Case 1:14-cv-01572-GMS Document 1 Filed 12/31/14 Page 1 of 7 PageID #: 1
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`IOENGINE, LLC,
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`v.
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`IMATION CORP.,
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Plaintiff,
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`Defendant.
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`C.A. No. _________
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`Jury Trial Demanded
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`COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff IOENGINE, LLC (“Plaintiff” or “IOENGINE”), by and through its undersigned
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`counsel, alleges as follows:
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`THE PARTIES
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`1.
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`IOENGINE is a limited liability company organized and existing under the laws
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`of Delaware, with its principal place of business at 22 Ensign Road, Norwalk, Connecticut
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`06853.
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`2.
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`Defendant Imation Corp. (“Defendant” or “Imation”) is a corporation organized
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`and existing under the laws of Delaware, with its principal place of business at 1 Imation Way,
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`Oakdale, Minnesota 55128.
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`3.
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`Defendant’s registered agent in the State of Delaware is Corporation Service
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`Company, 2711 Centerville Rd. Ste. 400, Wilmington, Delaware 19808.
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`JURISDICTION AND VENUE
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`4.
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`This is an action for patent infringement arising under the patent laws of the
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`United States, 35 U.S.C. § 100 et seq., including, but not limited to, 35 U.S.C. § 271.
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`93010:COM:10268426.DOCX.1
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`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00884 (US 8,539,047)
`Exhibit 2019
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`

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`Case 1:14-cv-01572-GMS Document 1 Filed 12/31/14 Page 2 of 7 PageID #: 2
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`5.
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`This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C.
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`§§ 1331 and 1338(a).
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`6.
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`On information and belief, Defendant is a corporation organized and existing
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`under the laws of Delaware, has transacted and does transact business within Delaware, and has
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`committed and contributed to, and induced acts of, patent infringement in Delaware and this
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`District. Defendant is subject to this Court’s specific and general personal jurisdiction pursuant
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`to due process and the Delaware Long Arm Statute, due at least to its substantial business in this
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`forum, including: (i) at least a portion of the infringement alleged herein; and (ii) regularly doing
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`or soliciting business, engaging in other persistent courses of conduct, and deriving substantial
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`revenue from goods and services provided to individuals in Delaware.
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`7.
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`Venue is proper in this District under 28 U.S.C. §§ 1391(b) and (c), and 1400(b)
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`because, among other reasons, Defendant is subject to personal jurisdiction in this District and
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`has committed and continues to commit acts of patent infringement in this District. For example,
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`on information and belief, Defendant has made, used, sold, offered for sale, and/or imported
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`infringing products and services in this District.
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`BACKGROUND
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`8.
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`This dispute involves technology that allows enhanced capabilities on portable
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`electronic devices. For example, the technology at issue provides for terminal processors and
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`peripheral device processors to execute program code stored on the peripheral device, allowing
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`advanced functionality to be added to standard peripheral devices and allowing peripheral
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`devices to access networks using a terminal’s network interface.
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`9.
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`The technology at issue was invented by Scott McNulty, who also founded
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`IOENGINE.
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`2
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`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00884 (US 8,539,047)
`Exhibit 2019
`
`

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`Case 1:14-cv-01572-GMS Document 1 Filed 12/31/14 Page 3 of 7 PageID #: 3
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`THE PATENT-IN-SUIT
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`10.
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`On September 17, 2013, the United States Patent and Trademark Office duly and
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`legally issued United States Patent No. 8,539,047 (“the ’047 Patent”), entitled “Apparatus,
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`Method and System for a Tunneling Client Access Point,” to Scott McNulty after full and fair
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`examination. The application that led to the ’047 Patent, U.S. Patent Application Ser. No.
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`12/950,321, was a continuation of U.S. Patent Application Ser. No. 10/807,731 and claims
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`priority to at least March 23, 2004. IOENGINE is the assignee of all right, title, and interest in
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`and to the ’047 Patent and possesses all rights of recovery under the ’047 Patent, including the
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`right to recover damages for past infringement. A true and correct copy of the ’047 Patent is
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`attached hereto as Exhibit A.
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`IMATION’S INFRINGEMENT
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`11.
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`IOENGINE incorporates by reference the preceding paragraphs as if fully set
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`forth herein.
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`12.
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`As described below, Imation infringes the claims of the ’047 Patent directly
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`(alone or jointly), and indirectly by contributing to and inducing direct infringement by others,
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`by making, using, selling, offering for sale, importing into the United States, and encouraging
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`the manufacture, use, sale, and importation of products and services.
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`13. More specifically, the infringing products (the “Imation Infringing Products”)
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`include, but are not limited to, Imation’s IronKey Personal products (e.g., the IronKey S250
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`Personal, IronKey D250 Personal, IronKey S200 Personal, IronKey D200 Personal, and
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`IronKey S100 Personal), Ironkey Enterprise products (e.g., the IronKey H300 Enterprise,
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`IronKey S250 Enterprise, IronKey D250 Enterprise, IronKey S200 Enterprise, IronKey D200
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`Enterprise, and IronKey S100 Enterprise), and the IronKey Workspace products (e.g., the
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`3
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`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00884 (US 8,539,047)
`Exhibit 2019
`
`

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`Case 1:14-cv-01572-GMS Document 1 Filed 12/31/14 Page 4 of 7 PageID #: 4
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`IronKey W700 Workspace and IronKey W500 Workspace); products incorporating the
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`foregoing; and reasonably similar Imation products with on-board storage and processing
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`capabilities that embody the apparatuses or practice the methods claimed by the ’047 Patent.
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`The Imation Infringing Products meet the limitations of the ’047 Patent literally and/or under
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`the doctrine of equivalents.
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`14.
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`Imation instructs and encourages its customers to use the Imation Infringing
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`Products in a manner that infringes the claims of the ’047 Patent including by providing user
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`guides and data sheets for the Imation Infringing Products,1 by providing information on its
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`website (available at www.ironkey.com), including videos, demonstrations, and other
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`information for the Imation Infringing Products, and by providing technical support for the
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`Imation Infringing Products, in each case that contains detailed descriptions and instructions for
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`using and implementing functionality that, alone or in combination, practices the invention
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`claimed in the ’047 Patent, including at least, device installation, device setup, device login,
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`1 See, e.g., http://support2.imation.com/downloads/imn/IMS/x250/Imation-x250-Personal-User-
`Guide.pdf, http://support2.imation.com/downloads/imn/IMS/x250/Imation-x250-Enterprise-Us
`er-Guide.pdf, http://support2.imation.com/downloads/imn/IMS/IronKey_Personal_User_Guide
`.pdf, http://support2.imation.com/downloads/imn/IMS/IronKey_Enterprise_User_Guide.pdf, ht
`tp://support2.imation.com/downloads/imn/IMS/H300/IronKey_Enterprise_H300_UG.pdf, http:
`//support2.imation.com/downloads/imn/IMS/WS42/Documentation/IronKey_Workspace_W70
`0_UG.pdf, http://support2.imation.com/downloads/imn/IMS/WS42/Documentation/IronKey_
`Workspace_W500_UG.pdf, http://www.ironkey.com/en-US/resources/documents/IronKey_Per
`sonal_S250-D250_Sellsheet_Letter.pdf, http://www.ironkey.com/en-US/resources/documents/I
`ronKey_S250_vs_D250_SellSheet.pdf, http://www.ironkey.com/en-US/resources/documents/I
`ronkey_Enterprise_S250-D250_Sellsheet_Letter.pdf, http://www.ironkey.com/en-US/resource
`s/documents/IronKey_Personal_S250-D250_Sellsheet_Letter.pdf, http://www.ironkey.com/en-
`US/resources/documents/IronKey_S250_vs_D250_SellSheet.pdf, http://www.ironkey.com/en-
`US/resources/documents/Ironkey_Enterprise_S250-D250_Sellsheet_Letter.pdf, http://www.iro
`nkey.com/en-US/resources/documents/IronKey_Basic_Enterprise_H300_External_Hard_Drive
`_Sellsheet_Letter.pdf, http://www.ironkey.com/en-US/resources/documents/Ironkey_W700_Se
`llSheet%20US.pdf, and http://www.ironkey.com/en-US/resources/documents/IronKey_SellShe
`et_Workspace_W500_W300_Healthcare.pdf.
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`4
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`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00884 (US 8,539,047)
`Exhibit 2019
`
`

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`Case 1:14-cv-01572-GMS Document 1 Filed 12/31/14 Page 5 of 7 PageID #: 5
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`password change/reset, forced password change, device update/firmware update, account
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`settings management, remote administrative management, device unlocking, accessing the
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`device after a forgotten password, device self-destruct, device reset, device automatic lock,
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`restoration of onboard applications, use of the identity manager feature, use of the online
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`account management feature, and use of secure web browsers.
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`FIRST COUNT FOR RELIEF
`(INFRINGEMENT OF THE ’047 PATENT)
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`IOENGINE incorporates by reference the preceding paragraphs as if fully set
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`15.
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`forth herein.
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`16.
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`Imation had actual knowledge of the ’047 Patent at least as early as the filing of
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`this Complaint.
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`17.
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`On information and belief, Imation has infringed and continues to infringe,
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`directly (alone or jointly) and indirectly by way of inducement and contributory infringement,
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`literally and/or under the doctrine of equivalents, in violation of 35 U.S.C. § 271, one or more
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`claims of the ’047 Patent by performing, without authority, one or more of the following acts:
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`making, having made, using, importing, selling, and offering for sale in the United States one or
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`more products and services that embody one or more inventions described and claimed in the
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`’047 Patent, including but not limited to the Imation Infringing Products. Since at least after
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`receiving notice of this Complaint, Defendant has knowingly contributed to the infringement,
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`and continues to contribute to the infringement, of one or more claims of the ’047 Patent by
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`selling and offering its products for sale to its customers, which products constitute a material
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`part of the invention and are not staple articles or commodities of commerce suitable for
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`substantial non-infringing use. Further, since at least after receiving notice of this Complaint,
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`5
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`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00884 (US 8,539,047)
`Exhibit 2019
`
`

`

`Case 1:14-cv-01572-GMS Document 1 Filed 12/31/14 Page 6 of 7 PageID #: 6
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`Defendant has induced infringement, and continues to induce infringement, of one or more
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`claims of the ’047 Patent, with specific intent that its products be used by its customers to
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`infringe the ’047 Patent.
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`18.
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`By infringing the ’047 Patent, Imation has caused and will continue to cause
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`Plaintiff to suffer damages in an amount to be determined at trial.
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`19.
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`Plaintiff has no adequate remedy at law against Imation’s acts of infringement,
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`and unless Imation is permanently enjoined from infringing the ’047 Patent, Plaintiff will suffer
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`irreparable harm.
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`20.
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`To the extent that Imation has or continues to make, use, import, sell, or offer for
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`sale products or services that infringe the ’047 Patent following its awareness of the ’047 Patent,
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`Imation’s infringement is willful and entitles IOENGINE to an award of enhanced damages
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`pursuant to 35 U.S.C. § 284 and attorneys’ fees pursuant to 35 U.S.C. § 285.
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff prays for judgment on the complaint as follows:
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`a.
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`Judgment in favor of Plaintiff and against Defendant for infringement of the
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`’047 Patent;
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`b.
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`Entry of a permanent injunction enjoining Defendant and its affiliated entities,
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`officers, agents, servants, employees, and those persons in active concert or participation with
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`them who receive actual notice thereof, from directly or indirectly infringing, inducing the
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`infringement of, or contributing to the infringement of the ’047 Patent;
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`c.
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`An award to Plaintiff of compensatory damages arising out of Defendant’s
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`infringement, including increased damages for Defendant’s willful infringement, together with
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`pre-judgment and post-judgment interest thereon;
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`6
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`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00884 (US 8,539,047)
`Exhibit 2019
`
`

`

`Case 1:14-cv-01572-GMS Document 1 Filed 12/31/14 Page 7 of 7 PageID #: 7
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`d.
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`An award to Plaintiff of costs, interest, and reasonable attorneys’ fees incurred
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`herein;
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`e.
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`f.
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`An accounting for future sales; and
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`Such other and further relief as the Court may deem just and appropriate.
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`DEMAND FOR JURY TRIAL
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`In accordance with Rule 38 of the Federal Rules of Civil Procedure, Plaintiff demands a
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`trial by jury on all issues so triable.
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`Dated: December 31, 2014
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`Smith, Katzenstein & Jenkins, LLP
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`/s/ Neal C. Belgam
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`Neal C. Belgam (ID No. 2721)
`Robert K. Beste (ID No. 3931)
`nbelgam@skjlaw.com
`rbeste@skjlaw.com
`800 Delaware Avenue, Suite 1000
`Wilmington, Delaware 19899
`Telephone: (302) 504-1688
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`Jeffrey Ostrow
`jostrow@stblaw.com
`SIMPSON THACHER & BARTLETT LLP
`2475 Hanover Street
`Palo Alto, California 94304
`Telephone: (650) 251-5000
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`Noah M. Leibowitz
`nleibowitz@stblaw.com
`Gregory T. Chuebon
`gchuebon@stblaw.com
`SIMPSON THACHER & BARTLETT LLP
`425 Lexington Avenue
`New York, New York 10017
`Tel: (212) 455-2000
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`Attorneys for Plaintiff IOENGINE
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`7
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`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00884 (US 8,539,047)
`Exhibit 2019
`
`