Case 2:16-cv-00745 Document 1 Filed 07/08/16 Page 1 of 15 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Civil Action No. 2:16-cv-745
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`PATENT CASE
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`JURY TRIAL DEMANDED
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`UNILOC USA, INC. and
`UNILOC LUXEMBOURG, S.A.,
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`Plaintiffs,
`
`v.
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`UBISOFT, INC.,
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`Defendant.
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`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiffs, Uniloc USA, Inc. and Uniloc Luxembourg, S.A. (together “Uniloc”), as and
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`for their complaint against defendant, Ubisoft, Inc. (“Ubisoft”), allege as follows:
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`THE PARTIES
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`1.
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`Uniloc USA, Inc. (“Uniloc USA”) is a Texas corporation having a 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 also maintains a place of business at 102 N. College, Suite 603, 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 having a principal place of business at 15, Rue Edward Steichen, 4th Floor, L-
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`2540, Luxembourg (R.C.S. Luxembourg B159161).
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`3.
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`Uniloc Luxembourg owns a number of patents in the field of application
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`management in a computer network.
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`4.
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`Upon information and belief, Ubisoft is a California corporation having a
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`principal place of business in San Francisco, California and offering its products, including those
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`accused herein of infringement, to customers and/or potential customers located in Texas and in
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`the judicial Eastern District of Texas. Ubisoft may be served with process through its registered
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`agent: Stephen Smith, 1900 Avenue of the Stars, 21st Floor, Los Angeles, California 90067.
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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, 35 U.S.C. § 271 et seq. This Court has subject matter jurisdiction pursuant to 28
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`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). Upon information and belief, Ubisoft is deemed to reside in this judicial district, has
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`committed acts of infringement in this judicial district, and/or has purposely transacted business
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`involving the accused products in this judicial district, including sales to one or more customers
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`in Texas.
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`7.
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`Ubisoft is subject to this Court’s jurisdiction pursuant to due process and/or the
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`Texas Long Arm Statute due at least to its substantial business in this State and judicial district,
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`including: (A) at least part of its past infringing activities, (B) regularly doing or soliciting
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`business in Texas and/or (C) engaging in persistent conduct and/or deriving substantial revenue
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`from goods and services provided to customers in Texas.
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`COUNT I
`(INFRINGEMENT OF U.S. PATENT NO. 6,324,578)
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`Uniloc incorporates paragraphs 1-7 above by reference.
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`Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 6,324,578
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`
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`8.
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`9.
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`(“the ’578 Patent”), entitled METHODS, SYSTEMS AND COMPUTER PROGRAM
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`PRODUCTS FOR MANAGEMENT OF CONFIGURABLE APPLICATION PROGRAMS ON
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`A NETWORK that issued on November 27, 2001. A true and correct copy of the ’578 Patent is
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`attached as Exhibit A hereto.
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`10.
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`Uniloc USA is the exclusive licensee of the ’578 Patent with ownership of all
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`substantial rights therein, including the right to grant sublicenses, to exclude others, and to
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`enforce, sue and recover past damages for the infringement thereof.
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`11.
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`Upon information and belief, the following describes, at least in part, how
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`Ubisoft’s Uplay game portal works:
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`12.
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`Upon information and belief, the following describes, at least in part, how
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`Ubisoft’s Uplay game portal works:
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`
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`13.
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`Upon information and belief, the following describes, at least in part, how
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`Ubisoft’s Uplay game portal works:
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`14.
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`Upon information and belief, the following describes, at least in part, how
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`Ubisoft’s Uplay game portal works:
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`
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`15.
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`Upon information and belief, the following describes, at least in part, how
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`Ubisoft’s Uplay game portal works:
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`16.
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`Upon information and belief, the following describes, at least in part, how
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`Ubisoft’s Uplay game portal works:
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`17.
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`Upon information and belief, the following describes, at least in part, how
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`Ubisoft’s Uplay game portal works:
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`
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`18.
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`Upon information and belief, the following describes, at least in part, how
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`Ubisoft’s Uplay game portal works:
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`
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`19.
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`Upon information and belief, the following describes, at least in part, how
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`Ubisoft’s Uplay game portal works:
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`20.
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`Upon information and belief, the following describes, at least in part, how
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`Ubisoft’s Uplay game portal works
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`
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`21.
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`Upon information and belief, the following describes, at least in part, how
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`Ubisoft’s Uplay game portal works:
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`
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`22.
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`Upon information and belief, the following describes, at least in part, how
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`Ubisoft’s Uplay game portal works:
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`23.
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`Upon information and belief, the following describes, at least in part, how
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`Ubisoft’s Uplay game portal works:
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`
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`24.
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`Upon information and belief, the following describes, at least in part, how
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`Ubisoft’s Uplay game portal works:
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`25.
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`Upon information and belief, the following describes, at least in part, how
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`Ubisoft’s Uplay game portal works:
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`26.
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`Upon information and belief, the following describes, at least in part, how
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`
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`Ubisoft’s Uplay game portal works
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`27.
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`Upon information and belief, the following describes, at least in part, how
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`Ubisoft’s Uplay game portal works:
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`
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`28.
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`Upon information and belief, the following describes, at least in part, how
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`Ubisoft’s Uplay game portal works:
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`29.
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`Ubisoft has directly infringed, and continues to directly infringe one or more
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`claims of the ’578 Patent in this judicial district and elsewhere in Texas, including at least claims
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`1, 6-8, 11, 13, 22-24, 27, 32, 37-39 and 42-43 literally and/or under the doctrine of equivalents,
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`by or through making, using, importing, offering for sale and/or selling its Uplay games portal
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`during the pendency of the ’578 Patent which software and associated backend server
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`architecture inter alia allows for installing application programs having a plurality of
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`configurable preferences and authorized users on a network, distributing an application launcher
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`program to a user, the user obtaining a set of configurable preferences, obtaining an
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`administrator set of configurable preferences and executing the application program using the
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`user and administrator sets of configurable preferences responsive to a request from a user.
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`30.
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`In addition, should Ubisoft’s Uplay games portal be found to not literally infringe
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`the asserted claims of the ’578 Patent, Ubisoft’s accused product would nevertheless infringe the
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`asserted claims of the ’578 Patent. More specifically, the accused software/system performs
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`substantially
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`the
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`same
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`function
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`(making
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`computer games
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`available
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`for digital
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`download/management), in substantially the same way (via a client/server environment), to yield
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`substantially the same result (distributing application programs to a target on-demand server on a
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`network). Ubisoft would thus be liable for direct infringement under the doctrine of equivalents.
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`31.
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`Ubisoft has indirectly infringed and continues to indirectly infringe at least claims
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`1, 6-8, 11, 13, 22-24, 27, 32, 37-39 and 42-43 of the ’578 Patent in this judicial district and
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`elsewhere in the United States by, among other things, actively inducing the using, offering for
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`sale, selling, or importing the Uplay games portal. Ubisoft’s customers who possess the Uplay
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`games portal and use such application in accordance with Ubisoft’s instructions directly infringe
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`one or more of the forgoing claims of the ’578 Patent in violation of 35 U.S.C. § 271. Ubisoft
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`directly and/or indirectly instructs its customers through training videos, demonstrations,
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`brochures, installation and/or user guides, such as those located at the following:
`
`•
`
`•
`
`•
`
`•
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`https://uplay.ubi.com
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`https://club.ubi.com
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`https://account-ubi.com
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`www.youtube.com
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`Ubisoft is thereby liable for infringement of the ’578 Patent under 35 U.S.C. § 271(b).
`
`32.
`
`Ubisoft has indirectly infringed and continues to indirectly infringe at least claims
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`1, 6-8, 11, 13, 22-24, 27, 32, 37-39 and 42-43 of the ’578 Patent in this judicial district and
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`elsewhere in the United States by, among other things, contributing to the direct infringement by
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`others including, without limitation customers using the Uplay games portal, by making, offering
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`to sell, selling and/or importing into the United States, a component of a patented machine,
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`manufacture or combination, or an apparatus for use in practicing a patented process,
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`constituting a material part of the invention, knowing the same to be especially made or
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`especially adapted for use in infringing the ’578 Patent and not a staple article or commodity of
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`commerce suitable for substantial non-infringing use.
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`33.
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`For example, the Uplay games portal is a component of a patented machine,
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`manufacture, or combination, or an apparatus for use in practicing a patent process.
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`Furthermore, the Uplay games portal is a material part of the claimed inventions and upon
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`information and belief is not a staple article or commodity of commerce suitable for substantial
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`non-infringing use. Ubisoft is, therefore, liable for infringement under 35 U.S.C. § 271(c).
`
`34.
`
`Ubisoft will have been on notice of the ’578 Patent since, at the latest, the service
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`of this complaint upon Salesforce. By the time of trial, Ubisoft will have known and intended
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`(since receiving such notice) that its continued actions would actively induce, and contribute to,
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`the infringement of one or more of claims 1, 6-8, 11, 13, 22-24, 27, 32, 37-39 and 42-43 of the
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`’578 Patent.
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`35.
`
`Ubisoft may have infringed the ’578 Patent through other software utilizing the
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`same or reasonably similar functionality, including other versions of its Uplay games portal
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`software delivery system. Uniloc reserves the right to discover and pursue all such additional
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`infringing software.
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`36.
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`Uniloc has been damaged, reparably and irreparably, by Ubisoft’s infringement of
`
`the ’578 Patent and such damage will continue unless and until Ubisoft is enjoined.
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`COUNT II
`(INFRINGEMENT OF U.S. PATENT NO. 7,069,293)
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`Uniloc incorporates paragraphs 1-36 above by reference.
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`Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 7,069,293
`
`
`
`37.
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`38.
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`(“the ’293 Patent”), entitled METHODS, SYSTEMS AND COMPUTER PROGRAM
`
`PRODUCTS FOR DISTRIBUTION OF APPLICATION PROGRAMS TO A TARGET
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`STATION ON A NETWORK that issued on June 27, 2006. A true and correct copy of the ’293
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`Patent is attached as Exhibit B hereto.
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`39.
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`Uniloc USA is the exclusive licensee of the ’293 Patent with ownership of all
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`substantial rights therein, including the right to grant sublicenses, to exclude others, and to
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`enforce, sue and recover past damages for the infringement thereof.
`
`40.
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`Ubisoft has directly infringed, and continues to directly infringe one or more
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`claims of the ’293 Patent in this judicial district and elsewhere in Texas, including at least claims
`
`1, 12 and 17, literally and/or under the doctrine of equivalents, by or through making, using,
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`importing, offering for sale and/or selling its Uplay games portal during the pendency of the ’293
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`Patent which software and associated backend server architecture inter alia allow for providing
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`an application program for distribution to a network server, specifying source and target
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`directories for the program to be distributed, preparing a file packet associated with the program
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`including a segment configured to initiate registration and distributing the file packet to the target
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`on-demand server to make the program available for use by a client user.
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`41.
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`In addition, should Ubisoft’s Uplay games portal be found to not literally infringe
`
`the asserted claims of the ’293 Patent, Ubisoft’s accused product would nevertheless infringe the
`
`asserted claims of the ’293 Patent. More specifically, the accused Uplay games portal performs
`
`substantially the same function (distributing application programs to a target on-demand server
`
`on a network), in substantially the same way (via a client/server environment to target on-
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`demand users), to yield substantially the same result (making application programs available for
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`use by target on-demand users). Ubisoft would thus be liable for direct infringement under the
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`doctrine of equivalents.
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`42.
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`Ubisoft has indirectly infringed and continues to indirectly infringe at least claims
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`1, 12 and 17 of the ’293 Patent in this judicial district and elsewhere in the United States by,
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`among other things, actively inducing the using, offering for sale, selling, or importing the Uplay
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`games portal. Ubisoft’s customers who possess the Uplay games portal and use such application
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`in accordance with Ubisoft’s instructions directly infringe one or more of the forgoing claims of
`
`the ’293 Patent in violation of 35 U.S.C. § 271. Ubisoft directly and/or indirectly instructs its
`
`customers through training videos, demonstrations, brochures, installation and/or user guides,
`
`such as those located at the following:
`
`•
`
`•
`
`•
`
`•
`
`https://uplay.ubi.com
`
`https://club.ubi.com
`
`https://account-ubi.com
`
`www.youtube.com
`
`Ubisoft is thereby liable for infringement of the ’293 Patent under 35 U.S.C. § 271(b).
`
`43.
`
`Ubisoft has indirectly infringed and continues to indirectly infringe at least claims
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`1, 12 and 17 of the ’293 Patent in this judicial district and elsewhere in the United States by,
`
`among other things, contributing to the direct infringement by others including, without
`
`limitation customers using the Uplay games portal, by making, offering to sell, selling and/or
`
`importing into the United States, a component of a patented machine, manufacture or
`
`combination, or an apparatus for use in practicing a patented process, constituting a material part
`
`of the invention, knowing the same to be especially made or especially adapted for use in
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`infringing the ’293 Patent and not a staple article or commodity of commerce suitable for
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`substantial non-infringing use.
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`44.
`
`For example, the Uplay games portal is a component of a patented machine,
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`manufacture, or combination, or an apparatus for use in practicing a patent process.
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`Furthermore, the Uplay games portal is a material part of the claimed inventions and upon
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`information and belief is not a staple article or commodity of commerce suitable for substantial
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`non-infringing use. Ubisoft is, therefore, liable for infringement under 35 U.S.C. § 271(c).
`
`45.
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`Ubisoft will have been on notice of the ’293 Patent since, at the latest, the service
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`of this complaint upon Salesforce. By the time of trial, Ubisoft will have known and intended
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`(since receiving such notice) that its continued actions would actively induce, and contribute to,
`
`the infringement of one or more of claims 1, 12 and 17 of the ’293 Patent.
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`46.
`
`Ubisoft may have infringed the ’293 Patent through other software utilizing the
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`same or reasonably similar functionality, including other versions of its Uplay games portal.
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`Uniloc reserves the right to discover and pursue all such additional infringing software.
`
`47.
`
`Uniloc has been damaged, reparably and irreparably, by Ubisoft’s infringement of
`
`the ’293 Patent and such damage will continue unless and until Ubisoft is enjoined.
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`PRAYER FOR RELIEF
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`Uniloc requests that the Court enter judgment against Ubisoft as follows:
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`(A)
`
`(B)
`
`that Ubisoft has infringed the ’578 Patent and the ’293 Patent;
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`awarding Uniloc its damages suffered as a result of Ubisoft’s infringement of the
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`’578 Patent and the ’293 Patent pursuant to 35 U.S.C. § 284;
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`
`
`(C)
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`enjoining Ubisoft, its officers, directors, agents, servants, affiliates, employees,
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`divisions, branches, subsidiaries and parents, and all others acting in concert or privity with it
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`from infringing the ’578 Patent and the ’293 Patent pursuant to 35 U.S.C. § 283;
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`
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`
`
`(D)
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`(E)
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`proper.
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`
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`awarding Uniloc its costs, attorneys’ fees, expenses and interest, and
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`granting Uniloc such other and further relief as the Court may deem just and
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`
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`DEMAND FOR JURY TRIAL
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`
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`Uniloc hereby demands trial by jury on all issues so triable pursuant to Fed. R. Civ. P. 38.
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`Respectfully submitted,
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`Dated: July 8, 2016
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`
` /s/ Craig Tadlock
`Craig Tadlock
`Texas State Bar No. 00791766
`Keith Smiley
`Texas State Bar No. 24067869
`TADLOCK LAW FIRM PLLC
`2701 Dallas Parkway, Suite 360
`Plano, TX 75093
`Tel: (903) 730-6789
`Email: craig@tadlocklawfirm.com
`Email: keith@tadlocklawfirm.com
`
`Paul J. Hayes
`Kevin Gannon
`CESARI AND MCKENNA, LLP
`88 Black Falcon Ave
`Suite 271
`Boston, MA 02110
`Telephone: (617) 951-2500
`Facsimile: (617) 951-3927
`Email: pjh@c-m.com
`Email: ktg@c-m.com
`
`
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`
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`ATTORNEYS FOR THE PLAINTIFFS
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