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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
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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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`Civil Action No. 1:18-CV-00166 (LY)
`
`JURY TRIAL DEMANDED
`
`FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`
`
`
`
`Plaintiffs, Uniloc USA, Inc. (“Uniloc USA”) and Uniloc Luxembourg, S.A. (“Uniloc
`
`Luxembourg”) (together, “Uniloc”), for their First Amended Complaint against defendant, Apple
`
`Inc. (“Apple”), allege as follows:
`
`
`
`THE PARTIES
`
`1.
`
`Uniloc USA is a Texas corporation having a principal place of business at Legacy
`
`Town Center I, Suite 380, 7160 Dallas Parkway, Plano, Texas 75024. Uniloc USA also
`
`maintains a place of business at 102 N. College, Suite 603, Tyler, Texas 75702.
`
`2.
`
`Uniloc Luxembourg is a Luxembourg public limited liability company having a
`
`principal place of business at 15, Rue Edward Steichen, 4th Floor, L-2540, Luxembourg (R.C.S.
`
`Luxembourg B159161).
`
`3.
`
`Apple is a California corporation, having a principal place of business in
`
`Cupertino, California and regular and established places of business at 12535 Riata Vista Circle
`
`and 5501 West Parmer Lane, Austin, Texas. Apple offers its products and/or services, including
`
`2916795.v1
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`Apple Inc.
`Ex. 1008 - Page 1
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`
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`Case 1:18-cv-00166-LY Document 26 Filed 04/12/18 Page 2 of 18
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`
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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. Apple may be served with process through its
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`registered agent for service in Texas: CT Corporation System, 1999 Bryant Street, Suite 900,
`
`Dallas, Texas 75201.
`
`
`
`JURISDICTION AND VENUE
`
`4.
`
`Uniloc brings this action for patent infringement under the patent laws of the
`
`United States, 35 U.S.C. § 271, et seq. This Court has subject matter jurisdiction under 28
`
`U.S.C. §§ 1331, 1332(a) and 1338(a).
`
`5.
`
`Venue is proper in this judicial district pursuant to 28 U.S.C. § 1400(b). Apple
`
`has committed acts of infringement in this judicial district and maintains regular and established
`
`places of business in this district, as set forth above.
`
`COUNT I
`(INFRINGEMENT OF U.S. PATENT NO. 7,969,925)
`
`Uniloc incorporates paragraphs 1-5 above by reference.
`
`Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 7,969,925
`
`6.
`
`7.
`
`(“the ’925 Patent”), entitled PEER-TO-PEER MOBILE DATA TRANSFER METHOD AND
`
`DEVICE, which issued on June 28, 2011. A copy of the ’925 Patent is attached as Exhibit A.
`
`8.
`
`Uniloc USA is the exclusive licensee of the ’925 Patent, with ownership of all
`
`substantial rights, including the right to grant sublicenses, to exclude others, and to enforce and
`
`recover past damages for infringement.
`
`9.
`
`The ’925 Patent describes in detail and claims in various ways inventions in
`
`systems and devices for improved communication of data between mobile devices in a peer-to-
`
`peer fashion without using an intermediary communications server developed by the inventor
`
`around 2004.
`
`
`
`2
`
`Apple Inc.
`Ex. 1008 - Page 2
`
`
`
`Case 1:18-cv-00166-LY Document 26 Filed 04/12/18 Page 3 of 18
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`
`
`10.
`
`The ’925 Patent describes problems and shortcomings in the then-existing field of
`
`communications between wireless devices and describes and claims novel and inventive
`
`technological improvements and solutions to such problems and shortcomings. The
`
`technological improvements and solutions described and claimed in the ’925 Patent were not
`
`conventional or generic at the time of their respective inventions but involved novel and non-
`
`obvious approaches to the problems and shortcomings prevalent in the art at the time.
`
`11.
`
`The inventions claimed in the ’925 Patent involve and cover more than just the
`
`performance of well-understood, routine and/or conventional activities known to the industry
`
`prior to the invention of such novel and non-obvious methods, systems and devices by the ’925
`
`Patent inventor.
`
`12.
`
`The inventions claimed in the ’925 Patent represent technological solutions to
`
`technological problems. The written description of the ’925 Patent describes in technical detail
`
`each of the limitations of the claims, allowing a person of ordinary skill in the art to understand
`
`what the limitations cover and how the non-conventional and non-generic combination of claim
`
`elements differ markedly from and improved upon what may have been considered conventional
`
`or generic.
`
`13.
`
`Apple imports, uses, offers for sale, and sells in the United States electronic
`
`devices that utilize Apple Push Notification service. Such devices include: (1) iPhone 4s,
`
`iPhone5, iPhone 5c, iPhone 5s, iPhone 6, iPhone 6 Plus, iPhone 6s, iPhone 6s Plus, iPhone SE,
`
`iPhone 7, iPhone 7 Plus, iPhone 8, iPhone 8 Plus, iPhone X smartphones; (2) iPad (3rd, 4th and
`
`5th generation), iPad Mini, iPad Mini 2, iPad Mini 3, iPad Mini 4, iPad Pro, iPad Air, iPad Air 2
`
`tablets; (3) MacBook, MacBook Air (13 inches), MacBook Pro (13 and 15 inches), iMac (21.5
`
`and 27 inches), Mac Mini, Mac Pro laptops; (4) Apple watch Series 1, Apple watch series 2,
`
`
`
`3
`
`Apple Inc.
`Ex. 1008 - Page 3
`
`
`
`Case 1:18-cv-00166-LY Document 26 Filed 04/12/18 Page 4 of 18
`
`
`
`Apple watch series 3, Apple watch Hermes (series 1, 2, 3), Apple watch Edition (series 2 and 3),
`
`and (5) iPod (generation 5) and iPod touch (collectively “Accused Infringing Devices”).
`
`14.
`
`The Accused Infringing Devices are mobile devices that are enabled to
`
`communicate data therebetween in a peer-to-peer fashion using unique identifiers and without
`
`the need for an intermediating communications server.
`
`15.
`
`Apple has infringed, and continues to infringe, claims of the ’925 Patent in the
`
`United States, including claims 1-20, by making, using, offering for sale, selling and/or
`
`importing the Accused Infringing Devices in violation of 35 U.S.C. § 271(a).
`
`16.
`
`Apple has also infringed, and continues to infringe, claims 1-20 of the ’925 Patent
`
`by actively inducing others to use, offer for sale, and sell the Accused Infringing Devices.
`
`Apple’s customers who use those devices in accordance with Apple’s instructions infringe
`
`claims 1-20 of the ’925 Patent, in violation of 35 U.S.C. § 271(a). Apple intentionally instructs
`
`its customers to infringe through training videos, demonstrations, brochures, installation and user
`
`guides, such as those located at:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`www.apple.com
`
`https://www.apple.com/ios/app-store/
`
`https://support.apple.com/en-us/
`
`https://developer.apple.com/app-store/product-page/
`
`https://www.apple.com/iphone-7/specs/
`
`https://developer.apple.com/hardwaredrivers/BluetoothDesignGuidelines.pdf
`
`https://developer.apple.com/library/content/documentation/NetworkingInternet/C
`onceptual/HandlingRemoteNotificationsPG/APNSOverview.html
`
`https://developer.apple.com/library/content/documentation/NetworkingInternet/C
`onceptual/RemoteNotificationsPG/APNSOverview.html
`
`
`
`
`4
`
`Apple Inc.
`Ex. 1008 - Page 4
`
`
`
`Case 1:18-cv-00166-LY Document 26 Filed 04/12/18 Page 5 of 18
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`
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`www.apple.com/iphone/compare/
`
`https://support.apple.com/en-us/HT201287
`
`https://support.apple.com/en-us/HT202549
`
`https://support.apple.com/en-us/HT207006
`
`https://support.apple.com/en-us/HT202944
`
`https://support.apple.com/en-us/HT203609
`
`https://support.apple.com/en-us/HT202078
`
`https://support.apple.com/en-us/HT204380
`
`www.apple.com/business/docs/iOS_Security_Guide.pdf
`
`www.youtube.com/user/apple
`
`Apple also induces infringement by others by failing to remove or diminish the infringing
`
`features of the Accused Infringing Devices. Apple is thereby liable for infringement of the ’925
`
`Patent under 35 U.S.C. § 271(b).
`
`17.
`
`Apple has also infringed, and continues to infringe, claims 1-20 of the ’925 patent
`
`by offering to commercially distribute, commercially distributing, or importing the Accused
`
`Infringing Devices which devices are used in practicing the processes, or using the systems, of
`
`the ’925 patent, and constitute a material part of the invention. Apple knows portions of the
`
`Accused Devices to be especially made or especially adapted for use in infringement of the ’925
`
`patent, not a staple article, and not a commodity of commerce suitable for substantial
`
`noninfringing use. Apple is thereby liable for infringement of the ’925 Patent under 35 U.S.C. §
`
`271(c).
`
`18.
`
`Apple will have been on notice of the ’925 Patent since, at the latest, the service
`
`of this complaint upon it. By the time of trial, Apple will have known and intended (since
`
`
`
`5
`
`Apple Inc.
`Ex. 1008 - Page 5
`
`
`
`Case 1:18-cv-00166-LY Document 26 Filed 04/12/18 Page 6 of 18
`
`
`
`receiving such notice) that its continued actions would actively induce and contribute to the
`
`infringement of claims 1-20 of the ’925 Patent.
`
`19.
`
`Apple may have infringed the ’925 Patent through other software and devices
`
`utilizing the same or reasonably similar functionality, including other versions of the Accused
`
`Infringing Devices.
`
`20.
`
`Uniloc has been damaged by Apple’s infringement of the ’925 Patent.
`
`COUNT II
`(INFRINGEMENT OF U.S. PATENT NO. 8,018,877)
`
`Uniloc incorporates paragraphs 1-5 above by reference.
`
`Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 8,018,877
`
`21.
`
`22.
`
`(“the ’925 Patent”), entitled MOBILE CONFERENCING METHOD AND SYSTEM, which
`
`issued on September 13, 2011. A copy of the ’877 Patent is attached as Exhibit B.
`
`23.
`
`Uniloc USA is the exclusive licensee of the ’877 Patent, with ownership of all
`
`substantial rights, including the right to grant sublicenses, to exclude others, and to enforce and
`
`recover past damages for infringement.
`
`24.
`
`The ’877 Patent describes in detail and claims in various ways inventions in
`
`systems and devices for improved communication of data between mobile devices using unique
`
`identifiers and page-mode messaging developed by the inventor around 2004.
`
`25.
`
`The ’877 Patent describes problems and shortcomings in the then-existing field of
`
`communications between wireless devices and describes and claims novel and inventive
`
`technological improvements and solutions to such problems and shortcomings. The
`
`technological improvements and solutions described and claimed in the ’877 Patent were not
`
`conventional or generic at the time of their respective inventions but involved novel and non-
`
`obvious approaches to the problems and shortcomings prevalent in the art at the time.
`
`
`
`6
`
`Apple Inc.
`Ex. 1008 - Page 6
`
`
`
`Case 1:18-cv-00166-LY Document 26 Filed 04/12/18 Page 7 of 18
`
`
`
`26.
`
`The inventions claimed in the ’877 Patent involve and cover more than just the
`
`performance of well-understood, routine and/or conventional activities known to the industry
`
`prior to the invention of such novel and non-obvious methods, systems and devices by the ’877
`
`Patent inventor.
`
`27.
`
`The inventions claimed in the ’877 Patent represent technological solutions to
`
`technological problems. The written description of the ’877 Patent describes in technical detail
`
`each of the limitations of the claims, allowing a person of ordinary skill in the art to understand
`
`what the limitations cover and how the non-conventional and non-generic combination of claim
`
`elements differ markedly from and improved upon what may have been considered conventional
`
`or generic.
`
`28.
`
`Apple imports, uses, offers for sale, and sells in the United States electronic
`
`devices that utilize Apple Push Notification service. Such devices include: (1) iPhone 4s,
`
`iPhone5, iPhone 5c, iPhone 5s, iPhone 6, iPhone 6 Plus, iPhone 6s, iPhone 6s Plus, iPhone SE,
`
`iPhone 7, iPhone 7 Plus, iPhone 8, iPhone 8 Plus, iPhone X smartphones; (2) iPad (3rd, 4th and
`
`5th generation), iPad Mini, iPad Mini 2, iPad Mini 3, iPad Mini 4, iPad Pro, iPad Air, iPad Air 2
`
`tablets; (3) MacBook, MacBook Air (13 inches), MacBook Pro (13 and 15 inches), iMac (21.5
`
`and 27 inches), Mac Mini, Mac Pro laptops; (4) Apple watch Series 1, Apple watch series 2,
`
`Apple watch series 3, Apple watch Hermes (series 1, 2, 3), Apple watch Edition (series 2 and 3),
`
`and (5) iPod (generation 5) and iPod touch (collectively “Accused Infringing Devices”).
`
`29.
`
`The Accused Infringing Devices are mobile devices that are enabled to
`
`communicate data therebetween in a peer-to-peer fashion using unique identifiers and page-
`
`mode messaging.
`
`
`
`7
`
`Apple Inc.
`Ex. 1008 - Page 7
`
`
`
`Case 1:18-cv-00166-LY Document 26 Filed 04/12/18 Page 8 of 18
`
`
`
`30.
`
`Apple has infringed, and continues to infringe, claims of the ’877 Patent in the
`
`United States, including claims 1-20, by making, using, offering for sale, selling and/or
`
`importing the Accused Infringing Devices in violation of 35 U.S.C. § 271(a).
`
`31.
`
`Apple has also infringed, and continues to infringe, claims 1-20 of the ’877 Patent
`
`by actively inducing others to use, offer for sale, and sell the Accused Infringing Devices.
`
`Apple’s customers who use those devices in accordance with Apple’s instructions infringe
`
`claims 1-20 of the ’877 Patent, in violation of 35 U.S.C. § 271(a). Apple intentionally instructs
`
`its customers to infringe through training videos, demonstrations, brochures, installation and user
`
`guides, such as those located at:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`www.apple.com
`
`https://www.apple.com/ios/app-store/
`
`https://support.apple.com/en-us/
`
`https://support.apple.com/explore/messages
`
`https://developer.apple.com/app-store/product-page/
`
`https://www.apple.com/iphone-7/specs/
`
`https://developer.apple.com/hardwaredrivers/BluetoothDesignGuidelines.pdf
`
`https://developer.apple.com/library/content/documentation/NetworkingInternet/C
`onceptual/HandlingRemoteNotificationsPG/APNSOverview.html
`
`https://developer.apple.com/library/content/documentation/NetworkingInternet/C
`onceptual/RemoteNotificationsPG/APNSOverview.html
`
`www.apple.com/iphone/compare/
`
`https://support.apple.com/en-us/HT201287
`
`https://support.apple.com/en-us/HT207006
`
`https://support.apple.com/en-us/HT202078
`
`
`
`8
`
`Apple Inc.
`Ex. 1008 - Page 8
`
`
`
`Case 1:18-cv-00166-LY Document 26 Filed 04/12/18 Page 9 of 18
`
`
`
`
`
`
`
`
`
`
`
`
`
`https://support.apple.com/en-us/HT202549
`
`https://support.apple.com/en-us/HT203609
`
`http://apple.wikia.com/wiki/IMessage
`
`www.apple.com/business/docs/iOS_Security_Guide.pdf
`
`www.youtube.com/user/apple
`
`Apple also induces infringement by others by failing to remove or diminish the infringing
`
`features of the Accused Infringing Devices. Apple is thereby liable for infringement of the ’877
`
`Patent under 35 U.S.C. § 271(b).
`
`32.
`
`Apple has also infringed, and continues to infringe, claims 1-20 of the ’877 patent
`
`by offering to commercially distribute, commercially distributing, or importing the Accused
`
`Infringing Devices which devices are used in practicing the processes, or using the systems, of
`
`the ’877 patent, and constitute a material part of the invention. Apple knows portions of the
`
`Accused Devices to be especially made or especially adapted for use in infringement of the ’877
`
`patent, not a staple article, and not a commodity of commerce suitable for substantial
`
`noninfringing use. Apple is thereby liable for infringement of the ’877 Patent under 35 U.S.C. §
`
`271(c).
`
`33.
`
`Apple will have been on notice of the ’877 Patent since, at the latest, the service
`
`of this complaint upon it. By the time of trial, Apple will have known and intended (since
`
`receiving such notice) that its continued actions would actively induce and contribute to the
`
`infringement of claims 1-20 of the ’877 Patent.
`
`34.
`
`Apple may have infringed the ’877 Patent through other software and devices
`
`utilizing the same or reasonably similar functionality, including other versions of the Accused
`
`Infringing Devices.
`
`
`
`9
`
`Apple Inc.
`Ex. 1008 - Page 9
`
`
`
`Case 1:18-cv-00166-LY Document 26 Filed 04/12/18 Page 10 of 18
`
`
`
`35.
`
`Uniloc has been damaged by Apple’s infringement of the ’877 Patent.
`
`COUNT III
`(INFRINGEMENT OF U.S. PATENT NO. 8,406,116)
`
`Uniloc incorporates paragraphs 1-5 above by reference.
`
`Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 8,406,116
`
`36.
`
`37.
`
`(“the ’116 Patent”), entitled MOBILE CONFERENCING METHOD AND SYSTEM which
`
`issued on March 26, 2013. A copy of the ’116 Patent is attached as Exhibit C.
`
`38.
`
`Uniloc USA is the exclusive licensee of the ’116 Patent, with ownership of all
`
`substantial rights, including the right to grant sublicenses, to exclude others, and to enforce and
`
`recover past damages for infringement.
`
`39.
`
`The ’116 Patent describes in detail and claims in various ways inventions in
`
`systems and devices for improved server-based mobile conferencing developed by the inventor
`
`around 2004.
`
`40.
`
`The ’116 Patent describes problems and shortcomings in the then-existing field of
`
`exchanging data among mobile devices and describes and claims novel and inventive
`
`technological improvements and solutions to such problems and shortcomings. The
`
`technological improvements and solutions described and claimed in the ’116 Patent were not
`
`conventional or generic at the time of their respective inventions but involved novel and non-
`
`obvious approaches to the problems and shortcomings prevalent in the art at the time.
`
`41.
`
`The inventions claimed in the ’116 Patent involve and cover more than just the
`
`performance of well-understood, routine and/or conventional activities known to the industry
`
`prior to the invention of such novel and non-obvious methods, systems and devices by the ’116
`
`Patent inventor.
`
`
`
`10
`
`Apple Inc.
`Ex. 1008 - Page 10
`
`
`
`Case 1:18-cv-00166-LY Document 26 Filed 04/12/18 Page 11 of 18
`
`
`
`42.
`
`The inventions claimed in the ’116 Patent represent technological solutions to
`
`technological problems. The written description of the ’116 Patent describes in technical detail
`
`each of the limitations of the claims, allowing a person of ordinary skill in the art to understand
`
`what the limitations cover and how the non-conventional and non-generic combination of claim
`
`elements differ markedly from and improved upon what may have been considered conventional
`
`or generic.
`
`43.
`
`Apple imports, uses, offers for sale, and sells in the United States electronic
`
`devices, including but not limited to: (1) iPhone 4s, iPhone5, iPhone 5c, iPhone 5s, iPhone 6,
`
`iPhone 6 Plus, iPhone 6s, iPhone 6s Plus, iPhone SE, iPhone 7, iPhone 7 Plus, iPhone 8, iPhone
`
`8 Plus, iPhone X cellphones; (2) iPad (3rd, 4th and 5th generation), iPad Mini, iPad Mini 2, iPad
`
`Mini 3, iPad Mini 4, iPad Pro, iPad Air, iPad Air 2 tablets; (3) MacBook, MacBook Air (13
`
`inches), MacBook Pro (13 and 15 inches), iMac (21.5 and 27 inches), Mac Mini, Mac Pro
`
`laptops; (4) Apple watch Series 1, Apple watch series 2, Apple watch series 3, Apple watch
`
`Hermes (series 1, 2, 3), Apple watch Edition (series 2 and 3) watches; and (5) iPod (generation
`
`5) and iPod touch, that utilize Apple’s Continuity, FaceTime, iMessage, Messages and Apple
`
`Push Notification (APNs) services (collectively “Accused Infringing Devices”).
`
`44.
`
`The Accused Infringing Devices are mobile devices that utilize –server-based
`
`architecture for the exchange of data.
`
`45.
`
`Apple has infringed, and continues to infringe, claims 1-20 of the ’116 Patent in
`
`the United States by making, using, offering for sale, selling and/or importing the Accused
`
`Infringing Devices in violation of 35 U.S.C. § 271(a).
`
`46.
`
`Apple has also infringed, and continues to infringe, claims 1-20 of the ’116 Patent
`
`by actively inducing others to use, offer for sale, and sell the Accused Infringing Devices.
`
`
`
`11
`
`Apple Inc.
`Ex. 1008 - Page 11
`
`
`
`Case 1:18-cv-00166-LY Document 26 Filed 04/12/18 Page 12 of 18
`
`
`
`Apple’s customers who use those devices in accordance with Apple’s instructions infringe
`
`claims 1-20 of the ’116 Patent, in violation of 35 U.S.C. § 271(a). Apple intentionally instructs
`
`its customers to infringe through training videos, demonstrations, brochures, installation and user
`
`guides, such as those located at:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`www.apple.com
`
`https://support.apple.com/en-us/HT201287
`
`https://support.apple.com/en-us/HT202549
`
`https://support.apple.com/en-us/HT202078
`
`https://support.apple.com/en-us/HT203609
`
`https://support.apple.com/en-us/HT207006
`
`www.apple.com/business/docs/iOS_Security_Guide.pdf
`
`https://developer.apple.com/library/content/documentation/
`
`https://support.apple.com/explore/messages
`
`https://www.apple.com/iphone-7/specs/
`
`https:// www.apple.com/iphone-8/specs/
`
`www.youtube.com/user/apple
`
`Apple also induces infringement by others by failing to remove or diminish the infringing
`
`features of the Accused Infringing Devices. Apple is thereby liable for infringement of the ’116
`
`Patent under 35 U.S.C. § 271(b).
`
`47.
`
`Apple has also infringed, and continues to infringe, claims 1-20 of the ’116 patent
`
`by offering to commercially distribute, commercially distributing, or importing the Accused
`
`Infringing Devices which devices are used in practicing the processes, or using the systems, of
`
`the ’116 patent, and constitute a material part of the invention. Apple knows portions of the
`
`
`
`12
`
`Apple Inc.
`Ex. 1008 - Page 12
`
`
`
`Case 1:18-cv-00166-LY Document 26 Filed 04/12/18 Page 13 of 18
`
`
`
`Accused Devices to be especially made or especially adapted for use in infringement of the ’116
`
`patent, not a staple article, and not a commodity of commerce suitable for substantial non-
`
`infringing use. Apple is thereby liable for infringement of the ’116 Patent under 35 U.S.C. §
`
`271(c).
`
`48.
`
`Apple will have been on notice of the ’116 Patent since, at the latest, the service
`
`of this complaint upon it. By the time of trial, Apple will have known and intended (since
`
`receiving such notice) that its continued actions would actively induce and contribute to the
`
`infringement of claims 1-20 of the ’116 Patent.
`
`49.
`
`Apple may have infringed the ’116 Patent through other software and devices
`
`utilizing the same or reasonably similar functionality, including other versions of the Accused
`
`Infringing Devices.
`
`50.
`
`Uniloc has been damaged by Apple’s infringement of the ’116 Patent.
`
`COUNT IV
`(INFRINGEMENT OF U.S. PATENT NO. 8,369,298)
`
`Uniloc incorporates paragraphs 1-5 above by reference.
`
`Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 8,369,298
`
`51.
`
`52.
`
`(“the ’298 Patent”), entitled METHOD FOR ESTABLISHING NETWORK CONNECTIONS
`
`BETWEEN STATIONARY TERMINALS AND REMOVE DEVICES THROUGH MOBILE
`
`DEVICES, which issued on February 5, 2013. A copy of the ’298 Patent is attached as Exhibit
`
`D.
`
`53.
`
`Uniloc USA is the exclusive licensee of the ’298 Patent, with ownership of all
`
`substantial rights, including the right to grant sublicenses, to exclude others, and to enforce and
`
`recover past damages for infringement.
`
`
`
`13
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`Apple Inc.
`Ex. 1008 - Page 13
`
`
`
`Case 1:18-cv-00166-LY Document 26 Filed 04/12/18 Page 14 of 18
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`
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`54.
`
`The ’298 Patent describes in detail and claims in various ways inventions in
`
`systems and devices for establishing communication between mobile devices and a stationary
`
`terminal developed by the inventor around 2005.
`
`55.
`
`The ’298 Patent describes problems and shortcomings in the then-existing field of
`
`data communication between stationary and mobile devices and claims novel and inventive
`
`technological improvements and solutions to such problems and shortcomings. The
`
`technological improvements and solutions described and claimed in the ’298 Patent were not
`
`conventional or generic at the time of their respective inventions but involved novel and non-
`
`obvious approaches to the problems and shortcomings prevalent in the art at the time.
`
`56.
`
`The inventions claimed in the ’298 Patent involve and cover more than just the
`
`performance of well-understood, routine and/or conventional activities known to the industry
`
`prior to the invention of such novel and non-obvious methods, systems and devices by the ’298
`
`Patent inventor.
`
`57.
`
`The inventions claimed in the ’298 Patent represent technological solutions to
`
`technological problems. The written description of the ’298 Patent describes in technical detail
`
`each of the limitations of the claims, allowing a person of ordinary skill in the art to understand
`
`what the limitations cover and how the non-conventional and non-generic combination of claim
`
`elements differ markedly from and improved upon what may have been considered conventional
`
`or generic.
`
`58.
`
`Apple imports, uses, offers for sale, and sells in the United States electronic
`
`devices, including but not limited to: (1) iPhone 4s, iPhone5, iPhone 5c, iPhone 5s, iPhone 6,
`
`iPhone 6 Plus, iPhone 6s, iPhone 6s Plus, iPhone SE, iPhone 7, iPhone 7 Plus, iPhone 8, iPhone
`
`8 Plus, iPhone X cellphones; (2) iPad (3rd, 4th and 5th generation), iPad Mini, iPad Mini 2, iPad
`
`
`
`14
`
`Apple Inc.
`Ex. 1008 - Page 14
`
`
`
`Case 1:18-cv-00166-LY Document 26 Filed 04/12/18 Page 15 of 18
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`
`
`Mini 3, iPad Mini 4, iPad Pro, iPad Air, iPad Air 2 tablets; (3) MacBook, MacBook Air (13
`
`inches), MacBook Pro (13 and 15 inches), iMac (21.5 and 27 inches), Mac Mini, Mac Pro
`
`laptops; (4) Apple watch Series 1, Apple watch series 2, Apple watch series 3, Apple watch
`
`Hermes (series 1, 2, 3), Apple watch Edition (series 2 and 3); and (5) iPod (generation 5) and
`
`iPod touch, that utilize Apple’s Continuity, FaceTime, and iMessage services (collectively
`
`“Accused Infringing Devices”).
`
`59.
`
`The Accused Infringing Devices implement server-based wireless communication
`
`between stationary and mobile devices.
`
`60.
`
`Apple has infringed, and continues to infringe, claims of the ’298 Patent in the
`
`United States, including claims 1, 3-6, 8-11 and 13-15, by making, using, offering for sale,
`
`selling and/or importing the Accused Infringing Devices in violation of 35 U.S.C. § 271(a).
`
`61.
`
`Apple has also infringed, and continues to infringe, claims 1, 3-6, 8-11 and 13-15
`
`of the ’298 Patent by actively inducing others to use, offer for sale, and sell the Accused
`
`Infringing Devices. Apple’s customers who use those devices in accordance with Apple’s
`
`instructions infringe claims 1, 3-6, 8-11 and 13-15 of the ’298 Patent, in violation of 35 U.S.C. §
`
`271(a). Apple intentionally instructs its customers to infringe through training videos,
`
`demonstrations, brochures, installation and user guides, such as those located at:
`
`
`
`
`
`
`
`
`
`
`
`
`
`www.apple.com
`
`www.apple.com/shop/
`
`www.apple.com/iphone/compare/
`
`https://www.apple.com/ios/app-store/
`
`https://support.apple.com/en-us/
`
`https://support.apple.com/en-in/
`
`
`
`15
`
`Apple Inc.
`Ex. 1008 - Page 15
`
`
`
`Case 1:18-cv-00166-LY Document 26 Filed 04/12/18 Page 16 of 18
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`https://support.apple.com/en-us/HT201303
`
`https://support.apple.com/en-in/HT202944
`
`https://support.apple.com/en-us/HT202078
`
`https://support.apple.com/en-us/HT208386
`
`https://support.apple.com/en-in/HT204689#calls
`
`https://support.apple.com/en-us/HT204681#sms
`
`https://support.apple.com/en-in/guide/facetime/
`
`www.apple.com/business/docs/iOS_Security_Guide.pdf
`
`https://developer.apple.com/app-store/
`
`https://www.apple.com/iphone-*/specs/ (*=model number)
`
`www.youtube.com/user/apple
`
`Apple also induces infringement by others by failing to remove or diminish the infringing
`
`features of the Accused Infringing Devices. Apple is thereby liable for infringement of the ’298
`
`Patent under 35 U.S.C. § 271(b).
`
`62.
`
`Apple has also infringed, and continues to infringe, claims 1, 3-6, 8-11 and 13-15
`
`of the ’298 patent by offering to commercially distribute, commercially distributing, or importing
`
`the Accused Infringing Devices which devices are used in practicing the processes, or using the
`
`systems, of the ’298 patent, and constitute a material part of the invention. Apple knows
`
`portions of the Accused Devices to be especially made or especially adapted for use in
`
`infringement of the ’298 patent, not a staple article, and not a commodity of commerce suitable
`
`for substantial non-infringing use. Apple is thereby liable for infringement of the ’298 Patent
`
`under 35 U.S.C. § 271(c).
`
`
`
`16
`
`Apple Inc.
`Ex. 1008 - Page 16
`
`
`
`Case 1:18-cv-00166-LY Document 26 Filed 04/12/18 Page 17 of 18
`
`
`
`63.
`
`Apple will have been on notice of the ’298 Patent since, at the latest, the service
`
`of this complaint upon it. By the time of trial, Apple will have known and intended (since
`
`receiving such notice) that its continued actions would actively induce and contribute to the
`
`infringement of claims 1, 3-6, 8-11 and 13-15 of the ’298 Patent.
`
`64.
`
`Apple may have infringed the ’298 Patent through other software and devices
`
`utilizing the same or reasonably similar functionality, including other versions of the Accused
`
`Infringing Devices.
`
`65.
`
`Uniloc has been damaged by Apple’s infringement of the ’298 Patent.
`
`PRAYER FOR RELIEF
`
`Uniloc requests that the Court enter judgment against Apple:
`
`(A)
`
`declaring that Apple has infringed the ’925 Patent, the ’877 Patent, the ’116
`
`Patent and the ’298 Patent;
`
`(B)
`
`awarding Uniloc its damages suffered as a result of Apple’s infringement of the
`
`’925 Patent, the ’877 Patent, the ’116 Patent and the ’298 Patent;
`
`(C)
`
`awarding Uniloc its costs, attorneys’ fees, expenses, and interest, and
`
`(D)
`
`granting Uniloc such further relief as the Court finds appropriate.
`
`DEMAND FOR JURY TRIAL
`
`Uniloc demands trial by jury, under Fed. R. Civ. P. 38.
`
`
`
`
`
`
`
`
`
`17
`
`Apple Inc.
`Ex. 1008 - Page 17
`
`
`
`Case 1:18-cv-00166-LY Document 26 Filed 04/12/18 Page 18 of 18
`
`
`
`
`
`Date: April 12, 2018
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`/s/ Kevin Gannon
`Kevin Gannon
`Massachusetts State Bar No. 640931
`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: 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 ALBRITTON P.C.
`3131 West 7th Street, Suite 300
`Fort Worth, TX 76107
`Tel: (817) 377-9111
`Fax: (817) 377-3485
`
`ATTORNEYS FOR THE PLAINTIFFS
`
`CERTIFICATE OF SERVICE
`
`
`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 April 12, 2018.
`
`
`/s/ Kevin Gannon
`
`
`
`
`
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`
`18
`
`Apple Inc.
`Ex. 1008 - Page 18
`
`