Case 2:16-cv-00260-RFB-VCF Document 11 Filed 05/05/16 Page 1 of 8
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`
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`ALVERSON, TAYLOR,
`
`MORTENSEN & SANDERS
`KURT R. BONDS, ESQ.
`Nevada Bar No. 6228
`ADAM R. KNECHT, ESQ.
`Nevada Bar No. 13166
`7401 W. Charleston Boulevard
`Las Vegas, NV 89117
`(702) 384-7000
`efile@alversontaylor.com
`Attorneys for Plaintiff
`
`
`UNITED STATES DISTRICT COURT
`
`DISTRICT OF NEVADA
`
`* * *
`
`
`VOIP-PAL.COM, INC., a Nevada corporation,
`
`
`
`v.
`
`APPLE, INC., a California corporation,
`
`
`
`
`
`Plaintiff,
`
`Defendants.
`
`
`
`CASE NO.: 2:16-cv-00260-RFB-VCF
`
`
`
`SECOND AMENDED COMPLAINT
`FOR PATENT INFRINGEMENT
`
`[JURY DEMAND]
`
`Plaintiff, Voip-Pal.com, Inc.’s (“VPLM”) Second Amended Complaint against Defendant
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`Apple, Inc., (“Apple”), alleges infringement of U.S. Patent No. 8,542,815 (“the ‘815 patent”), and its
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`continuation patent, U.S. Patent No. 9,179,005 (“the ‘005 patent”). VPLM further complains and
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`alleges as follows:
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`THE NATURE OF THE ACTION
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`1.
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`VPLM is a leader in Voice-over-Internet Protocol (“VoIP”) technology and owns a
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`portfolio of VoIP-related patents and patent applications.
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`2.
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`On September 24, 2013, the ‘815 patent entitled “Producing Routing Messages for
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`Voice Over IP Communications” was duly and legally issued with Clay Perreault, Steve Nicholson,
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`Rod Thomson, Johan Emil Viktor Bjorsell, and Faud Arafa as the named inventors after full and fair
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`KB/23443
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`ALVERSON, TAYLOR, MORTENSEN & SANDERS
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`LAWYERS
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`7401 WEST CHARLESTON BOULEVARD
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`LAS VEGAS, NEVADA 89117-1401
`
`(702) 384-7000
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`

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`Case 2:16-cv-00260-RFB-VCF Document 11 Filed 05/05/16 Page 2 of 8
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`examination. VPLM is the owner of all rights, title, and interest in and to the ‘815 patent and
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`possesses all rights of recovery under the ‘815 patent. A copy of the ‘815 patent is attached as
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`Exhibit A.
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`3.
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`On November 3, 2015, the ‘005 patent entitled “Producing Routing Messages for
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`Voice Over IP Communications” was duly and legally issued with Clay Perreault, Steve Nicholson,
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`Rod Thomson, Johan Emil Viktor Bjorsell, and Faud Arafa as the named inventors after full and fair
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`examination. VPLM is the owner of all rights, title, and interest in and to the ‘005 patent and
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`possesses all rights of recovery under the ‘005 patent. A copy of the ‘005 patent is attached as
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`Exhibit B.
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`4.
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`VPLM’s patents represent fundamental advancements to Internet Protocol (“IP”)
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`based communication, including improved functioning, call classification, call routing and reliability
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`for VoIP, messaging, and IP-based transmission of video, photographs and mixed media
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`communications.
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`5.
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`Apple employs VPLM’s innovative technology and products, features, and designs,
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`and has widely distributed infringing products and/or services that have undermined VPLM’s
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`marketing and monetization efforts. Instead of incorporating non-infringing technology into its
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`products and services, Apple has employed and has incorporated VPLM’s patented communication
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`classification and routing technology, in violation of VPLM’s valuable intellectual property rights.
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`PARTIES
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`6.
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`Plaintiff, VoIP-Pal.com, Inc. (“VPLM”) is a Nevada corporation with its principal
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`place of business located 10900 NE 4th Street, Suite 2300, Bellevue, Washington 98004.
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`7.
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`Defendant, Apple Inc. (“Apple”) is a California corporation with its principal place of
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`business at 1 Infinite Loop, Cupertino, California 95014. On information and belief, Apple regularly
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`conducts and transacts business in the District of Nevada and throughout the United States, and, as
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`set forth below, has committed and continues to commit, tortious acts of patent infringement within
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`the District of Nevada.
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`8.
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`As a result of Apple’s infringement as alleged herein, between May 2014 and
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`December 2015, VPLM provided numerous notices to Apple in connection with its violation of
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`
`KB/23443
`2
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`ALVERSON, TAYLOR, MORTENSEN & SANDERS
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`LAWYERS
`
`7401 WEST CHARLESTON BOULEVARD
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`LAS VEGAS, NEVADA 89117-1401
`
`(702) 384-7000
`
`

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`Case 2:16-cv-00260-RFB-VCF Document 11 Filed 05/05/16 Page 3 of 8
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`VPLM’s patent rights. See Exhibit C, Correspondence to Apple. Despite the notices, Apple has
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`infringed and continues to infringe VPLM’s patents.
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`JURISDICTION AND VENUE
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`9.
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`This action arises under the patent laws of the United States, i.e., 35 U.S.C. § 1 et seq.
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` This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331, 1337, and 1338.
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`10.
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`This Court has personal jurisdiction over Apple because it has committed and
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`continues to commit acts of infringement in violation of 35 U.S.C. § 271 by placing infringing
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`products and services into the stream of commerce, either directly or through subsidiaries and/or
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`intermediaries, with the knowledge or understanding that such products are sold in the District of
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`Nevada. The acts by Apple cause injury to VPLM within this District. Upon information and belief,
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`Plaintiff alleges that the Apple derives substantial revenue from the sale of infringing products
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`within this District, has expanded its market share through its use of infringing products within this
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`District, has engaged in this infringement with the expectation that their actions will have
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`consequences within this District, and derives substantial revenue from interstate and international
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`commerce.
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`11.
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`Venue is proper within this District under 28 U.S.C. § 1391(b), (c), and § 1400(b)
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`because Apple maintains a regular and established place of business and offers products and/or
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`services for sale in Nevada and have related computing infrastructure located in Nevada. For
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`example, on information and belief, Apple has located large data centers and extensive cloud
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`computing infrastructure in or near Reno, Nevada. Furthermore, venue is proper in that Apple has
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`and continues to infringe VPLM’s patents causing harm to VPLM in Nevada, including via said data
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`centers and cloud computing infrastructure in Nevada. Also, VPLM is incorporated in Nevada.
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`A.
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`Apple’s Infringement of VPLM’S Patents
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`FACTUAL ALLEGATIONS
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`12.
`
` VPLM has protected its innovative designs and technologies through a broad range
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`of intellectual property rights. Among the patents that VPLM has been awarded are the ‘815 patent
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`and ‘005 patent to which VPLM owns all rights, title, and interest.
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`13.
`
`As detailed in the attached Exhibit D (Asserted Claims and Infringement Contentions
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`KB/23443
`3
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`ALVERSON, TAYLOR, MORTENSEN & SANDERS
`
`LAWYERS
`
`7401 WEST CHARLESTON BOULEVARD
`
`LAS VEGAS, NEVADA 89117-1401
`
`(702) 384-7000
`
`

`

`Case 2:16-cv-00260-RFB-VCF Document 11 Filed 05/05/16 Page 4 of 8
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`Concerning the ‘815 Patent and the ‘005 Patent), VPLM is informed and believes, and on that basis
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`alleges that Apple’s practices directly and indirectly employ and infringe certain claims of the ‘815
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`patent and the ‘005 patent by utilizing a caller dialing profile comprising a plurality of calling
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`attributes to establish network classification criteria for routing calls/messages.
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`14.
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`VPLM is informed and believes, and on that basis alleges that Apple engages in the
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`following specific infringing practices:
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`B.
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`Asserted Claim No. 1 regarding Apple’s iMessage (the ‘815 patent)
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`15.
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`Apple provides, supports and/or operates messaging technology, including iMessage,
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`an instant messaging service supported by Apple’s Messages application and computing
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`infrastructure that allows smartphone and desktop users to send messages including text, images,
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`video and audio to other users. Apple’s messaging, including the iMessage application, runs on
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`Apple desktop computers, laptops, tablets and mobile devices running OS X, iOS and watchOS
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`operating systems. Apple directly and/or indirectly practices certain claims of the ‘815 patent as
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`illustrated in Chart 1 of Exhibit D by utilizing a caller dialing profile comprising a plurality of calling
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`attributes to establish network classification criteria for its messaging systems.
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`16.
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`In particular, devices running the iMessage application initiate a communication
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`between a caller and a callee. The callee may be an Apple subscriber or a non-subscriber. In the case
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`that the callee is an Apple subscriber, the communication is sent using iMessage. On the other hand,
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`if the user is not an Apple subscriber or if iMessage is not available, the communication is sent using
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`SMS/MMS. Apple’s messaging system directly and/or indirectly practices certain claims of the ‘815
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`patent in order to determine the classification of the communication between the caller and callee,
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`and, subsequently, how the communication should be routed.
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`C.
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`Asserted Claim No. 2 regarding Apple’s iMessage (the ‘005 patent)
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`17.
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`Apple manufacturers, supports and operates a messaging platform (the “Apple
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`Messaging System”) that includes Apple desktop computers, laptops, tablets and mobile devices,
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`software applications running on such devices and servers associated with iMessage, an instant
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`messaging service, and associated computing infrastructure. The Apple Messaging System allows
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`smartphone and desktop users to send messages including text, images, video and audio to others.
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`
`KB/23443
`4
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`ALVERSON, TAYLOR, MORTENSEN & SANDERS
`
`LAWYERS
`
`7401 WEST CHARLESTON BOULEVARD
`
`LAS VEGAS, NEVADA 89117-1401
`
`(702) 384-7000
`
`

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`Case 2:16-cv-00260-RFB-VCF Document 11 Filed 05/05/16 Page 5 of 8
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`Apple practices certain claims of the ‘005 patent as illustrated in Chart 2 of Exhibit D.
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`18.
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`The Apple Messaging System allows devices to initiate a communication between a
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`caller, or a first participant, and a callee, or a second participant, which may be an Apple subscriber
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`or a non-subscriber. A profile that includes attributes is used as part of the process that classifies a
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`communication that directly and/or indirectly practices certain claims of the ‘005 patent.
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`D.
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`Asserted Claim No. 3 regarding Apple’s WiFi Calling (the ‘815 patent)
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`19.
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`Apple manufactures and supports devices and infrastructure related to a calling
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`platform (“Apple WiFi Calling”) that includes Apple desktop computers, laptops, tablets and mobile
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`devices, software applications running on such devices and associated infrastructure including
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`servers operated by wireless carriers that allow calls and text messages to be placed and received
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`over WiFi networks. Apple induces the infringement of certain claims of the ‘815 patent as
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`illustrated in Chart 3 of Exhibit D.
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`20.
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`Apple WiFi Calling allows an Apple device to initiate a call between a caller and a
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`callee using a carrier assisted voice over IP (“VoIP”) system and the callee may be a Wi-Fi Calling
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`subscriber of the carrier or a non-subscriber. A profile that includes calling attributes is used as part
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`of the process that classifies a call or text message.
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`21.
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`Apple also provides and/or supports WiFi Calling on desktop computers, laptops,
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`tablets and mobile devices. In the case of WiFi Calling, an Apple device initiates a call between a
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`caller and a callee using a carrier based VoIP system. The callee may be a subscriber of the carrier or
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`a non-subscriber. Apple directly and/or indirectly practices certain claims of the ‘815 patent by
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`utilizing a caller dialing profile comprising a plurality of calling attributes to establish network
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`classification criteria for its WiFi calling system.
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`E.
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`Asserted Claim No. 4 regarding Apple’s WiFi Calling (the ‘005 patent)
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`22.
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`Apple also provides and/or supports devices and infrastructure related to a calling
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`platform (“Apple WiFi Calling”) including desktop computers, laptops, tablets and mobile devices
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`and associated communications and computing infrastructure such as servers in data centers. In the
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`case of WiFi Calling, an Apple device initiates a call or text message between a caller and a callee
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`using a carrier-based VoIP system. The callee may be a Wi-Fi Calling subscriber of the carrier or a
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`KB/23443
`5
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`ALVERSON, TAYLOR, MORTENSEN & SANDERS
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`LAWYERS
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`7401 WEST CHARLESTON BOULEVARD
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`LAS VEGAS, NEVADA 89117-1401
`
`(702) 384-7000
`
`

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`Case 2:16-cv-00260-RFB-VCF Document 11 Filed 05/05/16 Page 6 of 8
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`non-subscriber. Apple directly and/or indirectly practices certain claims of the ‘005 patent by
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`utilizing a caller dialing profile comprising a plurality of calling attributes to establish network
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`classification criteria for its WiFi calling system as illustrated in Chart 4 of Exhibit D.
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`23.
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`Apple’s infringement of the ‘815 patent and the ‘005 patent provides Apple with
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`valuable functionality for its products and services at the expense of VPLM’s protected intellectual
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`property. Rather than utilizing non-infringing technology for call and message classification and
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`routing of Public to Public telephony, Private to Private telephony, Public to Private and Private to
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`Public telephony, messaging and media transfers, Apple has employed VPLM’s technology,
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`including its routing and classification systems and methods.
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`24.
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`Apple continues to choose to infringe VPLM’s patent rights through its caller
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`attribute based communication classification and routing systems, including at least Apple’s
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`Messaging and WiFi based communication products and services.
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`25.
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`Apple has not obtained permission or a license from VPLM to use its inventions as
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`identified in the ‘815 patent and the ‘005 patent.
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`26.
`related patents. See Exhibit E, VPLM Active Patents as of January 1, 2016. VPLM preserves the
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`Furthermore, the ‘815 patent and ‘005 patent are only two patents in a suite of ten
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`right to request leave to amend this Complaint to add additional allegations of infringement based on
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`additional patents associated with the suite.
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`CLAIMS FOR RELIEF
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`First Claim for Relief (Infringement of the ‘815 and ‘005 Patents by Apple)
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`27.
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`28.
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`VPLM incorporates and re-alleges paragraphs 1 through 26 of this Complaint.
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`Apple has infringed and continues to infringe, directly and indirectly through
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`contributory and/or induced infringement, one or more claims of the ‘815 patent and the ‘005 patent
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`by using, selling and/or offering to sell in the United States its Messaging and WiFi communication
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`services.
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`29.
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`30.
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`Apple’s infringing activities violate 35 U.S.C. § 271.
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`VPLM is informed and believes, and on that basis alleges, that Apple’s infringement
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`of the ‘815 and ‘005 Patents has been and continues to be intentional, willful, and without regard to
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`KB/23443
`6
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`ALVERSON, TAYLOR, MORTENSEN & SANDERS
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`LAWYERS
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`7401 WEST CHARLESTON BOULEVARD
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`LAS VEGAS, NEVADA 89117-1401
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`(702) 384-7000
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`Case 2:16-cv-00260-RFB-VCF Document 11 Filed 05/05/16 Page 7 of 8
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`VPLM’s rights because it had actual knowledge of the ‘815 patent and the ‘005 patent through direct
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`and indirect communications with VPLM. In addition, as an active participant in the
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`communications industry, Apple had constructive notice of the patents at the time of the international
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`PCT publication of WO2008/052340 (the predecessor of the ‘815 patent), on May 8, 2008.
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`31.
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`VPLM is informed and believes, and on that basis alleges, that Apple has increased
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`profits by virtue of its infringement of the ‘815 patent and the ‘005 patent. The portion of such
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`increased profits attributable to the incremental value of the infringed property, based upon
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`information and belief, is alleged to be two billion, eight hundred and thirty-six million, seven
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`hundred and ten thousand, and thirty one dollars ($2,836,710,031) based upon the calculations
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`contained in Exhibit F, attached hereto.
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`32.
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`VPLM has sustained damages as a direct and proximate result of Apple’s
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`infringement of the ‘815 patent and the ‘005 patent as their continuing infringement unfairly allows
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`Apple to dominate the market and harms VPLM’s ability to secure licensing revenue for these
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`patents. Said damages will be proved at trial.
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`33.
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`VPLM will suffer and is suffering irreparable harm from Apple’s continuing
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`infringement of the ‘815 patent and the ‘005 patent.
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`PRAYER FOR RELIEF
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`WHEREFORE, VPLM prays for relief, as follows:
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`1.
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`2.
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`A judgment that the ‘815 patent and the ‘005 patent are valid and enforceable;
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`A judgment that Apple has infringed, contributorily infringed, and/or induced
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`infringement of one of more claims of the ‘815 patent and the ‘005 patent;
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`3.
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` An order and judgment permanently enjoining Apple and its officers, directors,
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`agents, servants, employees, affiliates, attorneys, and all others acting in privity or in concert with
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`them, and their parents, subsidiaries, divisions, successors and assigns from further acts of
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`infringement of the ‘815 patent and the ‘005 patent;
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`4.
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`A judgment awarding VPLM all damages adequate to compensate for Apple’s
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`infringement of the ‘815 patent and the ‘005 patent, and in no event less than a reasonable royalty for
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`7
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`KB/23443
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`ALVERSON, TAYLOR, MORTENSEN & SANDERS
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`LAWYERS
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`7401 WEST CHARLESTON BOULEVARD
`
`LAS VEGAS, NEVADA 89117-1401
`
`(702) 384-7000
`
`

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`Case 2:16-cv-00260-RFB-VCF Document 11 Filed 05/05/16 Page 8 of 8
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`Apple’s acts of infringement, including all pre-judgment and post-judgment interest at the maximum
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`rate permitted by law;
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`5.
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`A judgment awarding VPLM all damages, including treble damages, based on any
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`infringement found to be willful, pursuant to 35 U.S.C. § 284, together with prejudgment interest;
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`6.
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`A judgment awarding VPLM the percentage of Apple’s profits that were a result of
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`the infringements of Plaintiff’s patents, pursuant to 35 U.S.C. § 289 together with pre-judgment
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`interest;
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`7.
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`Actual damages suffered by VPLM as a result of Apple’s unlawful conduct, in an
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`amount to be proven at trial, as well as prejudgment interest as authorized by law;
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`8.
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`A judgment that this is an exceptional case and an award to VPLM of its costs and
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`reasonable attorneys’ fees incurred in this action as provided by 35 U.S.C. § 285; and
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`9.
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`Such other relief as this Court deems just and proper.
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`DEMAND FOR JURY TRIAL
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`Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, VPLM hereby demands trial
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`by jury on all issues so triable under the Complaint.
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`DATED this 4th day of May, 2016.
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` ALVERSON, TAYLOR,
`MORTENSEN & SANDERS
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`/s/ Kurt R. Bonds .
`KURT R. BONDS, ESQ.
`Nevada Bar No. 6228
`ADAM R. KNECHT, ESQ.
`Nevada Bar No. 13166
`7401 W. Charleston Boulevard
`Las Vegas, NV 89117
`Attorneys for Plaintiff
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`8
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`KB/23443
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`ALVERSON, TAYLOR, MORTENSEN & SANDERS
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`LAWYERS
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`7401 WEST CHARLESTON BOULEVARD
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`LAS VEGAS, NEVADA 89117-1401
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`(702) 384-7000
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