`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`Civil Action No. 1:18-cv-00164-LY
`
`PATENT CASE
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`UNILOC USA, INC. and
`UNILOC LUXEMBOURG, S.A.,
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`Plaintiffs,
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`v.
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`APPLE INC.,
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`Defendant.
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`FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiffs, Uniloc USA, Inc. (“Uniloc USA”) and Uniloc Luxembourg, S.A. (“Uniloc
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`Luxembourg”) (together, “Uniloc”), for their first amended complaint against defendant, Apple
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`Inc. (“Apple”), allege as follows:
`
`THE PARTIES
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`1.
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`Uniloc USA is a Texas corporation having a principal place of business at Legacy
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`Town Center I, Suite 380, 7160 Dallas Parkway, Plano, Texas 75024.
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`2.
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`Uniloc Luxembourg is a Luxembourg public limited liability company having a
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`principal place of business at 15, Rue Edward Steichen, 4th Floor, L-2540, Luxembourg (R.C.S.
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`Luxembourg B159161).
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`3.
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`Apple is a California corporation, having a principal place of business in
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`Cupertino, California and regular and established places of business at 12535 Riata Vista Circle
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`and 5501 West Parmer Lane, Austin, Texas. Apple offers its products and/or services, including
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`2961379.v1
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`1
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`Exhibit 1022
`Apple, et al. v. Uniloc
`IPR2019-00251
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`
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`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 2 of 21
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`those accused herein of infringement, to customers and potential customers located in Texas and
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`in the judicial Western District of Texas.
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`
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`JURISDICTION
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`4.
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`Uniloc brings this action for patent infringement under the patent laws of the
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`United States, 35 U.S.C. § 271, et seq. This Court has subject matter jurisdiction under 28
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`U.S.C. §§ 1331, 1332(a), and 1338(a).
`
`COUNT I
`(INFRINGEMENT OF U.S. PATENT NO. 6,993,049)
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`Uniloc incorporates paragraphs 1-4 above by reference.
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`Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 6,993,049
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`5.
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`6.
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`(“the ’049 Patent”), entitled COMMUNICATION SYSTEM, which issued on January 31, 2006.
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`A copy of the ’049 Patent is attached as Exhibit A.
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`7.
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`Uniloc USA is the exclusive licensee of the ’049 Patent, with ownership of all
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`substantial rights, including the right to grant sublicenses, to exclude others, and to enforce and
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`recover past damages for infringement.
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`8.
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`The ’049 Patent describes in detail and claims in various ways inventions in
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`systems and devices developed by Koninklijke Philips Electronics N.V. around 2000 for
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`improved communication of data therebetween using polling of secondary devices by a primary
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`device.
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`9.
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`The ’049 Patent describes problems and shortcomings in the then-existing field of
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`communications between devices and describes and claims novel and inventive technological
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`improvements and solutions to such problems and shortcomings. The technological
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`improvements and solutions described and claimed in the ’049 Patent were not conventional or
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`2
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`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 3 of 21
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`generic at the time of their respective inventions but involved novel and non-obvious approaches
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`to the problems and shortcomings prevalent in the art at the time.
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`10.
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`The inventions claimed in the ’049 Patent involve and cover more than just the
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`performance of well-understood, routine and/or conventional activities known to the industry
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`prior to the invention of such novel and non-obvious systems and devices by the ’049 Patent
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`inventor.
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`11.
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`The inventions claimed in the ’049 Patent represent technological solutions to
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`technological problems. The written description of the ’049 Patent describes in technical detail
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`each of the limitations of the claims, allowing a person of ordinary skill in the art to understand
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`what the limitations cover and how the non-conventional and non-generic combination of claim
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`elements differed markedly from and improved upon what may have been considered
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`conventional or generic.
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`12.
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`Apple imports, uses, offers for sale, and sells in the United States electronic
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`devices that utilize Bluetooth Low Energy version 4.0 and above. Such devices include: (1)
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`iPhone 4s, iPhone5, iPhone 5c, iPhone 5s, iPhone 6, iPhone 6 Plus, iPhone 6s, iPhone 6s Plus,
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`iPhone SE, iPhone 7, iPhone 7 Plus, iPhone 8, iPhone 8 Plus, iPhone X smartphones; (2) iPad
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`(3rd, 4th and 5th generation), iPad Mini, iPad Mini 2, iPad Mini 3, iPad Mini 4, iPad Pro, iPad
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`Air, iPad Air 2 tablets; (3) MacBook, MacBook Air (13 inches), MacBook Pro (13 and 15
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`inches), iMac (21.5 and 27 inches), Mac Mini, Mac Pro laptops; (4) Apple watch Series 1, Apple
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`watch series 2, Apple watch series 3, Apple watch Hermes (series 1, 2, 3), Apple watch Edition
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`(series 2 and 3) watches; (5) iPod (generation 5), iPod touch, iPod Nano; (6) Magic Keyboard,
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`Magic Mouse, Magic Mouse 2, Magic Trackpad, Magic Trackpad 2; (7) Apple TV and Apple
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`TV 4K, and (8) Airpods (collectively, “Accused Infringing Devices”).
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`3
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`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 4 of 21
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`13.
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`The Accused Infringing Devices are electronic devices that implement
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`communications systems wherein a first or primary device broadcasts messages including data to
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`a second or secondary device to poll the second or secondary device that may respond to the first
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`or primary device when the second or secondary device has data to transmit to the first or
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`primary device.
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`14.
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`Apple has infringed, and continues to infringe, claims of the ’049 Patent in the
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`United States, including claims 1-2, 4, 8-9, and 11, by making, using, offering for sale, selling
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`and/or importing the Accused Infringing Devices in violation of 35 U.S.C. §271(a).
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`15.
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`Using claim 1 merely as an illustrative example of Apple’s infringement, the
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`Accused Infringing Devices include each and every element of claim 1. The Accused Infringing
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`Devices include implement a communications system comprising a primary station and at least
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`one secondary station. For example, the Accused Infringing Devices implementing the
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`Bluetooth Low Energy communications protocol can broadcast advertising message packets to
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`other Bluetooth LE-capable devices such as, for example, smartphones, tablets, etc., over pre-
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`defined advertising channels. A Bluetooth LE-capable device may broadcast advertising packets
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`on advertising channels during advertising events. These messages are received by other
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`Bluetooth LE-capable devices. See, e.g., Bluetooth Core Specification 5.01 (Page 169-170,
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`Volume 1).
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`16.
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`The Accused Infringing Devices implement a communications system wherein
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`the primary station has means for broadcasting a series of inquiry messages, each in the form of a
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`plurality of predetermined data fields arranged according to a first communications protocol. For
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`example, the Accused Infringing Devices broadcast a series of Bluetooth low energy advertising
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`1 Bluetooth Version 5.0 is used merely as example to illustrate infringement. Low Energy functionality was first
`implementing in Bluetooth Version 4.0.
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`4
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`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 5 of 21
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`message packets on the advertising channels during advertising events. The Bluetooth low
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`energy advertising message packets contain predetermined fields such as a Preamble, Access
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`address, and PDU header. See, e.g., Bluetooth Core Specification 5.0 (Page 193, Volume 1).
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`
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`Bluetooth Core Specification 5.0 (Page 2717, Volume 6). As shown above, the Link Layer (“LL B”)
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`of advertiser (“Host B”) broadcasts a series of advertising message packets (“Advert”) to scanner
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`Link Layer (“LL A”) of “Host A.” The advertising message packets (Adv) are transmitted on
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`multiple advertising channels, such as “Adv Ch(k)”, “Adv Ch(k+1)” and “Adv Ch(k+2)” during
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`the first advertising event, and on two advertising channels (“Adv Ch(k)” and “Adv Ch(k+1)”)
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`during the second advertising event, as illustrated below.
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`5
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`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 6 of 21
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`Bluetooth Core Specification 5.0 (Page 170, Volume 1). The Bluetooth low energy advertising
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`packets contain predetermined fields such as a Preamble, Access address, and PDU header. The
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`advertising packet PDU header contains the PDU type, length, etc. The PDU type field may be
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`ADV_IND, in the case of a “connectable undirected” message.
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`Bluetooth Core Specification 5.0 (Page 197, Volume 1).
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`6
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`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 7 of 21
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`Bluetooth Core Specification 5.0 (Page 2567, Volume 6).
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`https://developer.apple.com/hardwaredrivers/BluetoothDesignGuidelines.pdf (Page 6).
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`7
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`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 8 of 21
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`Bluetooth Core Specification 5.0 (Page 2609, Volume 6).
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`17.
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`The Accused Infringing Devices implement a communications system comprising
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`of means for adding to an inquiry message prior to transmission an additional data field for
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`polling at least one secondary station. For example, the Accused Infringing Devices using
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`Bluetooth low energy protocol add the variable PDU Payload field to the advertising messages
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`prior to transmitting the packet. The PDU Payload includes the advertising payload data, which
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`varies based on the type of advertising message being sent. In the case of a connectable
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`undirected advertising message (“ADV_IND”), the scanner/initiator may respond back to the
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`advertiser by sending a scan request (SCAN_REQ) or connect request (CONNECT_IND PDU).
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`8
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`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 9 of 21
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`Bluetooth Core Specification 5.0 (Page 1256, Volume 2).
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`Bluetooth Core Specification 5.0 (Page 1193, Volume 2).
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`9
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`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 10 of 21
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`Bluetooth Core Specification 5.0 (Page 2717, Volume 6).
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`Bluetooth Core Specification 5.0 (Page 197, Volume 1).
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`10
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`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 11 of 21
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`Bluetooth Core Specification 5.0 (Page 2567, Volume 6).
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`Bluetooth Core Specification 5.0 (Page 2569, Volume 6)
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`11
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`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 12 of 21
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`Bluetooth Core Specification 5.0 (Page 2613, Volume 6)
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`Bluetooth Core Specification 5.0 (Page 2614, Volume 6).
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`Bluetooth Core Specification 5.0 (Page 2615, Volume 6).
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`12
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`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 13 of 21
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`Bluetooth Core Specification 5.0 (Page 2725, Volume 6)
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`18.
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`The Accused Products implement a communications system wherein the at least
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`one polled secondary station has means for determining when an additional data field has been
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`added to the plurality of data fields, for determining whether it has been polled from the
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`additional data field and for responding to a poll when it has data for transmission to the primary
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`station. For example, the PDU header field contains a “Length” field which, when read by an
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`initiator/scanner, indicates the presence of the PDU payload data. See, e.g., Bluetooth Core
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`Specification 5.0 (Page 199, Volume 1).
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`13
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`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 14 of 21
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`Source: Bluetooth Core Specification 5.0 (Page 199, Volume 1)
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`Source: Bluetooth Core Specification 5.0 (Page 2567, Volume 6)
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`Bluetooth Core Specification 5.0 (Page 2568, Volume 6).In addition, the PDU header includes the PDU
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`Type field, which indicates the type of advertising message and PDU payload data and thus, allows the
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`scanner/initiator to know whether the advertising event can be responded to.
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`14
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`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 15 of 21
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`Bluetooth Core Specification 5.0 (Page 2613, Volume 6). When the advertising event is, for
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`example, a “connectable undirected” (“ADV _IND”) event and the PDU payload is present, the
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`initiators/scanners can read the PDU payload data and respond by sending a “scan request”
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`(“SCAN_REQ”) or “connect request” (“CONNECT_IND”) “response PDU” to the advertiser.
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`Bluetooth Core Specification 5.0 (Page 2608, Volume 6)
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`15
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`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 16 of 21
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`Bluetooth Core Specification 5.0 (Page 2609, Volume 6)
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`Bluetooth Core Specification 5.0 (Page 2614, Volume 6).
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`Bluetooth Core Specification 5.0 (Page 2615, Volume 6).
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`16
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`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 17 of 21
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`19.
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`Apple has been on notice of the ’049 patent since, at the latest, the service of the
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`original Complaint. Apple has also been on notice of Uniloc’s infringement allegations and
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`theory of infringement since that date, and thus has known that its continued actions would
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`contribute to the infringement of claims of the ’049 patent.
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`20.
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`Apple has actively induced, and continues to actively induce, infringement by
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`others, including customers using the Accused Infringing Devices, by encouraging them to use,
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`and instructing them how to use, those devices that Apple has intentionally designed and
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`programmed to operate such that a first device broadcasts messages including data to a second
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`device to poll the second device that may respond when the second device has data to transmit to
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`the first device, whereby the devices infringe the asserted claims of the ’049 Patent.
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`21.
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`Apple’s customers who use those devices in accordance with Apple’s design and
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`intentions infringe claims of the ’049 Patent. Apple intentionally instructs its customers to
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`infringe through training videos, demonstrations, brochures, specifications and installation and
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`user guides, such as those located at:
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` www.apple.com/iphone-x/specs/
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` www.apple.com/iphone-8/specs/
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` www.apple.com/iphone-7/specs/
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` www.apple.com/iphone-6s/specs/
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` www.apple.com/iphone-se/specs/
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` www.apple.com/iphone/compare /
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` www.apple.com/ipad-pro/specs/
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` www.apple.com/ipad-9.7/specs/
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` www.apple.com/ipad-mini-4/specs/
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`17
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`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 18 of 21
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` www.apple.com/apple-tv/specs/
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` www.apple.com/watch/
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` https://developer.apple.com/library/content/documentation/NetworkingInternetW
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`eb/Conceptual/CoreBluetooth_concepts/
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` https://developer.apple.com/hardwaredrivers/BluetoothDesignGuidelines.pdf
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` https://support.apple.com/en-US/specs/macnotebooks/
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`22.
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`In its marketing and instructional materials, including those identified above,
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`Apple specifically and intentionally instructs its customers to use the Apple Wireless Devices in
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`an infringing manner:
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`
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`Apple has intentionally designed and sells the Accused Infringing Devices to automatically
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`operate as described above in violation of the ’049 Patent.
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`18
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`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 19 of 21
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`23.
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`Apple intends and knows that its customers use the Accused Infringing Devices to
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`operate as described above. When the Accused Infringing Devices are used as intended by
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`Apple, Apple intentionally induces such infringement.
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`24.
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`Apple has known and intended, since service of the original Complaint, that its
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`continuing encouragement and instructions to perform those infringing acts would induce
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`performance of the infringing acts by others, including customers. Despite that knowledge, and
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`as evidence of its intent, Apple has refused to discontinue the inducing acts and refused to
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`remove the infringing functionality from the Accused Infringing Devices.
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`25.
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`Apple has also infringed, and continues to infringe, claims 1-2, 4, 8-9, and 11 of
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`the ’049 patent by offering to commercially distribute, commercially distributing, or importing
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`the Accused Infringing Devices which devices are used in practicing the processes, or using the
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`systems, of the ’049 patent, and constitute a material part of the invention. For example, the
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`Accused Infringing Devices include software for causing operation of the communications
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`systems wherein a first or primary device broadcasts messages including data to a second or
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`secondary device to poll the second or secondary device that may respond to the first or primary
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`device when the second or secondary device has data to transmit to the first or primary device
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`(“Infringing Software”), which is packaged with other software in the Accused Infringing
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`Devices. Apple knows that the Infringing Software is especially made or especially adapted for
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`use in infringement of the ’049 patent, not a staple article, and not a commodity of commerce
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`suitable for substantial non-infringing use. Apple is thereby liable for infringement of the ’049
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`Patent under 35 U.S.C. § 271(c).
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`26.
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`Apple has been on notice of the ’049 Patent since, at the latest, the service of the
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`Original Complaint upon it. By the time of trial, Apple will have known and intended (since
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`19
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`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 20 of 21
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`receiving such notice) that its continued actions would actively induce and contribute to the
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`infringement of claims 1-2, 4, 8-9, and 11 of the ’049 Patent.
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`27.
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`Apple may have infringed the ’049 Patent through other software and devices
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`utilizing the same or reasonably similar functionality, including other versions of the Accused
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`Infringing Devices.
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`28.
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`Uniloc has been damaged by Apple’s infringement of the ’049 Patent.
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`PRAYER FOR RELIEF
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`Uniloc requests that the Court enter judgment against Apple:
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`(A)
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`declaring that Apple has infringed the ’049 Patent;
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`(B)
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`awarding Uniloc its damages suffered as a result of Apple’s infringement of the
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`’049 Patent;
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`(C)
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`awarding Uniloc its costs, attorneys’ fees, expenses, and interest, and
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`(D)
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`granting Uniloc such further relief as the Court finds appropriate.
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`20
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`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 21 of 21
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`Date: May 30, 2018
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`Respectfully submitted,
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`/s/ Kevin Gannon
`Kevin Gannon
`Massachusetts State Bar No. 640931
`James J. Foster
`Massachusetts State Bar No. 553285
`Aaron Jacobs
`Massachusetts State Bar No. 677545
`PRINCE LOBEL TYE LLP
`One International Place, Suite 3700
`Boston, MA 02110
`Tel: (617) 456-8000
`Fax: (617) 456-8100
`Email: kgannon@princelobel.com
`Email: jfoster@princelobel.com
`Email: ajacobs@princelobel.com
`
`
`
`
`
`Edward R. Nelson III
`ed@nelbum.com
`Texas State Bar No. 00797142
`Anthony M. Vecchione
`anthony@nelbum.com
`Texas State Bar No. 24061270
`NELSON BUMGARDNER PC
`3131 West 7th Street, Suite 300
`Fort Worth, TX 76107
`Tel: (817) 377-9111
`Fax: (817) 377-3485
`
`ATTORNEYS FOR THE PLAINTIFFS
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`
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`CERTIFICATE OF SERVICE
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`I certify that all counsel of record who have consented to electronic service are being
`served with a copy of this document via the Court’s CM/ECF system per Local Rule CV-5(a)(3)
`on May 30, 2018.
`
`/s/ Kevin Gannon
`Kevin Gannon
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