Case 5:19-cv-00036-RWS Document 1 Filed 03/15/19 Page 1 of 64 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`Plaintiff,
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`Defendant.
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`Civil Action No. ___________
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`COMPLAINT AND DEMAND
`FOR JURY TRIAL
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`COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff Maxell, Ltd. (“Maxell”), by and through its undersigned counsel, files this
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`complaint under 35 U.S.C. § 271 for Patent Infringement against Defendant Apple Inc.
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`(“Apple”) and further alleges as follows, upon actual knowledge with respect to itself and its
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`own acts, and upon information and belief as to all other matters.
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`OVERVIEW
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`1.
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`This is an action for patent infringement by Maxell. Founded in 1961 as Maxell
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`Electric Industrial Co., Ltd., Maxell is a leading global manufacturer of information storage
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`media products, including magnetic tapes, optical discs, and battery products such as lithium ion
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`rechargeable micro batteries and alkaline dry batteries, and the company has over 50 years of
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`experience producing industry-leading recordable media and energy products for both the
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`consumer and the professional markets. Maxell is also a leading manufacturer of projectors and
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`lenses and additionally sells various other devices, such as Bluetooth headsets, wireless charging
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`solutions, etc.
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`2.
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`Maxell has built up an international reputation for excellence and reliability, for
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`pioneering the power supplies and digital recording for today’s mobile and multi-media devices,
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`and leading the electronics industry in the fields of storage media and batteries.
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`3.
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`Since being one of the first companies to develop alkaline batteries and Blu Ray
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`camcorder discs, Maxell has always assured its customers of industry leading product innovation
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`and is one of the world’s foremost suppliers of memory, power, audio, and visual goods.
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`4.
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`As more fully described below, in 2009 Hitachi, Ltd. assigned much of its
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`intellectual property to Hitachi Consumer Electronics Co., Ltd., along with a significant portion
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`of its Consumer Business Group, including manufacturing and research and development
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`capabilities. Then, in 2013, Hitachi Consumer Electronics Co., Ltd. assigned the intellectual
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`property, including many of the patents in this case, along with the related manufacturing and
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`research and development capabilities, to Hitachi Maxell, Ltd., which later assigned the assets to
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`Maxell as a result of a reorganization and name change. This was an effort to align the
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`intellectual property with the licensing, business development, research and development, and
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`manufacturing efforts of Maxell, including in the mobile and mobile-media device market.
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`Maxell continues to sell products in the mobile device market including wireless charging
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`solutions, wireless flash drives, multimedia players, storage devices, and headphones. Maxell
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`also maintains intellectual property related to televisions, computer products, tablets, digital
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`cameras, and mobile phones. As a mobile technology developer and industry leader, and due to
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`its historical and continuous investment in research and development, including in this District,
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`Maxell owns a portfolio of patents related to such technologies and actively enforces its patents
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`through licensing and/or litigation. Maxell is forced to bring this action against Apple as a result
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`of Apple’s knowing and ongoing infringement of Maxell’s patents as further described herein.
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`5.
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`Since at least June 2013, Apple has been aware of Maxell’s patents and has had
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`numerous meetings and interactions regarding its infringement of these patents. These meetings
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`included Apple’s representatives being provided with detailed information regarding Maxell’s
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`patents, the developed technology, and Apple’s ongoing use of this patented technology.
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`Through this process, Apple’s representatives requested and received detailed explanations
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`regarding Maxell’s patents and allegations. Maxell believed that the parties could reach a
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`mutually beneficial solution and to that end considered a potential business transaction and
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`continued to answer multiple inquiries from Apple over the course of several years, including
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`communicating with Apple as recently as late 2018. Apple elected, however, not to enter into an
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`agreement and did not license Maxell’s patents. Instead, Apple continued, and continues today,
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`to make, use, sell and offer for sale Maxell’s patented technology without license.
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`6.
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`Since 2014, Maxell has had regular and continuous business in the Eastern
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`District of Texas. As a result of such business dealings and hopes to expand those and other
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`business dealings, a Maxell affiliate, Maxell Research and Development America, LLC
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`(“MRDA”), was founded in Marshall, Texas. Maxell and MRDA have and continue to regularly
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`meet and work to expand the research and development activities, business, and investments
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`being made by Maxell, MRDA, and their business partners in this District to further the goals of
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`these companies.
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`PARTIES
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`7.
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`Plaintiff Maxell, Ltd. is a Japanese corporation with a registered place of business
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`at 1 Koizumi, Oyamazaki, Oyamazaki-cho, Otokuni-gun, Kyoto, Japan.
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`8.
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`On information and belief, Defendant Apple Inc. is a California corporation
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`having a principal place of business located at One Apple Park Way Cupertino, California 95014
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`and regular and established places of business at 2601 Preston Road, Frisco, Texas, and 6121
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`West Park Boulevard, Plano, Texas, as well as other locations in Texas. Apple offers and sells its
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`products and/or services, including those accused herein of infringement, to customers and
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`potential customers located in Texas, including in the judicial Eastern District of Texas. Apple
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`may be served with process through its registered agent for service in Texas: CT Corporation
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`System, 1999 Bryant Street, Suite 900, Dallas, Texas 75201.
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`NATURE OF THE ACTION, JURISDICTION, AND VENUE
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`9.
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`Maxell 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.
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`10.
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`This Court has subject matter jurisdiction over the subject matter of this action
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`pursuant to 28 U.S.C. §§ 1331 and 1338(a) because the action arises under the patent laws of the
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`United States.
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`11.
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`This Court has personal jurisdiction over Apple. Apple conducts business and has
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`committed acts of direct and indirect patent infringement in this District, the State of Texas, and
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`elsewhere in the United States. Moreover, Apple is registered to do business in the State of
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`Texas, has offices and facilities in the State of Texas and this District, and actively directs its
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`activities to customers located in the State of Texas and this District.
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`12.
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`Venue is proper in this District pursuant to 28 U.S.C. § 1400(b). Apple has
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`regular and established places of business in this District, including Apple Stores located at 2601
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`Preston Road, Frisco, Texas and 6121 West Park Boulevard, Plano, Texas, is deemed to reside in
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`this District, has committed acts of infringement described herein in this District, and has
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`purposely transacted business involving the accused devices in this District.
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`13.
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`Six of the patents accused of infringement herein, including U.S. Patent Nos.
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`6,748,317; 8,339,493; 7,116,438; 6,408,193; 6,928,306; and 6,329,794, were previously asserted
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`in this District against Huawei Device Co., Ltd., Huawei Device USA, Inc., ZTE (USA), Inc.,
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`ZTE Corporation, and/or ASUSTeK Computer Inc. Further, U.S. Patent Nos. 6,580,999 and
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`6,430,498 are the parents of the previously asserted U.S. Patent No. 6,748,317 and include
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`similar subject matter as the one the Court is familiar with. During the course of these lawsuits,
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`this Court heard from the parties and their experts regarding the technology at issue in these
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`patents, construed numerous claim terms, and even conducted a jury trial, during which all
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`patents were found to be valid and willfully infringed. Accordingly, this Court has substantial
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`knowledge of and concerning the majority of the patents asserted in this lawsuit. Judicial
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`economy further supports venue in this District.
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`COUNT 1 - INFRINGEMENT OF U.S. PATENT NO. 6,748,317
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`14. Maxell incorporates paragraphs 1-13 above by reference.
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`15.
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`U.S. Patent No. 6,748,317 (the “’317 Patent,” attached hereto at Exhibit 1) duly
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`issued on June 8, 2004 and is entitled Portable terminal with the function of walking navigation.
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`16. Maxell is the owner by assignment of the ’317 Patent and possesses all rights
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`under the ’317 Patent, including the exclusive right to recover for past and future infringement.
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`17.
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`Eight years before Apple released its first GPS-enabled iPhone and five years
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`before Google launched its first Maps product, the inventors of the ’317 Patent were
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`experimenting with ways to deliver navigation services to the small sized screens of cellular
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`phones that were available in 1999. At the time of the priority date of the ’317 Patent, even the
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`Internet hosted map applications were geared to stationary desktop computers, not to mobile
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`phones. The inventors of the ’317 Patent recognized the benefits of delivering mapping services
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`to mobile phones and of supplementing those services with real-time location information from
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`the phones themselves. ’317 Patent, 1:10-30. The inventors were interested in specifically
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`improving mapping services on small screen phones within the narrow field of walking
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`navigation. Id. at 1:31-43. The inventors recognized that simply providing a map on the phone
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`was not enough because the small, text-based displays of the phones were ill-equipped to display
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`full maps or to enable meaningful user interactions. Id. at 2:17-36. The inventors also recognized
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`that there was a need to provide a solution that did not require the enormous amount of cost
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`required to download maps in real-time from a server linked to a computer network and to
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`process this map information in a format that is readable on the small screens of the phones. Id.
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`at 1:53-2:4. The inventors also recognized that a car navigation system from that time frame also
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`did not provide a useful solution because it could not be used by a pedestrian to guide his/her
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`walk due to the size and the lack of preciseness required to provide accurate route information to
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`a pedestrian. Id. at 1:31-43.
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`18.
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`It is against this backdrop that the inventors of the ’317 Patent set about to solve
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`the problem arising specifically in the realm of computer networks that—at that time—lacked
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`the ability to provide accurate and precise route guidance information to pedestrians in a device
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`that would be portable and that would not require the cost of constantly downloading maps and
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`processing this data over a computer network in real-time. Id. at 2:51-61.
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`19.
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`In order to solve this problem of computer, the inventors disclose a portable
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`device with a particular combination of hardware components tailored for delivering mobile
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`mapping services. The device includes a “[c]ellular antenna and … an infrared ray sensor” such
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`as a “GSP [sic], PHS, or the like,” with which it can obtain “location information.” Id. at 5:66-
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`6:2. The specification discloses that “location information” is “a latitude/longitude or coordinates
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`and an altitude.” Id. at 5:62-64. Moreover, the device includes “a compass, a gyro, and such a
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`sensor as a clinometer,” with which it can obtain “direction information.” Id. at 6:2-12. The
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`specification discloses that “direction information” is “the direction of the tip of the [device] or
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`the orientation of the display screen.” Id. The ’317 Patent thus discloses a portable device with a
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`specific combination of hardware that has a particular set of capabilities and in order to ensure
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`that they did not preempt the concept of simply including a map on a computer, the inventors
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`claimed a combination of “devices” within a “portable terminal with the function of walking
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`navigation.” See e.g., id. at 10:42-57 (claim 1). Further, each of the claimed “devices” recites a
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`specific function that as a whole solve the problem of the prior art devices that could not provide
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`accurate and precise navigation information to pedestrians. Id.
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`20.
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`For example, claim 1 recites at least “a device for getting location information,”
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`“a device for getting direction information denoting an orientation,” “an input device for
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`inputting a destination,” and “a display” wherein the display specifically provides the claimed
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`functionality of displaying positions of a “destination and a present place, and a relation of said
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`direction and a direction from said present place to said destination.” Id. Further, the display
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`also specifically provides the claimed functionality of changing the display “according to a
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`change of said direction of said portable terminal orientation for walking navigation,” thus
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`ensuring that the portable terminal can guide the pedestrian accurately in real-time in response
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`to, for example, the pedestrian changing the direction he/she is walking. Independent claims 6
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`and 10 also recite similar combinations of hardware and also recite additional narrowing features
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`(e.g., “a device connected to a server”). Id. at 11:6-21 and 11:34-51. Similarly, at least
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`dependent claims 2, 3, 5, 7, and 11 also provide additional narrowing features limiting the claims
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`to specific improvements in the field providing navigation information on portable terminals.
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`See id. at 10:58-64, 11:3-5, 11:21-22, and 12:1-4.
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`21. When considered as a whole the combination of hardware recited in the claims of
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`the ’317 Patent is directed to a specific novel and non-obvious portable terminal that includes
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`specific functionality of providing guidance for walking navigation. Indeed, a jury in this
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`jurisdiction made a determination that when considered as a whole, at least claims 1-3 of the
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`’317 Patent are directed to a novel device and are not invalid over prior art.
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`22.
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`Further, the patentability of the ’317 Patent was challenged in IPR2018-00235,
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`wherein the Patent Trial and Appeal Board was asked to consider the teachings of prior art (e.g.,
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`U.S. Patent Nos. 5,781,150, 5,173,709, and 5,592,382, and Japanese Patent Application
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`Publication No. H10-232992) in a challenge to the validity of claims 1-3, 6-8, 10, 15-17, and 20.
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`In response, the Patent Trial and Appeal Board denied the petition, finding that the information
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`presented does not “demonstrate a reasonable likelihood that Petitioner would prevail in showing
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`that at least one of the challenged claims of the ’317 Patent is unpatentable.”
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`23.
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`Apple has directly infringed one or more claims of the ’317 Patent in this District
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`and elsewhere in Texas, including at least claims 1-3, 5-7, and 10-11 literally and/or under the
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`doctrine of equivalents, by or through making, using, importing, offering for sale and/or selling
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`its telecommunications technology, including by way of example a product known as the iPhone
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`XS.
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`24.
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`The iPhone XS includes a screen for displaying information, at least a GPS
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`chipset/cellular chipset/Wi-Fi chipset/iBeacon/compass/gyroscope for providing location and/or
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`orientation information, “Maps” and “Find My Friends” software that allows users to access
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`location information including the present location of the device and orientation of the device
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`and use such information to provide walking navigation information and/or share location. The
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`iPhone XS further uses location servers to provide walking navigation information, route
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`information, and/or to provide its position to additional devices in order to allow users to walk to
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`a particular shared location. For example, the following excerpts from Apple’s websites provide
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`non-limiting examples of the iPhone XS infringing at least claims 1-3, 5-7, and 10-11 of the ’317
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`Patent:
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`See https://support.apple.com/en-us/HT201493
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`See https://www.apple.com/ios/maps/
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`25.
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`The foregoing features and capabilities of the iPhone XS, and Apple’s description
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`and/or demonstration thereof, including in user manuals and advertising, reflect Apple’s direct
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`infringement by satisfying every element of at least claims 1-3, 5-7, and 10-11 of the ’317
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`Patent, under 35 U.S.C. § 271(a).
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`26.
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`On information and belief, Apple further infringes the ’317 Patent through
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`additional products utilizing the same or reasonably similar functionalities as described above
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`with respect to the iPhone XS (collectively, “the ’317 Accused Products”). The ’317 Accused
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`Products include all iOS devices including “Maps” and/or “Find My Friends” applications, for
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`example, Apple iPhones (e.g., iPhone XS (model no. A1920), iPhone XS Max (model no.
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`A1921), iPhone XR (model no. A1984), iPhone X (model nos. A1865 and A1901), iPhone 8
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`Plus (model nos. A1864 and A1897), iPhone 8 (model nos. A1863 and A1905), iPhone 7 Plus
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`(model nos. A1661 and A1784), iPhone 7 (model nos. A1660 and A1778), iPhone 6s Plus
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`(model nos. A1634 andA1687), iPhone 6s (model nos. A1633 and A1688), iPhone 6 Plus (model
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`nos. A1522 and A1524), iPhone 6 (model nos. A1549 and A1586), iPhone SE (model nos.
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`A1723 and A1662), iPhone 5s (model nos. A1453 and A1533), and iPhone 5c (model nos.
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`A1456 and A1532)) and Apple iPads with cellular functionality and/or Apple iPads with Wi-Fi
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`and Indoor Maps (e.g., iPad Air (model nos. A1474 and A1475), iPad mini 2 (model nos. A1489
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`and A1490), iPad Air 2 (model nos. A1566 and A1567), iPad mini 3 (model nos. A1599 and
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`A1600), iPad mini 4 (model nos. A1538 and A1550), iPad Pro (10.5”) (model nos. A1701 and
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`A1709), iPad Pro (12.9”) (model nos. A1584 and A1652), iPad Pro (9.7”) (model nos. A1673,
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`A1674, and A1675), iPad Pro (11”) (model nos. A1980 and A2013), iPad (5th generation) (model
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`nos. A1822 and A1823), iPad (6th generation) (model nos. A1893 and A1954), iPad Pro (12.9”
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`2nd generation) (model nos. A1670 and A1671), and iPad Pro (12.9” 3rd generation) (model nos.
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`A1876, A2014, and A1895)). For example, each of these products also include a “Maps”
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`application, a “Find My Friends” application, and/or “Location” services as advertised on
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`Apple’s website. Maxell reserves the right to discover and pursue any additional infringing
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`devices that incorporate infringing functionalities. For the avoidance of doubt, the ’317 Accused
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`Products are identified to describe Apple’s infringement and in no way limit the discovery and
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`infringement allegations against Apple concerning other devices that incorporate the same or
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`reasonably similar functionalities.
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`27.
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`Apple has indirectly infringed at least claims 1-3, 5-7, and 10-11 of the ’317
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`Patent in this District and elsewhere in the United States by, among other things, actively
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`inducing the use, offering for sale, selling, or importation of at least the ’317 Accused Products.
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`Apple’s customers who purchase devices and components thereof and operate such devices and
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`components in accordance with Apple’s instructions directly infringe one or more claims of the
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`’317 Patent in violation of 35 U.S.C. § 271. Apple instructs its customers through at least user
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`guides or websites, such as those located at: https://support.apple.com/en_US/manuals or
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`https://www.apple.com/ios/maps/. Apple is thereby liable for infringement of the ’317 Patent
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`pursuant to 35 U.S.C. § 271(b).
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`28.
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`Apple has indirectly infringed at least claims 1-3, 5-7, and 10-11 of the ’317
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`Patent, by, among other things, contributing to the direct infringement of others, including
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`customers of the ’317 Accused Products by making, offering to sell, or selling, in the United
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`States, or importing a component of a patented machine, manufacture, or combination, or an
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`apparatus for use in practicing a patented process, constituting a material part of the invention,
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`knowing the same to be especially made or especially adapted for use in infringement of the ’317
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`Patent, and not a staple article or commodity of commerce suitable for substantial non-infringing
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`use.
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`29.
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`For example, the ’317 Accused Products include hardware (e.g., GPS chip,
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`cellular chip, Wi-Fi chip, gyroscope, compass, A12 processor) and/or software (e.g., “Maps” or
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`“Find My Friends”). These are components of a patented machine, manufacture, or combination,
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`or an apparatus for use in practicing a patented process. Furthermore, such components are a
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`material part of the invention and upon information and belief are not a staple article or
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`commodity of commerce suitable for substantial non-infringing use. Thus, Apple is liable for
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`infringement of the ’317 Patent pursuant to 35 U.S.C. § 271(c).
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`30.
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`Apple has been on notice of the ’317 Patent since, at least, June 25, 2013. By the
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`time of trial, Apple will thus have known and intended (since receiving such notice), that its
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`continued actions would actively induce and contribute to actual infringement of at least claims
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`1-3, 5-7, and 10-11 of the ’317 Patent.
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`31.
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`Apple undertook and continued its infringing actions despite an objectively high
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`likelihood that such activities infringed the ’317 Patent, which has been duly issued by the
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`USPTO, and is presumed valid. For example, since, at least June 25, 2013, Apple has been aware
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`of an objectively high likelihood that its actions constituted and continue to constitute
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`infringement of the ’317 Patent, and that the ’317 Patent is valid. On information and belief,
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`Apple could not reasonably, subjectively believe that its actions do not constitute infringement of
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`the ’317 Patent, nor could it reasonably, subjectively believe that the patent is invalid. Despite
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`that knowledge and subjective belief, and the objectively high likelihood that its actions
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`constitute infringement, Apple has continued its infringing activities. As such, Apple willfully
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`infringes the ’317 Patent.
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`32. Maxell has been damaged by Apple’s infringement of the ’317 Patent.
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`COUNT 2 - INFRINGEMENT OF U.S. PATENT NO. 6,580,999
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`33. Maxell incorporates paragraphs 1-32 above by reference.
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`34.
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`U.S. Patent No. 6,580,999 (the “’999 Patent,” attached hereto at Exhibit 2) duly
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`issued on June 17, 2003 and is entitled Portable terminal with the function of walking
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`navigation.
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`35. Maxell is the owner by assignment of the ’999 Patent and possesses all rights
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`under the ’999 Patent, including the exclusive right to recover for past and future infringement.
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`36.
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`The ’999 Patent is the parent of the ’317 Patent, and like claims of the ’317
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`Patent, claims of the ’999 Patent are also directed to a specific novel and non-obvious portable
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`terminal that includes specific functionality of providing guidance for walking navigation.
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`Further, claims 1-2 and 6 of the ’999 Patent even include a “device for getting the location
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`information of another portable terminal” (’999 Patent, 10:44-45), thus specifically claiming a
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`portable terminal that can receive a location from another portable terminal and providing in
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`real-time route guidance information to a pedestrian so that the pedestrian can walk to the
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`location of the other portable terminal after receiving the location.
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`37.
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`Apple has directly infringed one or more claims of the ’999 Patent in this District
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`and elsewhere in Texas, including at least claims 1-2 and 6 literally and/or under the doctrine of
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`equivalents, by or through making, using, importing, offering for sale and/or selling its
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`telecommunications technology, including by way of example a product known as the iPhone
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`XS.
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`38.
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`The iPhone XS includes a screen for displaying information, at least a GPS
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`chipset/cellular chipset/Wi-Fi chipset/iBeacon/compass/gyroscope for providing location and/or
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`orientation information, “Maps” and “Find My Friends” software that allows users to access
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`location information including the present location of the device and orientation of the device
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`and use such information to provide walking navigation information and/or share location. The
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`iPhone XS further uses location servers to provide walking navigation information, route
`
`information, and/or to provide its position to additional devices in order to allow users to walk to
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`a particular shared location. For example, the following excerpts from Apple’s websites provide
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`non-limiting examples of the iPhone XS infringing at least claims 1-2 and 6 of the ’999 Patent:
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`See https://support.apple.com/en-us/HT201493
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`Case 5:19-cv-00036-RWS Document 1 Filed 03/15/19 Page 16 of 64 PageID #: 16
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`See https://www.apple.com/ios/maps/
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`39.
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`The foregoing features and capabilities of the iPhone XS, and Apple’s description
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`and/or demonstration thereof, including in user manuals and advertising, reflect Apple’s direct
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`infringement by satisfying every element of at least claims 1-2 and 6 of the ’999 Patent, under 35
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`U.S.C. § 271(a).
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`40.
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`On information and belief, Apple further infringes the ’999 Patent through
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`additional products utilizing the same or reasonably similar functionalities as described above
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`with respect to the iPhone XS (collectively, “the ’999 Accused Products”). The ’999 Accused
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`Products include all iOS devices including “Maps” and/or “Find My Friends” applications, for
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`example, Apple iPhones (e.g., iPhone XS (model no. A1920), iPhone XS Max (model no.
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`A1921), iPhone XR (model no. A1984), iPhone X (model nos. A1865 and A1901), iPhone 8
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`Plus (model nos. A1864 and A1897), iPhone 8 (model nos. A1863 and A1905), iPhone 7 Plus
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`Case 5:19-cv-00036-RWS Document 1 Filed 03/15/19 Page 17 of 64 PageID #: 17
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`(model nos. A1661 and A1784), iPhone 7 (model nos. A1660 and A1778), iPhone 6s Plus
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`(model nos. A1634 andA1687), iPhone 6s (model nos. A1633 and A1688), iPhone 6 Plus (model
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`nos. A1522 and A1524), iPhone 6 (model nos. A1549 and A1586), iPhone SE (model nos.
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`A1723 and A1662), iPhone 5s (model nos. A1453 and A1533), and iPhone 5c (model nos.
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`A1456 and A1532)) and Apple iPads with cellular functionality and/or Apple iPads with Wi-Fi
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`and Indoor Maps (e.g., iPad Air (model nos. A1474 and A1475), iPad mini 2 (model nos. A1489
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`and A1490), iPad Air 2 (model nos. A1566 and A1567), iPad mini 3 (model nos. A1599 and
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`A1600), iPad mini 4 (model nos. A1538 and A1550), iPad Pro (10.5”) (model nos. A1701 and
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`A1709), iPad Pro (12.9”) (model nos. A1584 and A1652), iPad Pro (9.7”) (model nos. A1673,
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`A1674, and A1675), iPad Pro (11”) (model nos. A1980 and A2013), iPad (5th generation) (model
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`nos. A1822 and A1823), iPad (6th generation) (model nos. A1893 and A1954), iPad Pro (12.9”
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`2nd generation) (model nos. A1670 and A1671), and iPad Pro (12.9” 3rd generation) (model nos.
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`A1876, A2014, and A1895)). For example, each of these products also include a “Maps”
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`application, a “Find My Friends” application, and/or “Location” services as advertised on
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`Apple’s website. Maxell reserves the right to discover and pursue any additional infringing
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`devices that incorporate infringing functionalities. For the avoidance of doubt, the ’999 Accused
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`Products are identified to describe Apple’s infringement and in no way limit the discovery and
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`infringement allegations against Apple concerning other devices that incorporate the same or
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`reasonably similar functionalities.
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`41.
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`Apple has indirectly infringed at least claims 1-2 and 6 of the ’999 Patent in this
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`District and elsewhere in the United States by, among other things, actively inducing the use,
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`offering for sale, selling, or importation of at least the ’999 Accused Products. Apple’s customers
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`who purchase devices and components thereof and operate such devices and components in
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`Case 5:19-cv-00036-RWS Document 1 Filed 03/15/19 Page 18 of 64 PageID #: 18
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`accordance with Apple’s instructions directly infringe one or more claims of the ’999 Patent in
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`violation of 35 U.S.C. § 271. Apple instructs its customers through at least user guides or
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`websites,
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`such
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`as
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`those
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`located
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`at:
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`https://support.apple.com/en_US/manuals
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`or
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`https://www.apple.com/ios/maps/. Apple is thereby liable for infringement of the ’999 Patent
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`pursuant to 35 U.S.C. § 271(b).
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`42.
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`Apple has indirectly infringed at least claims 1-2 and 6 of the ’999 Patent, by,
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`among other things, contributing to the direct infringement of others, including customers of the
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`’999 Accused Products by making, offering to sell, or selling, in the United States, or importing a
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`component of a patented machine, manufacture, or combination, or an apparatus for use in
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`practicing a patented process, constituting a material part of the invention, knowing the same to
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`be especially made or especially adapted for use in infringement of the ’999 Patent, and not a
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`staple article or commodity of commerce suitable for substantial non-infringing use.
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`43.
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`For example, the ’999 Accused Products include hardware (e.g., GPS chip,
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`cellular chip, Wi-Fi chip, gyroscope, compass, A12 processor) and/or software (e.g., “Maps” or
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`“Find My Friends”). These are components of a patented machine, manufacture, or combination,
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`or an apparatus for use in practicing a patented process. Furthermore, such components are a
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`material part of the invention and upon information and belief are not a staple article or
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`commodity of commerce suitable for substantial non-infringing use. Thus, Apple is liable for
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`infringement of the ’999 Patent pursuant to 35 U.S.C. § 271(c).
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`44.
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`Apple has been on notice of the ’999 Patent since, at least, June 25, 2013. By the
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`time of trial, Apple will thus have known and intended (since receiving such notice), that its
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`continued actions would actively induce and contribute to actual infringement of at least claims
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`1-2 and 6 of the ’999 Patent.
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`Case 5:19-cv-00036-RWS Document 1 Filed 03/15/19 Page 19 of 64 PageID #: 19
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`45.
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`Apple undertook and continued its infringing actions despite an objectively high
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`likelihood that such activities infringed the ’999 Patent, which has been duly issued by the
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`USPTO, and is presumed valid. For example, since, at least June 25, 2013, Apple has been aware
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`of an objectively high likelihood that its actions constituted and continue to constitute
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`infringement of the ’999 Patent, and that the ’999 Patent is valid. On information and belief,
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`Apple could not reasonably, subjectively believe that its actions do not constitute infringement of
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`the ’999 Patent, nor could it reasonably, subjectively believe that the patent is invalid.