Case 1:20-cv-00655-UNA Document 1 Filed 05/15/20 Page 1 of 26 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`SISVEL INTERNATIONAL S.A.,
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`3G LICENSING S.A., and SISVEL S.p.A.,
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`Civil Action No.
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`v.
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`TESLA, INC.,
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`Plaintiffs,
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`Defendant.
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`JURY TRIAL DEMANDED
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`COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiffs Sisvel International S.A., 3G Licensing S.A. and Sisvel S.p.A. (collectively,
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`“Plaintiffs”), for their Complaint against Defendant Tesla, Inc. (“Tesla” or “Defendant”), allege
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`the following:
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`NATURE OF THE ACTION
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`1.
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`This is an action for patent infringement arising under the Patent Laws of the United
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`States, 35 U.S.C. § 1 et seq.
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`THE PARTIES
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`2.
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`Sisvel International S.A. (“Sisvel”) is an entity organized under the laws of
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`Luxembourg with a place of business at 6, Avenue Marie Thérèse, 2132 Luxembourg, Grand
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`Duchy of Luxembourg.
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`3.
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`3G Licensing S.A. (“3G Licensing”) is also an entity organized under the laws of
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`Luxembourg with a place of business at 6, Avenue Marie Thérèse, 2132 Luxembourg, Grand
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`Duchy of Luxembourg.
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`4.
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`Sisvel S.p.A. (“Sisvel S.p.A.”) is an entity organized under the laws of Italy with a
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`place of business at Via Sestriere 100, 10060 None (TO) Italy. “Sisvel” is an acronym for “Società
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`Italiana per lo Sviluppo Dell’Elettronica.”
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`5.
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`Founded in Italy in 1982, Sisvel is a world leader in fostering innovation and
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`managing intellectual property. Sisvel works with its partners offering a comprehensive approach
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`to patent licensing: from issuing initial calls for essential patents; facilitating discussions among
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`stakeholders; developing multiparty license agreements; executing and administering licenses; to
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`collecting and distributing royalties. At the same time, Sisvel actively promotes a culture of
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`respect and understanding of the intellectual property and innovation ecosystem through, for
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`example, its regular presence at the key consumer electronics trade fairs and intellectual property
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`events, participation in policy discussions and conferences, as well as open dialogues with a
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`number of government bodies, standard-setting organizations and industry associations.
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`6.
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`In early 2016, Sisvel initiated licensing activities in North America via its U.S.
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`subsidiary, Sisvel US Inc.
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`7.
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`A subsidiary of Sisvel founded in 2015, 3G Licensing, is an intellectual property
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`company operating in the consumer electronics and telecommunications industry. The company is
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`composed of specialists with an extensive experience in administering licensing programs on
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`behalf of third-party companies and organizations.
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`8.
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`A subsidiary of Sisvel founded in 1982, Sisvel S.p.A., is an intellectual property
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`company operating primarily in areas of wireless communication, audio/video coding/decoding,
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`digital video display, and broadband technology. The company is composed of specialists with
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`extensive experience to support Sisvel’s efforts in licensing programs and patent pools, primarily
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`on behalf of third-party companies and organizations.
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`9.
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`Upon information and belief, Defendant is a corporation organized and existing
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`under the laws of Delaware, with its principal place of business at 3500 Deer Creek Road, Palo
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`Alto, California 94304.
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`10.
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`Defendant maintains a registered agent for service of process in Delaware at
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`Corporation Service Company, 251 Little Falls Drive, Wilmington, Delaware 19808. Upon
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`information and belief, Defendant sells and offers to sell products and services throughout the
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`United States, including in this judicial district, and introduces products and services that enter
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`into the stream of commerce and that incorporate infringing technology knowing that they would
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`be sold in this judicial district and elsewhere in the United States.
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`JURISDICTION AND VENUE
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`11.
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`This Court has jurisdiction over the subject matter jurisdiction of this case under
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`28 U.S.C. §§ 1331 (federal question) and 1338(a) (patent law – 35 U.S.C. § 101, et seq.).
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`12.
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`This Court has personal jurisdiction over Defendant, because Defendant has
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`sufficient minimum contacts within the State of Delaware and this District, pursuant to due process
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`and/or the Del. Code. Ann. Tit. 3, § 3104, as Defendant has purposefully availed itself of the
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`privileges of conducting business in the State of Delaware by regularly conducting and soliciting
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`business within the State of Delaware and within this District, and because Plaintiffs’ causes of
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`action arise directly from Defendant’s business contacts and other activities in the State of
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`Delaware and this District. Further, this Court has personal jurisdiction over Defendant because
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`it is incorporated in the State of Delaware and has purposely availed itself of the privileges and
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`benefits of the laws of the State of Delaware.
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`13.
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`Venue is proper in this judicial district under 28 U.S.C. § 1400(b) as Defendant is
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`incorporated in the State of Delaware.
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`ACCUSED INSTRUMENTALITIES
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`14.
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`Defendant makes, uses, sells and offers for sale, provides, and causes to be used,
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`now and within the past six years the Tesla Model S, Model 3, and Model X (“Accused
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`Instrumentalities”), among other such devices.
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`15.
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`Upon information and belief, and as widely reported, Defendant’s Accused
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`Instrumentalities are compliant with 3G and 4G cellular network standards. (See, e.g., First LTE-
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`Enabled Tesla Model S Delivered, Electrek (June 5, 2015), https://electrek.co/2015/06/05/ first-
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`lte-enabled-model-s-delivered, attached hereto as Exhibit 1; Tesla is introducing new paid
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`‘premium connectivity’ package to support in-car internet features of growing fleet, Electrek (June
`
`23, 2018), https://electrek.co/2018/06/23/tesla-new-paid-premium-connectivity-package-in-car-
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`internet-features/, attached hereto as Exhibit 2.)
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`BACKGROUND
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`16.
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`Plaintiffs are the owners by assignment of a portfolio of patents, including the nine
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`patents described in detail in the counts below (collectively, the “Asserted Patents”), that relate to
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`technology for cellular communications networks, including variations or generations of cellular
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`communication network technology such as, but not limited to 3G, and 4G.
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`17.
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`Cellular communication network technology is used to provide data transmission
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`across mobile cellular networks.
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`18.
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`U.S. Patent No. 7,979,070 (“the ’070 patent”) was assigned to Nokia Corporation
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`either directly from the inventors or through mergers. In 2011, the ʼ070 patent was assigned to a
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`trust by Nokia Corporation. On April 10, 2012, Sisvel obtained ownership of the ʼ070 patent.
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`19.
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`U.S. Patent Nos. 8,189,611 (“the ʼ611 patent”) and 8,600,383 (“the ʼ383 patent”)
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`were assigned to Research in Motion Ltd. from the inventors. Research in Motion Ltd. changed
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`its name to Blackberry, Ltd. in 2013. On November 16, 2018, the ’611 and ʼ383 patents were
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`assigned to Provenance Asset Group LLC from Blackberry, Ltd. On April 5, 2019, Sisvel obtained
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`ownership of the ʼ611 and ʼ383 patents from Provenance Asset Group LLC. On July 11, 2019,
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`Sisvel assigned the ʼ611 and ʼ383 patents to 3G Licensing.
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`20.
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`U.S. Patent Nos. 7,215,653 (“the ʼ653 patent”), 7,319,718 (“the ʼ718 patent”),
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`7,551,625 (“the ʼ625 patent”) and 7,580,388 (“the ʼ388 patent”) were assigned to LG Electronics
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`Inc. from the inventors. On February 10, 2020, 3G Licensing obtained ownership of the ’653,
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`ʼ718, ʼ625 and ʼ388 patents from LG Electronics Inc.
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`21.
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`U.S. Patent Nos. 7,869,396 (“the ʼ396 patent”) and 8,971,279 (“the ʼ279 patent”)
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`were assigned to LG Electronics Inc. from the inventors. On March 28, 2014, the ʼ396 and ʼ279
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`patents were assigned to Thomson Licensing SAS from LG Electronics. On September 23, 2019,
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`Sisvel S.p.A. obtained ownership of the ʼ396 and ʼ279 patents from Thomson Licensing SAS.
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`22.
`
`Sisvel, 3G Licensing and Sisvel S.p.A. are the rightful owners of the Asserted
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`Patents and hold the entire right, title and interest in the Asserted Patents.
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`23.
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`Sisvel sent a letter to Tesla on January 6, 2017, offering Tesla a license to patents
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`owned and/or managed that are essential to cellular standards including 3G and 4G. The
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`correspondence identified Tesla’s Model X and Model S as making use of standards that infringe
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`the offered patents. On September 15, 2017, Sisvel sent another letter offering Tesla a license of
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`patents owned and/or managed by Sisvel that are essential to cellular standards including 3G and
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`4G. Following the September 15, 2017 letter, Sisvel and Tesla engaged in additional
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`correspondence by email regarding licensing of Sisvel’s patents.
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`24.
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`Sisvel sent additional correspondence to Tesla on March 11, 2019, offering Tesla a
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`license to patents owned and/or managed by Sisvel that are essential to cellular standards including
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`3G and 4G. The March 11, 2019 letter included links to Sisvel’s website, the contents of that web
`
`page specifically identified the ’070 patent. Following the March 11, 2019 letter, Sisvel and Tesla
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`continued correspondence by email. Despite Sisvel’s continuous efforts and numerous
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`demonstrations of infringement over approximately two years, Tesla refused to take a license to
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`the offered patents.
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`COUNT I – INFRINGEMENT OF U.S. PATENT NO. 7,979,070
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`25.
`
`The allegations set forth in the foregoing paragraphs 1 through 24 are incorporated
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`into this First Claim for Relief.
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`26.
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`On July 12, 2011, the ’070 patent, entitled “Mobile Equipment for Sending an
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`Attach Request to a Network” was duly and legally issued by the United States Patent and
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`Trademark Office from Patent Application No. 12/232,724, filed on September 23, 2008. The
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`ʼ070 patent claims priority to U.S. Patent No. 7,035,621 filed on October 13, 2000. A true and
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`correct copy of the ʼ070 patent is attached as Exhibit 3.
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`27.
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`Plaintiff Sisvel is the assignee and owner of the right, title and interest in and to the
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`ʼ070 patent, including the right to assert all causes of action arising under said patents and the right
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`to any remedies for infringement of them.
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`28.
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`The ʼ070 patent discloses a system and method that Plaintiffs believe is essential
`
`under the 4G cellular standard as explained in attached Exhibit 4. Thus, Defendant’s Accused
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`Instrumentalities that are compliant with the 4G standard are necessarily infringing the ʼ070 patent.
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`29.
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`Defendant was made aware of the ʼ070 patent and its infringement thereof by
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`correspondence from Plaintiff on March 11, 2013, as discussed in paragraph 24 above.
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`30.
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`Defendant was further made aware of the ʼ070 patent and its infringement thereof
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`at least as early as the date of filing of this Complaint.
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`31.
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`Upon information and belief, Defendant has and continues to directly infringe at
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`least claims 1, 2 and/or 5 of the ʼ070 patent by making, using, selling, importing, offering for sale,
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`providing, practicing, and causing the Accused Instrumentalities that infringe the patented
`
`methods.
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`32.
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`Since March 11, 2013 when it first was made aware of the ’070 patent, Defendant’s
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`infringement has been, and continues to be, willful.
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`33.
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`Upon information and belief, these Accused Instrumentalities are used, marketed,
`
`provided to, and/or used by or for the Defendant’s partners, clients, customers/subscribers and end
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`users across the country and in this District.
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`34.
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`Upon information and belief, Defendant has induced and continues to induce others
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`to infringe at least claims 1, 2 and/or 5 of the ʼ070 patent under 35 U.S.C. § 271(b) by, among
`
`other things, and with specific intent or willful blindness, actively aiding and abetting others to
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`infringe, including, but not limited to Defendant’s partners, clients, customers/subscribers, and end
`
`users, whose use of the Accused Instrumentalities constitutes direct infringement of at least one
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`claim of the ’070 patent.
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`35.
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`In particular, the Defendant’s actions that aid and abet others such as its partners,
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`customers/subscribers, clients, and end users to infringe include advertising and distributing the
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`Accused Instrumentalities and providing instruction materials, training, and services regarding the
`
`Accused Instrumentalities.
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`36.
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`Any party, including Defendant’s partners, clients, customers/subscribers, and end
`
`users, using the Accused Instrumentalities necessarily infringes the ʼ070 patent because the
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`invention of the ʼ070 patent is required to comply with the relevant cellular standard. Defendant
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`advertises its Accused Instrumentalities as compliant with the relevant cellular standard, which
`
`induces others to infringe the ʼ070 patent. Defendant has knowingly induced infringement since
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`at least March 11, 2013, when Defendant was first made aware of the ʼ070 patent during extensive
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`correspondence with Plaintiffs as discussed in paragraphs 23-24 above.
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`37.
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`Upon information and belief, the Defendant is liable as a contributory infringer of
`
`the ʼ070 patent under 35 U.S.C. § 271(c) by offering to sell, selling and importing into the United
`
`States the Accused Instrumentalities that infringe the patented methods, to be especially made or
`
`adapted for use in an infringement of the ʼ070 patent. Each of the Accused Instrumentalities is a
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`material component for use in practicing the ʼ070 patent and is specifically made and is not a staple
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`article of commerce suitable for substantial non-infringing use. In particular, each of the Accused
`
`Instrumentalities is advertised to be compliant with the relevant standard and primarily used in
`
`compliance with that standard.
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`38.
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`Plaintiffs have been harmed by Defendant’s infringing activities.
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`COUNT II – INFRINGEMENT OF U.S. PATENT NO. 8,600,383
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`39.
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`The allegations set forth in the foregoing paragraphs 1 through 38 are incorporated
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`into this Second Claim for Relief.
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`40.
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`On December 3, 2013, the ’383 patent, entitled “Apparatus and Method for Making
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`Measurements in Mobile Telecommunications System User Equipment” was duly and legally
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`issued by the United States Patent and Trademark Office from Patent Application No. 13/617,241
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`filed on September 14, 2012. The ʼ383 patent claims priority to U.S. Patent No. 7,463,887 filed
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`on August 18, 2004. A true and correct copy of the ʼ383 patent is attached as Exhibit 5.
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`41.
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`Plaintiff 3G Licensing is the assignee and owner of the right, title and interest in
`
`and to the ʼ383 patent, including the right to assert all causes of action arising under said patents
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`and the right to any remedies for infringement of them.
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`42.
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`The ʼ383 patent discloses a system and method that Plaintiffs believe is essential
`
`under the 4G cellular standard as explained in attached Exhibit 6. Thus, Defendant’s Accused
`
`Instrumentalities that are compliant with the 4G standard are necessarily infringing the ʼ383 patent.
`
`43.
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`Defendant was made aware of the ʼ383 patent and its infringement thereof at least
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`as early as the date of filing of this Complaint.
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`44.
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`Upon information and belief, Defendant has and continues to directly infringe at
`
`least claims 1, 9, 17, 25, 49, 58, 66, 74, 82, and/or 90 of the ʼ383 patent by making, using, selling,
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`importing, offering for sale, providing, practicing, and causing the Accused Instrumentalities that
`
`infringe the patented methods.
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`45.
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`Upon information and belief, these Accused Instrumentalities are used, marketed,
`
`provided to, and/or used by or for the Defendant’s partners, clients, customers/subscribers and end
`
`users across the country and in this District.
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`46.
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`Upon information and belief, Defendant has induced and continues to induce others
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`to infringe at least claims 1, 9, 17, 25, 49, 58, 66, 74, 82, and/or 90 of the ’383 patent under 35
`
`U.S.C. § 271(b) by, among other things, and with specific intent or willful blindness, actively
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`aiding and abetting others to infringe, including, but not limited to Defendant’s partners, clients,
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`customers/subscribers, and end users, whose use of the Accused Instrumentalities constitutes direct
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`infringement of at least one claim of the ’383 patent.
`
`47.
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`In particular, the Defendant’s actions that aid and abet others such as its partners,
`
`customers/subscribers, clients, and end users to infringe include advertising and distributing the
`
`Accused Instrumentalities and providing instruction materials, training, and services regarding the
`
`Accused Instrumentalities.
`
`48.
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`Any party, including Defendant’s partners, clients, customers/subscribers, and end
`
`users, using the Accused Instrumentalities necessarily infringes the ʼ383 patent because the
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`invention of the ʼ383 patent is required to comply with the relevant cellular standard. Defendant
`
`advertises its Accused Instrumentalities as compliant with the relevant cellular standard, which
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`induces others to infringe the ʼ383 patent Defendant has knowingly induced infringement since at
`
`least the filing of this Complaint when Defendant was first made aware of the ʼ383 patent.
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`49.
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`Upon information and belief, the Defendant is liable as a contributory infringer of
`
`the ʼ383 patent under 35 U.S.C. § 271(c) by offering to sell, selling and importing into the United
`
`States the Accused Instrumentalities that infringe the patented methods, to be especially made or
`
`adapted for use in an infringement of the ʼ383 patent. Each of the Accused Instrumentalities is a
`
`material component for use in practicing the ʼ383 patent and is specifically made and is not a staple
`
`article of commerce suitable for substantial non-infringing use. In particular, each of the Accused
`
`Instrumentalities is advertised to be compliant with the relevant standard and primarily used in
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`compliance with that standard.
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`50.
`
`Plaintiffs have been harmed by Defendant’s infringing activities.
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`COUNT III – INFRINGEMENT OF U.S. PATENT NO. 8,189,611
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`51.
`
`The allegations set forth in the foregoing paragraphs 1 through 50 are incorporated
`
`into this Third Claim for Relief.
`
`52.
`
`On May 29, 2012, the ’611 patent, entitled “System and Method for Resolving
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`Contention Among Applications Requiring Data Connections Between a Mobile Communications
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`Device and a Wireless Network” was duly and legally issued by the United States Patent and
`
`Trademark Office from Patent Application No. 12/326,466 filed on December 2, 2008. The ʼ611
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`patent claims priority to U.S. Patent No. 7,474,671 filed on November 4, 2005. A true and correct
`
`copy of the ʼ611 patent is attached as Exhibit 7.
`
`53.
`
`Plaintiff 3G Licensing is the assignee and owner of the right, title and interest in
`
`and to the ʼ611 patent, including the right to assert all causes of action arising under said patents
`
`and the right to any remedies for infringement of them.
`
`54.
`
`The ʼ611 patent discloses a system and method that Plaintiffs believe is essential
`
`under the 4G cellular standard as explained in attached Exhibit 8. Thus, Defendant’s Accused
`
`Instrumentalities that are compliant with the 4G standard are necessarily infringing the ʼ611 patent.
`
`55.
`
`Defendant was made aware of the ʼ611 patent and its infringement thereof at least
`
`as early as the date of filing of this Complaint.
`
`56.
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`Upon information and belief, Defendant has and continues to directly infringe at
`
`least claims 1, 7, and/or 8 of the ʼ611 patent by making, using, selling, importing, offering for sale,
`
`providing, practicing, and causing the Accused Instrumentalities that infringe the patented
`
`methods.
`
`57.
`
`Upon information and belief, these Accused Instrumentalities are used, marketed,
`
`provided to, and/or used by or for the Defendant’s partners, clients, customers/subscribers and end
`
`users across the country and in this District.
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`58.
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`Upon information and belief, Defendant has induced and continues to induce others
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`to infringe at least claims 1, 7, and/or 8 of the ’611 patent under 35 U.S.C. § 271(b) by, among
`
`other things, and with specific intent or willful blindness, actively aiding and abetting others to
`
`infringe, including, but not limited to Defendant’s partners, clients, customers/subscribers, and end
`
`users, whose use of the Accused Instrumentalities constitutes direct infringement of at least one
`
`claim of the ’611 patent.
`
`59.
`
`In particular, the Defendant’s actions that aid and abet others such as its partners,
`
`customers/subscribers, clients, and end users to infringe include advertising and distributing the
`
`Accused Instrumentalities and providing instruction materials, training, and services regarding the
`
`Accused Instrumentalities.
`
`60.
`
`Any party, including Defendant’s partners, clients, customers/subscribers, and end
`
`users, using the Accused Instrumentalities necessarily infringes the ʼ611 patent because the
`
`invention of the ʼ611 patent is required to comply with the relevant cellular standard. Defendant
`
`advertises its Accused Instrumentalities as compliant with the relevant cellular standard, which
`
`induces others to infringe the ʼ611 patent. Defendant has knowingly induced infringement since
`
`at least the filing of this Complaint when Defendant was first made aware of the ʼ611 patent.
`
`61.
`
`Upon information and belief, the Defendant is liable as a contributory infringer of
`
`the ʼ611 patent under 35 U.S.C. § 271(c) by offering to sell, selling and importing into the United
`
`States the Accused Instrumentalities that infringe the patented methods, to be especially made or
`
`adapted for use in an infringement of the ʼ611 patent. Each of the Accused Instrumentalities is a
`
`material component for use in practicing the ʼ611 patent and is specifically made and is not a staple
`
`article of commerce suitable for substantial non-infringing use. In particular, each of the Accused
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`Instrumentalities is advertised to be compliant with the relevant standard and primarily used in
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`compliance with that standard.
`
`62.
`
`Plaintiffs have been harmed by Defendant’s infringing activities.
`
`COUNT IV – INFRINGEMENT OF U.S. PATENT NO. 7,215,653
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`63.
`
`The allegations set forth in the foregoing paragraphs 1 through 62 are incorporated
`
`into this Fourth Claim for Relief.
`
`64.
`
`On May 8, 2007, the ’653 patent, entitled “Controlling Data Transmission Rate on
`
`the Reverse Link for Each Mobile Station in a Dedicated Manner” was duly and legally issued by
`
`the United States Patent and Trademark Office from Patent Application No. 10/071,243 filed on
`
`February 11, 2002. A true and correct copy of the ʼ653 patent is attached as Exhibit 9.
`
`65.
`
`Plaintiff 3G Licensing is the assignee and owner of the right, title and interest in
`
`and to the ʼ653 patent, including the right to assert all causes of action arising under said patents
`
`and the right to any remedies for infringement of them.
`
`66.
`
`The ʼ653 patent discloses a system and method that Plaintiffs believe is essential
`
`under the 3G cellular standard as explained in attached Exhibit 10. Thus, Defendant’s Accused
`
`Instrumentalities that are compliant with the 3G standard are necessarily infringing the ʼ653 patent.
`
`67.
`
`Defendant was made aware of the ʼ653 patent and its infringement thereof at least
`
`as early as the date of filing of this Complaint.
`
`68.
`
`Upon information and belief, Defendant has and continues to directly infringe at
`
`least claims 34 and/or 37 of the ʼ653 patent by making, using, selling, importing, offering for sale,
`
`providing, practicing, and causing the Accused Instrumentalities that infringe the patented
`
`methods.
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`69.
`
`Upon information and belief, these Accused Instrumentalities are used, marketed,
`
`provided to, and/or used by or for the Defendant’s partners, clients, customers/subscribers and end
`
`users across the country and in this District.
`
`70.
`
`Upon information and belief, Defendant has induced and continues to induce others
`
`to infringe at least claims 34 and/or 37 of the ’653 patent under 35 U.S.C. § 271(b) by, among
`
`other things, and with specific intent or willful blindness, actively aiding and abetting others to
`
`infringe, including, but not limited to Defendant’s partners, clients, customers/subscribers, and end
`
`users, whose use of the Accused Instrumentalities constitutes direct infringement of at least one
`
`claim of the ’653 patent.
`
`71.
`
`In particular, the Defendant’s actions that aid and abet others such as its partners,
`
`customers/subscribers, clients, and end users to infringe include advertising and distributing the
`
`Accused Instrumentalities and providing instruction materials, training, and services regarding the
`
`Accused Instrumentalities.
`
`72.
`
`Any party, including Defendant’s partners, clients, customers/subscribers, and end
`
`users, using the Accused Instrumentalities necessarily infringes the ʼ653 patent because the
`
`invention of the ʼ653 patent is required to comply with the relevant cellular standard. Defendant
`
`advertises its Accused Instrumentalities as compliant with the relevant cellular standard, which
`
`induces others to infringe the ʼ653 patent. Defendant has knowingly induced infringement since
`
`at least the filing of this Complaint when Defendant was first made aware of the ʼ653 patent.
`
`73.
`
`Upon information and belief, the Defendant is liable as a contributory infringer of
`
`the ʼ653 patent under 35 U.S.C. § 271(c) by offering to sell, selling and importing into the United
`
`States the Accused Instrumentalities that infringe the patented methods, to be especially made or
`
`adapted for use in an infringement of the ʼ653 patent. Each of the Accused Instrumentalities is a
`
`Page 14 of 26
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`Case 1:20-cv-00655-UNA Document 1 Filed 05/15/20 Page 15 of 26 PageID #: 15
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`material component for use in practicing the ʼ653 patent and is specifically made and is not a staple
`
`article of commerce suitable for substantial non-infringing use. In particular, each of the Accused
`
`Instrumentalities is advertised to be compliant with the relevant standard and primarily used in
`
`compliance with that standard.
`
`74.
`
`Plaintiffs have been harmed by Defendant’s infringing activities.
`
`COUNT V – INFRINGEMENT OF U.S. PATENT NO. 7,319,718
`
`75.
`
`The allegations set forth in the foregoing paragraphs 1 through 74 are incorporated
`
`into this Fifth Claim for Relief.
`
`76.
`
`On January 15, 2008, the ’718 patent, entitled “CQI Coding Method for HS-
`
`DPCCH” was duly and legally issued by the United States Patent and Trademark Office from
`
`Patent Application No. 10/365,498 filed on February 13, 2003. A true and correct copy of the
`
`ʼ718 patent is attached as Exhibit 11.
`
`77.
`
`Plaintiff 3G Licensing is the assignee and owner of the right, title and interest in
`
`and to the ʼ718 patent, including the right to assert all causes of action arising under said patents
`
`and the right to any remedies for infringement of them.
`
`78.
`
`The ʼ718 patent discloses a system and method that Plaintiffs believe is essential
`
`under the 3G cellular standard as explained in attached Exhibit 12. Thus, Defendant’s Accused
`
`Instrumentalities that are compliant with the 3G standard are necessarily infringing the ʼ718 patent.
`
`79.
`
`Defendant was made aware of the ʼ718 patent and its infringement thereof at least
`
`as early as the date of filing of this Complaint.
`
`80.
`
`Upon information and belief, Defendant has and continues to directly infringe at
`
`least claims 15 and/or 16 of the ʼ718 patent by making, using, selling, importing, offering for sale,
`
`providing, practicing, and causing the Accused Instrumentalities that infringe the patented
`
`methods.
`
`Page 15 of 26
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`

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`Case 1:20-cv-00655-UNA Document 1 Filed 05/15/20 Page 16 of 26 PageID #: 16
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`81.
`
`Upon information and belief, these Accused Instrumentalities are used, marketed,
`
`provided to, and/or used by or for the Defendant’s partners, clients, customers/subscribers and end
`
`users across the country and in this District.
`
`82.
`
`Upon information and belief, Defendant has induced and continues to induce others
`
`to infringe at least claims 15 and/or 16 of the ’718 patent under 35 U.S.C. § 271(b) by, among
`
`other things, and with specific intent or willful blindness, actively aiding and abetting others to
`
`infringe, including, but not limited to Defendant’s partners, clients, customers/subscribers, and end
`
`users, whose use of the Accused Instrumentalities constitutes direct infringement of at least one
`
`claim of the ’718 patent.
`
`83.
`
`In particular, the Defendant’s actions that aid and abet others such as its partners,
`
`customers/subscribers, clients, and end users to infringe include advertising and distributing the
`
`Accused Instrumentalities and providing instruction materials, training, and services regarding the
`
`Accused Instrumentalities.
`
`84.
`
`Any party, including Defendant’s partners, clients, customers/subscribers, and end
`
`users, using the Accused Instrumentalities necessarily infringes the ʼ718 patent because the
`
`invention of the ʼ718 patent is required to comply with the relevant cellular standard. Defendant
`
`advertises its Accused Instrumentalities as compliant with the relevant cellular standard, which
`
`induces others to infringe the ʼ718 patent. Defendant has knowingly induced infringement since
`
`at least the filing of this Complaint when Defendant was first made aware of the ʼ718 patent.
`
`85.
`
`Upon information and belief, the Defendant is liable as a contributory infringer of
`
`the ʼ718 patent under 35 U.S.C. § 271(c) by offering to sell, selling and importing into the United
`
`States the Accused Instrumentalities that infringe the patented methods, to be especially made or
`
`adapted for use in an infringement of the ʼ718 patent. Each of the Accused Instrumentalities is a
`
`Page 16 of 26
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`

`

`Case 1:20-cv-00655-UNA Document 1 Filed 05/15/20 Page 17 of 26 PageID #: 17
`
`material component for use in practicing the ʼ718 patent and is specifically made and is not a staple
`
`article of commerce suitable for substantial non-infringing use. In particular, each of the Accused
`
`Instrumentalities is advertised to be compliant with the relevant standard and primarily used in
`
`compliance with that standard.
`
`86.
`
`Plaintiffs have been harmed by Defendant’s infringing activities.
`
`COUNT VI – INFRINGEMENT OF U.S. PATENT NO. 7,551,625
`
`87.
`
`The allegations set forth in the foregoing paragraphs 1 through 86 are incorporated
`
`into this Sixth Claim for Relief.
`
`88.
`
`On June 23, 2009, the ’625 patent, entitled “Method of Scheduling an Uplink
`
`Packet Transmission Channel in a Mobile Communication System” was duly and legally issued
`
`by the United States Patent and Trademark Office from Patent Application No. 11/097,011 filed
`
`on March 31, 2005. A true and correct copy of the ʼ625 patent is attached as Exhibit 13.
`
`89.
`
`Plaintiff 3G Licensing is the assignee and owner of the right, title and interest in
`
`and to the ʼ625 patent, including the right to assert all causes of action arising under said patents
`
`and the right to any remedies for infringement of them.
`
`90.
`
`The ʼ625 patent discloses a system and method that Plaintiffs believe is essential
`
`under the 3G cellular standard as explained in attached Exhibit 14. Thus, Defendant’s Accused
`
`Instrumentalities that are com