Case 2:16-cv-00060 Document 1 Filed 01/17/16 Page 1 of 32 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`OPTIS CELLULAR TECHNOLOGY, LLC
`and PANOPTIS PATENT MANAGEMENT,
`LLC,
`
`Plaintiffs,
`
`v.
`
`BLACKBERRY LIMITED and
`BLACKBERRY CORPORATION,
`
`Defendants.
`
`CIVIL ACTION NO.
`
`2:16-cv-60
`
`JURY TRIAL DEMANDED
`
`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiffs Optis Cellular Technology, LLC and PanOptis Patent Management, LLC,
`
`(collectively, “Plaintiffs” or “PanOptis”), file this Original Complaint for Patent
`
`Infringement under 35 U.S.C. § 271 against BlackBerry Limited and BlackBerry
`
`Corporation, (collectively, “Defendants” or “BlackBerry”), and allege as follows:
`
`THE PARTIES
`
`1.
`
`Plaintiff Optis Cellular Technology, LLC (“Optis Cellular”) is a limited
`
`liability company organized and existing under the laws of the State of Delaware, and
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`IPR2020-00465
`APPLE v. OPTIS
`APPLE 1067
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`

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`Case 2:16-cv-00060 Document 1 Filed 01/17/16 Page 2 of 32 PageID #: 2
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`maintains its principal place of business at 7160 Dallas Parkway, Suite 250, Plano, Texas
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`75024.
`
`2.
`
`Plaintiff PanOptis Patent Management, LLC (“PPM”) is a limited liability
`
`company organized and existing under the laws of the State of Delaware, and maintains its
`
`principal place of business at 7160 Dallas Parkway, Suite 250, Plano, Texas 75024.
`
`3.
`
`On information and belief, Defendant BlackBerry Limited (“BlackBerry
`
`Ltd”) is a corporation organized and operating under the laws of the country of Canada with
`
`its principal place of business at 2200 University Ave. E. Waterloo, Ontario, Canada N2K
`
`0A7. BlackBerry Ltd. manufactures, imports into the United States, sells and/or offers for
`
`sale in the United States mobile telephones and tablets for use in a mobile communications
`
`network. In addition, BlackBerry Ltd.’s mobile telephones and tablets for use in a mobile
`
`communications network are marketed, offered for sale, and/or sold throughout the United
`
`States, including within this District. BlackBerry Ltd. can be served with process by serving
`
`the Texas Secretary of State.
`
`4.
`
`On information and belief, Defendant BlackBerry Corporation (“BlackBerry
`
`Corp.”) is a corporation organized under the laws of the state of Delaware with its principal
`
`place of business at 5000 Riverside Drive, Irving, Texas 75039. BlackBerry Corp.
`
`manufactures, imports into the United States, sells and/or offers for sale in the United States
`
`mobile telephones and tablets for use in a mobile communications network. In addition,
`
`BlackBerry Corp.’s mobile telephones and tablets for use in a mobile communications
`
`network are marketed, offered for sale, and/or sold throughout the United States, including
`
`within this District. BlackBerry Corp. can be served with process through its registered
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`Case 2:16-cv-00060 Document 1 Filed 01/17/16 Page 3 of 32 PageID #: 3
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`service agent, Corporate Creations Network Inc. at 4265 San Felipe #1100, Houston, TX
`
`77027.
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`JURISDICTION AND VENUE
`
`5.
`
`This is an action arising under the patent laws of the United States, 35 U.S.C.
`
`§ 101 et seq. This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 1338(a),
`
`2201, and 2202.
`
`6.
`
`Venue is proper in this judicial district under 28 U.S.C. §§ 1391(b), (c) and
`
`(d) and 1400(b).
`
`7.
`
`This Court has personal jurisdiction over Defendants. Defendants have
`
`conducted and do conduct business within the State of Texas. Defendants, directly or
`
`through subsidiaries or intermediaries (including distributors, retailers, and others), ship,
`
`distribute, offer for sale, sell, and advertise (including the provision of an interactive web
`
`page) their products and/or services in the United States, the State of Texas, and the Eastern
`
`District of Texas. Defendants, directly and through subsidiaries or intermediaries (including
`
`distributors, retailers, and others), have purposefully and voluntarily placed one or more of
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`its infringing products and/or services, as described below, into the stream of commerce with
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`the expectation that they will be purchased and used by consumers in the Eastern District of
`
`Texas. These infringing products and/or services have been and continue to be purchased
`
`and used by consumers in the Eastern District of Texas. Defendants have committed acts of
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`patent infringement within the State of Texas and, more particularly, within the Eastern
`
`District of Texas.
`
`THE PATENTS
`
`8.
`
`United States Letters Patent No. 8,019,332 (“the ’332 Patent”), entitled
`
`“Method for Transmitting and Receiving Control Information Through PDCCH,” was duly
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`and legally issued after full and fair examination to inventors Dae Won Lee, Ki Jun Kim,
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`Dong Wook Roh, Yu Jin Noh, Joon Kui Ahn and Jung Hoon Lee on September 13, 2011.
`
`Optis Cellular owns by assignment the entire right, title, and interest in the ’332 Patent, is
`
`entitled to sue for past and future infringement and possesses the right to license the ’332
`
`Patent.
`
`9.
`
`United States Letters Patent No. 8,102,833 (“the ’833 Patent”), entitled
`
`“Method for Transmitting Uplink Signals,” was duly and legally issued after full and fair
`
`examination to inventors Dae Won Lee, Bong Hoe Kim, Young Woo Yun, Ki Jun Kim,
`
`Dong Wook Roh, Hak Seong Kim and Hyun Wook Park on January 24, 2012. Optis Cellular
`
`owns by assignment the entire right, title, and interest in the ’833 Patent, is entitled to sue
`
`for past and future infringement and possesses the right to license the ’833 Patent.
`
`10.
`
`United States Letters Patent No. 8,437,293 (“the ’293 Patent”), entitled
`
`“Methods and Systems for Scheduling Resources in a Telecommunication System,” was
`
`duly and legally issued after full and fair examination to inventors Kristina Jersenius,
`
`Henning Wiemann, Anna Larmo, Peter Moberg and Eva Englund on May 7, 2013. Optis
`
`Cellular owns by assignment the entire right, title, and interest in the ’293 Patent, is entitled
`
`to sue for past and future infringement and possesses the right to license the ’293 Patent.
`
`11.
`
`United States Letters Patent No. 8,174,506 (“the ’506 Patent”), entitled
`
`“Method of Displaying Object and Terminal Capable of Implementing the Same,” was duly
`
`and legally issued after full and fair examination to inventors Tae Hun Kim, Boem Young
`
`Woo, Jeong Hyuk Yoon, Hyun Ju Ahn, Seung Sook Han, Jun Serk Park and Ho Sang Cheon
`
`on May 8, 2012. Optis Cellular owns by assignment the entire right, title, and interest in the
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`’506 Patent, is entitled to sue for past and future infringement and possesses the right to
`
`license the ’506 Patent.
`
`12.
`
`The ’332, ’833, ’293, and ’506 Patents (collectively, the “Asserted Patents”)
`
`are each valid and enforceable.
`
`13.
`
`By way of written agreement between PPM and Optis Cellular, PPM
`
`possesses the rights to negotiate and execute licenses for each of the Asserted Patents.
`
`FACTUAL BACKGROUND
`
`14.
`
`The Asserted Patents cover inventions relating to wireless communications,
`
`mobile telephones and other devices for use in a mobile communications network.
`
`15.
`
`The Defendants have imported into the United States, marketed, offered for
`
`sale and/or sold in the United States, mobile telephones and other devices for use in a mobile
`
`communications network that infringe the Asserted Patents, or induce or contribute to the
`
`infringement of the Asserted Patents by others.
`
`16.
`
`The Defendants have been placed on actual notice of one or more of the
`
`Asserted Patents. The filing of this Complaint also constitutes notice in accordance with 35
`
`U.S.C. § 287. Despite such notice, the Defendants continue to import into, market, offer for
`
`sale and/or sell in the United States products that infringe the Asserted Patents.
`
`17.
`
`The Defendants directly and indirectly infringed and continue to directly and
`
`indirectly infringe the Asserted Patents by engaging in acts constituting infringement under
`
`35 U.S.C. § 287(a), (b), (c), and/or (f), including but not necessarily limited to one or more
`
`of making, using, testing, selling and/or offering to sell, in this District and elsewhere in the
`
`United States, and importing into this District and elsewhere in the United States, certain
`
`infringing mobile communication devices, including but not limited to Defendants’ mobile
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`phones and tablets, which incorporate the functionalities and compositions described in
`
`detail in Counts I-IV (collectively, “BlackBerry Mobile Communication Devices”).
`
`18.
`
`The infringing BlackBerry Mobile Communication Devices include, but are
`
`not limited to, include BlackBerry 4G LTE PlayBook, BlackBerry Priv, BlackBerry
`
`Passport, BlackBerry Q5, BlackBerry Q10, BlackBerry Z10, BlackBerry Z30, BlackBerry
`
`Classic, BlackBerry Leap, Porsche Design P’9982, Porsche Design P’9983, and all
`
`variations thereof.
`
`19.
`
`Defendants’ acts of infringement have caused damage to Plaintiffs. Plaintiffs
`
`are entitled to recover from Defendants the damages sustained by Plaintiffs as a result of
`
`Defendants’ wrongful acts.
`
`PLAINTIFFS’ LTE STANDARDS-ESSENTIAL PATENTS
`
`20.
`
`21.
`
`Plaintiffs incorporate by reference paragraphs 1-19 as if fully set forth herein.
`
`The European Telecommunications Standards Institute (“ETSI”) is a
`
`standard setting organization (“SSO”) that produces globally-accepted standards for the
`
`telecommunications industry. ETSI is an organizational partner of the Third Generation
`
`Partnership Project (“3GPP”), which maintains and develops globally applicable technical
`
`specifications for mobile systems, including the specifications for implementation and use
`
`of wireless communications for high-speed data referred to as the Long Term Evolution
`
`(“LTE”) Standard.
`
`22.
`
`Implementation and use of the LTE Standard, including but not limited to use
`
`of wireless communications for high-speed data compliant with the LTE specifications as
`
`detailed in the 3GPP specification series TS 36.101-36.978, has increased in recent years
`
`and continues to increase at a rapid pace.
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`23.
`
`ETSI has developed and promulgated an IPR Policy (found at Annex 6 to the
`
`ETSI Rules of Procedure, published November 19, 2014). This policy is intended to strike
`
`a balance between the needs of standardization for public use in the field of
`
`telecommunications on the one hand, and the rights of IPR owners on the other hand. ETSI
`
`requires its members to disclose the patents that “are or become, and remain ESSENTIAL
`
`to practice” its standards or technical specifications. Clause 15.6 of the ETSI IPR Policy
`
`defines the term “ESSENTIAL” to mean that “it is not possible on technical (but not
`
`commercial) grounds, taking into account normal technical practice and the state of the art
`
`generally available at the time of standardization, to make, sell, lease, otherwise dispose of,
`
`repair, use or operate EQUIPMENT or METHODS which comply with a STANDARD
`
`without infringing that IPR.”
`
`24.
`
`Optis Cellular is the assignee of numerous patents, originally assigned to
`
`either LG Electronics, Inc. (“LG”), Telefonaktiebolaget LM Ericsson (“Ericsson”) or
`
`Panasonic Corporation (“Panasonic”), that are, and remain, essential (as that term is defined
`
`by ETSI) to practicing the LTE Standard.
`
`25.
`
`LG, the original assignee of the ’833 and ’332 Patents, declared these patents
`
`as essential to practicing the LTE Standard. Optis Cellular, upon acquisition of the ’833 and
`
`’332 Patents from LG, re-declared these patents to ETSI as essential to practicing the LTE
`
`Standard, in conformance with ETSI’s IPR Policy.
`
`26.
`
`Ericsson, the original assignee of the ’293 Patent (collectively with the ’833
`
`and ’332 Patents, “LTE Essential Patents”), declared the patent as essential to practicing the
`
`LTE Standard. Optis Cellular, upon acquisition of the ’293 Patent from Ericsson, re-
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`declared the patent to ETSI as essential to practicing the LTE Standard, in conformance with
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`ETSI’s IPR Policy.
`
`27.
`
`Plaintiffs, in conformance with ETSI’s IPR Policy, have informed
`
`Defendants that Plaintiffs are prepared to grant Defendants an irrevocable license under the
`
`LTE Essential Patents on terms and conditions that are Fair, Reasonable and Non-
`
`Discriminatory (“FRAND”).
`
`28.
`
`Defendants require a license to Plaintiffs’ LTE Essential Patents because
`
`BlackBerry Mobile Communication Devices are configured to, and do, operate in
`
`compliance with the LTE Standards, and thus infringe the LTE Essential Patents.
`
`29.
`
`Since April 17, 2014, Plaintiffs have engaged in good-faith efforts to license
`
`BlackBerry on FRAND terms. On May 28, 2014, representatives from Plaintiffs met face-
`
`to-face with BlackBerry representatives at Blackberry’s offices in Irving, Texas. During that
`
`meeting, Plaintiffs presented, in good faith, material concerning Plaintiffs’ LTE Essential
`
`Patents, along with FRAND terms and conditions for license of the LTE Essential Patents.
`
`In addition to meeting with BlackBerry, Plaintiffs have initiated and exchanged written
`
`correspondence with BlackBerry and have contacted BlackBerry by phone on numerous
`
`occasions, which have gone unanswered.
`
`30.
`
`To date, BlackBerry has not reciprocated Plaintiffs’ good-faith efforts.
`
`BlackBerry has instead resisted taking a license to Plaintiffs’ valuable intellectual property.
`
`31.
`
`BlackBerry has been operating and continues to operate without a license to
`
`Plaintiffs’ LTE Essential Patents. Given BlackBerry’s unwillingness to engage in
`
`meaningful licensing discussions, to license Plaintiffs’ LTE Essential Patents, or to cease
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`infringing Plaintiffs’ patents, Plaintiffs have filed this lawsuit for the purpose of protecting
`
`their patent rights in the United States.
`
`COUNT I.
`
`CLAIM FOR PATENT INFRINGEMENT OF THE ’332 PATENT
`
`32.
`
`PanOptis repeats and realleges the allegations in paragraphs 1-31 as though
`
`fully set forth herein.
`
`33.
`
`Defendants have directly infringed and continue to directly infringe the ’332
`
`Patent by making, using, selling, offering for sale, or importing into the United States, or by
`
`intending that others make, use, import into, offer for sale, or sell in the United States,
`
`products and/or methods covered by one or more claims of the ’332 Patent including, but
`
`not limited to, mobile telephones and tablets. The accused wireless communication devices
`
`that infringe one or more claims of the ’332 Patent include, but are not limited to, at least the
`
`BlackBerry 4G LTE PlayBook, BlackBerry Priv, BlackBerry Passport, BlackBerry Q5,
`
`BlackBerry Q10, BlackBerry Z10, BlackBerry Z30, BlackBerry Classic, BlackBerry Leap,
`
`Porsche Design P’9982, Porsche Design P’9983. Further discovery may reveal additional
`
`infringing products and/or models.
`
`34.
`
`Defendants have and continue to indirectly infringe the ’332 Patent by
`
`inducing infringement by others of one or more claims, in accordance with 35 U.S.C.
`
`§ 271(b) in this District and elsewhere in the United States.
`
`35.
`
`BlackBerry received actual notice of the ’332 Patent at least as early as May
`
`28, 2014, by way of a presentation that Optis Cellular made to BlackBerry.
`
`36.
`
`BlackBerry, its manufacturers, resellers, distributors and end-users of the
`
`BlackBerry Mobile Communication Devices have engaged in and currently engage in
`
`activities that constitute direct infringement of one or more claims of the ’332 Patent.
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`37.
`
`For example and without limitation, operation and use of the BlackBerry
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`Mobile Communication Devices (including but not limited to the BlackBerry 4G LTE
`
`PlayBook, BlackBerry Priv, BlackBerry Passport, BlackBerry Q5, BlackBerry Q10,
`
`BlackBerry Z10, BlackBerry Z30, BlackBerry Classic, BlackBerry Leap, Porsche Design
`
`P’9982, Porsche Design P’9983), which incorporate functionalities and associated software
`
`and hardware components installed and configured by BlackBerry in compliance with the
`
`LTE Standards, including but not limited to 3GPP TS 36.201 Sections 1 and 4 and 3GPP TS
`
`36.213 Section 9, infringe one or more claims of the ’332 Patent, including but not limited
`
`to claim 1.1 The use and operation of these BlackBerry Mobile Communication Devices by
`
`BlackBerry, its resellers, manufacturers, or end-user customers constitutes a direct
`
`infringement of one or more claims of the ’332 Patent.
`
`38.
`
`BlackBerry’s affirmative acts of selling
`
`the BlackBerry Mobile
`
`Communication Devices, causing the BlackBerry Mobile Communication Devices to be
`
`manufactured, and providing instruction manuals and support for the BlackBerry Mobile
`
`Communication Devices have induced and continue to induce BlackBerry’s manufacturers,
`
`resellers, and end-users to make or use the BlackBerry Mobile Communication Devices in
`
`their normal and customary way to infringe one or more claims of the ’332 Patent.
`
`39.
`
`Through its manufacture and sale of the BlackBerry Mobile Communication
`
`Devices, Defendants specifically intend that BlackBerry’s manufacturers, resellers and end-
`
`users directly infringe one or more claims of the ’332 Patent. BlackBerry has knowledge of
`
`the ’332 Patent and actually induces others, such as resellers, manufacturers and end-use
`
`customers, to directly infringe by using, selling exporting, supplying and/or distributing
`
`
`1 PanOptis incorporates by reference its Disclosure of Asserted Claims and Infringement Contentions
`pursuant to Local Patent Rule 3-1.
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`within the United States BlackBerry Communication Devices for resale to others, such as
`
`resellers and end-use customers. BlackBerry is aware that such actions would induce actual
`
`infringement. Further, Defendants remain aware that these normal and customary activities
`
`would infringe the ’332 Patent.
`
`40.
`
`For example and without limitation, in connection with its sale, offering to
`
`sell, importation into the United States, and distributing within the United States of the
`
`BlackBerry Mobile Communication Devices, Defendants willfully provide manuals and
`
`support to resellers and end-use customers regarding the use and operation of BlackBerry’s
`
`products in a way that infringes one or more claims of the ’332 Patent. Specifically,
`
`BlackBerry willfully provides manuals and support through sales of the BlackBerry
`
`Communication Devices, through its website http://help.blackberry.com/2, by telephone,
`
`and through other means of communication. When resellers and end-use customers follow
`
`such instructions and support, they directly infringe the ’332 Patent. BlackBerry knows or
`
`should have known that by willfully providing such instructions and support, resellers and
`
`end-use customers follow those instructions and support, and directly infringe the ’332
`
`Patent.
`
`41.
`
`Accordingly, BlackBerry has performed and continues to perform the acts
`
`that constitute indirect infringement, and would induce actual infringement, with the
`
`knowledge of the ’332 Patent and with the knowledge or willful blindness to the fact that the
`
`induced acts would constitute infringement.
`
`
`2 For example, the BlackBerry Passport manual is available at https://help.blackberry.com/en/blackberry-
`passport-series/10.3.2/user-guide-pdf/BlackBerry-Passport-Smartphone-10.3.2-User-Guide-en.pdf
`(last
`accessed December 3, 2015). BlackBerry includes instructions to a user or reseller of the Passport, and is
`aware that the ’332 Patent is infringed when those instructions are followed. Manuals and support for each of
`the infringing BlackBerry Mobile Communications Devices are available at help.blackberry.com.
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`42.
`
`BlackBerry indirectly infringes one or more claims of the ’332 Patent by
`
`contributing to infringement by others, such as manufacturers, resellers and end-use
`
`customers, in accordance with 35 U.S.C. § 271(c) in this District and elsewhere in the United
`
`States.
`
`43.
`
`Direct infringement of one or more claims of the ’332 Patent is the result of
`
`activities performed by BlackBerry, its manufacturers, resellers, distributors and end-users
`
`of the BlackBerry Mobile Communication Devices.
`
`44.
`
`The BlackBerry Mobile Communication Devices (including but not limited
`
`to the BlackBerry 4G LTE PlayBook, BlackBerry Priv, BlackBerry Passport, BlackBerry
`
`Q5, BlackBerry Q10, BlackBerry Z10, BlackBerry Z30, BlackBerry Classic, BlackBerry
`
`Leap, Porsche Design P’9982, Porsche Design P’9983), incorporate functionalities and
`
`associated software and hardware components installed and configured by BlackBerry in
`
`compliance with the LTE Standards, including but not limited to 3GPP TS 36.201 Sections
`
`1 and 4 and 3GPP TS 36.213 Section 9, infringe one or more claims of the ’332 Patent,
`
`including but not limited to claim 1.3 On information and belief, these functions and
`
`operations cannot work in an acceptable manner absent theses software and hardware
`
`components that Defendants configure, install, and include in the BlackBerry Mobile
`
`Communication Devices for the purposes of performing such functions and operations. On
`
`information and belief, BlackBerry has designed, configured, and installed such software
`
`and hardware to entice users of the BlackBerry Mobile Communication Devices to use and
`
`operate these functionalities and to do so in a manner compliant with the LTE Standards.
`
`
`3 PanOptis incorporates by reference its Disclosure of Asserted Claims and Infringement Contentions
`pursuant to Local Patent Rule 3-1.
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`45.
`
`The software and hardware components installed and configured by
`
`BlackBerry in compliance with the above LTE Standards, do not constitute a staple article
`
`or commodity of commerce. Moreover, use of the same is required for the operation of a
`
`BlackBerry Mobile Communication Device. Any other use would be unusual, far-fetched,
`
`illusory, impractical, occasional, aberrant, or experimental.
`
`46.
`
`The software and hardware components installed and configured by
`
`Defendants in compliance with the above LTE Standards are each a material part of the
`
`invention of the ’332 Patent, are especially made for the infringing manufacture, sale and
`
`use of BlackBerry Mobile Communication Devices, and have no substantial non-infringing
`
`uses.
`
`47.
`
`Accordingly, Defendants offer to sell, or sell within the United States a
`
`component of a patented machine, manufacture, combination, or composition, or a material
`
`or apparatus for use in practicing the ’332 Patent, constituting a material part of the
`
`invention, knowing the same to be especially made or especially adapted for use in an
`
`infringement of such patent, and not a staple article or commodity of commerce suitable for
`
`substantial non-infringing use. Defendants provide to others BlackBerry Mobile
`
`Communication Devices with distinct and separate components that have no substantial non-
`
`infringing uses.
`
`48.
`
`Defendants’ continued infringement of the ’332 Patent has damaged and will
`
`continue to damage PanOptis.
`
`COUNT II.
`
`CLAIM FOR PATENT INFRINGEMENT OF THE ’833 PATENT
`
`49.
`
`PanOptis repeats and realleges the allegations in paragraphs 1-48 as though
`
`fully set forth herein.
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`50.
`
`Defendants have directly infringed and continues to directly infringe the ’833
`
`Patent by making, using, selling, offering for sale, or importing into the United States, or by
`
`intending that others make, use, import into, offer for sale, or sell in the United States,
`
`products and/or methods covered by one or more claims of the ’833 Patent including, but
`
`not limited to, mobile telephones and tablets. The accused wireless communication devices
`
`that infringe the one or more claims of the ’833 Patent include, but are not limited to, at least
`
`the BlackBerry 4G LTE PlayBook, BlackBerry Priv, BlackBerry Passport, BlackBerry Q5,
`
`BlackBerry Q10, BlackBerry Z10, BlackBerry Z30, BlackBerry Classic, BlackBerry Leap,
`
`Porsche Design P’9982, Porsche Design P’9983. Further discovery may reveal additional
`
`infringing products and/or models.
`
`51.
`
`Defendants have and continue to indirectly infringe the ’833 Patent by
`
`inducing infringement by others of one or more claims, in accordance with 35 U.S.C.
`
`§ 271(b) in this District and elsewhere in the United States.
`
`52.
`
`BlackBerry received actual notice of the ’833 Patent at least as early as May
`
`28, 2014, by way of a presentation that Optis Cellular made to BlackBerry.
`
`53.
`
`BlackBerry, its manufacturers, resellers, distributors and end-users of the
`
`BlackBerry Mobile Communication Devices have engaged in and currently engage in
`
`activities that constitute direct infringement of one or more claims of the ’833 Patent.
`
`54.
`
`For example and without limitation, operation and use of the BlackBerry
`
`Mobile Communication Devices (including but not limited to the BlackBerry 4G LTE
`
`PlayBook, BlackBerry Priv, BlackBerry Passport, BlackBerry Q5, BlackBerry Q10,
`
`BlackBerry Z10, BlackBerry Z30, BlackBerry Classic, BlackBerry Leap, Porsche Design
`
`P’9982, Porsche Design P’9983), which incorporate functionalities and associated software
`
`-14-
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`Case 2:16-cv-00060 Document 1 Filed 01/17/16 Page 15 of 32 PageID #: 15
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`and hardware components installed and configured by BlackBerry in compliance with the
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`LTE Standards, including but not limited to 3GPP TS 36.201 Sections 1 and 4, and 3GPP
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`TS 36.212 Section 5, infringe one or more claims of the ’833 Patent, including but not limited
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`to claim 1.4 The use and operation of these BlackBerry Mobile Communication Devices by
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`BlackBerry, its resellers, manufacturers, or end-user customers constitutes a direct
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`infringement of one or more claims of the ’833 Patent.
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`55.
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`BlackBerry’s affirmative acts of selling
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`the BlackBerry Mobile
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`Communication Devices, causing the BlackBerry Mobile Communication Devices to be
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`manufactured, and providing instruction manuals and support for the BlackBerry Mobile
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`Communication Devices have induced and continue to induce BlackBerry’s manufacturers,
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`resellers, and end-users to make or use the BlackBerry Mobile Communication Devices in
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`their normal and customary way to infringe one or more claims of the ’833 Patent.
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`56.
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`Through its manufacture and sale of the BlackBerry Mobile Communication
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`Devices, Defendants specifically intend that BlackBerry’s manufacturers, resellers and end-
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`users directly infringe one or more claims of the ’833 Patent. BlackBerry has knowledge of
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`the ’833 Patent and actually induces others, such as resellers, manufacturers and end-use
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`customers, to directly infringe by using, selling exporting, supplying and/or distributing
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`within the United States BlackBerry Communication Devices for resale to others, such as
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`resellers and end-use customers. BlackBerry is aware that such actions would induce actual
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`infringement. Further, Defendants remain aware that these normal and customary activities
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`would infringe the ’833 Patent.
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`4 PanOptis incorporates by reference its Disclosure of Asserted Claims and Infringement Contentions
`pursuant to Local Patent Rule 3-1.
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`-15-
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`Case 2:16-cv-00060 Document 1 Filed 01/17/16 Page 16 of 32 PageID #: 16
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`57.
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`For example and without limitation, in connection with its sale, offering to
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`sell, importation into the United States, and distributing within the United States of the
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`BlackBerry Mobile Communication Devices, Defendants willfully provide manuals and
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`support to resellers and end-use customers regarding the use and operation of BlackBerry’s
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`products in a way that infringes one or more claims of the ’833 Patent. Specifically,
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`BlackBerry willfully provides manuals and support through sales of the BlackBerry
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`Communication Devices, through its website http://help.blackberry.com/5, by telephone,
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`and through other means of communication. When resellers and end-use customers follow
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`such instructions and support, they directly infringe the ’833 Patent. BlackBerry knows or
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`should have known that by willfully providing such instructions and support, resellers and
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`end-use customers follow those instructions and support, and directly infringe the ’833
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`Patent.
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`58.
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`Accordingly, BlackBerry has performed and continues to perform the acts
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`that constitute indirect infringement, and would induce actual infringement, with the
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`knowledge of the ’833 Patent and with the knowledge or willful blindness to the fact that the
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`induced acts would constitute infringement.
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`59.
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`BlackBerry indirectly infringes one or more claims of the ’833 Patent by
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`contributing to infringement by others, such as manufacturers, resellers and end-use
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`customers, in accordance with 35 U.S.C. § 271(c) in this District and elsewhere in the United
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`States.
`
`
`5 For example, the BlackBerry Passport manual is available at https://help.blackberry.com/en/blackberry-
`passport-series/10.3.2/user-guide-pdf/BlackBerry-Passport-Smartphone-10.3.2-User-Guide-en.pdf
`(last
`accessed December 3, 2015). BlackBerry includes instructions to a user or reseller of the Passport, and is
`aware that the ’833 Patent is infringed when those instructions are followed. Manuals and support for each of
`the infringing BlackBerry Mobile Communications Devices are available at help.blackberry.com.
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`-16-
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`Case 2:16-cv-00060 Document 1 Filed 01/17/16 Page 17 of 32 PageID #: 17
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`60.
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`Direct infringement of one or more claims of the ’833 Patent is the result of
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`activities performed by BlackBerry, its manufacturers, resellers, distributors and end-users
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`of the BlackBerry Mobile Communication Devices.
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`61.
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`The BlackBerry Mobile Communication Devices (including but not limited
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`to the BlackBerry 4G LTE PlayBook, BlackBerry Priv, BlackBerry Passport, BlackBerry
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`Q5, BlackBerry Q10, BlackBerry Z10, BlackBerry Z30, BlackBerry Classic, BlackBerry
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`Leap, Porsche Design P’9982, Porsche Design P’9983), incorporate functionalities and
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`associated software and hardware components installed and configured by BlackBerry in
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`compliance with the LTE Standards, including but not limited to 3GPP TS 36.201 Sections
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`1 and 4, and 3GPP TS 36.212 Section 5, infringe one or more claims of the ’833 Patent,
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`including but not limited to claim 1.6 On information and belief, these functions and
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`operations cannot work in an acceptable manner absent theses software and hardware
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`components that Defendants configure, install, and include in the BlackBerry Mobile
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`Communication Devices for the purposes of performing such functions and operations. On
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`information and belief, BlackBerry has designed, configured, and installed such software
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`and hardware to entice users of the BlackBerry Mobile Communication Devices to use and
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`operate these functionalities and to do so in a manner compliant with the LTE Standards.
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`62.
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`The software and hardware components installed and configured by
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`BlackBerry in compliance with the above LTE Standards, do not constitute a staple article
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`or commodity of commerce. Moreover, use of the same is required for the operation of a
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`BlackBerry Mobile Communication Device. Any other use would be unusual, far-fetched,
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`illusory, impractical, occasional, aberrant, or experimental.
`
`
`6 PanOptis incorporates by reference its Disclosure of Asserted Claims and Infringement Contentions
`pursuant to Local Pa