Case 1:12-cv-01461-LPS Document 24 Filed 03/01/13 Page 1 of 8 PageID #: 153
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`PRINCETON DIGITAL IMAGE CORPORATION,
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` Plaintiff,
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` v.
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`
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`KONAMI DIGITAL ENTERTAINMENT INC,
`HARMONIX MUSIC SYSTEMS, INC. and
`ELECTRONIC ARTS, INC.,
`
` Defendants.
`
`
`
`
`Case No.: 12-1461 (LPS)
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`JURY TRIAL DEMANDED
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`
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`SECOND AMENDED COMPLAINT
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`Princeton Digital Image Corporation (hereinafter referred to as “Plaintiff” or “PDIC”)
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`demands a jury trial and complains against the Defendants as follows:
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`THE PARTIES
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`1.
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`PDIC is a corporation organized and existing under the laws of the State of
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`Texas.
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`2.
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`Upon information and belief, Harmonix Music Systems, Inc. (“HMSI”) is a
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`corporation organized and existing under the laws of the State of Delaware conducting
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`business in this district.
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`3.
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`Upon information and belief, defendant Konami Digital Entertainment, Inc.
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`(“Konami”) is a corporation organized and existing under the laws of Illinois, and is a wholly-
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`owned subsidiary of Konami Corporation of America, a corporation organized and existing
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`under the laws of Delaware. Upon information and belief, both Konami and Konami
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`Corporation of America are conducting business in this district.
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`4.
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`Upon information and belief, Electronic Arts Inc. (“EAI”) is a corporation
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`organized and existing under the laws of the State of Delaware conducting business in this
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`Page 1 of 8
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`Harmonix Exhibit 1004
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`

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`Case 1:12-cv-01461-LPS Document 24 Filed 03/01/13 Page 2 of 8 PageID #: 154
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`district. Defendants EAI, Konami and HMSI are referred to herein collectively as
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`“Defendants.”
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`JURISDICTION AND VENUE
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`5.
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`This action arises under the patent laws of the United States of America, Title
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`35 of the United States Code. This Court has jurisdiction of this action under 28 U.S.C.
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`§§ 1331 and 1338(a).
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`6.
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`Upon information and belief, each of the Defendants is doing business and
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`committing infringements in this judicial district, and each is subject to personal jurisdiction
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`in this judicial district.
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`7.
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`Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391 and
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`1400(b).
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`THE PATENT
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`8.
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`Plaintiff PDIC repeats and incorporates herein the entirety of the allegations
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`contained in paragraphs 1 through 7 above.
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`9.
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`On April 30, 1996, U.S. Patent No. 5,513,129 (hereinafter referred to as “the
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`‘129 patent”) was duly and legally issued for an invention entitled “METHOD AND
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`SYSTEM FOR CONTROLLING COMPUTER-GENERATED VIRTUAL ENVIRONMENT
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`IN RESPONSE TO AUDIO SIGNALS.” By assignment, dated December 14, 2011, PDIC
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`became the owner of all right, title and interest in the ‘129 patent, including the right to
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`receive royalties for past infringements thereof. The ‘129 patent relates generally to allowing
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`the control of a virtual environment in response to a music signal. A copy of the ‘129 patent
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`is attached hereto as Exhibit 1.
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`
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`Page 2 of 8
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`Case 1:12-cv-01461-LPS Document 24 Filed 03/01/13 Page 3 of 8 PageID #: 155
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`FIRST CAUSE OF ACTION
`Claim For Patent Infringement
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`10.
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`Plaintiff PDIC repeats and incorporates herein the entirety of the allegations
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`contained in paragraphs 1 through 9 above.
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`11.
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`Defendant EAI is a publisher and distributor of electronic games that allow the
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`control of a virtual environment in response to a music signal, including at least a game
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`known commercially as Rock Band.
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`12.
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`Defendant HMSI is a developer of electronic games that allow the control of a
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`virtual environment in response to a music signal, including at least the Rock Band and
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`Karaoke Revolution games.
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`13.
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`Defendant Konami is a distributor of electronic games, certain of which were
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`developed at least in part by defendant HMSI, that allow the control of a virtual environment
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`in response to a music signal, including at least the game known as Karaoke Revolution.
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`14.
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`Defendant EAI provided development assistance to Defendant HMSI with
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`respect to various electronic games, including at least the Rock Band game. Defendant
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`Konami provided distribution assistance to HMSI for at least another of HMSI’s infringing
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`games, Karaoke Revolution.
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`15.
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`Defendants each infringe one or more claims of the ‘129 patent directly
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`through their developing, making, using, offering for sale and/or selling of at least the Rock
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`Band and Karaoke Revolution games, and/or indirectly by inducing infringement of the ‘129
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`patent by end users of at least the Rock Band and Karaoke Revolution games, and/or by
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`contributing to infringement of the ‘129 patent through their offering for sale and/or selling of
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`at least the Rock Band and Karaoke Revolution games. It is believed that one or more of the
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`Defendants also participated in developing, making, using, offering for sale and/or selling
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`other infringing games, such as Dance Dance Revolution and Rock Revolution.
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`Page 3 of 8
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`16.
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`Because of the relationships between Defendants EAI and Konami and
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`Defendant HMSI with respect to at least development, publication and/or distribution of the
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`Rock Band and Karaoke Revolution games, Defendants’ infringements of the ‘129 patent arise
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`out of the same transaction or series of transactions, and involve common issues of fact.
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`17.
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`Defendants are liable for infringement of the ‘129 patent with respect to at
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`least the aforementioned games, and it is anticipated that discovery will reveal other products
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`developed, made, used, offered for sale and/or sold by Defendants, which infringe one or
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`more claims of the ‘129 patent.
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`18.
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`Plaintiff has been damaged by each of the Defendants’ infringements of the
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`‘129 patent, and will be irreparably harmed unless such infringing activities are enjoined by
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`this Court.
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`19.
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`Upon information and belief, Defendants EAI and HMSI have been aware of
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`the ‘129 patent since at least about October 13, 2008, and their infringement has been willful
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`since at least that date. On or about that date, an Information Disclosure Statement submitted
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`in connection with a Request for Ex Parte Reexamination discussed in detail the ‘129 patent,
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`as well as a court ruling discussing it, and was served on patent counsel for Defendants EAI
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`and HMSI. Since at least that time, Defendants EAI and HMSI have known of and reviewed
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`the ‘129 patent, and continued to induce performance of the steps of the methods claimed in
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`the ‘129 patent, and those steps were in fact performed.
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`20.
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`As further evidence of Defendant HMSI’s knowledge of the ‘129 patent, the
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`‘129 patent was cited by the patent examiner, in two different office actions dated March 30,
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`2009 and January 5, 2010, respectively, against one of Defendant HMSI’s patent applications
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`relating to the Rock Band game. In two different office action responses, dated September
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`Page 4 of 8
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`30, 2009 and July 2, 2010, HMSI filed responses to these office actions with comment about
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`the substance and teachings of the ‘129 patent, indicating they had reviewed it in some detail.
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`21.
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`After becoming aware of the ‘129 patent and the scope of its claims, upon
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`information and belief, Defendant HMSI knew that customers of at least its Rock Band and
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`Karaoke Revolution games would infringe the ‘129 patent when playing those games, and,
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`with full knowledge of the ‘129 patent, induced infringement by making, selling and offering
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`the games to those customers and by encouraging and instructing those customers to play the
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`games, so that the customers would infringe the ‘129 patent, all with the specific intent by
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`HMSI that those customers use at least the Rock Band and Karaoke Revolution games to
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`infringe one or more claims of the ‘129 patent, including but not limited to at least claim 12.
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`22.
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`Also since becoming aware of the ‘129 patent, HMSI has continued to
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`contribute to the infringement of one or more claims of the ‘129 patent by its customers and
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`end users by making, selling, or offering for sale at least the Rock Band and Karaoke
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`Revolution games to its customers, which games constitute a material part of the invention
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`claimed in the ‘129 patent, and are not a staple article or commodity of commerce suitable for
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`substantial non-infringing use, but instead, are suitable only for practicing all of the steps of at
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`least claim 12 of the ‘129 patent.
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`23.
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`After becoming aware of the ‘129 patent and the scope of its claims, upon
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`information and belief, Defendant EA knew that customers of at least its Rock Band game
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`would infringe the ‘129 patent when playing that game, and, with full knowledge of the ‘129
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`patent, induced infringement by both selling the games to those customers and by
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`encouraging and instructing those customers to play the games, so that the customers would
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`infringe the ‘129 patent, all with the specific intent by EA that those customers use at least the
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`Rock Band game to infringe one or more claims of the ‘129 patent, including at least claim 12.
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`Page 5 of 8
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`Case 1:12-cv-01461-LPS Document 24 Filed 03/01/13 Page 6 of 8 PageID #: 158
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`24.
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`Also since becoming aware of the ‘129 patent, EA has continued to contribute
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`to the infringement of one or more claims of the ‘129 patent by its customers and end users by
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`offering and selling at least the Rock Band game to its customers, which games constitute a
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`material part of the invention claimed in the ‘129 patent, and are not a staple article or
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`commodity of commerce suitable for substantial non-infringing use, but instead, are suitable
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`only for practicing all of the steps of at least claim 12.
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`25.
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`Upon information and belief, Konami has been aware of the ‘129 patent since
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`at least as early as October, 2001 when it was cited during prosecution of what became US
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`Patent No. 6,347,998. Moreover, the ‘129 patent was cited against at least six other Konami
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`owned patent applications, including at least those leading to US Patent Nos. 6,843,726;
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`6,758,756; 6645,067; 6,582,309; 6,410,835; and 6,379,244. One or more of the foregoing
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`referenced patent applications relate to the Karaoke Revolution game, and in many of the
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`foregoing patent applications, Konami filed responses discussing the ‘129 patent in suit,
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`indicating Konami had actually reviewed the ‘129 patent in some detail. Since at least that
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`time, Konami has known of the ‘129 patent, and continued to induce performance of the steps
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`of the methods claimed in the ‘129 patent, and those steps were in fact performed.
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`26. After becoming aware of the ‘129 patent and the scope of its claims, upon
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`information and belief, Defendant Konami knew that customers of at least its Karaoke
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`Revolution game would infringe the ‘129 patent when playing that game, and, with full
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`knowledge of the ‘129 patent, induced infringement by both selling the game to those
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`customers and by encouraging and instructing those customers to play the game, so that the
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`customers would infringe the ‘129 patent, all with the specific intent by Konami that those
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`customers use at least the Karaoke Revolution game to infringe one or more claims of the
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`‘129 patent.
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`Page 6 of 8
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`Case 1:12-cv-01461-LPS Document 24 Filed 03/01/13 Page 7 of 8 PageID #: 159
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`27.
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`Also since becoming aware of the ‘129 patent, Konami has continued to
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`contribute to the infringement of one or more claims of the ‘129 patent by its customers and
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`end users by offering and selling at least the Karaoke Revolution game to its customers, which
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`games constitute a material part of the invention claimed in the ‘129 patent, and are not a
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`staple article or commodity of commerce suitable for substantial non-infringing use, but
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`instead, are suitable only for practicing all of the steps of at least claim 12 of the ‘129 patent.
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`28.
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`Each of the defendants, since becoming aware of the ‘129 patent long prior to
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`the filing of this case, has continued their infringing activities despite full knowledge of the
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`scope of the ‘129 patent, and of their infringement, with full knowledge that there was an
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`objectively high likelihood that each of their respective actions constituted infringement of the
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`‘129 patent, and that the ‘129 patent was and is valid.
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`29.
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`Each of the defendants, since becoming aware of the ‘129 patent and of the
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`scope of its claims, have continued all of their above described respective activities, all with
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`the specific intent that customers of the above mentioned games would perform acts that
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`would infringe one or more claims of the ‘129 patent, including at least claim 12.
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`
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`WHEREFORE, the Plaintiff PDIC prays for judgment against each one of the
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`Defendants on all the counts and for the following relief:
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`A.
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`A declaration that the Plaintiff is the owner of the ‘129 patent, and that the
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`Plaintiff has the right to sue and to recover for infringement thereof;
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`B.
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`C.
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`A declaration that the ‘129 patent is valid and enforceable;
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`A declaration that each of the Defendants has infringed the ‘129 patent, and
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`that such infringement was willful;
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`Page 7 of 8
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`D.
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`Preliminary and permanent injunctions against each of the Defendants, their
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`officers, agents, servants, employees and attorneys, all parent and subsidiary corporations,
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`their assigns and successors in interest, and those persons acting in active concert or
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`participation with them, including distributors and customers, enjoining them from continuing
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`acts of infringement of the ‘129 patent;
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`E.
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`An accounting for damages under 35 U.S.C. §284 from each of the Defendants
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`for its respective infringement of the ‘129 patent, and an award of damages ascertained
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`against each of the Defendants in favor of Plaintiff PDIC, together with interest as provided
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`by law;
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`F.
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`G.
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`An award of the Plaintiff’s attorneys’ fees and costs; and
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`Such other and further relief as this Court may deem proper, just and equitable.
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`
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`JURY DEMAND
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`Plaintiff PDIC demands a trial by jury of all issues properly triable by jury in this
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`action.
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`Dated: March 1, 2013
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`
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`Respectfully submitted,
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`
`
`O’KELLY ERNST & BIELLI, LLC
`
`
`/s/ Sean T. O’Kelly
`Sean T. O’Kelly (No. 4349)
`901 N. Market Street, Suite 1000
`Wilmington, Delaware 19801
`(302) 778-4000
`(302) 295-2873 (facsimile)
`sokelly@oeblegal.com
`
`Attorneys for Plaintiff Princeton
`Digital Image Corporation
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`
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`Page 8 of 8
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