14-cv-07954-UA
` ECF CASE
`
`IXI IP, LLC Exhibit 2002
`IPR2019-00124, Apple Inc. v. IXI IP, LLC
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`devices (e.g., cellular telephones and messaging devices) and related services. IXI previously
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`owned each of the patents at issue in this litigation (the “Patents-in-Suit”) and now has an
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`exclusive license to the Patents-in-Suit.
`
`3.
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`IXI IP, LLC (“IXI IP”) is a New York limited liability company with its principle
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`place of business located at 405 Lexington Avenue, Seventh Floor, Suite 726, New York, New
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`York and with a registered address of 1218 Central Avenue, Suite 100, Albany, NY 12205. IXI
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`IP owns the Patents-in-Suit. IXI IP has exclusively licensed the Patents-in-Suit to IXI.
`
`4.
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`Apple is a California corporation with its principal offices at 1 Infinite Loop,
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`Cupertino, CA 95014. On information and belief, Apple sells wireless mobile devices and related
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`services.
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`JURISDICTION AND VENUE
`
`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, 35 U.S.C. § 1 et seq., including, but not limited to, 35 U.S.C. § 271.
`
`6.
`
`7.
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`This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and 1338(a).
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`The Court has personal jurisdiction over Apple because, among other things, Apple
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`has committed and continues to commit acts of patent infringement within the U.S. and this
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`Judicial District, in violation of 35 U.S.C. § 271. Additionally, Apple maintains a place of
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`business, including a retail store, in this District.
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`8.
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`Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391(b), 1391(c), and
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`1400(b) because Apple has committed and continues to commit acts of patent infringement in this
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`Judicial District, has induced and are continuing to induce others to infringe the Patents-in-Suit in
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`this District, provides a substantial volume of goods to this District, and does a substantial amount
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`117622660_1
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`IXI IP, LLC Exhibit 2002
`IPR2019-00124, Apple Inc. v. IXI IP, LLC
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`of business within this District, and thus has purposefully availed themselves of the privilege of
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`conducting business within the State of New York and this Judicial District.
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`BACKGROUND
`
`9.
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`This dispute involves technology called “mobile tethering,” which permits a device
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`to access a wide area network (such as the Internet) by way of a connection between the first
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`device and a second, intermediary, device that has access to the wide area network. An example
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`of mobile tethering is use of a cellular telephone as a source of Internet connectivity for a personal
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`computer that is linked with the cellular telephone. Mobile tethering permits devices having only
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`short-range connectivity to access distant networks using the long-range wireless connectivity of a
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`second device. The dispute also involves technology relating to remote control of mobile
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`communication devices such as cellular telephones.
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`10.
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`IXI was formed in 2000 and develops phone operating systems and messaging
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`devices.
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`11.
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`IXI filed patent applications describing its technological developments in the field
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`of mobile communications. The Patents-in-Suit are among the patents issued to IXI by the U.S.
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`Patent and Trademark Office (USPTO).
`
`THE PATENTS-IN-SUIT
`
`12.
`
`IXI IP is the owner, by assignment, of United States Patent No. 7,295,532 (“the
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`’532 Patent”), titled “System, Device and Computer Readable Medium for Providing Networking
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`Services on a Mobile Device,” which duly and legally issued on November 13, 2007. The ’532
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`Patent covers devices and systems that monitor and reconfigure network operators, including
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`without user intervention. IXI Mobile is the exclusive licensee of the ’532 Patent. A copy of the
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`’532 Patent is attached as Exhibit A.
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`117622660_1
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`IXI IP, LLC Exhibit 2002
`IPR2019-00124, Apple Inc. v. IXI IP, LLC
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`13.
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`IXI IP is the owner, by assignment, of United States Patent No. 7,426,398 (“the
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`’398 Patent”), titled “Event Control System and Method for a Mobile Communication Network,”
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`which duly and legally issued on September 16, 2008. The ’398 Patent covers methods and
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`systems for controlling mobile communication devices through messages communicated over a
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`wireless communication network. IXI Mobile is the exclusive licensee of the ’398 Patent. A
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`copy of the ’398 Patent is attached as Exhibit B.
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`14.
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`IXI IP is the owner, by assignment, of United States Patent No. 7,016,648 (“the
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`’648 Patent”), titled “Method, System and Computer Readable Medium for Downloading a
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`Software Component to a Device in a Short Distance Wireless Network,” which duly and legally
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`issued on March 21, 2006. The ’648 Patent covers methods, systems, and articles of manufacture
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`for downloading software components to a short distance wireless network in response to device
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`information and/or user information. IXI Mobile is the exclusive licensee of the ’648 Patent. A
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`copy of the ’648 Patent is attached as Exhibit C.
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`15.
`
`IXI IP is the owner, by assignment, of United States Patent No. 7,039,033 (“the
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`’033 Patent”), titled “System, Device and Computer Readable Medium for Providing a Managed
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`Wireless Network Using Short-Range Radio Signals,” which duly and legally issued on May 2,
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`2006. The ’033 Patent covers systems, devices, and articles of manufacture that access
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`information responsive to short-range radio signals. IXI Mobile is the exclusive licensee of the
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`’033 Patent. A copy of the ’033 Patent is attached as Exhibit D.
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`APPLE’S INFRINGEMENT
`
`16.
`
`As described below, Apple infringes the claims of each of the Patents-in-Suit
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`directly (alone or jointly) and/or indirectly by contributing to and/or inducing direct infringement
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`by others by making, using, offering for sale, importing into the United States, and/or encouraging
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`117622660_1
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`IXI IP, LLC Exhibit 2002
`IPR2019-00124, Apple Inc. v. IXI IP, LLC
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`the manufacture, use, and sale of devices and/or services. For example, Apple’s iPhone products
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`(e.g., iPhone 3G, iPhone 3GS, iPhone 4, iPhone 5, iPhone5s, iPhone 5c, iPhone 6, and iPhone 6
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`Plus (the “Accused iPhone Products”)), iPad products (e.g., “3rd Generation” iPad, iPad with
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`Retina display, iPad 2, iPad mini, and iPad Air (the “Accused iPad Products”)), and smartwatch
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`products (e.g., Apple Watch (the “Accused Watch Devices)) (collectively, the “Accused
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`Products”) and reasonably similar products with Wireless Hotspot Features and/or Remote
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`Control Features embody the apparatuses or practice the methods claimed by the Patents-in-Suit.
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`The Accused Products meet the limitations of the Patents-in-Suit literally and/or under the doctrine
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`of equivalents.
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`17.
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`As identified below, Accused Products with Wireless Hotspot Features, such as the
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`“Personal Hotspot” feature (known as “Internet tethering” on iPhone 3G) or any reasonably
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`similar feature that allows short range wireless tethering (e.g., 802.11, Bluetooth) with other
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`devices to provide access to the Internet via a cellular connection (the “Accused Hotspot
`
`Devices”). The Accused Hotspot Devices include at least the Accused iPhone Products and
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`Accused iPad Products that are Wi-Fi + Cellular and infringe certain Patents-in-Suit owned by IXI
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`IP and licensed exclusively to IXI Mobile.
`
`18.
`
`As identified below, Accused Products with Remote Control Features, such as the
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`“Wi-Fi syncing” feature or any reasonably similar feature that allows a device to wirelessly control
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`an Accused Product (the “Accused Remote Control Devices”), infringe certain Patents-in-Suit.
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`These Accused Remote Control Devices include at least the Accused iPhone Products and
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`Accused iPad Products and are compatible with the iOS 7 operating system.
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`117622660_1
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`IXI IP, LLC Exhibit 2002
`IPR2019-00124, Apple Inc. v. IXI IP, LLC
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`19.
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`As identified below, Accused Watch Devices and reasonable similar devices
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`designed to wirelessly pair with the Accused iPad Products or the Accused iPhone Products,
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`infringe certain Patents-in-Suit.
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`20.
`
`The fields of mobile tethering, cellular telephony, and Internet connectivity are
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`covered by many United States patents and patent applications claiming various aspects of these
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`technologies, and it is a routine practice in these fields for major manufacturers and service
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`providers to canvass United States patents and pending patent applications in order to identify
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`those which may be relevant to a product or service to be made, used, sold, or offered for sale in, or
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`imported into the United States prior to commencing such making, use, selling, offering, or
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`importing.
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`21.
`
`On information and belief, Apple has been aware of the Patents-in-Suit prior to the
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`filing of this lawsuit. Apple is the original assignee of a number of patents related to network
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`communications with handheld devices that were filed after the Patents-in-Suit were published.
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`A number of these patents, including U.S. Patent Nos. 8,260,337 and 8,588,836, reference patents
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`whose original assignee is IXI Mobile, including the ’648 Patent-in-Suit. On information and
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`belief, in researching the patentability of their patents, Apple should have become aware of all of
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`the Patents-in-Suit. In addition, Apple received actual notice of its infringement of the
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`Patents-in-Suit at least as early as the date of service of this complaint. Therefore, Apple was
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`aware of the Patents-in-Suit or willfully blinded themselves as to the existence of the
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`Patents-in-Suit and made, used, sold, offered to sell, imported and/or encouraged the making,
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`using, selling, offering to sell, or importing of the Accused Products despite knowing of an
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`objectively high likelihood that its actions constituted infringement of the Patents-in-Suit at all
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`times relevant to this suit.
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`117622660_1
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`IXI IP, LLC Exhibit 2002
`IPR2019-00124, Apple Inc. v. IXI IP, LLC
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`FIRST COUNT FOR RELIEF
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`(INFRINGEMENT OF THE ’532 PATENT)
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`22.
`
`The allegations of every preceding item in this Complaint are incorporated herein
`
`by reference.
`
`23.
`
`Apple has and continues to directly infringe alone or jointly, literally and/or under
`
`the doctrine of equivalents, because it has and continues to make, use, offer for sale, sell, and/or
`
`import Accused Hotspot Devices and/or Wireless Hotspot Features in the United States without
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`the authority of the owner of the ’532 Patent in violation of 35 U.S.C. § 271(a).
`
`24.
`
`Despite its knowledge or willful blindness of the ’532 Patent described in
`
`Paragraphs 20 and 21, Apple has intentionally and actively induced others, such as its customers,
`
`end users, mobile network operators, distributors, and/or retailers, to make, use, offer for sale, sell,
`
`and/or import Accused Hotspot Devices, Accused Watch Devices, and/or Wireless Hotspot
`
`Features without the authority of the owner of the ’532 Patent in violation of 35 U.S.C. § 271(b),
`
`for example through joint business planning, the provision of advertisements, technical
`
`specifications, instructional and/or promotional materials provided in connection with Accused
`
`Hotspot Devices and Accused Watch Devices, including for example the associated user manuals
`
`and other materials that instruct and encourage the purchaser to use the products in a manner that
`
`Apple knows to infringe.
`
`25.
`
`Despite its knowledge or willful blindness of the ’532 Patent described in
`
`Paragraphs 20 and 21, Apple has and continues to sell, offer for sale, and/or import into United
`
`States Accused Hotspot Devices and Accused Watch Devices without the authority of the owner
`
`of the ’532 Patent in violation of 35 U.S.C. § 271(c).
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`117622660_1
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`IXI IP, LLC Exhibit 2002
`IPR2019-00124, Apple Inc. v. IXI IP, LLC
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`26.
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`On information and belief, Apple knew at all times relevant to this Complaint that
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`Accused Hotspot Devices and Accused Watch Devices are especially made or especially adapted
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`for use in the inventions claimed by the ’532 Patent and are not staple articles of commerce
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`suitable for non-infringing use.
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`27.
`
`IXI and IXI IP have sustained, are sustaining, and will continue to sustain damages
`
`owing to Apple’s infringement of the ’532 Patent.
`
`28.
`
`Apple’s infringement of the ’532 Patent is continuing and is expected to continue
`
`unless enjoined by this Court. IXI and IXI IP do not have an adequate remedy at law, will be
`
`irreparably harmed if Apple’s infringement of the ’532 Patent is permitted to continue, and are
`
`therefore entitled to an injunction against further infringement by Apple pursuant to 35 U.S.C. §
`
`283.
`
`29.
`
`On information and belief, Apple’s infringement of the ’532 Patent is exceptional
`
`and IXI and IXI IP are therefore entitled to recover reasonable attorneys’ fees incurred in
`
`prosecuting this action in accordance with 35 U.S.C. § 285.
`
`SECOND COUNT FOR RELIEF
`(INFRINGEMENT OF THE ’398 PATENT)
`
`30.
`
`The allegations of every preceding item in this Complaint are incorporated herein
`
`by reference.
`
`31.
`
`Apple has and continues to directly infringe alone or jointly, literally and/or under
`
`the doctrine of equivalents, because it has and continues to make, use, offer for sale, sell, and/or
`
`import Accused Remote Control Devices and/or Remote Control Features in the United States
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`without the authority of the owner of the ’398 Patent in violation of 35 U.S.C. § 271(a).
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`117622660_1
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`8
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`IXI IP, LLC Exhibit 2002
`IPR2019-00124, Apple Inc. v. IXI IP, LLC
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`32.
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`Despite its knowledge or willful blindness of the ’398 Patent described in
`
`Paragraphs 20 and 21, Apple has intentionally and actively induced others, such as its customers,
`
`end users, mobile network operators, distributors, and/or retailers, to make, use, offer for sale, sell,
`
`and/or import Accused Remote Control Devices and/or Remote Control Features without the
`
`authority of the owner of the ’398 Patent in violation of 35 U.S.C. § 271(b), for example through
`
`joint business planning, the provision of advertisements, technical specifications, instructional
`
`and/or promotional materials provided in connection with Accused Hotspot Devices and Accused
`
`Watch Devices, including for example the associated user manuals and other materials that
`
`instruct and encourage the purchaser to use the products in a manner that Apple knows to infringe.
`
`33.
`
`Despite its knowledge or willful blindness of the ’398 Patent described in
`
`Paragraphs 20 and 21, Apple has and continues to sell, offer for sale, and/or import into United
`
`States Accused Remote Control Devices without the authority of the owner of the ’398 Patent in
`
`violation of 35 U.S.C. § 271(c).
`
`34.
`
`On information and belief, Apple knew at all times relevant to this Complaint that
`
`Accused Remote Control Devices are especially made or especially adapted for use in the
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`inventions claimed by the ’398 Patent and are not staple articles of commerce suitable for
`
`non-infringing use.
`
`35.
`
`IXI and IXI IP have sustained, are sustaining, and will continue to sustain damages
`
`owing to Apple’s infringement of the ’398 Patent.
`
`36.
`
`Apple’s infringement of the ’398 Patent is continuing and is expected to continue
`
`unless enjoined by this Court. IXI and IXI IP do not have an adequate remedy at law, will be
`
`irreparably harmed if Apple’s infringement of the ’398 Patent is permitted to continue, and are
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`117622660_1
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`9
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`IXI IP, LLC Exhibit 2002
`IPR2019-00124, Apple Inc. v. IXI IP, LLC
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`therefore entitled to an injunction against further infringement by Apple pursuant to 35 U.S.C. §
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`283.
`
`37.
`
`On information and belief, Apple’s infringement of the ’398 Patent is exceptional
`
`and IXI and IXI IP are therefore entitled to recover reasonable attorneys’ fees incurred in
`
`prosecuting this action in accordance with 35 U.S.C. § 285.
`
`THIRD COUNT FOR RELIEF
`(INFRINGEMENT OF THE ’033 PATENT)
`
`38.
`
`The allegations of every preceding item in this Complaint are incorporated herein
`
`by reference.
`
`39.
`
`Apple has and continues to directly infringe alone or jointly, literally and/or under
`
`the doctrine of equivalents, because it has and continues to make, use, offer for sale, sell, and/or
`
`import Accused Hotspot Devices and/or Wireless Hotspot Features in the United States without
`
`the authority of the owner of the ’033 Patent in violation of 35 U.S.C. § 271(a).
`
`40.
`
`Despite its knowledge or willful blindness of the ’033 Patent described in
`
`Paragraphs 20 and 21, Apple has intentionally and actively induced others, such as its customers,
`
`end users, mobile network operators, distributors, and/or retailers, to make, use, offer for sale, sell,
`
`and/or import Accused Hotspot Devices, Accused Watch Devices, and/or Wireless Hotspot
`
`Features without the authority of the owner of the ’033 Patent in violation of 35 U.S.C. § 271(b),
`
`for example through joint business planning, the provision of advertisements, technical
`
`specifications, instructional and/or promotional materials provided in connection with Accused
`
`Hotspot Devices and Accused Watch Devices, including for example the associated user manuals
`
`and other materials that instruct and encourage the purchaser to use the products in a manner that
`
`Apple knows to infringe.
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`117622660_1
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`10
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`IXI IP, LLC Exhibit 2002
`IPR2019-00124, Apple Inc. v. IXI IP, LLC
`10
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`41.
`
`Despite its knowledge or willful blindness of the ’033 Patent described in
`
`Paragraphs 20 and 21, Apple has and continues to sell, offer for sale, and/or import into United
`
`States Accused Hotspot Devices and Accused Watch Devices without the authority of the owner
`
`of the ’033 Patent in violation of 35 U.S.C. § 271(c).
`
`42.
`
`On information and belief, Apple knew at all times relevant to this Complaint that
`
`Accused Hotspot Devices and Accused Watch Devices are especially made or especially adapted
`
`for use in the inventions claimed by the ’033 Patent and are not staple articles of commerce
`
`suitable for non-infringing use.
`
`43.
`
`IXI and IXI IP have sustained, are sustaining, and will continue to sustain damages
`
`owing to Apple’s infringement of the ’033 Patent.
`
`44.
`
`Apple’s infringement of the ’033 Patent is continuing and is expected to continue
`
`unless enjoined by this Court. IXI and IXI IP do not have an adequate remedy at law, will be
`
`irreparably harmed if Apple’s infringement of the ’033 Patent is permitted to continue, and are
`
`therefore entitled to an injunction against further infringement by Apple pursuant to 35 U.S.C. §
`
`283.
`
`45.
`
`On information and belief, Apple’s infringement of the ’033 Patent is exceptional
`
`and IXI and IXI IP are therefore entitled to recover reasonable attorneys’ fees incurred in
`
`prosecuting this action in accordance with 35 U.S.C. § 285.
`
`FOURTH COUNT FOR RELIEF
`(INFRINGEMENT OF THE ’648 PATENT)
`
`46.
`
`The allegations of every preceding item in this Complaint are incorporated herein
`
`by reference.
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`117622660_1
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`IXI IP, LLC Exhibit 2002
`IPR2019-00124, Apple Inc. v. IXI IP, LLC
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`47.
`
`Apple has and continues to directly infringe alone or jointly, literally and/or under
`
`the doctrine of equivalents, because it has and continues to make, use, offer for sale, sell, and/or
`
`import Accused Hotspot Devices and/or Wireless Hotspot Features in the United States without
`
`the authority of the owner of the ’648 Patent in violation of 35 U.S.C. § 271(a).
`
`48.
`
`Despite its knowledge or willful blindness of the ’648 Patent described in
`
`Paragraphs 20 and 21, Apple has intentionally and actively induced others, such as its customers,
`
`end users, mobile network operators, distributors and/or retailers, to make, use, offer for sale, sell,
`
`and/or import Accused Hotspot Devices, Accused Watch Devices, and/or Wireless Hotspot
`
`Features without the authority of the owner of the ’648 Patent in violation of 35 U.S.C. § 271(b),
`
`for example through joint business planning, the provision of advertisements, technical
`
`specifications, instructional and/or promotional materials provided in connection with Accused
`
`Hotspot Devices and Accused Watch Devices, including for example the associated user manuals
`
`and other materials that instruct and encourage the purchaser to use the products in a manner that
`
`Apple knows to infringe.
`
`49.
`
`Despite its knowledge or willful blindness of the ’648 Patent described in
`
`Paragraphs 20 and 21, Apple has and continues to sell, offer for sale, and/or import into United
`
`States Accused Hotspot Devices and Accused Watch Devices without the authority of the owner
`
`of the ’648 Patent in violation of 35 U.S.C. § 271(c).
`
`50.
`
`On information and belief, Apple knew at all times relevant to this Complaint that
`
`Accused Hotspot Devices and Accused Watch Devices are especially made or especially adapted
`
`for use in the inventions claimed by the ’648 Patent and are not staple articles of commerce
`
`suitable for non-infringing use.
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`117622660_1
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`IXI IP, LLC Exhibit 2002
`IPR2019-00124, Apple Inc. v. IXI IP, LLC
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`51.
`
`IXI and IXI IP have sustained, are sustaining, and will continue to sustain damages
`
`owing to Apple’s infringement of the ’648 Patent.
`
`52.
`
`Apple’s infringement of the ’648 Patent is continuing and is expected to continue
`
`unless enjoined by this Court. IXI and IXI IP do not have an adequate remedy at law, will be
`
`irreparably harmed if Apple’s infringement of the ’648 Patent is permitted to continue, and are
`
`therefore entitled to an injunction against further infringement by Apple pursuant to 35 U.S.C. §
`
`283.
`
`53.
`
`On information and belief, Apple’s infringement of the ’648 Patent is exceptional
`
`and IXI and IXI IP are therefore entitled to recover reasonable attorneys’ fees incurred in
`
`prosecuting this action in accordance with 35 U.S.C. § 285.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, the Plaintiffs respectfully request this Court to enter judgment in their
`
`favor against Defendant and to grant the following relief:
`
`A.
`
`an adjudication that the Defendant has infringed one or more claims of the
`
`Patents-in-Suit pursuant to 35 U.S.C. §§ 271(a), 271(b), and/or 271(c);
`
`B.
`
`a judgment declaring that continuing manufacture, use, offer for sale, sale, and/or
`
`importation of Accused Products, or inducement of or contribution to such conduct, by Defendant
`
`would constitute infringement of one or more claims of the Patents-in-Suit pursuant to 35 U.S.C.
`
`§§ 271(a), 271(b), and/or 271(c);
`
`C. a permanent injunction enjoining Defendant and its corresponding officers, agents,
`
`servants, employees, attorneys, affiliates, divisions, subsidiaries, and all persons in active concert
`
`or participation with any of them, from infringing each of the Patents-in-Suit, and/or contributing
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`117622660_1
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`IXI IP, LLC Exhibit 2002
`IPR2019-00124, Apple Inc. v. IXI IP, LLC
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`to or inducing anyone to do the same, including manufacture, use, offer to sell, sale, and/or
`
`importation of Accused Products before the expiration of each of the Patents-in-Suit;
`
`D.
`
`an award of damages sustained by Plaintiffs as a result of Apple’s infringement of
`
`the Patents-in-Suit, in an amount to be ascertained at trial, including at least a reasonable royalty
`
`on sales of Accused Products and/or Plaintiffs’ lost profits;
`
`E.
`
`an assessment of pre-judgment and post-judgment interest and costs against Apple,
`
`together with an award of such interest and costs, in accordance with 35 U.S.C. §284;
`
`F.
`
`a determination that this is an exceptional case and a corresponding award of
`
`reasonable attorneys’ fees, pursuant to 35 U.S.C. § 285; and
`
`H.
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`such other or further relief as this Court may deem just and proper.
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`117622660_1
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`IXI IP, LLC Exhibit 2002
`IPR2019-00124, Apple Inc. v. IXI IP, LLC
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`IXI IP, LLC Exhibit 2002
`IPR2019-00124, Apple Inc. v. IXI IP, LLC
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