`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`Case No. 607CV80 (TJW)
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`Jury Trial Demanded
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`§§§§§§§§§
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`VirnetX Inc.
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`Plaintiff
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`vs.
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`Microsoft Corporation
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`Defendant
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`PLAINTIFF VIRNETX INC.’S FIRST AMENDED COMPLAINT
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`FOR PATENT INFRINGEMENT
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`THE PARTIES
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`1.
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`Plaintiff VirnetX Inc. (“VirnetX”) is a corporation organized under the laws of the
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`State of Delaware, having its principal place of business at 5615 Scotts Valley Drive, Suite 110,
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`Scotts Valley, California 95066.
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`2.
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`Upon information and belief, defendant Microsoft Corporation (“Microsoft”) is a
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`corporation organized under the laws of the State of Washington, having its principal place of
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`business at One Microsoft Way, Redmond, Washington 98052. Microsoft is qualified to do
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`business in the State of Texas, Filing No. 10404606, and has appointed Corporation Service
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`Company, 701 Brazos Street, Suite 1050, Austin, Texas 78701, as its agent for service of process.
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`JURISDICTION AND VENUE
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`3.
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`This is an action for patent infringement arising under the patent laws of the
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`United States, 35 U.S.C. §§ 1 et seq. This Court has jurisdiction over this action pursuant to 28
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`U.S.C. §§ 1331 and 1338(a).
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`Page 1 of 9
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`VIRNETX EXHIBIT 2010
`Microsoft v. VirnetX
`Trial IPR2014-00558
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`
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`Case 6:07-cv-00080-LED Document 25 Filed 04/05/07 Page 2 of 9 PageID #: 199
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`4.
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`This Court has personal jurisdiction over Microsoft. Microsoft conducts business
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`and has committed acts of patent infringement and/or has contributed to and/or induced acts of
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`patent infringement by others in this district and the State of Texas (as well as elsewhere in the
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`United States).
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`5.
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`Microsoft has also previously availed itself to this judicial district by filing suit
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`against other litigants in this district, including for example the following: Microsoft Corp. v.
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`Butcher, No. 2:06-cv-00371-DF (E.D. Tex. filed Sept. 15, 2006); Autodesk Inc. and Microsoft
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`Corp. v. C&D Robotics Inc., No. 1:99-cv-103 (E.D. Tex. filed Feb. 26, 1999).
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`6.
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`Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391(b), 1391(c)
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`and 1400(b) because, among other things, Microsoft is subject to personal jurisdiction in this
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`judicial district, has regularly conducted business in this judicial district, and certain of the acts
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`complained of herein occurred in this judicial district.
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`VIRNETX’S PATENTS-IN-SUIT
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`7.
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`On December 31, 2002, the United States Patent and Trademark Office duly and
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`legally issued U.S. Patent No. 6,502,135 B1, entitled “Agile Network Protocol for Secure
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`Communications with Assured System Availability” (the “‘135 patent”). A true and correct
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`copy of the ‘135 patent is attached hereto as Exhibit A.
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`8.
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`On January 4, 2005, the United States Patent and Trademark Office duly and
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`legally issued U.S. Patent No. 6,839,759 B2, entitled “Method for Establishing Secure
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`Communication Link Between Computers of Virtual Private Network Without User Entering
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`Any Cryptographic Information” (the “‘759 patent”). A true and correct copy of the ‘759 patent
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`is attached hereto as Exhibit B.
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`-2-
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`Page 2 of 9
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`Case 6:07-cv-00080-LED Document 25 Filed 04/05/07 Page 3 of 9 PageID #: 200
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`9.
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`On March 6, 2007, the United States Patent and Trademark Office duly and
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`legally issued U.S. Patent No. 7,188,180, entitled “Method for Establishing Secure
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`Communication Link Between Computers of Virtual Private Network” (the “‘180 patent”). A
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`true and correct copy of the ‘180 patent is attached hereto as Exhibit C.
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`10.
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`VirnetX is the owner of all right, title, and interest in and to the ‘135 patent, the
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`‘759 patent, and the ‘180 patent by assignment, with full and exclusive right to bring suit to
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`enforce each of these patents, including the right to recover for past infringement.
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`COUNT ONE
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`MICROSOFT’S INFRINGEMENT OF THE ‘135 PATENT
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`11.
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`VirnetX realleges and incorporates herein the allegations of paragraphs 1 through
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`10 as if fully set forth herein.
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`12.
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`13.
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`The ‘135 patent is valid and enforceable.
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`Upon information and belief, Microsoft has infringed and/or is infringing the
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`claims of the ‘135 patent by making, using, offering for sale, selling, and/or importing various
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`products and/or services, including without limitation, certain versions of Windows Server 2003,
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`Windows XP, Windows Vista, Live Communication Server, Windows Messenger, Microsoft
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`Office Communicator, Microsoft Office suites and related applications (such as Word, Excel,
`
`and Outlook), and products with similar functionality available since January 2003.
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`14.
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`Upon information and believe, Microsoft is liable for direct infringement and/or
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`indirect infringement by way of inducement and/or contributory infringement of the ‘135 patent
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`under 35 U.S.C. § 271.
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`-3-
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`Page 3 of 9
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`Case 6:07-cv-00080-LED Document 25 Filed 04/05/07 Page 4 of 9 PageID #: 201
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`15.
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`Upon information and belief, in violation of 35 U.S.C. § 271, Microsoft provides
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`components from the United States to be combined and/or used outside the United States in a
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`manner infringing the ‘135 patent.
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`16.
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`Upon information and belief, Microsoft has willfully infringed and/or does
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`willfully infringe the ‘135 patent.
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`17.
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`Upon information and belief, Microsoft’s acts of infringement of the ‘135 patent
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`will continue after service of this Complaint unless enjoined by the Court.
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`18.
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`As a result of Microsoft’s infringement, VirnetX has suffered and will suffer
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`damages.
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`19.
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`VirnetX is entitled to recover from Microsoft the damages sustained by VirnetX
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`as a result of Microsoft’s wrongful acts in an amount subject to proof at trial.
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`20.
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`Unless Microsoft is enjoined by this Court from continuing its infringement of the
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`‘135 patent, VirnetX will suffer additional irreparable harm and impairment of the value of its
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`patent rights. Thus, VirnetX is entitled to an injunction against further infringement.
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`COUNT TWO
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`MICROSOFT’S INFRINGEMENT OF THE ‘759 PATENT
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`21.
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`VirnetX realleges and incorporates herein the allegations of paragraphs 1 through
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`10 as if fully set forth herein.
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`22.
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`23.
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`The ‘759 patent is valid and enforceable.
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`Upon information and belief, Microsoft has infringed and/or is infringing the
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`claims of the ‘759 patent by making, using, offering for sale, selling, and/or importing various
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`products and/or services, including without limitation, certain versions of Windows Server 2003,
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`Windows XP, Windows Vista, Live Communication Server, Windows Messenger, Microsoft
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`-4-
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`Page 4 of 9
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`Case 6:07-cv-00080-LED Document 25 Filed 04/05/07 Page 5 of 9 PageID #: 202
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`Office Communicator, Microsoft Office suites and related applications (such as Word, Excel,
`
`and Outlook), and products with similar functionality available since January 2005.
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`24.
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`Upon information and belief, Microsoft is liable for direct infringement and/or
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`indirect infringement by way of inducement and/or contributory infringement of the ‘759 patent
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`under 35 U.S.C. § 271.
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`25.
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`Upon information and belief, in violation of 35 U.S.C. § 271, Microsoft provides
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`components from the United States to be combined and/or used outside the United States in a
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`manner infringing the ‘759 patent.
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`26.
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`Upon information and belief, Microsoft has willfully infringed and/or does
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`willfully infringe the ‘759 patent.
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`27.
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`Upon information and belief, Microsoft’s acts of infringement of the ‘759 patent
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`will continue after service of this Complaint unless enjoined by the Court.
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`28.
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`As a result of Microsoft’s infringement, VirnetX has suffered and will suffer
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`damages.
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`29.
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`VirnetX is entitled to recover from Microsoft the damages sustained by VirnetX
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`as a result of Microsoft’s wrongful acts in an amount subject to proof at trial.
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`30.
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`Unless Microsoft is enjoined by this Court from continuing its infringement of the
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`‘759 patent, VirnetX will suffer additional irreparable harm and impairment of the value of its
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`patent rights. Thus, VirnetX is entitled to an injunction against further infringement.
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`COUNT THREE
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`MICROSOFT’S INFRINGEMENT OF THE ‘180 PATENT
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`31.
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`VirnetX realleges and incorporates herein the allegations of paragraphs 1 through
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`10 as if fully set forth herein.
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`-5-
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`Page 5 of 9
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`Case 6:07-cv-00080-LED Document 25 Filed 04/05/07 Page 6 of 9 PageID #: 203
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`32.
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`33.
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`The ‘180 patent is valid and enforceable.
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`Upon information and belief, Microsoft has infringed and/or is infringing the
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`claims of the ‘180 patent by making, using, offering for sale, selling, and/or importing various
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`products and/or services, including without limitation, certain versions of Windows XP,
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`Windows Vista Home Premium, Windows Vista Business, Windows Vista Ultimate, and
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`products with similar functionality available since March 2007.
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`34.
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`Upon information and belief, Microsoft is liable for direct infringement and/or
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`indirect infringement by way of inducement and/or contributory infringement of the ‘180 patent
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`under 35 U.S.C. § 271.
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`35.
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`Upon information and belief, in violation of 35 U.S.C. § 271, Microsoft provides
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`components from the United States to be combined and/or used outside the United States in a
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`manner infringing the ‘180 patent.
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`36.
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`Upon information and belief, Microsoft has willfully infringed and/or does
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`willfully infringe the ‘180 patent.
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`37.
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`Upon information and belief, Microsoft’s acts of infringement of the ‘180 patent
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`will continue after service of this Complaint unless enjoined by the Court.
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`38.
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`As a result of Microsoft’s infringement, VirnetX has suffered and will suffer
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`damages.
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`39.
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`VirnetX is entitled to recover from Microsoft the damages sustained by VirnetX
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`as a result of Microsoft’s wrongful acts in an amount subject to proof at trial.
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`40.
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`Unless Microsoft is enjoined by this Court from continuing its infringement of the
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`‘180 patent, VirnetX will suffer additional irreparable harm and impairment of the value of its
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`patent rights. Thus, VirnetX is entitled to an injunction against further infringement.
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`-6-
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`Page 6 of 9
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`Case 6:07-cv-00080-LED Document 25 Filed 04/05/07 Page 7 of 9 PageID #: 204
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`PRAYER FOR RELIEF
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`WHEREFORE, VirnetX prays for judgment and relief as follows:
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`(a)
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`That Microsoft has infringed each of the ‘135 patent, the ‘759 patent, and
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`the ‘180 patent under 35 U.S.C. § 271;
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`(b)
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`That Microsoft’s infringement of each of the ‘135 patent, the ‘759 patent,
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`and the ‘180 patent constitutes willful infringement;
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`(c)
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`That Microsoft be ordered to pay VirnetX damages pursuant to 35 U.S.C.
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`§ 284, including an accounting;
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`(d)
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`That Microsoft be ordered to pay VirnetX treble damages pursuant to 35
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`U.S.C. § 284;
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`§ 285;
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`U.S.C.§ 285;
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`(e)
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`That the Court declare this to be an exceptional case pursuant to 35 U.S.C.
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`(f)
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`That Microsoft be ordered to pay VirnetX attorney fees pursuant to 35
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`(g)
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`That Microsoft be ordered to pay VirnetX pre-judgment and post-
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`judgment interest;
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`(h)
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`That Microsoft be ordered to pay VirnetX all of the costs associated with
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`this action;
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`(i)
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`That Microsoft, its officers, agents, employees, directors, representatives,
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`parents, subsidiaries, affiliates, distributors and retailers and those persons and entities acting in
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`active concert with, on behalf of, in joint venture with, or in participation with Microsoft, and its
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`successors and assigns, be enjoined from further infringement of the ‘135 patent, the ‘759 patent,
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`and the ‘180 patent pursuant to 35 U.S.C. § 283; and
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`-7-
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`Page 7 of 9
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`Case 6:07-cv-00080-LED Document 25 Filed 04/05/07 Page 8 of 9 PageID #: 205
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`(j)
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`That VirnetX be granted such other and additional relief as the Court
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`deems just and proper.
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`DEMAND FOR JURY TRIAL
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`VirnetX demands a trial by jury on all issues so triable.
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`
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`By: /s/Robert Christopher Bunt
`Robert Christopher Bunt
`Texas Bar No. 00787165
`Robert M. Parker
`Texas Bar No. 15498000
`Charles Ainsworth
`Texas Bar No. 00783521
`PARKER, BUNT & AINSWORTH, P.C.
`100 East Ferguson, Suite 1114
`Tyler, Texas 75702
`Telephone: (903) 531-3535
`Facsimile: (903) 533-9687
`E-mail: rcbunt@pbatyler.com
`E-mail: rmparker@pbatyler.com
`E-mail: charley@pbatyler.com
`
`Otis W. Carroll (Texas Bar No. 03895700)
`Collin M. Maloney (Texas Bar No. 00794219)
`IRELAND, CARROLL & KELLEY, P.C.
`6101 South Broadway, Suite 500
`Tyler, Texas 75703
`Telephone: (903) 561-1600
`Facsimile: (903) 581-1071
`Email: Fedserv@icklaw.com
`
`
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`-8-
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`Dated: April 5, 2007
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`Page 8 of 9
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`Case 6:07-cv-00080-LED Document 25 Filed 04/05/07 Page 9 of 9 PageID #: 206
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`
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`Of Counsel:
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`Terrence P. McMahon (Pro Hac Vice
`App Pending)
`Vera M. Elson (Admitted Pro Hac Vice)
`McDERMOTT WILL & EMERY LLP
`3150 Porter Drive
`Palo Alto, CA 94304
`Telephone: (650) 813-5000
`Facsimile: (650) 813-5100
`E-mail: velson@mwe.com
`E-mail: tnation@mwe.com
`E-mail: mkenner@mwe.com
`
`
`
`Fay E. Morisseau (Texas Bar No. 14460750)
`Mark J. Itri (Pro Hac Vice App Pending)
`Christopher D. Bright (Admitted Pro Hac Vice)
`Daniel R. Foster (Admitted Pro Hac Vice)
`Soyeon (Karen) P. Laub (Admitted Pro Hac Vice)
`McDERMOTT WILL & EMERY LLP
`18191 Von Karman Avenue, Suite 500
`Irvine, California 92612-7108
`Telephone: (949) 851-0633
`Facsimile: (949) 851-9348
`E-mail: cbright@mwe.com
`E-mail: dfoster@mwe.com
`E-mail: klaub@mwe.com
`
`I hereby certify that all counsel who are deemed to have consented to electronic service
`are being served this 5th day of April 2007, with a copy of this document via the Court’s
`CM/ECF system per Local Rule CD-5(a)(3).
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`Attorneys for plaintiff VirnetX Inc.
`CERTIFICATE OF SERVICE
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` /s/
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`Robert Christopher Bunt
`ROBERT CHRISTOPHER BUNT
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`-9-
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`Page 9 of 9