IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`
`PAPST LICENSING GMBH & CO. KG,
`
`
`Plaintiff,
`
`v.
`
`APPLE, INC.,
`
`Defendant.
`
`
`
`
`Civil Action No. 6:15-cv-1095
`
`Jury Trial Demanded
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`ORIGINAL COMPLAINT
`
`Plaintiff Papst Licensing GmbH & Co., KG (“Papst Licensing” or “Plaintiff”) files this
`
`Complaint against Apple, Inc. (“Apple” or “Defendant”) for infringement of U.S. Patent Nos.
`
`6,473,399 (the “’399 Patent”); 8,504,746 (the “’746 Patent”); 8,966,144 (“’144 Patent”); and
`
`9,189,437 (the “’437 Patent”) (collectively, the “Patents”).
`
`I. PARTIES
`
`1.
`
`Plaintiff Papst Licensing is a company existing under the laws of the Federal
`
`Republic of Germany, with its principal place of business located at Bahnofstrasse 33, 78112 St.
`
`Georgen, Germany.
`
`2.
`
`Upon information and belief, Defendant Apple, Inc. is a corporation organized
`
`under the laws of the State of California, with its principal places of business located at 1 Infinite
`
`Loop, Cupertino, CA 95014. Apple, Inc. also has a place of business at 12545 Riata Vista Circle,
`
`Austin, Texas 78727. Upon information and belief, Defendant Apple, Inc. is authorized to do
`
`business in Texas. Apple, Inc. may be served by serving its registered agent CT Corporation
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`System, 1999 Bryan Street, Suite 900, Dallas, Texas 75201-3136.
`
`1
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`ORIGINAL COMPLAINT
`
`
`
`Apple 1020
`U.S. Pat. 9,189,437
`
`

`
`II. JURISDICTION AND VENUE
`
`3.
`
`This is an action for patent infringement which arises under 35 U.S.C. §§ 271,
`
`281, 284 and 285. This Court has subject matter jurisdiction over this action under 28 U.S.C.
`
`§§1331 and 1338(a).
`
`4.
`
`This Court has personal jurisdiction over Apple, and venue is proper in this Court
`
`pursuant to 28 U.S.C. §§1391(b), (c), and 1400. This Court has personal jurisdiction over Apple
`
`because, among other things, Apple has established minimum contacts within the forum such
`
`that the exercise of jurisdiction over Apple will not offend traditional notions of fair play and
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`substantial justice. For example, Apple has placed products that practice and/or embody the
`
`claimed inventions of the Patents into the stream of commerce with the reasonable expectation
`
`and/or knowledge that purchasers and users of such products were located within this district. In
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`addition, Apple has sold, advertised, marketed, and distributed products in this district that
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`practice the claimed inventions of the Patents. Apple derives substantial revenue from the sale of
`
`infringing products distributed within the district, and/or expects or should reasonably expect its
`
`actions to have consequences within the district, and derive substantial revenue from interstate
`
`and international commerce.
`
`III. FACTUAL BACKGROUND
`
`5.
`
`The name Papst has been closely associated with patents and the protection of
`
`intellectual property for over seventy years. Hermann Papst was an engineer and inventor who
`
`was responsible for over four hundred patents in a variety of technical fields. Mr. Hermann
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`Papst’s licensure of a patent pertaining to loudspeakers enabled him to launch Papst-Motoren
`
`GmbH & Co. KG—a business that generated over six hundred patents on in-house products such
`
`as small electric motors and cooling fans. In 1992, Papst-Motoren’s patent portfolio was sold to
`
`2
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`ORIGINAL COMPLAINT
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`

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`Papst Licensing, a company founded by Mr. Hermann Papst’s son, Mr. Georg Papst. Papst
`
`Licensing is a patent licensing company protecting its own and others’ intellectual property
`
`rights. After Hermann Papst’s death in 1981 and the passing of Georg Papst in 2012, the family
`
`business is now run by the third generation of Papsts.
`
`6.
`
`The ’399 Patent was filed on March 3, 1998 and issued on October 22, 2002. The
`
`’746 Patent was filed on September 27, 2010 and issued on August 6, 2013. The ’144 Patent was
`
`filed on August 24, 2006 and issued on February 24, 2015. The ’437 Patent was filed on August
`
`24, 2006 and issued on November 17, 2015. The ’399, ’746, ’144 and ’437 Patents are generally
`
`directed towards methods and systems for the transfer of data and in particular to interface
`
`devices for communication between a computer or host device and a data transmit/receive device
`
`from which data is to be acquired or with which two-way communication is to take place.
`
`7.
`
`Papst Licensing acquired
`
`the Patents
`
`through
`
`its predecessor-in-interest,
`
`Labortechnik Tasler GmbH—a pioneer and leader in the area of interface devices and software.
`
`8.
`
`Plaintiff Papst Licensing has obtained all substantial right and interest to the
`
`Patents, including all rights to recover for all past and future infringements thereof.
`
`9.
`
`On or around August 29, 2007, Papst Licensing notified Apple of certain Papst
`
`Licensing patents, specifically including the ’399 Patent and its infringement thereof. The parties
`
`exchanged correspondence thereafter until mid-2010 regarding Apple’s infringement.
`
`10.
`
`On information and belief, Apple has monitored Papst’s patent prosecution
`
`activities at least since being notified of its infringement of the ’399 Patent and thus has had
`
`actual or constructive knowledge of the ’746, ’144 and ’437 Patents. In all events, Apple has
`
`knowledge of the ’746, ’144 and ’437 Patents by virtue of service of this complaint.
`
`3
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`ORIGINAL COMPLAINT
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`

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`11.
`
`Apple has infringed and continues to infringe the Papst Patents by making,
`
`selling, offering for sale, importing, and using products and software in an infringing manner,
`
`including but not limited to Apple’s iPad, iPod and iPhone products, as well as any other
`
`products operating in a substantially similar manner. Moreover, Apple provides its customers
`
`with the accused software and instructs its customers to use the software in an infringing manner,
`
`including through its website at https://support.apple.com/manuals/.
`
`12.
`
`In addition, Apple knowingly, actively induced and continues to knowingly
`
`actively induce (or is willfully blind to the) infringement of one or more of the Patents within
`
`this district by making, using, offering for sale, and selling infringing products, as well as by
`
`contracting with others to use, market, sell, and offer to sell infringing products, all with
`
`knowledge of the asserted Patents, and their claims, with knowledge that their customers will
`
`use, market, sell, and offer to sell infringing products in this district and elsewhere in the United
`
`States, and with the knowledge and specific intent to encourage and facilitate infringing sales
`
`and use of the products by others within this district and the United States by creating and
`
`disseminating promotional and marketing materials, instructional materials, and product
`
`manuals, and technical materials related to the infringing products.
`
`13. Moreover, Apple knowingly contributed to the infringement of one or more of the
`
`Patents by others in this district, and continues to contribute to the infringement of one or more
`
`of the Patents by others in this district by selling or offering to sell components of infringing
`
`products in this district, which components constitute a material part of the inventions of the
`
`Patents, knowing of the Patents and their claims, knowing those components to be especially
`
`made or especially adapted for use to infringe one or more of the Patents, and knowing that those
`
`4
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`ORIGINAL COMPLAINT
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`

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`components are not staple articles or commodities of commerce suitable for substantial non-
`
`infringing use.
`
`IV. PATENT INFRINGEMENT
`
`COUNT I — INFRINGEMENT OF U.S. PATENT NO. 6,473,399
`
`14.
`
`Papst Licensing is the assignee of the ’399 Patent, entitled “Flexible Interface For
`
`Communication Between A Host And An Analog I/O Device Connected To The Interface
`
`Regardless The Type Of The I/O Device,” and holds all substantial rights in the same. Among
`
`other rights, Papst Licensing maintains the exclusive right to exclude others, the exclusive right
`
`to enforce, sue and recover damages for past and future infringements, and the exclusive right to
`
`settle any claims of infringement.
`
`15.
`
`16.
`
`The ’399 Patent is valid and enforceable.
`
`Apple has directly infringed and continues to infringe one or more claims of the
`
`’399 Patent in this judicial district and elsewhere in the United States by, among other things,
`
`making, having made, importing, using, offering for sale, and/or selling the claimed system and
`
`methods of the ‘399 Patent. At a minimum, Apple has been, and now is, infringing claims of the
`
`’399 Patent by making, importing and/or using infringing systems and/or methods. Apple’s
`
`infringing products include, but are not limited to, Apple’s iPad, iPod and iPhone product lines
`
`that are compliant with or use the protocol specifications Picture Transfer Protocol (“PTP”)
`
`and/or Media Transfer Protocol (“MTP”) and therefore use and/or are capable of using said
`
`protocols when connected to a host computer (e.g., via a Universal Serial Bus connection,
`
`Bluetooth wireless connection and/or another physical layer connection where supported) (“’399
`
`Infringing Products”). Papst Licensing alleges that each and every element is literally present in
`
`5
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`ORIGINAL COMPLAINT
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`

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`the ’399 Infringing Products. To the extent not literally present, Papst Licensing reserves the
`
`right to proceed under the doctrine of equivalents.
`
`17.
`
`Apple has indirectly infringed the ’399 Patent by inducing the infringement of the
`
`‘399 Patent. With knowledge of the ’399 Patent, Apple directs and aids its customers in using the
`
`’399 Infringing Products by the provision of its products and software, and related equipment
`
`and provision of instruction (including, by way of example, the tutorials, user guides, product
`
`guides, and other documentation located at https://support.apple.com/manuals/) to customers
`
`with knowledge that the induced acts constitute patent infringement. Apple possesses specific
`
`intent to encourage infringement by its customers.
`
`18.
`
`Apple has contributed to the infringement of, and continues to contribute to the
`
`infringement of, one or more claims of the ’399 Patent under 35 U.S.C. § 271(c) and/or 271(f),
`
`either literally and/or under the doctrine of equivalents, by selling, offering for sale, and/or
`
`importing into the United States, the ’399 Infringing Products. Apple knows that those products:
`
`constitute a material part of the inventions claimed in the ’399 Patent; are especially made or
`
`adapted to infringe the ’399 Patent; are not staple articles or commodities of commerce suitable
`
`for non-infringing use, but rather the components are used for or in systems that infringe one or
`
`more claims of the ’399 Patent.
`
`19.
`
`Papst Licensing has been damaged as a result of Apple’s infringing conduct.
`
`Apple is thus liable to Papst Licensing in an amount that adequately compensates it for Apple’s
`
`infringements, which, by law, cannot be less than a reasonable royalty, together with interest and
`
`costs as fixed by this Court under 35 U.S.C. § 284.
`
`6
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`ORIGINAL COMPLAINT
`
`

`
`COUNT II — INFRINGEMENT OF U.S. PATENT NO. 8,504,746
`
`20.
`
`Papst Licensing is the assignee of the ’746 Patent, entitled “Analog Data
`
`Generating And Processing Device For Use With A Personal Computer,” and holds all
`
`substantial rights in the same. Among other rights, Papst Licensing maintains the exclusive right
`
`to exclude others, the exclusive right to enforce, sue and recover damages for past and future
`
`infringements, and the exclusive right to settle any claims of infringement.
`
`21.
`
`22.
`
`The ’746 Patent is valid and enforceable.
`
`Apple has directly infringed and continues to infringe one or more claims of the
`
`’746 Patent in this judicial district and elsewhere in the United States by, among other things,
`
`making, having made, importing using, offering for sale, and/or selling the claimed systems and
`
`methods. At a minimum, Apple has been, and now is, infringing claims of the ’746 Patent by
`
`making, having made, importing and/or using infringing systems and/or methods. Apple’s
`
`infringing products include, but are not limited to, Apple’s iPad, iPod and iPhone product lines
`
`that are compliant with or use the protocol specifications Picture Transfer Protocol (“PTP”)
`
`and/or Media Transfer Protocol (“MTP”) and therefore use and/or are capable of using said
`
`protocols when connected to a host computer (e.g., via a Universal Serial Bus connection,
`
`Bluetooth wireless connection and/or another physical layer connection where supported) (“’746
`
`Infringing Products”). Papst Licensing alleges that each and every element is literally present in
`
`the ’746 Infringing Products. To the extent not literally present, Papst Licensing reserves the
`
`right to proceed under the doctrine of equivalents.
`
`23.
`
`Apple has indirectly infringed the ’746 Patent by inducing the infringement of the
`
`‘746 Patent. With knowledge of the ’746 Patent, Apple directs and aids its customers in using the
`
`’746 Infringing Products by the provision of its products and software, and related equipment
`
`7
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`ORIGINAL COMPLAINT
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`

`
`and provision of instruction (including, by way of example, the tutorials, user guides, product
`
`guides, and other documentation located at https://support.apple.com/manuals/) to customers
`
`with knowledge that the induced acts constitute patent infringement. Apple possesses specific
`
`intent to encourage infringement by its customers.
`
`24.
`
`Apple has contributed to the infringement of, and continues to contribute to the
`
`infringement of, one or more claims of the ’746 Patent under 35 U.S.C. § 271(c) and/or 271(f),
`
`either literally and/or under the doctrine of equivalents, by selling, offering for sale, and/or
`
`importing into the United States, the ’746 Infringing Products. Apple knows that those products:
`
`constitute a material part of the inventions claimed in the ’746 Patent; are especially made or
`
`adapted to infringe the ’746 Patent; are not staple articles or commodities of commerce suitable
`
`for non-infringing use, but rather the components are used for or in systems that infringe one or
`
`more claims of the ’746 Patent.
`
`25.
`
`Papst Licensing has been damaged as a result of Apple’s infringing conduct.
`
`Apple is thus liable to Papst Licensing in an amount that adequately compensates it for Apple’s
`
`infringements, which, by law, cannot be less than a reasonable royalty, together with interest and
`
`costs as fixed by this Court under 35 U.S.C. § 284.
`
`COUNT III — INFRINGEMENT OF U.S. PATENT NO. 8,966,144
`
`26.
`
`Papst Licensing is the assignee of the ’144 Patent, entitled “Analog Data
`
`Generating And Processing Device Having A Multi-Use Automatic Processor,” and holds all
`
`substantial rights in the same. Among other rights, Papst Licensing maintains the exclusive right
`
`to exclude others, the exclusive right to enforce, sue and recover damages for past and future
`
`infringements, and the exclusive right to settle any claims of infringement.
`
`27.
`
`The ’144 Patent is valid and enforceable.
`
`8
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`ORIGINAL COMPLAINT
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`

`
`28.
`
`Apple has directly infringed and continues to infringe one or more claims of the
`
`’144 Patent in this judicial district and elsewhere in the United States by, among other things,
`
`making, having made, importing, using, offering for sale, and/or selling the claimed system and
`
`methods of the ’144 Patent. At a minimum, Apple has been, and now is, infringing claims of the
`
`’144 Patent by making, having made, importing and/or using infringing systems and/or methods.
`
`Apple’s infringing products include, but are not limited to, Apple’s iPad, iPod and iPhone
`
`product lines that are compliant with or use the protocol specifications Picture Transfer Protocol
`
`(“PTP”) and/or Media Transfer Protocol (“MTP”) and therefore use and/or are capable of using
`
`said protocols when connected to a host computer (e.g., via a Universal Serial Bus connection,
`
`Bluetooth wireless connection and/or another physical layer connection where supported) (“’144
`
`Infringing Products”). Papst Licensing alleges that each and every element is literally present in
`
`the ’144 Infringing Products. To the extent not literally present, Papst Licensing reserves the
`
`right to proceed under the doctrine of equivalents.
`
`29.
`
`Apple has indirectly infringed the ’144 Patent by inducing the infringement of the
`
`’144 Patent. With knowledge of the ’144 Patent, Apple directs and aids its customers in using the
`
`’144 Infringing Products by the provision of its products and software, and related equipment
`
`and provision of instruction (including, by way of example, the tutorials, user guides, product
`
`guides, and other documentation located at https://support.apple.com/manuals/) to customers
`
`with knowledge that the induced acts constitute patent infringement. Apple possesses specific
`
`intent to encourage infringement by its customers.
`
`30.
`
`Apple has contributed to the infringement of, and continues to contribute to the
`
`infringement of, one or more claims of the ’144 Patent under 35 U.S.C. § 271(c) and/or 271(f),
`
`either literally and/or under the doctrine of equivalents, by selling, offering for sale, and/or
`
`9
`
`ORIGINAL COMPLAINT
`
`

`
`importing into the United States, the ’144 Infringing Products. Apple knows that those products:
`
`constitute a material part of the inventions claimed in the ’144 Patent; are especially made or
`
`adapted to infringe the ’144 Patent; are not staple articles or commodities of commerce suitable
`
`for non-infringing use, but rather the components are used for or in systems that infringe one or
`
`more claims of the ’144 Patent.
`
`31.
`
`Papst Licensing has been damaged as a result of Apple’s infringing conduct.
`
`Apple is thus liable to Papst Licensing in an amount that adequately compensates it for Apple’s
`
`infringements, which, by law, cannot be less than a reasonable royalty, together with interest and
`
`costs as fixed by this Court under 35 U.S.C. § 284.
`
`COUNT IV — INFRINGEMENT OF U.S. PATENT NO. 9,189,437
`
`32.
`
`Papst Licensing is the assignee of the ’437 Patent, entitled “Analog Data
`
`Generating And Processing Device For Use With A Personal Computer,” and holds all
`
`substantial rights in the same. Among other rights, Papst Licensing maintains the exclusive right
`
`to exclude others, the exclusive right to enforce, sue and recover damages for past and future
`
`infringements, and the exclusive right to settle any claims of infringement.
`
`33.
`
`34.
`
`The ’437 Patent is valid and enforceable.
`
`Apple has directly infringed and continues to infringe one or more claims of the
`
`’437 Patent in this judicial district and elsewhere in the United States by, among other things,
`
`making, having made, importing using, offering for sale, and/or selling the claimed systems and
`
`methods. At a minimum, Apple has been, and now is, infringing claims of the ’437 Patent by
`
`making, having made, importing and/or using infringing systems and/or methods. Apple’s
`
`infringing products include, but are not limited to, Apple’s iPad, iPod and iPhone product lines
`
`that are compliant with or use the protocol specifications Picture Transfer Protocol (“PTP”)
`
`10
`
`ORIGINAL COMPLAINT
`
`

`
`and/or Media Transfer Protocol (“MTP”) and therefore use and/or are capable of using said
`
`protocols when connected to a host computer (e.g., via a Universal Serial Bus connection,
`
`Bluetooth wireless connection and/or another physical layer connection where supported) (“’437
`
`Infringing Products”). Papst Licensing alleges that each and every element is literally present in
`
`the ’437 Infringing Products. To the extent not literally present, Papst Licensing reserves the
`
`right to proceed under the doctrine of equivalents.
`
`35.
`
`Apple has indirectly infringed the ’437 Patent by inducing the infringement of the
`
`‘437 Patent. With knowledge of the ’437 Patent, Apple directs and aids its customers in using the
`
`’437 Infringing Products by the provision of its products and software, and related equipment
`
`and provision of instruction (including, by way of example, the tutorials, user guides, product
`
`guides, and other documentation located at https://support.apple.com/manuals/) to customers
`
`with knowledge that the induced acts constitute patent infringement. Apple possesses specific
`
`intent to encourage infringement by its customers.
`
`36.
`
`Apple has contributed to the infringement of, and continues to contribute to the
`
`infringement of, one or more claims of the ’437 Patent under 35 U.S.C. § 271(c) and/or 271(f),
`
`either literally and/or under the doctrine of equivalents, by selling, offering for sale, and/or
`
`importing into the United States, the ’437 Infringing Products. Apple knows that those products:
`
`constitute a material part of the inventions claimed in the ’437 Patent; are especially made or
`
`adapted to infringe the ’437 Patent; are not staple articles or commodities of commerce suitable
`
`for non-infringing use, but rather the components are used for or in systems that infringe one or
`
`more claims of the ’437 Patent.
`
`37.
`
`Papst Licensing has been damaged as a result of Apple’s infringing conduct.
`
`Apple is thus liable to Papst Licensing in an amount that adequately compensates it for Apple’s
`
`11
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`ORIGINAL COMPLAINT
`
`

`
`infringements, which, by law, cannot be less than a reasonable royalty, together with interest and
`
`costs as fixed by this Court under 35 U.S.C. § 284.
`
`V. WILLFULNESS
`
`38.
`
`Papst Licensing alleges upon information and belief that Apple has knowingly or
`
`with reckless disregard willfully infringed the ’399 Patent. Apple’s knowledge includes
`
`knowledge of the ’399 Patent by virtue of Papst Licensing having notified Apple of its infringing
`
`acts. Apple acted with knowledge of the ’399 Patent and despite an objectively high likelihood
`
`that its actions constituted infringement of Papst Licensing’s valid patent rights.
`
`39.
`
`This objectively-defined risk was either known or so obvious that is should have
`
`been known to Apple. Papst Licensing seeks enhanced damages pursuant to 35 U.S.C. §284.
`
`VI. JURY DEMAND
`
`40.
`
`Papst Licensing demands a trial by jury of all matters to which it is entitled to trial
`
`by jury, pursuant to FED. R. CIV. P. 38.
`
`VII. PRAYER FOR RELIEF
`WHEREFORE, Plaintiff Papst Licensing prays for judgment and seeks relief against
`
`Defendant as follows:
`
`Judgment that one or more claims of U.S. Patent Nos. 6,473,399; 8,504,746;
`8,966,144; and 9,189,437 have been infringed, either literally and/or under the
`doctrine of equivalents, by Defendant;
`Award Plaintiff past and future damages together with prejudgment and post-
`judgment interest to compensate for the infringement by Defendant of the Patents
`in accordance with 35 U.S.C. §284, and increase such award by up to three times
`the amount found or assessed in accordance with 35 U.S.C. §284;
`That the Court declare this an exceptional case and award Plaintiff its reasonable
`attorney’s fees and costs in accordance with 35 U.S.C. § 285; and
`That Plaintiff be granted such other and further relief as the Court may deem just
`and proper under the circumstances.
`
`a.
`
`b.
`
`c.
`
`d.
`
`
`
`
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`12
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`ORIGINAL COMPLAINT
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`

`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`/s/ Christopher V. Goodpastor__________
`Christopher V. Goodpastor
`Texas State Bar No. 00791991
`LEAD ATTORNEY
`Andrew G. DiNovo
`Texas State Bar No. 00790594
`Adam G. Price
`State Bar No. 24027750
`Jay D. Ellwanger
`Texas State Bar No. 24036522
`DiNovo Price Ellwanger & Hardy LLP
`7000 N. MoPac Expressway, Suite 350
`Austin, Texas 78731
`Telephone: (512) 539-2626
`Telecopier: (512) 539-2627
`cgoodpastor@dpelaw.com
`adinovo@dpelaw.com
`aprice@dpelaw.com
`jellwanger@dpelaw.com
`
`ATTORNEYS FOR PLAINTIFF
`PAPST LICENSING GMBH & CO. KG
`
`13
`
`ORIGINAL COMPLAINT
`
`Dated: November 30, 2015