IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`
`HITACHI MAXELL, LTD.,
`
`Plaintiff,
`
`v.
`
`ZTE CORP. and ZTE USA INC.,
`
`Defendants.
`
`
`
`Civil Action No. ___________
`
`COMPLAINT AND DEMAND
`FOR JURY TRIAL
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff Hitachi Maxell, Ltd. (“Hitachi Maxell”), by and through its undersigned counsel,
`
`files this complaint under 35 U.S.C. § 271 for Patent Infringement against Defendants ZTE
`
`Corporation and ZTE USA Inc. (collectively, “Defendants”) and further alleges as follows, upon
`
`actual knowledge with respect to itself and its own acts, and upon information and belief as to all
`
`other matters.
`
`OVERVIEW
`
`1.
`
`This is an action for patent infringement brought by Hitachi Maxell. Founded in
`
`1961 as Maxell Electric Industrial Co., Ltd., Hitachi Maxell is a leading global manufacturer of
`
`information storage media products, including magnetic tapes, optical discs, and battery products
`
`such as lithium ion rechargeable micro batteries and alkaline dry batteries, and the company has
`
`over 50 years experience of producing industry-leading recordable media and energy products
`
`for both the consumer and the professional markets.
`
`
`
`1
`
`ZTE Exhibit 1004
`
`

`

`2.
`
`Hitachi Maxell has built an international reputation for excellence and reliability,
`
`for pioneering the power supplies and digital recording for today’s mobile and multi-media
`
`devices, and leading the electronics industry in the fields of storage media and batteries.
`
`3.
`
`Since being one of the first companies to develop alkaline batteries and Blu Ray
`
`camcorder discs, Hitachi Maxell has always assured its customers of industry-leading product
`
`innovation and is one of the world’s foremost suppliers of memory, power, audio, and visual
`
`goods.
`
`4.
`
`In 2010, Hitachi Maxell became a subsidiary of Hitachi, Ltd. As set forth below,
`
`Hitachi, Ltd. assigned intellectual property, including the patents in this case, to Hitachi
`
`Consumer Electronics Co., Ltd., then Hitachi Consumer Electronics Co., Ltd. assigned its
`
`intellectual property, including the patents in this case, to Hitachi Maxell. This was an effort to
`
`align its intellectual property with the licensing, business development, and research and
`
`development efforts of Hitachi Maxell, including in the mobile and mobile-media device market
`
`(Hitachi, Ltd., Hitachi Consumer Electronics Co., Ltd., and Hitachi Maxell are referred to herein
`
`collectively as “Hitachi”). Hitachi Maxell continues to sell products in the mobile device market
`
`including wireless charging solutions, wireless flash drives, multimedia players, storage devices,
`
`and headphones. Hitachi Maxell also maintains intellectual property related to televisions,
`
`tablets, digital cameras, and mobile phones. As a mobile technology developer and industry
`
`leader, and due to its historical and continuous investment in research and development, Hitachi
`
`Maxell owns a portfolio of patents related to such technologies and actively enforces its patents
`
`through licensing and/or litigation. Hitachi Maxell is forced to bring this action against
`
`Defendants as a result of Defendants’ knowing and ongoing infringement of Hitachi Maxell’s
`
`patents.
`
`2
`
`ZTE Exhibit 1004 - 2
`
`

`

`5.
`
`As further detailed below, beginning in June 2013, Hitachi had numerous
`
`meetings and interactions with Defendants, providing Defendants’ representatives with detailed
`
`information regarding Hitachi Maxell’s patents, the technology that Hitachi had developed, and
`
`Defendants’ ongoing use of this patented technology. Through this process, Defendants’
`
`representatives requested and Hitachi provided detailed explanations of its patents and
`
`allegations. For more than three years, Hitachi answered multiple inquiries from Defendants,
`
`believing that a business transaction between the parties would be mutually beneficial.
`
`Defendants elected, however, not to enter into an agreement with Hitachi and/or license Hitachi
`
`Maxell’s patents. Instead, Defendants continued, and continue today, to make, use, sell, and
`
`offer for sale Hitachi Maxell’s patented technology without license.
`
`PARTIES
`
`6.
`
`Plaintiff Hitachi Maxell, Ltd. is a Japanese corporation with a registered place of
`
`business at 1-1-88, Ushitora, Ibaraki-City, Osaka 567-8567 Japan.
`
`7.
`
`On information and belief, Defendant ZTE Corporation is a Chinese corporation
`
`with a principal place of business located at ZTE Plaza, Keji Road South, Hi-tech Industrial Park
`
`Nansha, Shenzhen, Guangdong, 518057, China.
`
`8.
`
`On information and belief, Defendant ZTE USA Inc. is a New Jersey corporation
`
`with a principal place of business located at 2425 N. Central Expy, Ste 323, Richardson, Texas
`
`75080.
`
`9.
`
`On information and belief, Defendant ZTE USA Inc. is in the business of
`
`providing information and communications technology solutions. Specifically, ZTE USA Inc.
`
`provides wireless telecommunications equipment, including smart phones, tablets, and mobile
`
`phones.
`
`
`
`3
`
`ZTE Exhibit 1004 - 3
`
`

`

`NATURE OF THE ACTION, JURISDICTION, AND VENUE
`
`10.
`
`Hitachi Maxell brings this action for patent infringement under the patent laws of
`
`the United States, 35 U.S.C. § 271 et seq.
`
`11.
`
`This Court has subject matter jurisdiction over the subject matter of this action
`
`pursuant to 28 U.S.C. §§ 1331 and 1338(a) because the action arises under the patent laws of the
`
`United States.
`
`12.
`
`The Court has personal jurisdiction over the Defendants because (1) Hitachi
`
`Maxell’s claims arise in whole or in part from Defendants’ conduct in Texas; (2) ZTE USA Inc.
`
`is organized under the laws of Texas, and maintains its principal place of business in this
`
`jurisdiction; and (3) Defendants are subject to personal jurisdiction under the provisions of the
`
`Texas Long Arm Statute, TX CIV PRAC. & REM CODE §17.041 et seq., by virtue of the fact
`
`that, upon information and belief, Defendants have availed themselves of the privilege of
`
`conducting and soliciting business within this State, including engaging in at least some of the
`
`infringing acts alleged herein through the sales and marketing of infringing products in this State.
`
`The allegations and claims set forth in this action arise out of Defendants’ infringing activities in
`
`this State, as well as by others acting as Defendants’ agents and/or representatives, such that it
`
`would be reasonable for this Court to exercise jurisdiction consistent with the principles
`
`underlying the U.S. Constitution, and would not offend traditional notions of fair play and
`
`substantial justice.
`
`13.
`
`Upon further information and belief, Defendants have also established minimum
`
`contacts with this District and regularly transact and do business within this District, including
`
`advertising, promoting and selling products over the internet, through intermediaries,
`
`representatives and/or agents located within this District, that infringe Hitachi Maxell’s patents,
`
`
`
`4
`
`ZTE Exhibit 1004 - 4
`
`

`

`which products are then sold, packaged and shipped directly to citizens residing within this State
`
`and this District. Upon further information and belief, Defendants have purposefully directed
`
`activities at citizens of this State and located within this District.
`
`14.
`
`On information and belief, Defendants have purposefully and voluntarily placed
`
`their products into the stream of commerce with the expectation that they will be purchased and
`
`used by customers located in the State of Texas and the Eastern District of Texas. On
`
`information and belief, Defendants’ customers in the Eastern District of Texas have purchased
`
`and used and continue to purchase and use Defendants’ products.
`
`15.
`
`Venue in the Eastern District of Texas is proper pursuant to 28 U.S.C. §§
`
`1391(b)(2) and 1400 because a substantial part of the events giving rise to the claims in this
`
`action occurred in this District and Defendants’ agent resides or may be found in this District.
`
`COUNT 1 - INFRINGEMENT OF U.S. PATENT NO. 5,396,443
`
`Hitachi Maxell incorporates paragraphs 1-15 above by reference.
`
`U.S. Patent No. 5,396,443 (the “’443 Patent,” attached hereto at Exhibit 1) duly
`
`16.
`
`17.
`
`issued on March 7, 1995, and is entitled Information Processing Apparatus Including
`
`Arrangements for Activation to and Deactivation from a Power-Saving State.
`
`18.
`
`Hitachi Maxell is the owner by assignment of the ’443 Patent and possesses all
`
`rights of recovery under the ’443 Patent, including the exclusive right to recover for past
`
`infringement.
`
`19.
`
`On June 10, 2013, Hitachi contacted Mr. Shi Lirong, the then President of ZTE
`
`Corporation, to engage in discussions regarding the potential licensing of Hitachi’s patents,
`
`including the ’443 Patent. Hitachi provided Defendants with claim charts that mapped the claim
`
`
`
`5
`
`ZTE Exhibit 1004 - 5
`
`

`

`elements to Defendants’ products. Specifically, at least one of the claim charts provided
`
`compared the ’443 Patent claims to the ZTE Fury product.
`
`20.
`
`Defendants have directly infringed one or more claims of the ’443 Patent in this
`
`judicial district and elsewhere in Texas, including at least claims 1-5 and 22 literally and/or
`
`under the doctrine of equivalents, by or through making, using, importing, offering for sale
`
`and/or selling their telecommunications technology, including by way of example a product
`
`known as the ZTE Reef.
`
`21.
`
`The Reef is an information processing apparatus with a CPU enclosed in a
`
`housing. The Reef includes a processor programmed to automatically adjust the screen to save
`
`the phone’s battery life. The Reef includes sensing means such as a proximity sensor for
`
`detecting when a user associated medium approaches a part of the housing. It further includes a
`
`touchscreen that can detect when a user-associated medium, such as a user’s finger, approaches
`
`the screen. The point at which the approach occurs is identified using sensors that sense minor
`
`changes in electrical current generated by, for example, changes in electrostatic capacity.
`
`22.
`
`The Reef is observed to transition from a power-saving state to a non-power-
`
`saving state when the touchscreen detects the approach of a user-associated medium. Further,
`
`the Reef is observed to transition from a non-power-saving state to a power-saving state when
`
`the user-associated medium is distant from the device for a set period of time.
`
`23.
`
`The foregoing features and capabilities of the Reef, and Defendants’ description
`
`and/or demonstration thereof, including in user manuals and advertising, reflect Defendants’
`
`direct infringement by satisfying every element of at least claims 1-5 and 22 of the ’443 Patent,
`
`under 35 U.S.C. § 271(a).
`
`
`
`6
`
`ZTE Exhibit 1004 - 6
`
`

`

`24.
`
`On information and belief, Defendants further infringe the ’443 Patent through
`
`additional products utilizing the same or reasonably similar functionalities as described above
`
`with respect to the Reef (collectively, “the ’443 Accused Products”). The ’443 Accused
`
`Products include, by way of examples, ZTE N-series phones (Reef N810, Anthem 4G N910,
`
`Engage LT N8000, Director N850L, Flash N9500, Fury N850, Imperial N9101, Nubia Z5 N501,
`
`Render N859, Supreme N8910, Vital N860, Warp N860, Warp Sequent N861, Force N9100);
`
`ZTE V-series phones (Concord V768, Engage V8000, Grand S V988, Optik V55); ZTE X-
`
`series phones (Groove X501, Score X500, Score M X500M); ZTE Z-series phones (Z990, Z998,
`
`Majesty Z796C, Merit Z990G, Overture Z995, Savvy Z750C, Whirl Z660c); ZTE Chorus; ZTE
`
`Open; and ZTE Prelude. These additional products each include all necessary hardware and
`
`operating systems and work as described above with respect to the ZTE Reef. Hitachi Maxell
`
`reserves the right to discover and pursue any additional infringing devices that incorporate
`
`infringing functionalities. For the avoidance of doubt, the ’443 Accused Products are identified
`
`to describe the Defendants’ infringement and in no way limit the discovery and infringement
`
`allegations against Defendants concerning other devices that incorporate the same or reasonably
`
`similar functionalities.
`
`25.
`
`Defendants have indirectly infringed at least claims 1-5 and 22 of the ’443 Patent
`
`in this judicial district and elsewhere in the United States by, among other things, actively
`
`inducing the use, offering for sale, selling, or importation of at least the ’443 Accused Products.
`
`Defendants’ customers who purchase devices and components thereof and operate such devices
`
`and components in accordance with Defendants’ instructions directly infringe one or more
`
`claims of the ’443 Patent in violation of 35 U.S.C § 271. Defendants instruct their customers
`
`through at least user guides, such as those for the ZTE Reef located at the following webpage:
`
`
`
`7
`
`ZTE Exhibit 1004 - 7
`
`

`

`https://www.zteusa.com/virginmobile-reef. Defendants are thereby liable for infringement of
`
`the ’443 Patent pursuant to 35 U.S.C § 271(b).
`
`26.
`
`Defendants have indirectly infringed at least claims 1-5 and 22 of the ’443 Patent,
`
`by, among other things, contributing to the direct infringement of others, including customers of
`
`the ’443 Accused Products, by making, offering to sell, or selling in the United States, or
`
`importing 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 infringement of the ’443 Patent, and
`
`not a staple article or commodity of commerce suitable for substantial non-infringing use.
`
`27.
`
`For example, the ’443 Accused Products include power saving control software.
`
`This is a component of a patented machine, manufacture, or combination, or an apparatus for use
`
`in practicing a patented process. Furthermore, such component is a material part of the invention
`
`and upon information and belief is not a staple article or commodity of commerce suitable for
`
`substantial non-infringing use. Thus, Defendants are liable for infringement of the ’443 Patent
`
`pursuant to 35 U.S.C § 271(c).
`
`28.
`
`Defendants have been on notice of the ’443 Patent since at least the invitation for
`
`negotiations sent by Hitachi on June 10, 2013, and, at the latest, the service of this complaint.
`
`By the time of trial, Defendants will thus have known and intended (since receiving such notice)
`
`that their continued actions would actively induce and contribute to actual infringement of at
`
`least claims 1-5 and 22 of the ’443 Patent.
`
`29.
`
`Defendants undertook and continue their infringing actions despite an objectively
`
`high likelihood that such activities infringed the ’443 Patent, which has been duly issued by the
`
`USPTO, and is presumed valid. For example, since at least June 10, 2013, Defendants have been
`
`
`
`8
`
`ZTE Exhibit 1004 - 8
`
`

`

`aware of an objectively high likelihood that their actions constituted and continue to constitute
`
`infringement of the ’443 Patent, and that the ’443 Patent is valid. On information and belief,
`
`Defendants could not reasonably, subjectively believe that their actions do not constitute
`
`infringement of the ’443 Patent, nor could they reasonably, subjectively believe that the patent is
`
`invalid. Despite that knowledge and subjective belief, and the objectively high likelihood that
`
`their actions constitute infringement, Defendants have continued their infringing activities. As
`
`such, Defendants willfully infringe the ’443 Patent.
`
`30.
`
`Hitachi Maxell has been damaged by Defendants’ infringement of the ’443
`
`Patent.
`
`31.
`
`32.
`
`COUNT 2 – INFRINGEMENT OF U.S. PATENT NO. 6,748,317
`
`Hitachi Maxell incorporates paragraphs 1-30 above by reference.
`
`U.S. Patent No. 6,748,317 (the “’317 Patent,” attached hereto at Exhibit 2) duly
`
`issued on June 8, 2004, and is entitled Portable Terminal with the Function of Walking
`
`Navigation.
`
`33.
`
`Hitachi Maxell is the owner by assignment of the ’317 Patent and possesses all
`
`rights of recovery under the ’317 Patent, including the exclusive right to recover for past and
`
`future infringement.
`
`34.
`
`On June 10, 2013, Hitachi contacted Mr. Shi Lirong, the then President of ZTE
`
`Corporation, to engage in discussions regarding the potential licensing of Hitachi’s patents.
`
`Hitachi provided Defendants with claim charts that mapped the claim elements to Defendants’
`
`products. Specifically, at least one of the claim charts provided compared the ’317 Patent claims
`
`to the ZTE Fury product.
`
`
`
`9
`
`ZTE Exhibit 1004 - 9
`
`

`

`35.
`
`Defendants have directly infringed one or more claims of the ’317 Patent in this
`
`judicial district and elsewhere in Texas, including at least claims 1-3, 6-8, 10, 15-17, and 20
`
`literally and/or under the doctrine of equivalents, by or through making, using, importing,
`
`offering for sale and/or selling their telecommunications technology, including by way of
`
`example a product known as the ZTE Quartz.
`
`36.
`
`The Quartz includes a screen for displaying information, and at least a GPS for
`
`location information. The Quartz is provided with pre-installed software that allows users to
`
`access location information, including the present location of the device and orientation of the
`
`device, using GPS information, cellular network information, Wi-Fi network information, or
`
`some combination thereof.
`
`37.
`
`The software, in combination with the electronic components of the Quartz
`
`device, allows the user to input a destination and display the present place, the destination, and
`
`directions between the two locations denoted by lines (including starting and ending points)
`
`superimposed on a map which includes roads and points of interest, or by displaying the
`
`directional information in the form of a written list. Further, the display calculates the distance
`
`between the present place and destination and provides numerical distance data that updates
`
`according to a change of the direction and orientation of the device for walking navigation.
`
`38.
`
`The Quartz is further provided with pre-installed software that allows users to
`
`access location information of other user devices, using GPS information, cellular network
`
`information, Wi-Fi network information, or some combination thereof.
`
`39.
`
`The foregoing features and capabilities of the Quartz, and Defendants’ description
`
`and/or demonstration thereof, including in user manuals and advertising, reflect Defendants’
`
`
`
`10
`
`ZTE Exhibit 1004 - 10
`
`

`

`direct infringement by satisfying every element of at least claims 1-3, 6-8, 10, 15-17, and 20 of
`
`the ’317 Patent, under 35 U.S.C. § 271(a).
`
`40.
`
`On information and belief, Defendants further infringe the ’317 Patent through
`
`additional products utilizing the same or reasonably similar functionalities as described above
`
`with respect to the Quartz (collectively, “the ’317 Accused Products”). The ’317 Accused
`
`Products include, by way of examples, ZTE N-series phones (e.g. Reef N810, Anthem 4G N910,
`
`Engage LT N8000, Director N850L, Flash N9500, Fury N850, Imperial N9101, Nubia Z5 N501,
`
`Render N859, Supreme N8910, Vital N9810, Warp N860, Warp Elite Z9518, Force N9100, ZTE
`
`Speed N9130, ZTE Prestige N9132, ZTE Warp Sync N9515, Grand S Pro N9835); ZTE V-series
`
`phones (e.g. Concord V768, Engage V8000, Grand S V988, Optik V55, Nova 4 V8000); ZTE
`
`X-series phones (e.g. Groove X501, Score X500, Score M X500M); ZTE Z-series phones (e.g.
`
`Z990, Z998, Majesty Z796C, Overture Z995, Savvy Z750C, Whirl Z660c, Unico LTE Z930L,
`
`Z667, Paragon Z753G, Concord II Z730, Zephyr Z752C, Rapido LTE Z932L, Quartz Z797C,
`
`Citrine LTE Z716BL, Max Duo LTE Z963VL-Z962BL, Atrium Z793C, Grand X3 Z959, Grand
`
`X Max Z787, Grand X Max 2 Z988, ZTE Avid Plus Z828, Obsidian Z820, Sonata Z740G,
`
`Sonata 2 Z755, Maven Z812, Zmax Z790); ZTE Chorus; ZTE Open; ZTE Fanfare, ZTE Lever
`
`LTE, ZTE Trek 2 (6461A), ZTE Compel, ZTE Midnight Pro LTE (001-1), ZTE Boost Max and
`
`Boost Max+(9521ABB), ZTE Overture 2, ZTE Warp 7, ZTE ZMAX PRO (001), ZTE Nubia
`
`series (e.g. N1, Z11, Z11 max, Z11 mini, Prague, Z9, Z9 max, Z9 mini), ZTE Axon series (e.g.
`
`Axon A1, Axon 7, Axon Max, Axon Pro), ZTE Maven 2 (6349A), ZTE Imperial II, ZTE Zinger,
`
`and ZTE Prelude. These additional products each include all necessary hardware and operating
`
`systems and work as described above with respect to the ZTE Quartz. Hitachi Maxell reserves
`
`the right to discover and pursue any additional infringing devices that incorporate infringing
`
`
`
`11
`
`ZTE Exhibit 1004 - 11
`
`

`

`functionalities. For the avoidance of doubt, the ’317 Accused Products are identified to describe
`
`the Defendants’ infringement and in no way limit the discovery and infringement allegations
`
`against Defendants concerning other devices that incorporate the same or reasonably similar
`
`functionalities.
`
`41.
`
`Defendants have indirectly infringed and continue to indirectly infringe at least
`
`claims 1-3, 6-8, 10, 15-17, and 20 of the ’317 Patent in this judicial district and elsewhere in the
`
`United States by, among other things, actively inducing the use, offering for sale, selling, or
`
`importation of at least the ’317 Accused Products. Defendants’ customers who purchase devices
`
`and components thereof and operate such devices and components in accordance with
`
`Defendants’ instructions directly infringe one or more claims of the ’317 Patent in violation of
`
`35 U.S.C § 271. Defendants instruct their customers through at least user guides, such as the
`
`Quartz manual located at the following website: https://www.zteusa.com/media/wysiwyg/zte-
`
`quartz/ZTE_Quartz_User_Manual_English_-_PDF_-_2.13MB_.pdf. Defendants are thereby
`
`liable for infringement of the ’317 Patent pursuant to 35 U.S.C § 271(b).
`
`42.
`
`Defendants have indirectly infringed and continue to indirectly infringe at least
`
`claims 1-3, 6-8, 10, 15-17, and 20 of the ’317 Patent, by among other things, contributing to the
`
`direct infringement of others, including customers of the ’317 Accused Products by making,
`
`offering to sell, or selling, in the United States, or importing 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 infringement of the ’317 Patent, and not a staple article or
`
`commodity of commerce suitable for substantial non-infringing use.
`
`
`
`12
`
`ZTE Exhibit 1004 - 12
`
`

`

`43.
`
`For example, the ’317 Accused Products include direction information between a
`
`present place and destination inputted by the user. This is a component of a patented machine,
`
`manufacture, or combination, or an apparatus for use in practicing a patented process.
`
`Furthermore, such component is a material part of the invention and upon information and belief
`
`is not a staple article or commodity of commerce suitable for substantial non-infringing use.
`
`Thus, Defendants are liable for infringement of the ’317 Patent pursuant to 35 U.S.C § 271(c).
`
`44.
`
`Defendants have been on notice of the ’317 Patent since at least the invitation for
`
`negotiations sent by Hitachi on June 10, 2013, and, at the latest, the service of this complaint.
`
`By the time of trial, Defendants will thus have known and intended (since receiving such notice),
`
`that their continued actions would actively induce and contribute to actual infringement of at
`
`least claims 1-3, 6-8, 10, 15-17, and 20 of the ’317 Patent.
`
`45.
`
`Defendants undertook and continue their infringing actions despite an objectively
`
`high likelihood that such activities infringed the ’317 Patent, which has been duly issued by the
`
`USPTO, and is presumed valid. For example, since at least June 10, 2013, Defendants have been
`
`aware of an objectively high likelihood that their actions constituted and continue to constitute
`
`infringement of the ’317 Patent, and that the ’317 Patent is valid. On information and belief,
`
`Defendants could not reasonably, subjectively believe that their actions do not constitute
`
`infringement of the ’317 Patent, nor could they reasonably, subjectively believe that the patent is
`
`invalid. Despite that knowledge and subjective belief, and the objectively high likelihood that
`
`their actions constitute infringement, Defendants have continued their infringing activities. As
`
`such, Defendants willfully infringe the ’317 Patent.
`
`46.
`
`Hitachi Maxell has been damaged by Defendants’ infringement of the ’317
`
`Patent.
`
`
`
`13
`
`ZTE Exhibit 1004 - 13
`
`

`

`COUNT 3 – INFRINGEMENT OF U.S. PATENT NO. 8,339,493
`
`Hitachi Maxell incorporate paragraphs 1-46 above by reference.
`
`U.S. Patent No. 8,339,493 (the “’493 Patent,” attached hereto at Exhibit 3) duly
`
`47.
`
`48.
`
`issued on December 25, 2012, and is entitled Electric Camera.
`
`49.
`
`Hitachi Maxell is the owner by assignment of the ’493 Patent and possesses all
`
`rights of recovery under the ’493 Patent, including the exclusive right to recover for past and
`
`future infringement.
`
`50.
`
`On June 10, 2013, Hitachi contacted Mr. Shi Lirong, the then President of ZTE
`
`Corporation, to engage in discussions regarding the potential licensing of Hitachi’s patents,
`
`including the ’493 Patent. Specifically, Hitachi provided Defendants with a list of Hitachi
`
`Patents that Defendants were infringing dated June 3, 2013, which included the ’493 Patent.
`
`51.
`
`Defendants have directly infringed one or more claims of the ’493 Patent in this
`
`judicial district and elsewhere in Texas, including at least claims 5-6 literally and/or under the
`
`doctrine of equivalents, by or through making, using, importing, offering for sale and/or selling
`
`their telecommunications technology, including the by way of example a product known as the
`
`ZTE Axon 7.
`
`52.
`
`The Axon 7 includes front and rear-facing cameras, each of which incorporates a
`
`light-receiving sensor or imaging sensor with an array of pixels arranged vertically and
`
`horizontally in a grid pattern. The Axon 7 can record an image in a static mode, for example
`
`recording photographs and snapshots in photo camera modes, and in a moving video mode, for
`
`example recording a video clip in video camera mode.
`
`53.
`
`The Axon 7 further includes a processor that processes signals from the cameras
`
`and sensors to generate image signals for displaying on the Axon 7’s display, where the
`
`
`
`14
`
`ZTE Exhibit 1004 - 14
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`

`

`generated image can be manipulated in accordance with a select pixel arrangement and/or image
`
`stabilization correction factor using a portion of the pixel lines available in the imaging sensors
`
`of the cameras.
`
`54.
`
`The foregoing features and capabilities of the Axon 7, and Defendants’
`
`description and/or demonstration thereof, including in user manuals and advertising, reflect
`
`Defendants’ direct infringement by satisfying every element of at least claims 5-6 of the ’493
`
`Patent, under 35 U.S.C. § 271(a).
`
`55.
`
`On information and belief, Defendants further infringe the ’493 Patent additional
`
`products utilizing the same or reasonably similar functionalities as described above with respect
`
`to the Axon 7 (collectively, “the ’493 Accused Products”). The ’493 Accused Products include,
`
`by way of examples, ZTE Z-series phones (e.g. Max Duo LTE Z963VL-Z962BL, Grand X Max
`
`2 Z988), ZTE Warp 7, Warp Elite Z9518, ZTE Nubia series (e.g. Z7, Z11, Z11 max, Z11 mini,
`
`Z9, Z9 max, Z9 mini, X6), and ZTE Axon series (e.g. Axon A1, Axon 7, Axon Max, Axon Pro).
`
`These additional products each include all necessary hardware and operating systems and work
`
`as described above with respect to the ZTE Axon 7. Hitachi Maxell reserves the right to
`
`discover and pursue any additional infringing devices that incorporate infringing functionalities.
`
`For the avoidance of doubt, the ’493 Accused Products are identified to describe the Defendants’
`
`infringement and in no way limit the discovery and infringement allegations against Defendants
`
`concerning other devices that incorporate the same or reasonably similar functionalities.
`
`56.
`
`Defendants have indirectly infringed and continue to indirectly infringe at least
`
`claims 5-6 of the ’493 Patent in this judicial district and elsewhere in the United States by,
`
`among other things, actively inducing the use, offering for sale, selling, or importation of at least
`
`the ’493 Accused Products. Defendants’ customers who purchase devices and components
`
`
`
`15
`
`ZTE Exhibit 1004 - 15
`
`

`

`thereof and operate such devices and components in accordance with Defendants’ instructions
`
`directly infringe one or more claims of the ’493 Patent in violation of 35 U.S.C § 271.
`
`Defendants instruct their customers through at least user guides, such as the Axon manual
`
`located
`
`at
`
`the
`
`following
`
`website:
`
`https://www.zteusa.com/media/wysiwyg/ZTE_AXON_User_Manual.pdf.
`
` Defendants
`
`are
`
`thereby liable for infringement of the ’493 Patent pursuant to 35 U.S.C § 271(b).
`
`57.
`
`Defendants have indirectly infringed and continue to indirectly infringe at least
`
`claims 5-6 of the ’493 Patent, by among other things, contributing to the direct infringement of
`
`others, including customers of the ’493 Accused Products by making, offering to sell, or selling
`
`in the United States, or importing 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
`
`infringement of the ’493 Patent, and not a staple article or commodity of commerce suitable for
`
`substantial non-infringing use.
`
`58.
`
`For example, the ’493 Accused Products include sensors in front and rear-facing
`
`cameras with an array of pixels arranged vertically and horizontally in a grid pattern. These are
`
`components of a patented machine, manufacture, or combination, or an apparatus for use in
`
`practicing a patented process. Furthermore, such components are material parts of the invention
`
`and upon information and belief are not a staple article or commodity of commerce suitable for
`
`substantial non-infringing use. Thus, Defendants are liable for infringement of the ’493 Patent
`
`pursuant to 35 U.S.C § 271(c).
`
`59.
`
`Defendants have been on notice of the ’493 Patent since at least the invitation for
`
`negotiations sent by Hitachi on June 10, 2013, and, at the latest, the service of this complaint.
`
`
`
`16
`
`ZTE Exhibit 1004 - 16
`
`

`

`By the time of trial, Defendants will thus have known and intended (since receiving such notice),
`
`that their continued actions would actively induce and contribute to actual infringement of at
`
`least claims 5-6 of the ’493 Patent.
`
`60.
`
`Defendants undertook and continue their infringing actions despite an objectively
`
`high likelihood that such activities infringed the ’493 Patent, which has been duly issued by the
`
`USPTO, and is presumed valid. For example, since at least June 10, 2013, Defendants have been
`
`aware of an objectively high likelihood that their actions constituted and continue to constitute
`
`infringement of the ’493 Patent, and that the ’493 Patent is valid. On information and belief,
`
`Defendants could not reasonably, subjectively believe that their actions do not constitute
`
`infringement of the ’493 Patent, nor could they reasonably, subjectively believe that the patent is
`
`invalid. Despite that knowledge and subjective belief, and the objectively high likelihood that
`
`their actions constitute infringement, Defendants have continued their infringing activities. As
`
`such, Defendants willfully infringe the ’493 Patent.
`
`61.
`
`Hitachi Maxell has been damaged by Defendants’ infringement of the ’493
`
`Patent.
`
`62.
`
`63.
`
`COUNT 4 – INFRINGEMENT OF U.S. PATENT NO. 8,736,729
`
`Hitachi Maxell incorporate paragraphs 1-61 above by reference.
`
`U.S. Patent No. 8,736,729 (the “’729 Patent,” attached hereto at Exhibit 4) duly
`
`issued on May 27, 2014, and is entitled Electric Camera.
`
`64.
`
`Hitachi Maxell is the owner by assignment of the ’729 Patent and possesses all
`
`rights of recovery under the ’729 Patent, including the exclusive right to recover for past and
`
`future infringement.
`
`
`
`17
`
`ZTE Exhibit 1004 - 17
`
`

`

`65.
`
`On June 10, 2013, Hitachi contacted Mr. Shi Lirong, the then President of ZTE
`
`Corporation, to engage in disc