Case 1:16-cv-11458-DJC Document 22 Filed 12/05/16 Page 1 of 9
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`Civil Action No. 1:16-cv-11458-DJC
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`JURY DEMANDED
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`LEXINGTON LUMINANCE LLC
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`Plaintiff,
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`v.
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`TCL MULTIMEDIA TECHNOLOGY
`HOLDINGS, LTD. and
`TTE TECHNOLOGY, INC.,
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`Defendants.
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`PLAINTIFF’S SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff Lexington Luminance LLC (“Lexington” or “Plaintiff”) files this second amended
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`complaint for patent infringement against TCL Multimedia Technology Holdings, Ltd. and TTE
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`Technology, Inc.; and states as follows:
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`THE PARTIES
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`1.
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`Plaintiff Lexington Luminance LLC is a limited liability company organized under the
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`laws of Massachusetts with its principal place of business at 468 Lowell Street, Lexington,
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`Massachusetts 02420.
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`2.
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`On information and belief, Defendant TCL Multimedia Technology Holdings,
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`Ltd. (“TCL Multimedia”) is a limited liability company organized under the laws of the
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`Cayman Islands with a principal place of business at 13/F TCL Tower, 8 Tai Chung Road,
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`Tsuen Wan New Territories, Hong Kong SAR, China. TCL Multimedia can be served at this
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`principal place of business.
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`3.
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`On
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`information and belief, Defendant TTE Technology,
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`Inc.
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`(“TTE
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`Technology”) is a corporation organized and existing under the laws of the state of California,
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`and maintains its principal place of business at 2455 Anselmo Drive, Suite 101, Corona, CA
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`PLAINTIFF’S SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT
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`Case 1:16-cv-11458-DJC Document 22 Filed 12/05/16 Page 2 of 9
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`92879-1227. TTE Technology may be served through its registered agent Sophia Yang, located
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`at 16782 Von Karman Avenue, Suite 20, Irvine, CA 92606. Upon information and belief, TTE
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`Technology is a wholly owned subsidiary of TCL Multimedia Technology Holdings, Ltd.
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`4.
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`Defendants TCL Multimedia and TTE Technology are collectively referred to as
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`“Defendants.” On information and belief, Defendants are doing business in the United States
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`and, more particularly, in the Commonwealth of Massachusetts and this judicial District, by
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`designing, marketing, making, using, selling, importing, and/or offering for sale products that
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`infringe the patent claims involved in this action or by transacting other business in this District.
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`JURISDICTION AND VENUE
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`5.
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`This is an action for patent infringement arising under the patent laws of the United
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`States, Title 35, United States Code. Jurisdiction as to these claims is conferred on this Court
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`by 35 U.S.C. §§1331 and 1338(a).
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`6.
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`Venue is proper in the District of Massachusetts under 28 U.S.C. §§1391 and 1400(b).
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`On information and belief, Defendants have committed acts of infringement in this judicial
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`district and have purposely transacted business in this judicial District.
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`7.
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`This Court has personal jurisdiction over the Defendants. Defendants have conducted
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`and do conduct business within the Commonwealth of Massachusetts. Defendants, directly or
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`through intermediaries (including distributors, retailers, and others), ship, distribute, offer for
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`sale, sell, and advertise products in the United States, the Commonwealth of Massachusetts, and
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`the District of Massachusetts. Defendants purposefully and voluntarily sold one or more of
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`their infringing products with the expectation that they will be purchased by consumers in the
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`District of Massachusetts. These infringing products have been and continue to be purchased
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`by consumers in the District of Massachusetts. Defendants have committed acts of patent
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`PLAINTIFF’S SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT
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`Case 1:16-cv-11458-DJC Document 22 Filed 12/05/16 Page 3 of 9
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`infringement within the United States and, more particularly, within the District of
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`Massachusetts.
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`PATENT INFRINGEMENT
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`8.
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`9.
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`Lexington incorporates by reference paragraphs 1-7 as if fully set forth herein.
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`On August 30, 2005, United States Patent No. 6,936,851 B2 entitled “Semiconductor
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`Light-Emitting Device and Method for Manufacturing the Same” was duly and legally issued
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`after full and fair examination. Lexington is the owner of all right, title, and interest in and to
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`the patent by assignment, with full right to bring suit to enforce the patent, including the right to
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`recover for past infringement damages and the right to recover future royalties, damages, and
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`income.
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`10.
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`On September 30, 2013, an ex parte reexamination no. 90/012,964 was initiated for
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`United States Patent No. 6,936,851 B2. An ex parte reexamination certificate was issued on
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`December 5, 2014 for United States Patent No. 6,936,851 C1. The patent, together with the ex
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`parte reexamination certificate, is attached hereto as Exhibit A. United States Patent No.
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`6,936,851 B2 and 6,936,851 C1 are collectively known as the ‘851 Patent.
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`11.
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`12.
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`The ‘851 Patent is valid and enforceable.
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`To the extent any marking or notice was required by 35 U.S.C. § 287, Plaintiff has
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`complied with the applicable marking and/or notice requirements of 35 U.S.C. § 287.
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`13.
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`Upon information and belief, Defendants have infringed and/or continue to infringe
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`(literally and/or under the doctrine of equivalents) one or more claims of the ‘851 Patent in this
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`judicial district and elsewhere in the Commonwealth of Massachusetts and the United States,
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`including at least claim 1, by, among other things, making, using, offering for sale, selling,
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`and/or importing televisions and other electronic devices including, without limitation,
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`Case 1:16-cv-11458-DJC Document 22 Filed 12/05/16 Page 4 of 9
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`television model 40FD2700 and other similar products, which perform substantially the same
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`function as the devices embodied in one or more claims of the ‘851 Patent in substantially the
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`same way to achieve the same result.
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`14.
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`15.
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`The devices above are collectively referred to as the “Accused Products.”
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`On information and belief, the Accused Products use Light-Emitting Diodes (“LEDs”)
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`that use infringe one or more claims of the ‘851 Patent. The Accused Products use LEDs for
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`purposes including, without limitation, backlighting of the displays.
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`16.
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`17.
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`18.
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`The LEDs used in the Accused Products are semiconductor light-emitting devices.
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`The LEDs used in the Accused Products contain a substrate.
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`The LEDs used in the Accused Products contain a textured district defined on the
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`surface of said substrate comprising a plurality of etched trenches having a sloped
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`etching profile with a smooth rotation of micro-facets without a prescribed angle of
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`inclination.
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`19.
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`The LEDs used in the Accused Products contain a first layer disposed on said textured
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`district comprising a plurality of inclined lower portions, said first layer and said
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`substrate form a lattice-mismatched misfit system, said substrate having at least one of a
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`group consisting of group III-V, group IV, group II-VI elements and alloys, ZnO, spinel
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`and sapphire.
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`20.
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`21.
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`22.
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`The LEDs used in the Accused Products use a gallium nitride first layer.
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`The LEDs used in the Accused Products contain a sapphire substrate.
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`The LEDs used in the Accused Products contain a light-emitting structure containing an
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`active layer disposed on said first layer, whereby said plurality of inclined lower
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`portions are configured to guide extended lattice defects away from propagating into the
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`active layer.
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`23.
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`Defendants have been at no time, either expressly or impliedly, licensed under the ‘851
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`Patent.
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`24.
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`Defendants’ acts of infringement have caused damage to Plaintiff. Plaintiff is entitled to
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`recover from Defendants the damages sustained by Plaintiff as a result of the wrongful acts of
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`Defendants in an amount subject to proof at trial. Defendants’ infringement of Plaintiff’s rights
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`under the ‘851 Patent will continue to damage Plaintiff’s business, causing irreparable harm, for
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`which there is no adequate remedy of law, unless enjoined.
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`25.
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`Upon information and belief, since at least June 6, 2016, Defendants have had
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`knowledge of the ‘851 Patent and have had knowledge of their infringement of the ‘851 Patent
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`through written notification sent by Lexington to TTE Technology.
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`26.
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`Upon information and belief, since at least July 15, 2016, Defendant TTE Technology
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`has had knowledge of the ‘851 Patent and has had knowledge of their infringement of the ‘851
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`Patent through service of the original Complaint in this case by Lexington.
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`27.
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`Upon information and belief, since at least August 2, 2016, Defendant TCL Multimedia
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`has had knowledge of the ‘851 Patent and has had knowledge of their infringement of the ‘851
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`Patent through the filing of its waiver of foreign service requirement.
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`28.
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`Upon information and belief, since at least June 6, 2016, Defendants have been aware of
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`the ‘851 Patent. Defendants’ infringement has been and continues to be willful and deliberate.
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`Upon information and belief, Defendants deliberately infringed the ‘851 Patent and acted
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`recklessly and in disregard to the ‘851 Patent by making, having made, using, importing, and
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`offering for sale products that infringe the ‘851 Patent. Upon information and belief, the risks of
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`infringement were known to Defendants and/or were so obvious under the circumstances that
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`the infringement risks should have been known. Upon information and belief, Defendants have
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`no reasonable non-infringement theories. Upon information and belief, Defendants have not
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`attempted any design change to avoid infringement. Defendants have acted despite an
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`objectively high likelihood that its actions constituted infringement of the ‘851 Patent. In
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`addition, this objectively-defined risk was known or should have been known to Defendants.
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`Upon information and belief, Defendants have willfully infringed and/or continue to willfully
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`infringe the ‘851 Patent. Defendants’ actions of being made aware of its infringement, not
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`developing any non-infringement theories, not attempting any design change, and not ceasing
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`its infringement constitute egregious behavior beyond typical infringement. Defendants have
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`acted despite an objectively high likelihood that its actions constituted infringement of the ‘851
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`Patent.
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`29.
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`Defendants’ affirmative acts of selling the Accused Products, causing the Accused
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`Products to be manufactured and distributed, and providing instruction manuals for the Accused
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`Products have induced and continue to induce Defendants’ manufacturers, resellers, and/or end-
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`users to make or use the Accused Products in their normal and customary way to infringe the
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`‘851 Patent. For example, it can be reasonably inferred that retailers will re-sell the infringing
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`products, and that end-users will use the infringing products, which will cause the LEDs that are
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`the subject of the claimed invention to be used. Defendants specifically intended and were
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`aware that these normal and customary activities would infringe the ‘851 Patent. By way of
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`example, the LEDs that are the subject of the claim invention are energized and illuminated
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`when an infringing television is turned on and its LED-backlit display is illuminated. In
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`addition, Defendants provide instructional materials, such as user guides, that specifically teach
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`end-users to use the Accused Products in an infringing manner. By providing such instructions,
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`Defendants know (and have known), or were willfully blind to the probability that their actions
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`have, and continue to, actively induce infringement. By way of example only, Defendants have
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`induced infringement and continue to induce infringement of, in addition to other claims, at
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`least claim 1 of the ‘851 Patent by selling in the United States, without Lexington’s authority,
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`infringing products and providing the instructional materials described above. These actions
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`have induced and continue to induce the direct infringement of the ‘851 Patent by end-users,
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`businesses, distributors, resellers, and sales representatives. Defendants also actively induce
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`resellers of its products to directly infringe at least claim 1 of the ‘851 Patent by selling or
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`offering for sale the Accused Products in the United States. Defendants also actively induce
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`resellers of its products to directly infringe at least claim 1 of the ‘851 Patent by importing the
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`Accused Products into the United States. Defendants performed the acts that constitute induced
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`infringement, and would induce actual infringement, with the knowledge of the ‘851 Patent and
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`with the knowledge, or willful blindness to the probability, that the induced acts would
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`constitute infringement. Upon information and belief, Defendants specifically intended (and
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`intend) that their actions will results in infringement of at least claim 1 of the ‘851 Patent, or
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`subjectively believes that its actions will result in infringement of the ‘851 Patent but took
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`deliberate actions to avoid learning of those facts, as set forth above. Upon information and
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`belief, Defendants knew of the ’851 Patent and knew of its infringement, including by way of
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`this lawsuit and earlier as described above.
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`DEMAND FOR JURY TRIAL
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`Plaintiff hereby demands a jury for all issues so triable.
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`PRAYER
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`1.
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`2.
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`3.
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`WHEREFORE, Plaintiff prays for judgment that:
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`Defendants have infringed the ‘851 Patent;
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`Plaintiff recover actual damages under 35 U.S.C. § 284;
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`Plaintiff be awarded supplemental damages for any continuing post-verdict infringement
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`up until final judgment;
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`Plaintiff be awarded a compulsory ongoing royalty;
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`Plaintiff be awarded an accounting of damages;
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`Plaintiff be awarded enhanced damages for willful infringement as permitted under the
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`4.
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`5.
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`6.
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`law;
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`7.
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`A judgment and order requiring Defendants to pay to Plaintiff pre-judgment and post-
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`judgment interest on the damages awarded, including an award of pre-judgment interest,
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`pursuant to 35 U.S.C. § 284, from the date of each act of infringement of the ‘851 Patent by
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`Defendants to the day a damages judgment is entered, and a further award of post-judgment
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`interest, pursuant to 28 U.S.C. § 1961, continuing until such judgment is paid, at the maximum
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`rate allowed by law;
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`8.
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`An award to Plaintiff of the costs of this action and its reasonable attorneys’ fees
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`pursuant to 35 U.S.C. §285;
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`9.
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`Such other and further relied as the Court deems just and equitable.
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`Case 1:16-cv-11458-DJC Document 22 Filed 12/05/16 Page 9 of 9
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`DATED: December 5, 2016
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`Respectfully submitted,
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`/s/Robert D. Katz
`David S. Godkin (BBO#196530)
`BIRNBAUM & GODKIN LLP
`280 Summer Street
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`Boston, MA 02210
`617-307-6100
`godkin@birnbaumgodkin.com
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`Robert D. Katz
`KATZ PLLC
`6060 N. Central Expressway, Suite 560
`Dallas, TX 75206
`214-865-8000
`rkatz@katzfirm.com
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`ATTORNEYS FOR PLAINTIFF
`LEXINGTON LUMINANCE LLC
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`CERTIFICATE OF SERVICE
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`I hereby certify that this document filed through the ECF system will be sent electronically to
`the registered participants as identified on the Notice of Electronic Filing (NEF) and paper
`copies will be sent to those indicated as non-registered participants on the above date.
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`/s/ Robert D. Katz
`Robert D. Katz
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`PLAINTIFF’S SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT
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