Case 6:14-cv-00427-LED Document 1 Filed 05/06/14 Page 1 of 5 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`CIVIL ACTION NO. 6:14-cv-427
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`JURY TRIAL DEMANDED
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`Plaintiffs,
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`v.
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`KOFAX, INC.,
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`Defendant.
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`UNILOC USA, INC. and UNILOC
`LUXEMBOURG S.A.,
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`PLAINTIFFS’ ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiffs Uniloc USA, Inc. (“Uniloc USA”) and Uniloc Luxembourg S.A. (“Uniloc
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`Luxembourg”) (collectively, “Uniloc”) file this Original Complaint against Kofax, Inc. for
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`infringement of U.S. Patent No. 5,490,216 (“the ’216 patent”).
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`THE PARTIES
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`1.
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`Uniloc USA, Inc. (“Uniloc USA”) is a Texas corporation with its principal place
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`of business at Legacy Town Center I, Suite 380, 7160 Dallas Parkway, Plano, Texas 75024.
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`Uniloc USA also maintains a place of business at 102 N. College, Ste. 806, Tyler, Texas 75702.
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`2.
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`Uniloc Luxembourg S.A. (“Uniloc Luxembourg”) is a Luxembourg public limited
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`liability company, with its principal place of business at 15, Rue Edward Steichen, 4th Floor, L-
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`2540 Luxembourg.
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`3.
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`Uniloc Luxembourg and Uniloc USA are collectively referred to as “Uniloc.”
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`Uniloc has researched, developed, manufactured, and licensed information security technology
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`solutions, platforms and frameworks, including solutions for securing software applications and
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`Petitioners Ex. 1025 Page 1
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`Case 6:14-cv-00427-LED Document 1 Filed 05/06/14 Page 2 of 5 PageID #: 2
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`digital content. Uniloc owns and has been awarded a number of patents. Uniloc’s technologies
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`enable, for example, software and content publishers to securely distribute and sell their high-
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`value technology assets with minimum burden to their legitimate end users. Uniloc’s technology
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`are used in several markets, including, for example, software and game security, identity
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`management, intellectual property rights management, and critical infrastructure security.
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`4.
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`Kofax, Inc. (“KOFAX” or “Defendant”) is a Delaware corporation with its
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`principal place of business at 15211 Laguna Canyon Road, Irvine, California, 92618. KOFAX
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`may be served with process through its registered agent Bradford Weller at 15211 Laguna
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`Canyon Road, Irvine, California, 92618. Upon information and belief, KOFAX does business in
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`the State of Texas and in the Eastern District of Texas.
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`JURISDICTION AND VENUE
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`5.
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`Uniloc brings this action for patent infringement under the patent laws of the
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`United States, namely 35 U.S.C. §§ 271, 281, and 284-285, among others. This Court has
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`subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331, 1338(a), and 1367.
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`6.
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`Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391(c) and
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`1400(b). On information and belief, Defendant is deemed to reside in this judicial district, has
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`committed acts of infringement in this judicial district, has purposely transacted business
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`involving its accused products in this judicial district and/or, has regular and established places
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`of business in this judicial district.
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`7.
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`Defendant is subject to this Court’s personal jurisdiction pursuant to due process
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`and/or the Texas Long Arm Statute, due at least to its substantial business in this State and
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`judicial district, including: (A) at least part of its infringing activities alleged herein; and (B)
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`regularly doing or soliciting business, engaging in other persistent conduct, and/or deriving
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`substantial revenue from goods sold and services provided to Texas residents.
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`Petitioners Ex. 1025 Page 2
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`Case 6:14-cv-00427-LED Document 1 Filed 05/06/14 Page 3 of 5 PageID #: 3
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`COUNT I
`(INFRINGEMENT OF U.S. PATENT NO. 5,490,216)
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`Uniloc incorporates paragraphs 1 through 7 herein by reference.
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`Uniloc Luxembourg is the owner, by assignment, of the ’216 patent, entitled
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`8.
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`9.
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`“SYSTEM FOR SOFTWARE REGISTRATION.” A true and correct copy of the ’216 patent is
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`attached as Exhibit A.
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`10.
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`Uniloc USA is the exclusive licensee of the ’216 patent with ownership of all
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`substantial rights in the ’216 patent, including the right to grant sublicenses, exclude others and
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`to enforce, sue and recover damages for past and future infringements.
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`11.
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`The ’216 patent is valid, enforceable and was duly issued in full compliance with
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`Title 35 of the United States Code.
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`12.
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`Defendant has directly infringed one or more claims of the ’216 patent in this
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`judicial district and elsewhere in Texas, including at least claim 19, without the consent or
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`authorization of Uniloc, by or through making, using, offering for sale, selling and/or importing a
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`system, device and/or method for reducing software piracy, reducing casual copying and/or
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`reducing the unauthorized use of software, including without limitation KOFAX’s product
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`activation system and process that permits customers to activate and/or register software, used in
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`connection with its software products including but not limited to KOFAX’s VRS.
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`13.
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`Defendant also may have infringed through other product activation systems and
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`processes that permit customers to activate and/or register software not presently known to
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`Uniloc. Uniloc reserves the right to discover and pursue relief against all infringing
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`instrumentalities.
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`14.
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`Uniloc has been damaged as a result of Defendant’s infringing conduct described
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`in this Count. Defendant is, thus, liable to Uniloc in an amount that adequately compensates it
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`Petitioners Ex. 1025 Page 3
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`Case 6:14-cv-00427-LED Document 1 Filed 05/06/14 Page 4 of 5 PageID #: 4
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`for Defendant’s infringements, which, by law, cannot be less than a reasonable royalty, together
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`with interest and costs as fixed by this Court under 35 U.S.C. § 284.
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`15.
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`Any allegation of infringement against any defendant herein was not made on the
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`basis of its use, sale, offer for sale, making or importing of any product, software, system,
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`method or service provided by Flexera Software LLC or Rovi Solutions Corporation or any of
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`their present or former affiliates or predecessors (including Flexera Software, Inc. Acresso
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`Software Inc., Installshield Software Corporation, Flexco Holding Company, Inc., Installshield
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`Co Inc., Globetrotter Software, Inc., C-Dilla Limited and Macrovision Corporation) (each a
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`“Licensee Product”), including any product, software, system, method or service incorporating
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`or using the activation, licensing, or registration functionality provided by such Licensee
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`Product.
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`JURY DEMAND
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`Uniloc hereby requests a trial by jury pursuant to Rule 38 of the Federal Rules of Civil
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`Procedure.
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`PRAYER FOR RELIEF
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`Uniloc requests that the Court find in its favor and against Defendant, and that the Court
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`grant Uniloc the following relief:
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`a.
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`b.
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`c.
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`d.
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`Judgment that one or more claims of the ’216 patent has been infringed, either
`literally and/or under the doctrine of equivalents, by Defendant;
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`Judgment that Defendant account for and pay to Uniloc all damages to and costs
`incurred by Uniloc because of Defendant’s infringing activities and other conduct
`complained of herein;
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`That Uniloc be granted pre-judgment and post-judgment interest on the damages
`caused by Defendant’s infringing activities and other conduct complained of
`herein; and
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`That Uniloc be granted such other and further relief as the Court may deem just
`and proper under the circumstances.
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`Petitioners Ex. 1025 Page 4
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`Case 6:14-cv-00427-LED Document 1 Filed 05/06/14 Page 5 of 5 PageID #: 5
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`Respectfully submitted,
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`/s/ E. Leon Carter by permission Wes Hill
`E. Leon Carter (TX Bar 03914300)
`lcarter@carterscholer.com
`J. Robert Arnett II (TX Bar 01332900)
`barnett@carterscholer.com
`Ryan S. Loveless (TX Bar 24036997)
`rloveless@carterscholer.com
`CARTER SCHOLER ARNETT HAMADA &
`MOCKLER, PLLC
`8150 N. Central Expressway, Suite 1950
`Dallas, Texas 75206
`Telephone: (214) 550-8188
`Facsimile: (214) 550-8185
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`James L. Etheridge
`Texas State Bar No. 24059147
`Etheridge Law Group, PLLC
`2600 E. Southlake Blvd., Suite 120/324
`Southlake, Texas 76092
`817.470-.249
`817.877.5950 (Fax)
`Jim@EtheridgeLaw.com
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`T. John Ward, Jr. (TX Bar 00794818)
`jw@wsfirm.com
`J. Wesley Hill (TX Bar 24032294)
`wh@wsfirm.com
`WARD & SMITH LAW FIRM
`P.O. Box 1231
`1127 Judson Road, Ste. 220
`Longview, Texas 75606-1231
`Telephone: (903) 757-6400
`Facsimile: (903) 757-2323
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`PLAINTIFFS
`FOR
`ATTORNEYS
`UNILOC USA, INC. AND UNILOC
`LUXEMBOURG S.A.
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`Dated: May 6, 2014
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`Petitioners Ex. 1025 Page 5