Case 1:21-cv-07201-UA Document 1 Filed 08/26/21 Page 1 of 41
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`-21CV0720l
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF NEW YORK
`
`SAMSUNG DISPLAY CO., LTD.,
`
`Plaintiff,
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`FILED UNDER SEAL
`
`V.
`
`SOLAS OLED LTD. and NEODRON
`LTD.
`
`Civil Action No. - - - - - - -
`
`Defendants.
`
`COMPLAINT
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`Plaintiff Samsung Display Co., Ltd., ("Samsung Display"), by and through its
`
`undersigned counsel, for its Complaint against Defendants Solas OLED Ltd. ("Solas") and
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`Neodron Ltd. ("Neodron"), alleges as follows:
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`NATURE OF THE ACTION
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`1.
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`Neodron and Solas have engaged in a relentless campaign of litigation against
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`various Samsung entities. Neodron and Solas are "patent trolls" associated with the same hedge
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`fund-Magnetar Capital. Neodron and Solas buy patents, not to use the patented technology, but
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`to accuse others of infringement. They hope to obtain large damage awards or, more often,
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`extort settlement payments for unnecessary licenses to practice the patents. Between the two of
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`them, they have filed no fewer than twelve lawsuits in the United States since May 2019 against
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`Samsung Display, Samsung Electronics Co., Ltd. ("SEC"), and Samsung Electronics America,
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`Inc. ("SEA").
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`2.
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`Defendants' campaign began in May 2019 with Solas filing an action in the
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`Eastern District of Texas, ultimately asserting infringement of three patents against Samsung
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`Display, SEC, and SEA. Neodron thereafter repeatedly sued SEC and SEA in the International
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`Trade Commission and the Western District of Texas. While it filed two lawsuits against
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`

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`Case 1:21-cv-07201-UA Document 1 Filed 08/26/21 Page 2 of 41
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`Samsung Display in the Western District of Texas, Neodron did not serve Samsung Display with
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`either complaint, and the cases were eventually dismissed. These lawsuits were followed by
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`additional actions from Solas against Samsung Display, SEC, and SEA in the International Trade
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`Commission and the Eastern District of Texas. Samsung Display has incurred, and continues to
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`incur, substantial expense in defending these actions.
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`3.
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`In
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`, Neodron was not actively litigating any cases against
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`Samsung Display, but they decided to enter into a license. Through this agreement, Samsung
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`Display wanted to forestall all future litigation and achieve worldwide peace forever—with
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`Neodron and its associates. In exchange for paying more than
`
`
`
`
`
`
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`and Neodron consists of a broad patent license agreement (the “PLA”) that incorporates an
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`. The agreement by Samsung Display
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`escrow agreement (the “Escrow Agreement”).1 The PLA, the Escrow Agreement, and their
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`exhibits are referred to collectively herein as the “License Agreement” (attached as Exhibit A
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`and filed under seal). In the PLA, Neodron represented and warranted that it
`
`
`
`-
`
`.
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`4.
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`But Solas continued the campaign. Not only did it fail to drop any of its pending
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`lawsuits against Samsung Display, it added to the list. In late December 2020, Solas filed
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`another action in the International Trade Commission, ultimately asserting two patents against
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`Samsung Display. In February 2021, Solas filed another lawsuit against Samsung Display in the
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`1 Samsung Display understands SEC also entered into a virtually identical license agreement with
`Neodron around that same time.
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`2
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`

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`Case 1:21-cv-07201-UA Document 1 Filed 08/26/21 Page 3 of 41
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`Western District of Texas, reasserting one of the patents from the May 2019 action that was later
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`invalidated by both a jury and by inter partes review. In March 2021, Solas filed yet another
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`lawsuit in the Eastern District of Texas against Samsung Display, ultimately asserting three
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`patents, including a patent it also asserted in the May 2019 action and that was later found
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`invalid by the Patent Trial and Appeal Board (“PTAB”).
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`5.
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`It now appears that Solas and Neodron are alter egos, or at least closely related
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`entities that work together to maximize their revenue from infringement claims. Neodron
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`controls at least some of Solas’s patents and has the ability to license them. In fact, one patent
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`Solas asserted
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`
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`to Samsung Display. At least two other patents for which Solas
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`is the recorded owner are also
`
`-
`
`
`
`
`
`
`
`
`
`-
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`. That means the license Samsung Display bought and paid for in
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` encompasses at least some of Solas’s patents.
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`6.
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`Samsung Display cannot have liability under patents Neodron controls, even if
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`Solas owns them and continues to assert them. And Neodron is required to
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` from any litigation in which Solas asserts a patent that Neodron
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`controls. Moreover, under the License Agreement’s
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` for any claim by Solas that Samsung Display is infringing a patent that
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`Neodron controls because that question rests in part on the License Agreement.
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`7.
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`Samsung Display therefore brings this action for damages from the breach of the
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`License Agreement, for a declaration that the License Agreement is being breached by
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`Defendants’ continuing litigations against Samsung Display based on licensed patents, for a
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`3
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`Case 1:21-cv-07201-UA Document 1 Filed 08/26/21 Page 4 of 41
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`declaration that Samsung Display is licensed to practice patents Defendants have asserted, and
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`for a declaration that Samsung Display does not infringe those patents.
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`PARTIES
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`8.
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`Samsung Display is a corporation organized under the laws of the Republic of
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`Korea, with its principal place of business at 1 Samsung-ro, Giheung-gu, Yongin-si, Gyeonggi-
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`Do, 17113, Republic of Korea.
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`9.
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`On information and belief, Solas is a technology licensing company organized
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`under the laws of Ireland, with its headquarters at The Hyde Building, Suite 23, The Park,
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`Carrickmines, Dublin 18, Ireland. On information and belief, Realta Investments Ireland DAC,
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`an Irish corporation managed by Magnetar Capital LLC, owns much of Solas. On information
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`and belief since no later than November 2020, Solas and Neodron were and are closely related
`
`entities or alter egos.
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`10.
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`On information and belief, Neodron is a technology licensing company organized
`
`under the laws of Ireland, with its headquarters at The Hyde Building, Suite 23, The Park,
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`Carrickmines, Dublin 18, Ireland. On information and belief, Realta Investments Ireland DAC,
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`an Irish corporation managed by Magnetar Capital LLC, owns much of Neodron. On
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`information and belief, since no later than November 2020, Neodron and Solas were and are
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`closely related entities or alter egos.
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`JURISDICTION AND VENUE
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`11.
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`Samsung Display brings this action under the Declaratory Judgment Act, 28
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`U.S.C. §§ 2201–02, for declaratory judgments of non-infringement of certain patents under the
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`Patent Laws of the United States, 35 U.S.C. §§ 101 et seq. This Court has subject matter
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`jurisdiction under 28 U.S.C. §§ 1331 and 1338.
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`4
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`

`

`-
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` of the Escrow Agreement and
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` of the PLA, Neodron
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` and agreed to designate
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`
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` the License Agreement.
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`-
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`Case 1:21-cv-07201-UA Document 1 Filed 08/26/21 Page 5 of 41
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`12.
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`This Court has supplemental jurisdiction under 28 U.S.C. § 1367(a) over the
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`state-law causes of action because they are related to claims in the action within the Court’s
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`subject-matter jurisdiction and form part of the same case or controversy. In this case, the state-
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`law claims are derived from the same common nucleus of operative fact.
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`This Court has personal jurisdiction over Defendants in the Southern District of
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`13.
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`New York. Under
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`-
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`Solas also consented to personal jurisdiction in this forum because, as explained below, Solas is
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`bound by the License Agreement for the reasons provided throughout this complaint. Moreover,
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`on information and belief, Defendants, directly or through their agents and alter egos, have
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`conducted the business activities at issue in this lawsuit in New York. Those activities include
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`patent licensing efforts, such as negotiating and signing agreements related to patent licenses
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`within the Southern District of New York. This action arises out of and relates to those activities
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`that Defendants have purposefully conducted in New York or directed at New York and this
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`District. Neodron requested that Samsung Display
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`
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`, which location is within this District.
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`On information and belief, the Defendants or their agents and alter egos have an office at this
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`location. On information and belief, Gerald Padian, a director of Neodron and a director of
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`Solas, also has an office at 81 Main Street, Suite 209, White Plains, New York, from which he
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`conducts business for Defendants within this District, including negotiating the License
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`Agreement on behalf of Defendants.
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`14.
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`Venue is proper within this District under 28 U.S.C. §§ 1391(b) and 1391(c).
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`5
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`Case 1:21-cv-07201-UA Document 1 Filed 08/26/21 Page 6 of 41
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`Defendants Begin Their Campaign
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`BACKGROUND
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`15.
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`On or about May 2, 2019, Solas filed an action in the Eastern District of Texas
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`ultimately asserting three patents against Samsung Display, SEC, and SEA.2 See Amended
`
`Complaint, Solas OLED Ltd. v. Samsung Display Co., Ltd., et al., No. 2:19-cv-00152-JRG (E.D.
`
`Tex. Aug. 23, 2019), ECF No. 15.
`
`16.
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`On or about May 21, 2019, Neodron filed actions in the International Trade
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`Commission and the Western District of Texas asserting that SEC and SEA were infringing four
`
`patents. See Complaint, Certain Touch-Controlled Mobile Devices, Computers, and
`
`Components Thereof, No. 337-TA-1162 (U.S. Int’l Trade Comm’n); Complaint, Neodron Ltd. v.
`
`Samsung Elec. Co., Ltd., et al., No. 6:19-cv-00323-ADA (W.D. Tex. May 21, 2019), ECF No. 1.
`
`On or about June 28, 2019, Neodron filed another complaint in the Western District of Texas,
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`ultimately asserting seven more patents against Samsung Display, SEC, and SEA. See Second
`
`Amended Complaint, Neodron Ltd. v. Samsung Elec. Co., Ltd., et al., No. 1:19-cv-00903-ADA
`
`(W.D. Tex. Nov. 17, 2020), ECF No. 71.
`
`17. While Solas and Neodron were actively litigating against Samsung Display, SEC,
`
`and SEA, Neodron assigned to Solas U.S. Patent Nos. 9,292,144 (the “’144 Patent”) and
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`8,736,551 (the “’551 Patent”). Within a few months, it became clear why—by assigning the
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`’144 and ’551 Patents to Solas, Neodron sought, on information and belief, to attempt to exclude
`
`them from any future settlements or license agreements.
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`2 The PTAB has since determined in Final Written Decisions that all asserted claims in all three
`patents are unpatentable, precluding Solas’s infringement claims. A jury also found the asserted
`claims of one of those patents invalid. Samsung Display therefore at this time does not burden
`the Court with claims associated with those patents.
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`6
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`Case 1:21-cv-07201-UA Document 1 Filed 08/26/21 Page 7 of 41
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`18.
`
`On or about February 14, 2020, Neodron filed actions in the International Trade
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`Commission and the Western District of Texas against SEC and SEA, asserting four more
`
`patents. See Complaint, Capacitive Touch-Controlled Mobile Devices, Computer, and
`
`Components Thereof, No. 337-TA-1193 (U.S. Int’l Trade Comm’n); Complaint, Neodron Ltd. v.
`
`Samsung Elec. Co., Ltd., et al., No. 6:20-cv-00121-ADA (W.D. Tex. Feb. 14, 2020), ECF No. 1.
`
`On or about July 9, 2020, Neodron filed an action against Samsung Display in the Western
`
`District of Texas, asserting five more patents. See Complaint, Neodron Ltd. v. Samsung Display
`
`Co., Ltd., No. 6:20-cv-00623-ADA (W.D. Tex. July 9, 2020), ECF No. 1. Neodron, however,
`
`never served Samsung Display in this case even though it remained active for months.
`
`19.
`
`On or about September 14, 2020, Solas filed corresponding actions in the
`
`International Trade Commission and the Eastern District of Texas asserting two patents against
`
`Samsung Display, SEC, and SEA—U.S. Patent Nos. 7,573,068 (the “’068 Patent”) (Exhibit B)
`
`and 7,868,880 (the “’880 Patent”) (Exhibit C).3 See Complaint, Certain Active Matrix OLED
`
`Display Devices and Components Thereof, No. 337-TA-1225 (U.S. Int’l Trade Comm’n);
`
`Complaint, Solas OLED Ltd. v. Samsung Elec. Co., Ltd., et al., No. 2:20-cv-00307-JRG (E.D.
`
`Tex. Sept. 15, 2020), ECF No. 1. On November 6, 2020, Solas filed an unopposed motion to
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`terminate the International Trade Commission investigation, which was granted soon after.
`
`20.
`
`On or about November 17, 2020, after Samsung Display informed Neodron
`
`(through a third-party intellectual property licensing firm known as RPX) of its intention to enter
`
`into the License Agreement and just days before the License Agreement was signed, a court
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`granted Neodron’s motion to file an amended complaint to add Samsung Display as a defendant
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`to the June 28, 2019 action pending against SEC and SEA. See Second Amended Complaint,
`
`3 Solas also asserted a third patent in the ITC matter, but that patent is not at issue in this case.
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`7
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`Case 1:21-cv-07201-UA Document 1 Filed 08/26/21 Page 8 of 41
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`Neodron Ltd. v. Samsung Electronics Co., Ltd. et al., No. 1:19-cv-00903-ADA (W.D. Tex. Nov.
`
`17, 2020), ECF No. 71. But Neodron never served Samsung Display with this amended
`
`complaint.
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`Samsung Display Wants Lasting Peace and Therefore Pays a Substantial Sum
`
`21.
`
`In
`
`, Samsung Display and Neodron agreed to enter into the
`
`License Agreement, with Neodron agreeing to immediately take all actions and make all
`
`necessary filings to resolve all disputes. At the time of the License Agreement, Neodron had not
`
`served Samsung Display with a complaint in any pending litigation. Thus, Samsung Display’s
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`objective was to obtain the broadest possible license and to protect its downstream customers.
`
`Moreover, while Samsung Display did not have any direct contact with Neodron during the
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`course of the negotiations, Neodron and Samsung Display entered into the License Agreement.
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`Samsung Display understands that SEC entered into its own license agreement with Neodron
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`around the same time.
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`22.
`
`In the PLA, Neodron provided Samsung Display and affiliates a broad license to
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`all of Neodron’s “Patents.” The PLA defines “Patents” to mean
`
`defined in the PLA as
`
`
`
`
`
`
`
`
`
` The “Term” is
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` In other words, Samsung Display bargained and paid for the
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`broadest possible license—a license to every patent Neodron
`
`
`
`
`
`-
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` The patents listed on the
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` were just a starting point.
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`8
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`Case 1:21-cv-07201-UA Document 1 Filed 08/26/21 Page 9 of 41
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`23.
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`The broad definition of “Patents,” rather than a limitation to an
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`
`
`, makes sense in context. Samsung Display wanted to buy complete peace, but
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`could not possibly know what patents Neodron
`
`less what patents Neodron would
`
`, much
`
`. That Neodron, at
`
`least as of today, controls some or all of Solas’s patents even if they are not
`
`I
`
` has only recently come to light.
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`24.
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`In the PLA, Neodron represented that Licensor was
`
`
`
`
`
`
`
`
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`-
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`would
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` and has
`
`. Neodron also agreed that it
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`
`
`. In exchange,
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`. Samsung
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`-
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`Samsung Display agreed, among other things, to pay Neodron over
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`Display has fully performed its obligations under the License Agreement.
`
`Neodron and Solas Breach the PLA As Solas Continues the Campaign
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`25.
`
`Despite the settlement—and Samsung Display’s large payment—Solas continued
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`to litigate its claims under the ’068 and ’880 Patents against Samsung Display.
`
`26.
`
`On or about December 28, 2020, Solas filed another complaint in the International
`
`Trade Commission reasserting those same two patents against Samsung Display, SEC, and
`
`SEA—the ’068 Patent, the ’880 Patent (as well as a third patent that Solas later dropped). See
`
`Complaint, Certain Active Matrix OLED Display Devices and Components Thereof, No. 337-
`
`TA-1243 (U.S. Int’l Trade Comm’n). This new International Trade Commission investigation
`
`and the September 14, 2020 Eastern District of Texas action are referred to herein collectively as
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`the “First Action.”
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`9
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`Case 1:21-cv-07201-UA Document 1 Filed 08/26/21 Page 10 of 41
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`27.
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`On or about February 26, 2021, Solas filed a new action in the Western District of
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`Texas against Samsung Display, reasserting a patent that Solas had asserted in its May 2, 2019
`
`action against Samsung Display. See Complaint, Solas OLED Ltd. v. Samsung Display Co., Ltd.,
`
`No. 6:21-cv-00185-ADA (W.D. Tex. Feb. 26, 2021), ECF No. 1. This patent has since been
`
`invalidated by an Eastern District of Texas jury and the PTAB.
`
`28.
`
`On or about March 22, 2021, Solas filed a new action in the Eastern District of
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`Texas (the “Second Action”) against Samsung Display asserting two more patents—U.S. Patent
`
`Nos. 7,499,042 (the “’042 Patent”) (Exhibit D) and 7,663,615 (the “’615 Patent”) (Exhibit E)—
`
`and reasserting two other patents that were asserted in the May 2, 2019 action against Samsung
`
`Display and have since been invalidated by the PTAB. See Complaint, Solas OLED Ltd. v.
`
`Samsung Display Co., Ltd., et al., No. 2:21-cv-00104-JRG (E.D. Tex. Mar. 22, 2021), ECF No.
`
`1. That same day, Solas filed yet another action in the Eastern District of Texas against SEC and
`
`SEA asserting two more patents—the ’144 Patent and U.S. Patent No. 8,526,767. See
`
`Complaint, Solas OLED Ltd. v. Samsung Elec. Co., Ltd., et al., No. 2:21-cv-00105-JRG (E.D.
`
`Tex. Mar. 22, 2021), ECF No. 1.
`
`29.
`
`On June 11, 2021, SEC and SEA filed suit in this District. SEC and SEA
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`provided an extensive background history and explained in detail why they believe at least some
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`of Solas’s patent portfolio is controlled and licensable by Neodron and therefore covered under
`
`its license agreement. SEC and SEA also sought a determination that the Defendants are bound
`
`by and have breached SEC’s license agreement, that SEC and SEA have a license to practice the
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`patents in their suit, and that SEC and SEA have not infringed the patents in their suit. See
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`Complaint, Samsung Elec. Co., Ltd., et al. v. Solas OLED Ltd. & Neodron Ltd., No. 1:21-cv-
`
`05205-LGS, (S.D.N.Y. June 11, 2021), ECF No. 3 (the “SDNY Action”).
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`10
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`Case 1:21-cv-07201-UA Document 1 Filed 08/26/21 Page 11 of 41
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`30.
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`Samsung Display learned more about the relationship between Solas and Neodron
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`from the public version of the complaint in the SDNY Action. It now understands that Solas’s
`
`decision to continue the First Action and to commence the Second Action violates the License
`
`Agreement because the patents asserted are all covered by the PLA. Most obvious is the ’144
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`Patent that Solas asserted against SEC and SEA in the Eastern District of Texas (Solas OLED
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`Ltd. v. Samsung Electronics Co., Ltd., et al., Case No. 2:21–cv–00105–JRG) because it is
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`in truth, the patents Solas asserts in these actions against Samsung Display—the ’068 Patent, the
`
`. But
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`’880 Patent, the ’042 Patent, and the ’615 Patent (collectively, the “Patents-in-Suit”)—are also
`
`covered by the License Agreement for the reasons explained below. Solas’s assertion of the
`
`-
`
`Patents-in-Suit against Samsung Display therefore violates the License Agreement’s
`
`
`
`.
`
`Samsung Display has suffered, and continues to suffer, damages from being forced to defend
`
`itself in these actions.
`
`31.
`
`Samsung Display sent Neodron notice on July 23, 2021, in accordance with the
`
`License Agreement, see, e.g., Ex. A, PLA at § 5.2, asking it to
`
`
`
`
`
`
`
`
`
` Neodron’s representative, Jerry Padian, improperly rejected the request on July
`
`26, 2021.
`
`The License Agreements Cover the Patents-in-Suit
`
`32.
`
`For multiple reasons, the Patents-in-Suit are properly considered “Patents” under
`
`the PLA, meaning Samsung Display has the right under the License Agreement to practice them
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`11
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`Case 1:21-cv-07201-UA Document 1 Filed 08/26/21 Page 12 of 41
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`and is immune from any suit asserting them. First, it is undisputed that Neodron is bound to the
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`PLA. And Neodron and Solas have such a unity of interest and ownership that they should be
`
`considered closely related or alter egos, meaning Solas should also be bound to the PLA. On
`
`information and belief, Solas and Neodron have overlapping officers and directors, share offices
`
`and employees, and in general have such a unity of interest and ownership that the separate
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`personalities of the corporations no longer exist. They should not be allowed to retain their
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`separate corporate status in order to achieve inequitable results such as suing Samsung Display
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`for patents that Samsung Display paid Neodron to license. Solas should also be bound to the
`
`PLA, because Solas and Neodron are so closely related that Solas should have foreseen that it
`
`would be bound to the PLA by virtue of its relationship with Neodron.
`
`33.
`
`As an example of Solas and Neodron’s interconnectedness, the PLA requires that
`
` who, on information and belief, is
`
`and has been a director of Solas for the last five years. Mr. Padian is also a director of Neodron.
`
`Similarly, Ciaran O’Gara,
`
`, on information and belief,
`
`serves as an officer for both Neodron and Solas. Mr. O’Gara is also a director of Neodron and
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`Solas. Further, on information and belief, James Prusko and Sean O’Sullivan are also directors
`
`of both Neodron and Solas.
`
`34.
`
`According to the public complaint in the SDNY Action, Mr. Padian cannot even
`
`separate the two companies in his mind. According to the public complaint, in May 2021, SEC
`
`and SEA emailed Mr. Padian, and Mr. Padian responded on Neodron’s behalf and then offered,
`
`on Solas’s behalf, to begin license negotiations for the asserted patents (seeking to extract more
`
`money from SEC for a license that SEC already bought and paid for). Thus, in the exact same
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`12
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`Case 1:21-cv-07201-UA Document 1 Filed 08/26/21 Page 13 of 41
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`email, Mr. Padian spoke for both Neodron and Solas on SEC’s license agreement, its application
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`to the ’144 Patent, and negotiating a license.
`
`35.
`
`Neodron and its officers’ apparent ability to control and assert patents from
`
`Solas’s patent portfolio, and vice versa, shows that Neodron and Solas are closely related or alter
`
`egos, and are truly one entity. The Patents-in-Suit are thus “Patents” licensed to Samsung
`
`Display under the License Agreement, even if Solas, rather than Neodron, owns them.
`
`36.
`
`Second, the PLA defines “Patents” as
`
`
`
`
`
` (emphasis
`
`added). As evidenced by its recent actions, Neodron has control over the Patents-in-Suit, and
`
`they should therefore be considered “Patents” under the PLA. That Neodron does not own the
`
`Patents-in-Suit does not matter—the “Patents” definition is written in the disjunctive. As an
`
`example, when
`
`, USPTO records showed that Solas was the owner of
`
`the ’144 Patent. Yet Neodron still represented that it
`
` to
`
`Samsung Display.
`
`. In other words, at the time the PLA was signed, the ’144
`
`Patent was
`
` by Neodron without regard to its ownership. Having made
`
`these representations and warrantees, Neodron is now estopped from arguing otherwise. In
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`addition, on information and belief, at least some of Solas’s owners, officers, and directors
`
`financially benefitted from Samsung Display’s payments to Neodron for the license granted by
`
`the License Agreement, including the license to the ’144 Patent. And, according to the public
`
`complaint in the SDNY Action, when SEC and SEA informed Neodron that Solas had filed suit
`
`on patents to which SEC and SEA (and Samsung Display through its own License Agreement)
`
`had a license under the agreement Neodron signed, Solas dropped the ’144 Patent from that case.
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`13
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`Case 1:21-cv-07201-UA Document 1 Filed 08/26/21 Page 14 of 41
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`Nothing differentiates the ’144 Patent from Solas’s other patents meaning, as these actions show,
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`Neodron has control over all of the Patents-in-Suit, even if it is not the recorded owner, because
`
`it can license those patents to third parties, direct Solas to transfer those patents, and direct Solas
`
`to dismiss causes of action based on those patents. Due to Neodron’s demonstrated level of
`
`control, the Patents-in-Suit should be considered “Patents” under the PLA regardless of whether
`
`Neodron is the recorded owner.
`
`37.
`
`Third, the Patents-in-Suit might also be considered “Patents” under the PLA
`
`because Solas is an “Affiliate” of Neodron within the meaning of the PLA. The PLA defines
`
`“Affiliate” to include entities that Neodron “Controls,” and the PLA defines “Control” as
`
`
`
`
`
`-
`
`
`
`Display requires discovery to ascertain whether Neodron “Controls” Solas under this definition.
`
`If it does, this is another reason the Patents-in-Suit are covered by the License Agreement.
`
`38.
`
`Fourth, Solas should be considered a “Licensor” under the PLA. The recitals
`
` Samsung
`
`state in the PLA that
`
`represents and warrants in the PLA that
`
` then
`
`
`
`
`
`
`
`
`
`
`
`
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` Because the USPTO
`
`14
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`

`

`Case 1:21-cv-07201-UA Document 1 Filed 08/26/21 Page 15 of 41
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`assignment database shows that Neodron assigned Solas the ' 144 and '5 51 Patents before
`
`Neodron signed the PLA, Solas and Neodron together must be the "Licensor." That is, the only
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`way for "Licensor" to be the
`
`, including the ' 144 and
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`'551 Patents, is if "Licensor" includes both Neodron and Solas . Because Solas is a Licensor
`
`under the PLA, Samsung Display is licensed to practice all patents
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`-
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`by Neodron and Solas, and Solas is obligated to
`
`any lawsuit involving any of the Patents, including the First Action and the Second Action.
`
`39.
`
`Faced with ongoing lawsuits improperly asse1iing patents to which Samsung
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`Display is licensed and threats of more lawsuits, and as the victim of multiple breaches of the
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`PLA, Samsung is forced to seek recourse in this Comi. In this action, Samsung Display seeks,
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`among other things, a detennination that: (a) each Defendant is bound by and has breached the
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`PLA; (b) Samsung Display has a license to practice the Patents-in-Suit; ( c) Samsung Display has
`
`not infringed the '068 Patent; (d) Samsung Display has not infringed the '880 Patent;
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`(e) Samsung Display has not infringed the '042 Patent; and (f) Samsung Display has not
`
`infringed the '615 Patent.
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`40.
`
`Samsung Display filed this action in this Court because, as provided by the
`
`License Agreement:
`
`15
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`

`

`Case 1:21-cv-07201-UA Document 1 Filed 08/26/21 Page 16 of 41
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`41.
`
`The Escrow Agreement, executed in parallel with the license agreement, states
`
`that it was intended to facilitate the PLA. The PLA also states that the
`
` and requires that the parties be
`
`. The Escrow Agreement is
`
` The Escrow Agreement also states that
`
` implying that the clause will survive termination.
`
` The PLA also requires that it
`
`
`
`
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`
`
`
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`
`
`
`
`
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`
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`
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`
`
`
`
`42.
`
`The Second Action is a further breach of the PLA because Solas filed this action
`
`after the PLA was in effect even though it arises out of or relates to the PLA and the PLA
`
`requires that the action be filed in New York.
`
`COUNT ONE
`
`Breach of Contract
`
`43.
`
`Samsung Display incorporates all of the above paragraphs as though fully stated
`
`herein.
`
`16
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`

`

`Case 1:21-cv-07201-UA Document 1 Filed 08/26/21 Page 17 of 41
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`44.
`
`As described above, Neodron entered into the PLA with Samsung Display,
`
`whereby Neodron agreed to license patents and also made certain representations, wananties,
`
`and covenants.
`
`45.
`
`Among other representations, wananties, and covenants, Neodron stated that it
`
`had
`
`been
`
`. Neodron also represented that there had
`
`under the Patents. -
`
`-
`
`Neodron agreed to license the Patents to Samsung Display. Neodron also agreed that
`
`neither it nor its Affiliates:
`
`- 46.
`
`Neodron fmther agreed that in the event Samsung Display provides
`
`to Neodron that it or its Affiliates
`
`, Neodron would-
`
`-
`
`Neodron agreed that it:
`
`17
`
`

`

`Case 1:21-cv-07201-UA Document 1 Filed 08/26/21 Page 18 of 41
`
`47.
`
`48.
`
`As described herein, Defendants have breached these provisions of the PLA.
`
`Neodron represented in the PLA that “Licensor” had
`
` to
`
`the Patents. Defendants now assert that Solas is not a Licensor even though, on the date the PLA
`
`was signed, Solas was the record owner of the ’144 and ’551 Patents, which were and still are
`
`expressly identified as “Patents.” Either Solas is a Licensor or Neodron breached the PLA’s
`
`representations and warranties. Moreover, if Solas is not a Licensor, then Neodron’s
`
`September 19, 2019 assignment of the ’144 and ’551 Patents to Solas, taken together with the
`
`PLA’s express representation that Neodron
`
`, would appear to be
`
`part of a scheme by Neodron and Solas to strip Samsung Display of patent rights that it paid over
`
`-
`
` to license.
`
`49.
`
`Neodron represented that there had been
`
` to the Patents before
`
`, the PLA’s signature date. But
`
`Neodron transferred the ’144 and ’551 Patents to Solas on September 19, 2019. Neodron
`
`breached its representations in the PLA.
`
`50.
`
`Defendants agreed to promptly
`
`
`
`
`
` that any of the “Patents” under the PLA were involved.
`
`Samsung Display provided Defendants written notice that in the First Action, Solas has sued
`
`Samsung Display based on “Patents” under the PLA. Defendants have refused to dismiss the
`
`First Action with prejudice and are still improperly asserting the ’068 and ’880 Patents against
`
`Samsung Display. Neodron has breached the PLA by failing to cause Solas to dismiss the First
`
`Action.
`
`18
`
`

`

`Samsung Display’s request that Neodron do so.
`
`For the same reason, Neodron is also breaching the PLA by failing to
`
`, despite
`
`-
`
`refusing to
`
`53.
`
`54.
`
`Case 1:21-cv-07201-UA Document 1 Filed 08/26/21 Page 19 of 41
`
`51.
`
`For the same reason, Neodron is also breaching the PLA by allowing Solas to
`
`continue prosecuting the Second Action, where Solas is improperly asserting patents that are
`
`“Patents” under the PLA.
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`52.
`
`Neodron agreed to
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`Neodron now refuses to
`
` Samsung Display. Neodron has breached the PLA by
`
`-
`
`
`
`.
`
`
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`Neodron agreed not to sue or threaten to sue Samsung Display as to the licensed
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`“Patents.” Since the PLA’s effective date, Defendants have engaged in litigation asserting
`
`licensed “Patents.” Neodron has breached the PLA by allowing Solas to sue Samsung Display
`
`on the Patents-in-Suit.
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`55.
`
`Solas is bound to the PLA because Solas is the alter ego of Neodron, they are
`
`closely related entities, and Solas should be considered a “Licensor” under the PLA for the
`
`reasons explained above.
`
`56.
`
`The above-enumerated breaches are exemplary, not exhaustive, and Samsung
`
`Display reserves all rights to allege additional breaches by Neodron and Solas, to be proven at
`
`trial.
`
`57.
`
`As a direct and proximate cause of Defendants’ conduct, Samsung Display has
`
`been damaged in the amount it paid for the License Agreement and continues to be damaged by
`
`19
`
`

`

`Case 1:21-cv-07201-UA Document 1 Filed 08/26/21 Page 20 of 41
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`costs and expenses related to ongoing litigation and uncertainty over the effectiveness of the
`
`License Agreement in light of Defendants' ongoing litigation and continuing threats of litigation.
`
`COUNT TWO
`
`Declaratory Judgment of License to Practice the Patents-in-Suit
`
`58.
`
`Samsung Display incorporates all of the above paragraphs as though fully stated
`
`herein.
`
`59.
`
`As described above, an actual and justiciable controversy exists between Samsung
`
`Display and Defendants with respect to Samsung Display's rights under the License Agreement.
`
`60.
`
`The '068, '880, '042, and '615 Patents are supposedly owned by Solas, which is
`
`closely related to or an alter ego ofNeodron, and they therefore fall within the definition of
`
`"Patents." In addition, through conduct alleged herein and on info1mation and belief, the '068,
`
`'880, '042, and '615 Patents were
`
`by Neodron, or an Affiliate of
`
`Neodron, as of the Signature Date of the PLA or have become
`
`by
`
`Neodron or an Affiliate (including future Affiliates). Moreover, Solas qualifies as a "Licensor"
`
`under the PLA, and Neodron is estopped from arguing othe1wise, so Solas's patents fall within
`
`the definition of"Patents." Thus, the '068, '880, '042, and '615 Patents fall within the definition
`
`of "Patents" under the PLA. Under
`
`The term "Patent License" is defined as:
`
`20
`
`

`

`Case 1:21-cv-07201-UA Document 1 Filed 08/26/21 Page 21 of 41
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`Thus, Samsung Display paid Defendants over -
`
`up-front for a
`
`pe1petual, inevocable license to the Patents-in-Suit.
`
`61.
`
`Absent the declarato1y relief requested from this Comt, Samsung Display faces
`
`the cmTent and futme risk of patent infringement allegations by Defendants relating to the
`
`Patents-in-Suit (despite the clear language of