Case 1:14-cv-00598-LPS Document 1 Filed 05/12/14 Page 1 of 9 PageID #: 1
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`THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No.
`
`JURY TRIAL DEMANDED
`
`))))))))))))
`
`CHINOOK LICENSING DE, LLC,
`a Delaware Limited Liability Company,
`
`Plaintiff
`
`vs.
`
`RozMed LLC, Iron Dome LLC, John J. Yim &
`Associates LLC, Steven S. Yu, and John J.
`Yim,
`
`Defendants
`
`COMPLAINT
`
`This is an action to curtail and remedy the improper, fraudulent and unlawful conduct by
`
`RozMed LLC, Iron Dome LLC, John J. Yim & Associates LLC, Steven S. Yu, and John J. Yim
`
`(collectively, “Defendants”).
`
`Plaintiff Chinook Licensing DE, LLC (“Chinook”), by its
`
`attorneys, brings this action for relief against Defendants for tortious interference with Chinook’s
`
`business relations.
`
`PARTIES
`
`1.
`
`Plaintiff Chinook Licensing DE, LLC is a Delaware limited liability company
`
`with a place of business at 320 Wilmette Avenue, Glenview, Illinois 60025.
`
`2.
`
`On information and belief, Defendant RozMed LLC is a limited liability company
`
`organized and existing under the laws of the State of Virginia with its principal place of business
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`at 9810 Cresence Way, Fairfax, Virginia 22032. RozMed’s members include at least Steven S.
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`Yu, a citizen of the state of Maryland. RozMed LLC can be served via its registered agent,
`
`Hungju Yu, at 9810 Cresence Way, Fairfax, Virginia 22032.
`
`1
`
`E-Watch, Inc
`Exhibit 2014
`Petitioner - Iron Dome LLC
`Patent Owner - E-Watch Inc
`IPR2014-00439
`
`

`

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`3.
`
`On information and belief, Defendant Iron Dome LLC is a limited liability
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`company organized and existing under the laws of the State of Virginia, a citizen of the state of
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`Virginia with its principal place of business at 501 Watkins Pond Blvd, Rockville, Maryland
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`20850.
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`Iron Dome LLC’s members include at least Steven S. Yu, a citizen of the state of
`
`Maryland Iron Dome LLC is a wholly –owned subsidiary of RozMed LLC. Iron Dome can be
`
`served via its registered agent, RozMed LLC, at 9810 Cresence Way, Fairfax, Virginia 22032.
`
`4.
`
`On information and belief, Defendant John J. Yim & Associates LLC is a limited
`
`liability company organized and existing under the laws of the State of Virginia with its principal
`
`place of business at 7600 Leesburg Pike, East Building, Suite 470, Falls Church, Virginia 22043.
`
`John J. Yim & Associates LLC’s members include at least John J. Yim, a citizen of the state of
`
`Virginia. John J. Yim & Associates can be served via its registered agent, John J. Yim, at7600
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`Leesburg Pike, East Building, Suite 470, Falls Church, Virginia 22043.
`
`5.
`
`On information and belief, Defendant Steven S. Yu is an individual residing in
`
`Rockville, Maryland and a citizen of the State of Maryland. Steven Yu is a managing member of
`
`RozMed LLC and principal of Iron Dome LLC.
`
`6.
`
`On information and belief, Defendant John J. Yim is an individual residing in
`
`Falls Church, Virginia. John Yim is the managing partner of John J. Yim & Associates LLC.
`
`JURISDICTION AND VENUE
`
`7.
`
`This Court has diversity jurisdiction pursuant to 28 U.S.C. § 1332. Complete
`
`diversity exists between Plaintiff – a citizen of Delaware - and Defendants – citizens of either
`
`Virginia or Maryland - and the amount in controversy is in excess of $75,000.
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`Case 1:14-cv-00598-LPS Document 1 Filed 05/12/14 Page 3 of 9 PageID #: 3
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`8.
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`This Court has personal jurisdiction over all Defendants pursuant to the Delaware
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`Long-Arm Statute, 10 DEL. CODE. ANN. Tit. 3, § 3104, by virtue of Defendants’ actions bringing
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`about this cause of action, as alleged herein, and causing injury to Chinook.
`
`9.
`
`Venue is proper in this district under 28 U.S.C. § 1391 because among other
`
`reasons, Defendants are subject
`
`to personal
`
`jurisdiction in this District and because of
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`Defendants’ actions within this District giving rise to this cause of action.
`
`FACTUAL BACKGROUND
`
`10.
`
`Chinook is in the business of licensing patents that it owns and defending its
`
`patent rights against wrongful infringers of those rights.
`
`11.
`
`12.
`
`Chinook owns United States Patent No. 7,047,482 (the “’482 patent”).
`
`Chinook has asserted the ’482 patent against several companies for patent
`
`infringement in the United States District Court for the District of Delaware. These matters are
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`pending before Judge Stark.
`
`13.
`
`Several of the companies against whom Chinook has asserted the ’482 patent
`
`have settled their respective patent disputes by obtaining a license from Chinook to continue
`
`their use of the ’482 patent.
`
`14.
`
`Litigation is ongoing with several remaining defendants in pending patent
`
`infringement actions; however, Chinook continues to work towards resolving its disputes with
`
`those remaining companies.
`
`15.
`
`Stephen B. Brauerman, Esquire is Chinook’s Delaware counsel handling the
`
`litigation of the ’482 patent in Delaware. His office address is 222 Delaware Avenue, Suite 900,
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`Wilmington, DE 19801.
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`Case 1:14-cv-00598-LPS Document 1 Filed 05/12/14 Page 4 of 9 PageID #: 4
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`16.
`
`On March 26, 2014 Defendant John J. Yim sent a letter to Mr. Brauerman in
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`Delaware threatening to file, on behalf of his client, a petition for Inter Partes Review seeking to
`
`invalidate Chinook’s ’482 patent unless Chinook immediately granted three (3) retroactive and
`
`transferable licenses to the ’482 patent. A true and accurate copy of the March 26, 2014 letter
`
`from Mr. Yim to Mr. Brauerman is attached hereto as Exhibit A.
`
`17.
`
`The March 26, 2014 letter was typed on the letterhead of Defendant John J. Yim
`
`& Associates and signed by Defendant John J. Yim. (Id.)
`
`18.
`
`The March 26, 2014 letter states: “[w]e are attorneys for Iron Dome LLC
`
`(www.irondome.com).” (Id.)
`
`19.
`
`Enclosed with the March 26, 2014 letter was a draft patent license agreement
`
`regarding the ’482 patent and a draft petition for Inter Partes Review (“IPR”) against the ’482
`
`patent. True and accurate copies of the draft patent license agreement and draft IPR petition are
`
`attached hereto as Exhibit B and Exhibit C, respectively.
`
`20.
`
`An IPR is a trial proceeding conducted before the Patent Trial and Appeal Board
`
`whereby a third party may seek a review the patentability of one or more claims in a patent. In
`
`effect, an IPR is a vehicle by which a third party can seek to invalidate an issued patent.
`
`21.
`
`The draft license agreement enclosed with the March 26, 2014 letter is the
`
`mechanism by which Defendant Iron Dome LLC proposed to obtain three (3) transferable
`
`licenses to the ’482 patent. (See Exhibit B.)
`
`22.
`
`The enclosed draft patent license agreement indicates that Defendant Steven Yu is
`
`the Managing Member of Iron Dome LLC. (Id. at 5.)
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`- 4 -
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`Case 1:14-cv-00598-LPS Document 1 Filed 05/12/14 Page 5 of 9 PageID #: 5
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`23.
`
`The draft license agreement states that “the Parties wish to resolve their patent
`
`dispute and avoid the attendant risks, fees, costs, and expenses that are associated with litigation
`
`and other patent related proceedings.” (Id. at 1.)
`
`24.
`
`Prior to Chinook’s local counsel’s receipt of this letter and enclosures, neither
`
`Chinook nor any of its representatives or affiliates had contact with any of the Defendants.
`
`25.
`
`Defendants knew of and specifically referenced the litigation that Chinook has
`
`pending against other parties.
`
`26.
`
`In their letter, Defendants state: “we request a rapid resolution of this dispute.”
`
`The referenced “dispute” is Defendants’ threatened draft petition for IPR enclosed with the
`
`March 26, 2014.
`
`27.
`
`The draft license agreement does not propose to purchase licensing rights or
`
`include any provision wherein Defendant Iron Dome would remit monetary compensation to
`
`Chinook in exchange for the requested licenses.
`
`28.
`
`Paragraph 3(a) of the draft license states that Defendant Iron Dome LLC may
`
`transfer the transferable licenses to the parties in Chinook’s pending patent infringement actions.
`
`(Id. at 2.)
`
`29.
`
`Paragraph 5 of the draft license states:
`
`5. Admission of Patent Validity: Iron Dome admits that the
`Asserted Patent is valid and enforceable, and as such, will not
`challenge or participate in any challenge to the validity and
`enforceability of
`the Asserted Patent
`in any kind of
`legal
`proceeding.
`
`(Id. at 3.)
`
`30.
`
`The draft petition for IPR included with the March 26, 2014 letter takes the
`
`position that the claims of the ’482 patent are obvious and therefore invalid and not enforceable.
`
`(See Exhibit C at v.)
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`Case 1:14-cv-00598-LPS Document 1 Filed 05/12/14 Page 6 of 9 PageID #: 6
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`31.
`
`The assertion in Paragraph 5 of the draft license agreement and the basis for
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`Defendants’ petition for IPR are diametrically opposed.
`
`32.
`
`33.
`
`Chinook refused Defendants’ coercive offer to license the ’482 patent.
`
`On April 22, 2014, a petition seeking Inter Partes Review of the ’482 patent was
`
`filed with the United States Patent and Trademark Office by Defendant John J. Yim on
`
`Defendant Iron Dome LLC’s behalf. Defendant Steven S. Yu is designated as back-up counsel
`
`for the petition.
`
`34.
`
`On information and belief, in light of the foregoing facts, Defendants’ filing of the
`
`petition for Inter Partes Review of the ’482 patent was not in good faith and not for a proper
`
`purpose.
`
`35.
`
`Specifically, for example, Defendant Iron Dome’s press release regarding its
`
`petition for Inter Partes Review, included the following quote from Defendant Steven Yu: “No
`
`one should have to surrender to these lawsuits exploiting defective patents.” A true and correct
`
`copy of the press release is attached hereto as Exhibit D.
`
`36.
`
`The press release, however, failed to mention that Defendants previously sought
`
`to enter into a license agreement for the same ’482 patent. Despite Iron Dome’s declaration that
`
`the “defective” patents were being exploited, Defendants are apparently willing explicitly to
`
`assert that the patent was valid and enforceable if only they could obtain rights to license
`
`unidentified third parties to the patent in question, presumably for their own financial benefit.
`
`37.
`
`On information and belief, it is likely that the remaining defendants in the
`
`ongoing Delaware patent infringement actions will find out about the pending petition for IPR,
`
`which will greatly reduce the chances that Chinook will be able to amicably resolve the
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`infringement actions without further litigation.
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`

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`Case 1:14-cv-00598-LPS Document 1 Filed 05/12/14 Page 7 of 9 PageID #: 7
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`38.
`
`The malicious actions of Defendants in attempting to coerce a license from
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`Chinook and then filing an unfounded legal IPR proceeding will cost Chinook both time and
`
`money and intefere with Chinook’s ability to license its patent.
`
`39.
`
`Defendants sent their injurious communication from their office in Virginia, using
`
`letterhead from their counsel with a Virginia address, where the majority of Defendants are
`
`located.
`
`40.
`
`Defendants knew that they were communicating with a Delaware LLC (Chinook)
`
`and contacted Chinook’s Delaware counsel in Wilmington, Delaware.
`
`41.
`
`Defendants’ actions will cause Chinook to incur damages exceeding $75,000.
`
`TORTIOUS INTERFERENCE WITH BUSINESS RELATIONS
`(VIRGINIA COMMON LAW)
`
`42.
`
`Chinook repeats, realleges and incorporates by reference the allegations set forth
`
`in paragraphs 1–41 as if fully set forth herein.
`
`43.
`
`44.
`
`Chinook has existing business relationships with licensees of the ’482 patent.
`
`Chinook has a reasonable expectation of potential business relationships with
`
`alleged patent infringers who have not yet resolved their disputes with Chinook and have not yet
`
`obtained a license to the ’482 patent.
`
`45.
`
`On information and belief, Defendant had knowledge of Chinook’s existing
`
`business relationships as well as other potential relationships with others regarding Chinook’s
`
`licensing of the ’482 patent. (E.g., Exhibit A.)
`
`46.
`
`Defendants knowingly, intentionally, wrongfully, and maliciously interfered with
`
`and continue to interfere with Chinook’s existing and potential business relationships.
`
`47.
`
`The IPR proceeding is unfounded litigation. The only purpose for the litigation is
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`to coerce Chinook into capitulating and tendering a license to Defendant Iron Dome, LLC.
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`Case 1:14-cv-00598-LPS Document 1 Filed 05/12/14 Page 8 of 9 PageID #: 8
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`48.
`
`Defendants’ actions have harmed Chinook’s business relationships with current
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`licensees and potential licensees. Chinook’s loss of these advantageous business relations
`
`resulted directly from Defendants’ improper and unlawful actions.
`
`49.
`
`Chinook will suffer substantial damages, in an amount to be determined at trial, as
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`a result of Defendants’ improper and unlawful actions.
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`DEMAND FOR JURY TRIAL
`
`50.
`
`Chinook demands a trial by jury of any and all causes of action.
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`- 8 -
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`Case 1:14-cv-00598-LPS Document 1 Filed 05/12/14 Page 9 of 9 PageID #: 9
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`PRAYER FOR RELIEF
`
`WHEREFORE, Chinook respectfully prays for judgment:
`
`A.
`
`Ordering Defendants to withdraw it petition for Inter Partes Review of the ’482
`
`patent;
`
`B.
`
`Enjoining Defendants from taking any further action or threatening to take further
`
`action against the validity of the ’482 patent;
`
`C.
`
`Enjoining Defendants from soliciting, entering into, or enforcing any agreements
`
`with potential licensees with regard to the ’482 patent or otherwise impair Chinook’s ability to
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`license the ’482 patent;
`
`D.
`
`E.
`
`Awarding Chinook monetary damages; and
`
`Granting such other and further relief as this Court deems just and proper.
`
`Dated: May 12, 2014
`
`Bayard, P.A.
`
`/s/ Stephen B. Brauerman
`Richard D. Kirk (rk0922)
`Stephen B. Brauerman (sb4952)
`Vanessa R. Tiradentes (vt5398)
`Sara E. Bussiere (sb5725)
`222 Delaware Avenue, Suite 900
`Wilmington, DE 19801
`(302) 655-5000
`rkirk@bayardlaw.com
`sbrauerman@bayardlaw.com
`vtiradentes@bayardlaw.com
`sbussiere@bayardlaw.com
`
`Attorneys for Plaintiff Chinook Licensing DE,
`LLC
`
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`Case 1:14-cv-00598-LPS Document 1-1 Filed 05/12/14 Page 1 of 3 PageID #: 10
`Case 1:14-cv—00598—LPS Document 1-1 Filed 05/12/14 Page 1 of 3 PageID #: 10
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`EXHIBIT A
`
`EXHIBIT A
`
`

`

`Case 1:14-cv-00598-LPS Document 1-1 Filed 05/12/14 Page 2 of 3 PageID #: 11
`Case 1:14-cv-00598—LPS Document 1-1 Filed 05/12/14 Page 2 of 3 PageID #: 11
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`JOHN J. YIM & ASSOCIATES, LLC
`
`Tysons Corner
`7600 Leesburg Pike
`East Building, Suite 470
`Falls Church, VA 22043
`
`Tel. 703.749.0500
`Fax. 202.379.1723
`
`John J. Yim’?
`
`Managing Partner
`E-MAlL: jyim@yimassociates.com
`
`*Admiiled in CA, DC, MD, VA &
`United States Patent and Trademark Office
`
`March 26, 2014
`
`
`
`Via Federal Express
`Stephen B. Brauerlnan
`Bayard, PA.
`222 Delaware Avenue, Suite 900
`Wilmington, DE 19801
`
`Re: Inter Paries Review of US. Patent No. 7,047,482
`
`Chinook Licensing DE, LLC
`SETTLEMENT PURPOSES ONLY
`
`Dear Counsel:
`
`We are attomeys for Iron Donie LLC (www.irondonie.eom). ‘
`
`This letter addresses the invalidity of the patent asserted by Chinook Licensing
`DE, LLC, against Matchcom, 1nc., Scribd, Inc., StumbleUpon, 1110., Facebook, 1110.,
`Hulu, LLC, LinkedIn Corporation, Project Rover, Ine., Zoosk, Inc., and Pandora Media,
`1110., in civil actions recently filed in the US. District Court for the Distn'ct of Delaware.
`Attached is a fully prepared, but not yet filed, petition for Inter Par-res Review (IPR)
`against the asserted patent.
`
`Although the validity of the asserted patent is questioned, we wish to acquire
`retroactive and fully transferable licenses to the asserted patent. After reviewing and
`considering the merits of the enclosed draft IPR petition, please contact me so that we can
`resolve this matter.
`
`With the understanding that you are fully acquainted with the new IPR
`proceedings, we request a rapid resolution of this dispute.
`
`

`

`Case 1:14-cv-00598-LPS Document 1-1 Filed 05/12/14 Page 3 of 3 PageID #: 12
`Case 1:14-cv-00598—LPS Document 1-1 Filed 05/12/14 Page 3 of 3 PageID #: 12
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`Please contact us no later than two weeks of receipt of this letter. We enclose a
`license agreement for your review.
`
`Sincerely yours,
`
`
`
`John J. Yim
`
`Enclosures
`
`

`

`Case 1:14-cv-00598-LPS Document 1-2 Filed 05/12/14 Page 1 of 6 PageID #: 13
`Case 1:14-cv—00598—LPS Document 1-2 Filed 05/12/14 Page 1 of 6 PageID #: 13
`
`EXHIBIT B
`
`EXHIBIT B
`
`

`

`Case 1:14-cv-00598-LPS Document 1-2 Filed 05/12/14 Page 2 of 6 PageID #: 14
`Case 1:14-cv-00598—LPS Document 1-2 Filed 05/12/14 Page 2 of 6 PageID #: 14
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`Patent License Agreement
`
`This patent license agreement (‘Agreement’) is dated
`and is between:
`
`(‘Effective Date’)
`
`IRON DOME LLC, a Virginia limited liability company,
`and
`
`CHINOOK LICENSING DE LLC, a Delaware limited liability company.
`
`Chinook Licensing DE, LLC is the owner of US. Patent No. 7,047,482 issued on May
`16, 2006 (‘Asserted Patent”). The patent owner has brought civil actions for patent
`infringement against van'ous parties for operating websites that make personalized
`recommendations to users. Iron Dome LLC wishes to acquire transferable licenses to the
`Asserted Patent.
`
`The Parties wish to resolve their patent dispute and avoid the attendant risks, fees,
`costs, and expenses that are associated with litigation and other patent—related proceedings.
`Therefore, the Parties agree as follows:
`
`1 .
`
`Definitions
`
`(a) ‘C__hinook’ means Chinook Licensing DE, LLC, the owner of the Asserted Patent,
`and all of its Affiliates.
`
`(b) ‘lron Dome’ means Iron Dome LLC and all of its Affiliates.
`
`(c)‘Par’t means Chinook or Iron Dome. ‘Parties’ means both Chinook and Iron
`
`Dome.
`
`(d) “Third Party’ means any party that is neither Chinook nor Iron Dome.
`
`‘Affiliate’ means any present or future entity, corporation, company, association,
`(6)
`paltnership, joint venture, organization or other entity that directly or indirectly controls, is
`controlled by, or is under common control with a given entity. For purposes of this definition,
`“control” means (i) in the case of a corporation, the direct or indirect ownership of 50% or
`more of the shares of stock entitled to vote for the election of directors (or of persons
`performing similar functions); or (ii) in the case of any other type of legal entity, the direct or
`indirect ownership of 50% or more of the cqnity interests, or status as a general partner in any
`partnership or joint venture, or any other arrangement whereby a party controls or has the
`right to control the Board of Directors or equivalent governing body of a corporation or other
`entity.
`
`‘ nfiingement Actions’ means those legal actions that Chinook has brought
`(f)
`asserting infringement of the Asserted Patent against various defendants in any fomm,
`including any actions brought in the US. International Trade Commission, and including the
`
`
`
`

`

`Case 1:14-cv-00598-LPS Document 1-2 Filed 05/12/14 Page 3 of 6 PageID #: 15
`Case 1:14-cv-00598—LPS Document 1-2 Filed 05/12/14 Page 3 of 6 PageID #: 15
`
`Patent License Agreement
`
`following in the U.S. District Court for the District of Delaware on or about December 20,
`2013 and January 20, 2014:
`
`(I)
`(2)
`(3)
`(4)
`(5)
`(6)
`(7)
`(8)
`(9)
`
`I:l3—cv—02077
`1:13-cv-02078
`l:l3—cv-02079
`l:l4-cv-00073
`1:14-cv—00074
`1:14-cv-00075
`1:14—cv—00076
`1:14—cv-00077
`1:14-ev—00105
`
`Chinook Licensing DE, LLC v. Match.com, Inc.
`v. Scribd, Inc.
`V. StumbleUpon, Inc.
`v. Facebook, Inc.
`V. Hulu, LLC
`v. LinkedIn Corporation
`V. Project Rover, Inc.
`v. Zoosk, Inc.
`v. Pandora Media, Inc.
`
`Grant of Patent Licenses: Chinook grants to Iron Dome three (3) separate
`2.
`retroactive, royalty-free, non—exclusive licenses for the Asseited Patent (each a ‘Transferable
`License’), as well as for any and all United States patents now and in the future owned,
`controlled, assigned, or licensed to Chinook that are necessary for operating a website that is
`covered by the claims of the Asserted Patent.
`
`3.
`
`Transferability of Patent Licenses
`
`(a) Transferability: lron Dome is permitted to separately transfer each of the
`Transferable Licenses to separate Third Parties and its Affiliates. For avoidance of doubt, this
`is intended to mean that the first Transferable License is transferable to one Third Party and
`its Affiliates, the second Transferable License is transferable to another Third Party and its
`Affiliates, and so on. Chinook understands that Iron Dome may transfer these Transferable
`Licenses to defendants in the Infringement Actions.
`
`(1)) Notification: Iron Dome shall notify Chinook of any transfer of a Transferable
`License in writing (including the identity of the Third Party transferee) within five business
`days after such transfer.
`
`(c) Release: Upon the transfcr of a Transferable License to a Third Party who is a
`defendant in any of the Infringement Actions, Chinook shall release such Third Party fi'om:
`
`(i) all past and present claims, allegations, damages, obligations, liabilities or
`expenses of any kind or nature relating to the subject matter of the relevant Infringement
`Action,
`
`(ii) all claims that were or could have bcen asserted in the relevant
`Infringement Action, and
`
`(iii) all claims based 011 or arising out of the alleged infringement of the
`Asserted Patent.
`
`2/5
`
`
`
`

`

`
`
`Case 1:14-cv-00598-LPS Document 1-2 Filed 05/12/14 Page 4 of 6 PageID #: 16
`Case 1:14-cv-00598—LPS Document 1-2 Filed 05/12/14 Page 4 of 6 PageID #: 16
`
`Patent License Agreement
`
`((1) Dismissal: After Chinook receives written confirmation by a Third Party that they
`are the transferee of a Transferable License, Chinook shall dismiss its Infi'ingement Action
`against such Third Party within six (6) business days.
`
`(e) Covenant Not-To-Sue: Chinook will not assert any claim, or commence or join in
`any legal, administrative or other proceeding under the Asserted Patent against Iron Dome or
`any Third Party transferees, or any of its customers, suppliers, importers, manufacturers, or
`distributors.
`
`(f) Non—Assertion Runs with Patent: Chinook will impose this covenant not—to-sue
`on any Third Party to whom Chinook may assign the Asserted Patent.
`
`(g) Single Transfer Only: Each of the Transferable Licenses is transferable only
`once. Once lron Dome transfers a Transferable License to a Third Party, that Third Party may
`not subsequently transfer the Transferable License to another Third Party. Iron Dome will
`inform of and impose this single-transfer limitation upon any Third Party transferee.
`
`4.
`
`Enforcement
`
`(a) Any Third Party who is a transferee of the Transferable License shall have
`standing and the right to enforce this Agreement (including the provisions for Release and
`Dismissal set forth in Sections 3(c) and (d) of this Agreement) against Chinook, without
`requiring the joining of iron Dome.
`
`(b) Chinook will not delay its duties of Release and Dismissal set forth above in
`Sections 3(0) and (d) of this Agreement. Chinook will be responsible for all expenses
`(including attorney fees) incurred by Iron Dome and/or Third Parties relating to the
`enforcement of this Agreement due to any such delay.
`
`Admission of Patent Validity: lron Dome admits that the Asserted Patent is valid and
`5.
`enforceable, and as such, will not challenge or participate in any challenge to the validity and
`enforceability of the Asserted Patent in any kind of legal proceeding.
`
`Confidentiality: The Parties shall treat this Agreement as confidential and shall not
`6.
`disclose the existence, contents, terms, or conditions of this Agreement to any Third Party
`without the prior written consent of the other Party, except as neceSSary in the following
`conditions:
`
`(a) as required by any court or other governmental body;
`
`(b) as otherwise required by law;
`
`(c) as otherwise may be required by applicable securities and other law and
`regulation, including the regulations of the US. Securities and Exchange Commission;
`
`3/5
`
`

`

`
`
`Case 1:14-cv-00598-LPS Document 1-2 Filed 05/12/14 Page 5 of 6 PageID #: 17
`Case 1:14-cv-00598—LPS Document 1-2 Filed 05/12/14 Page 5 of 6 PageID #: 17
`
`Patent License Agreement
`
`(d) to legal counsel, accountants, and other financial advisors of the Parties, subject to
`obligations of confidentiality;
`
`(e) to the extent necessary for the enforcement of this Agreement or rights under this
`Agreement;
`
`(f) to banks, investors, and other financing sources, subject to a non—disclosure
`agreement respecting confidentiality customary to the corresponding prospective transaction;
`
`(g) in connection with an actual or prospective merger, acquisition, or other
`transaction with a Third Party, subject to a non—disclosure agreement respecting
`confidentiality customary to such prospective transaction;
`
`(11) to prospective transferees of the Transferable Licenses, including those defendants
`in the Infringement Actions.
`
`Ownership: Chinook represents that it is the sole owner of the Asserted Patent and
`7.
`has the right to grant the licenses and covenants in this Agreement related thereto.
`
`Representations: Each Party represents to the other Party, as of the Effective Date,
`8.
`as follows:
`
`(a) that it has all requisite corporate power and authority to enter into this Agreement
`and to perfonn its obligations hereunder and to grant the licenses, releases, promises,
`covenants, and other rights contained herein;
`
`(b) that all acts required to be taken by it to authorize the execution and delivery and
`performance of this Agreement, and the consummation of the transactions contemplated
`herein have been duly and properly taken, and no other c01porate proceedings on its part are
`necessary to authorize such execution, delivery, and performance;
`
`(c) that this Agreement has been duly executed and delivered by it and constitutes a
`legal, valid, and binding obligation of it, enforceable against it in accordance with its terms.
`
`Entire Agreement: This Agreement sets forth all the rights and obligations between
`9.
`the Parties.
`
`Severability: If any provision of this Agreement or the application of any such
`10.
`provision to any person or circumstance is declared judicially or by arbitration to be invalid,
`unenforceable, or void, such decision will not invalidate or void the remainder of this
`Agreement. And this Agreement is to be deemed amended by modifying such provision to the
`extent necessary to render it valid, legal, and enforceable while preserving as much as
`possible its intent or, if such modification is not possible, by replacing it with another
`provision that is legal and enforceable and that achieves similar objectives.
`
`4/5
`
`

`

`Case 1:14-cv-00598-LPS Document 1-2 Filed 05/12/14 Page 6 of 6 PageID #: 18
`Case 1:14-cv-00598—LPS Document 1-2 Filed 05/12/14 Page 6 of 6 PageID #: 18
`
`Patent License Agreement
`
`Choice of Law & Venue: The laws of the state ofNew York, without reference to its
`11.
`conflict of laws principles, will govern this Agreement. The exclusive venue for any action
`brought by Chinook against Iron Dome regarding the construction, validity, enforceability,
`performance, or otherwise regarding a challenge to this Agreement will be the state courts of
`the Commonwealth of Virginia sitting in Fairfax County. Otheiwise, the exclusive venue for
`any actions among the Parties and Third Party transferees ofthe Transferable Licenses under
`this Agreement will be the US. District Court for the District ofDelaware and wherever other
`venue to which any of the Infringement Actions may be transfelred.
`
`Notice: All notices relating to this Agreement shall be given in writing and will be
`12.
`delivered through one or more ofthe following means: (1) in—person, (2) by certified mail
`with prepaid postage and return receipt, or (3) by a commercial overnight courier that
`guarantees next day delivery and provides a receipt. Notices are to be addressed as follows:
`
`if to Iron Dome:
`
`Steven Yu, MD.
`Iron Dome LLC
`
`PO Box 10034
`Gaithersburg, MD 20898
`
`If to Chinook:
`
`The Parties sign this Agreement on the Effective Date given above:
`
`Chinook Licensing DE LLC
`
`
`
`By:
`Name:
`Title:
`
`By:
`Name: Steven Yu
`Tltle: Managmg Member
`
`Iron Dome LLC
`
`
`5/5
`
`

`

`Case 1:14-cv-00598-LPS Document 1-3 Filed 05/12/14 Page 1 of 110 PageID #: 19
`Case 1:14-cv-00598-LPS Document 1-3 Filed 05/12/14 Page 1 of 110 PageID #: 19
`
`EXHIBIT C
`
`EXHIBIT C
`
`

`

`Case 1:14-cv-00598-LPS Document 1-3 Filed 05/12/14 Page 2 of 110 PageID #: 20
`Case 1:14-cv-00598—LPS Document 1-3 Filed 05/12/14 Page 2 of 110 PageID #: 20
`
`United States Patent & Trademark Office
`Patent Trial & Appeal Board
`
`
`IRON DOME LLC
`
`Petitioner
`
`V.
`
`CHINOOK LICENSING DE LLC
`
`Patent Owner
`
`
`
`Petition for Inter Pattes Review
`
`of
`
`Patent No. 7,047,482 (to Gaiy Odom)
`Titled: Al/fwmtic directory sngplmmufafion
`Issue date: May 16, 2006
`
`
`For Paralegal:
`
`
`
`
`Number of Claims Challenged = 19
`
`
`Power of Attorney enclosed
`Fee paid online by credit card
`
`
`Contact: john Yim
`Phone: 703.749.0500
`
`Email:
`jyim@yi1nassociates.com
`
`
`
`
`
`

`

`Case 1:14-cv-00598-LPS Document 1-3 Filed 05/12/14 Page 3 of 110 PageID #: 21
`Case 1:14-cv-00598—LPS Document 1-3 Filed 05/12/14 Page 3 of 110 PageID #: 21
`
`us 7,047,482
`
`Table of Contents
`
`1.
`
`11.
`
`Introductory Matters .............................................................................. - 1 -
`A.
`Relief Requested ......................................................................................... — 1 —
`B.
`Grounds for Standing ................................................................................ — 1 —
`C.
`Mandatory Notices ..................................................................................... — 1 —
`Prior Art References................................................................................ - 3 H
`A.
`The claims have an effective filing date of February 28, 2001 ............. — 3 —
`
`B.
`List of Prior Art .......................................................................................... — 3 —
`III. Technical Background 85 Claim Construction ...................................... - 4 -
`A.
`Technical Background of the Challenged Patent ................................... — 4 —
`B.
`Claim Construction .................................................................................... — 5 —
`IV. Grounds for Challenge............................................................................ - 9 -
`A.
`Chen — primary prior art reference ........................................................... — 9 H
`B.
`Lieberman — second prior art reference ................................................... — 9 —
`Claim Analysis ...................................................................................... — 10 -
`Independent Claim 1 ................................................................................ H 10 —
`Claim 2 ....................................................................................................... — 15 —
`
`V.
`
`Claim 3 ....................................................................................................... — 15 H
`
`Claim 4 ............................................................'........................................... — 16 —
`
`Claim 5 ....................................................................................................... — 16 —
`
`Claim 6 ....................................................................................................... — 17 —
`
`Claim 7 ....................................................................................................... — 17 —
`
`Claim 9 ....................................................................................................... H 18 —
`
`Claim 10 ..................................................................................................... — 18 —
`
`Independent Claim 11 ............................................................................. — 19 —
`Claim 12 ..................................................................................................... — 23 —
`
`Claim 13 ..................................................................................................... H 23 —
`
`Claim 14 ..................................................................................................... — 24 —
`
`ii
`
`

`

`Case 1:14-cv-00598-LPS Document 1-3 Filed 05/12/14 Page 4 of 110 PageID #: 22
`Case 1:14-cv-00598—LPS Document 1-3 Filed 05/12/14 Page 4 of 110 PageID #: 22
`
`US 7,047,482
`
`Claim 15 ..................................................................................................... a 24 —
`Independent Claim 16 ............................................................................. — 24 —
`Claim 17 ..................................................................................................... — 28 —
`
`Claim 18..................................................................................................... — 29 —
`
`Claim 19 ..................................................................................................... —