in the State of Delaware. OmniVision has purposefully
`
`and voluntarily placed one or more of its infringing products into the stream of commerce
`
`with the expectation that they will be purchased by consumers in the state of Delaware.
`
`Upon information and belief, OmniVision has committed acts of patent infringement within
`
`the State of Delaware.
`
`6.
`
`Venue is proper in this district under 28 U.S.C. §§ 1391(b)(1), (b)(2), and/or
`
`(c), as well as 28 U.S.C. § 1400(b).
`
`PATENTS-IN-SUIT
`
`7.
`
`On March 25, 2003, the United States Patent and Trademark Office issued
`
`U.S. Patent No. US 6,538,324 entitled “Multi-layered wiring layer and method of
`
`fabricating the same” (the “’324 Patent”). A true and correct copy of the ’324 Patent is
`
`attached hereto as Exhibit A.
`
`8.
`
`On September 21, 2004, the United States Patent and Trademark Office
`
`issued U.S. Patent No. US 6,794,677 entitled “Semiconductor integrated circuit device and
`
`method for fabricating the same” (the “’677 Patent”). A true and correct copy of the ’677
`
`Patent is attached hereto as Exhibit B.
`
`9.
`
`On March 23, 2004, the United States Patent and Trademark Office issued
`
`U.S. Patent No. US 6,709,950 entitled “Semiconductor device and method of
`
`manufacturing the same” (the “’950 Patent”). A true and correct copy of the ’950 Patent is
`
`
`
`2
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`

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`Case 1:16-cv-00290-JFB-SRF Document 45 Filed 11/22/17 Page 3 of 22 PageID #: 1164
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`attached hereto as Exhibit C.
`
`10. On December 27, 2011, the United States Patent and Trademark Office
`
`issued U.S. Patent No. US 8,084,796 entitled “Solid state imaging apparatus, method for
`
`driving the same and camera using the same” (the “’796 Patent”). A true and correct copy
`
`of the ’796 Patent is attached hereto as Exhibit D.
`
`11. On January 31, 2012, the United States Patent and Trademark Office issued
`
`U.S. Patent No. US 8,106,431 entitled “Solid state imaging apparatus, method for driving
`
`the same and camera using the same” (the “’431 Patent”). A true and correct copy of the
`
`’431 Patent is attached hereto as Exhibit E.
`
`12. On February 19, 2013, the United States Patent and Trademark Office issued
`
`U.S. Patent No. US 8,378,401 entitled “Solid state imaging apparatus, method for driving
`
`the same and camera using the same” (the “’401 Patent”). A true and correct copy of the
`
`’401 Patent is attached hereto as Exhibit F.
`
`13. On October 26, 2010, the United States Patent and Trademark Office issued
`
`U.S. Reissue Patent No. 41,867 entitled “MOS image pick-up device and camera
`
`incorporating same” (the “’867 Patent”). A true and correct copy of the ’867 Patent is
`
`attached hereto as Exhibit G.
`
`14.
`
`The ’324 Patent, ’677 Patent, ’950 Patent,’796 Patent, ’431 Patent, ’401
`
`Patent, and ’867 Patent are collectively referred to herein as the “IP Bridge Patents.”
`
`NOTICE AND PRE-SUIT NEGOTIATIONS
`
`15. As a matter of policy, IP Bridge does not file lawsuits before first making great
`
`efforts to negotiate a reasonable license. As part of that policy, on or before March 1, 2016,
`
`counsel for IP Bridge contacted OmniVision’s counsel and informed the latter that an
`
`
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`3
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`

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`undisclosed entity had several patents that it was going to assert against multiple
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`OmniVision CMOS image sensing products, but would agree to forego suing if OmniVision
`
`would agree to exchange information and meet in good faith in advance. OmniVision’s
`
`counsel called back and confirmed that his client would prefer to meet pre-suit. Over the
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`next several days, IP Bridge’s counsel, directly as a result of OmniVision’s agreement to
`
`meet and negotiate pre-suit, identified IP Bridge as the assignee of the patents. Thus, no
`
`later than early March 2016, IP Bridge contacted OmniVision to meet to discuss
`
`OmniVision’s back side illumination (“BSI”) image sensors that infringe the patents-in-suit.
`
`16. On March 11, 2016, OmniVision’s counsel again confirmed his client’s
`
`willingness to meet, and based upon that agreement IP Bridge’s counsel sent OmniVision’s
`
`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
`
`asserted. By March 18, 2016, in reliance upon OmniVision’s promises to meet and negotiate
`
`in good faith, IP Bridge executed a final Forbearance Agreement and sent a copy of the
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`executed agreement to OmniVision.
`
`17.
`
`For much of the rest of March, the parties continued discussing mutually
`
`convenient dates for conferring in person. In addition, to facilitate discussions and in
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`reliance on OmniVision’s agreement to meet, IP Bridge sent claim charts for the patents-in-
`
`suit to OmniVision under the nondisclosure terms of the agreement.
`
`18.
`
`Specifically relying upon OmniVision’s promises to meet in good faith, on
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`March 28, 2016, IP Bridge’s counsel sent OmniVision’s counsel a cover letter and a secure
`
`file transfer protocol link to claim charts and each of the patents in suit. The claim charts
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`identified the OmniVision PureCel CMOS part no. OV8858 as a product that infringed one
`
`
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`4
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`

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`Case 1:16-cv-00290-JFB-SRF Document 45 Filed 11/22/17 Page 5 of 22 PageID #: 1166
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`or more claims of each of the 10 patents in suit. Therefore, OmniVision had notice of its
`
`infringement of each patent in suit no later than March 28, 2016.
`
`19.
`
`Specifically relying upon OmniVision’s promises to meet in good faith, on
`
`March 29, March 30, March 31 and April 7, IP Bridge’s counsel sent OmniVision’s counsel
`
`cover letters and additional claim charts that read one or more claims of the patents in suit
`
`on the OmniVision PureCel-S CMOS part no. OV23850 (March 29 letter), OmniVision
`
`OmniBSI-2 CMOS part nos. OV4689 and OV8850 (March 30 letter), OmniVision OmniBSI
`
`CMOS part nos. OV5650 and OV10640 (March 31 letter), and an additional claim chart for
`
`the OV8850 part (April 7 letter).
`
`20. On April 1, 2016, OmniVision’s counsel asked IP Bridge to confirm that all
`
`claim charts for discussion had been sent. By this time, the parties had agreed to a meeting
`
`on April 20, 2016 at OmniVision’s headquarters in California. Arrangements had been
`
`made for IP Bridge personnel to fly from Japan to California for the meeting.
`
`21. On or about April 8, 2016, after receiving the executed Forbearance
`
`Agreement and the claim charts, OmniVision unilaterally canceled the April 20, 2016
`
`meeting. By this point, OmniVision had hired new counsel. Despite being repeatedly
`
`contacted by IP Bridge’s counsel demanding either return of the material (and destruction of
`
`all copies) or a rescheduling of the meeting, OmniVision’s new counsel refused to
`
`reschedule any meeting, refused to return or destroy any of the confidential information that
`
`IP Bridge provided based upon OmniVision’s repeated promises to meet in good faith, and
`
`refused to even discuss the matter over the telephone. When IP Bridge contacted the
`
`replaced counsel on April 8, 2016 to discuss the broken promises and agreements by
`
`subsequent counsel, his response was “all I can say is no comment.”
`
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`5
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`22.
`
`IP Bridge repeatedly communicated to OmniVision’s new counsel that unless
`
`a meeting was rescheduled or OmniVision returned the confidential material, IP Bridge
`
`would consider all prior agreements between the parties materially breached and rescinded
`
`by OmniVision and therefore null and void, and that IP Bridge would immediately file suit.
`
`OmniVision refused to reschedule the meeting or return the confidential information so this
`
`suit was prepared and filed.
`
`COUNT I
`PATENT INFRINGEMENT OF U.S. PATENT NO. 6,538,324
`
`IP Bridge repeats and re-alleges the allegations in paragraphs 1-22 as though
`
`23.
`
`fully set forth herein.
`
`24.
`
`IP Bridge is the owner of all rights, title, and interest in and under the ’324
`
`Patent with full right to bring suit to enforce the patent, including the right to recover for
`
`past infringement damages.
`
`25.
`
`The ’324 Patent is valid and enforceable.
`
`26. OmniVision has at no time, either expressly or impliedly, been licensed under
`
`the ’324 Patent.
`
`27. 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 ’324 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 ’324 Patent including, but not limited to, BSI sensors incorporating OmniBSI-
`
`2 and/or PureCel 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 information and belief, image sensors that infringe the
`
`
`
`6
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`

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`’324 Patent include, but are not limited to, OmniBSI-2 OV4689 (claims 1, 5, 9), and
`
`PureCel OV8858 (claims 1, 2, 3, 5, 6, 7, 9). To illustrate the infringements, a claim chart
`
`demonstrating how at least one claim of the ’324 Patent covers at least one infringing
`
`instrumentality is attached hereto as Exhibit H and incorporated herein by reference.
`
`28. OmniVision has had actual notice of its infringement of the ’324 Patent since
`
`no later than March 28, 2016.
`
`29. 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 infringement of the ’324 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 ’324 Patent, knowing
`
`those image sensors to be especially made or adapted to infringe the ’324 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 ’324 Patent.
`
`30. OmniVision has and is continuing to willfully infringe the ’324 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
`
`
`
`7
`
`

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`infringement was known to OmniVision or so obvious that OmniVision should have known
`
`it.
`
`COUNT II
`PATENT INFRINGEMENT OF U.S. PATENT NO. 6,794,677
`
`IP Bridge repeats and re-alleges the allegations in paragraphs 1-30 as though
`
`31.
`
`fully set forth herein.
`
`32.
`
`IP Bridge is the owner of all rights, title, and interest in and under the ’677
`
`Patent with full right to bring suit to enforce the patent, including the right to recover for
`
`past infringement damages.
`
`33.
`
`The ’677 Patent is valid and enforceable.
`
`34. OmniVision has at no time, either expressly or impliedly, been licensed under
`
`the ’677 Patent.
`
`35. 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 States, without authority, products that fall within the scope of one or more
`
`claims of the ’677 Patent including, but not limited to, BSI image sensors incorporating
`
`OmniBSI, OmniBSI-2, 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 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 demonstrating how at least one claim of the ’677 Patent
`
`covers at least one infringing instrumentality is attached hereto as Exhibit I and
`
`
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`8
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`

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`Case 1:16-cv-00290-JFB-SRF Document 45 Filed 11/22/17 Page 9 of 22 PageID #: 1170
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`incorporated herein by reference.
`
`36. OmniVision has had actual notice of its infringement of the ’677 Patent since
`
`no later than March 28, 2016.
`
`37. OmniVision is continuing to actively and knowingly induce, with specific
`
`intent, 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.
`
`38. OmniVision has and is continuing to willfully infringe the ’677 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.
`
`
`
`9
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`COUNT III
`PATENT INFRINGEMENT OF U.S. PATENT NO. 6,709,950
`
`IP Bridge repeats and re-alleges the allegations in paragraphs 1-38 as though
`
`39.
`
`fully set forth herein.
`
`40.
`
`IP Bridge is the owner of all rights, title, and interest in and under the ’950
`
`Patent with full right to bring suit to enforce the patent, including the right to recover for
`
`past infringement damages.
`
`41.
`
`The ’950 Patent is valid and enforceable.
`
`42. OmniVision has at no time, either expressly or impliedly, been licensed under
`
`the ’950 Patent.
`
`43. 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 scope of one or more claims of the ’950 Patent including, but
`
`not limited to, BSI image sensors 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 by one or more processes that
`
`infringe the ’950 Patent include, but are not limited to, OmniBSI OV4689 (claims 17-19, 21)
`
`and PureCel OV8858 (claims 12, 13, 15, 17-19, 21), and are neither materially changed by
`
`subsequent processes nor do they become trivial or nonessential components of another
`
`product. To illustrate the infringements, a claim chart demonstrating how at least one claim
`
`
`
`10
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`

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`of the ’950 Patent covers at least one infringing instrumentality is attached hereto as Exhibit
`
`J and incorporated herein by reference.
`
`44. OmniVision has had actual notice of its infringement of the ’950 Patent since
`
`no later than March 28, 2016.
`
`45. 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.
`
`46. 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
`
`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
`
`
`
`11
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`

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`it.
`
`COUNT IV
`PATENT INFRINGEMENT OF U.S. PATENT NO. 8,084,796
`
`IP Bridge repeats and re-alleges the allegations in paragraphs 1-46 as though
`
`47.
`
`fully set forth herein.
`
`48.
`
`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.
`
`49.
`
`The ’796 Patent is valid and enforceable.
`
`50. OmniVision has at no time, either expressly or impliedly, been licensed under
`
`the ’796 Patent.
`
`51. 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 K and incorporated herein by reference.
`
`52. OmniVision has had actual notice of its infringement of the ’796 Patent since
`
`
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`12
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`Case 1:16-cv-00290-JFB-SRF Document 45 Filed 11/22/17 Page 13 of 22 PageID #: 1174
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`no later than March 28, 2016.
`
`53. 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.
`
`54. 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.
`
`
`
`COUNT V
`PATENT INFRINGEMENT OF U.S. PATENT NO. 8,106,431
`
`IP Bridge repeats and re-alleges the allegations in paragraphs 1-54 as though
`
`55.
`
`13
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`

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`Case 1:16-cv-00290-JFB-SRF Document 45 Filed 11/22/17 Page 14 of 22 PageID #: 1175
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`fully set forth herein.
`
`56.
`
`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.
`
`57.
`
`The ’431 Patent is valid and enforceable.
`
`58. OmniVision has at no time, either expressly or impliedly, been licensed under
`
`the ’431 Patent.
`
`59. 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 L and incorporated herein by reference.
`
`60. OmniVision has had actual notice of its infringement of the ’431 Patent since
`
`no later than March 28, 2016.
`
`61. OmniVision has been and is continuing to actively and knowingly induce,
`
`
`
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`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.
`
`62. 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 VI
`PATENT INFRINGEMENT OF U.S. PATENT NO. 8,378,401
`
`IP Bridge repeats and re-alleges the allegations in paragraphs 1-62 as though
`
`63.
`
`fully set forth herein.
`
`64.
`
`IP Bridge is the owner of all rights, title, and interest in and under the ’401
`
`
`
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`Patent with full right to bring suit to enforce the patent, including the right to recover for
`
`past infringement damages.
`
`65.
`
`The ’401 Patent is valid and enforceable.
`
`66. OmniVision has at no time, either expressly or impliedly, been licensed under
`
`the ’401 Patent.
`
`67. 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 ’401 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 ’401 Patent including, but not limited to, BSI image sensors incorporating
`
`OmniBSI-2, PureCel, and/or PureCel-S technologies, and devices that perform substantially
`
`the same function as an invention claimed in the ’401 Patent in substantially the same way
`
`to achieve substantially the same result. Upon information and belief, image sensors that
`
`infringe the ’401 Patent include, but are not limited to, OmniBSI OV8850 (claims 1, 2, 3, 8,
`
`29), PureCel OV8858 (claims 1-5, 8, 9, 11-13, 29), and PureCel-S OV23850 (claims 1-5, 8, 9,
`
`11-13, 29). To illustrate the infringements, a claim chart demonstrating how at least one
`
`claim of the ’401 Patent covers at least one infringing instrumentality is attached hereto as
`
`Exhibit M and incorporated herein by reference.
`
`68. OmniVision has had actual notice of its infringement of the ’401 Patent since
`
`no later than March 28, 2016.
`
`69. OmniVision has been and is continuing to actively and knowingly induce,
`
`with specific intent, infringement of the ’401 Patent under 35 U.S.C. § 271(b) and
`
`contributes to the infringement of the ’401 Patent under 35 U.S.C. § 271(c), by making,
`
`
`
`16
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`
`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 ’401
`
`Patent, knowing those image sensors to be especially made or adapted to infringe the ’401
`
`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 ’401
`
`Patent.
`
`70.
`
` OmniVision has and is continuing to willfully infringe the ’401 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. REISSUE PATENT NO. 41,867
`
`IP Bridge repeats and re-alleges the allegations in paragraphs 1-70 as though
`
`71.
`
`fully set forth herein.
`
`72.
`
`IP Bridge is the owner of all rights, title, and interest in and under the ’867
`
`Patent with full right to bring suit to enforce the patent, including the right to recover for
`
`past infringement damages.
`
`
`
`17
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`Case 1:16-cv-00290-JFB-SRF Document 45 Filed 11/22/17 Page 18 of 22 PageID #: 1179
`
`73.
`
`The ’867 Patent is valid and enforceable.
`
`74. OmniVision has at no time, either expressly or impliedly, been licensed under
`
`the ’867 Patent.
`
`75. 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 ’867 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 ’867 Patent including, but not limited to, BSI image sensors incorporating
`
`OmniBSI, OmniBSI-2, and/or PureCel technologies, and devices that perform sub