IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`C.A. No. 19-cv-2083-CFC
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`))))))))))
`
`
`
`MONTEREY RESEARCH, LLC,
`
`
`
`
`
`QUALCOMM INCORPORATED,
`QUALCOMM TECHNOLOGIES, INC., and
`QUALCOMM CDMA TECHNOLOGIES
`ASIA-PACIFIC PTE LTD.,
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`Plaintiff,
`
`Defendants.
`
`
`
`
`
`FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff Monterey Research, LLC (“Monterey”), for its First Amended Complaint for
`
`Patent Infringement against Defendants Qualcomm Incorporated (“Qualcomm Inc.”), Qualcomm
`
`Technologies, Inc. (“QTI”), and Qualcomm CDMA Technologies Asia-Pacific Pte Ltd.
`
`(“QCTAP”) (collectively, “Qualcomm” or “Qualcomm Defendants”) alleges as follows:
`
`INTRODUCTION
`
`1.
`
`Monterey is an intellectual property and technology licensing company.
`
`Monterey’s patent portfolio comprises over 2,700 active and pending patents worldwide, including
`
`approximately 2,000 active United States patents. Monterey’s patent portfolio stems from
`
`technology developed from a number of leading high-technology companies, including Cypress
`
`Semiconductor Corporation, Advanced Micro Devices, Fujitsu, NVX Corporation, Ramtron, and
`
`Spansion. Those companies developed key innovations that have greatly enhanced the capabilities
`
`of computer systems, increased electronic device processing power, and reduced electronic device
`
`power consumption. Among other things, those inventions produced significant technological
`
`advances, including smaller, faster, and more efficient semiconductors and integrated circuits.
`
`Qualcomm Incorporated v. Monterey Research, LLC
`IPR2020-01491
`Qualcomm EX1036
`Page 1 of 51
`
`

`

`2.
`
`The Qualcomm Defendants, jointly and severally, have infringed and continue to
`
`infringe Monterey’s patents. Moreover, despite Monterey notifying them of infringement, the
`
`Qualcomm Defendants have thus far refused to license those patents and, instead, have continued
`
`to make, use, sell, offer to sell, and/or import Monterey’s intellectual property within the United
`
`States without Monterey’s permission.
`
`NATURE OF THE CASE
`
`3.
`
`This action arises under 35 U.S.C. § 271 for Qualcomm’s infringement of
`
`Monterey’s United States Patent Nos. 6,459,625 (“the ’625 patent”); 6,534,805 (“the ’805 patent”);
`
`6,642,573 (“the ’573 patent”); 6,651,134 (“the ’134 patent”); 6,680,516 (“the ’516 patent”);
`
`6,765,407 (“the ’407 patent”); 7,572,727 (“the ’727 patent”); and 7,977,797 (“the ’797 patent”)
`
`(collectively, “the Patents-in-Suit”).
`
`THE PARTIES
`
`4.
`
`Plaintiff Monterey is a Delaware limited liability company with offices in New
`
`Jersey and California. Monterey maintains a registered agent for service in Delaware: Intertrust
`
`Corporate Services Delaware Ltd. located at 200 Bellevue Parkway, Suite 210, Wilmington,
`
`Delaware 19808.
`
`5.
`
`Defendant Qualcomm Inc. is a Delaware corporation with a principal place of
`
`business at 5775 Morehouse Dr., San Diego, California, 92121. Qualcomm Inc. is a publicly
`
`traded company and is the parent corporation of defendants QTI and QCTAP. Qualcomm Inc.
`
`may be served through its registered agent for service, The Prentice-Hall Corporation System, Inc.,
`
`251 Little Falls Drive, Wilmington, Delaware 19808.
`
`6.
`
`Defendant QTI is a Delaware corporation with a principal place of business at 5775
`
`Morehouse Dr., San Diego, California, 92121. QTI is a wholly-owned subsidiary of Qualcomm
`
`Inc. Qualcomm Inc.’s semiconductor research and engineering business is conducted wholly or
`
`2
`
`Page 2 of 51
`
`

`

`in part through the actions of QTI. Qualcomm Inc. controls and directs the actions of QTI, and
`
`therefore both directs QTI to infringe and itself infringes Monterey’s patents. QTI may be served
`
`through its registered agent for service, Corporation Service Company, 251 Little Falls Drive,
`
`Wilmington, Delaware 19808.
`
`7.
`
`Defendant QCTAP is a corporation organized under the laws of Singapore, with
`
`corporate offices at 6 Serangoon North Avenue 5, #03-04, Singapore 554910, Singapore.
`
`Defendant QCTAP is a wholly-owned subsidiary of Qualcomm Inc. QCTAP is responsible,
`
`among other things, for accepting orders and sending invoices to certain customers in the United
`
`States for Qualcomm products.
`
`8.
`
`Qualcomm Inc. exercises control over QTI and QCTAP, and acts collectively with
`
`QTI and QCTAP to infringe Monterey’s patents by making, using, selling, offering for sale, and/or
`
`importing products (including importing products made by a patented process) throughout the
`
`United States, including within this District. Qualcomm’s customers incorporate those products
`
`into downstream products that are made, used, sold, offered for sale, and/or imported throughout
`
`the United States, including within this District. Those downstream products include, but are not
`
`limited to, smartphones, tablets, televisions, smartwatches, and other products that include
`
`Qualcomm semiconductor devices and integrated circuits.
`
`JURISDICTION AND VENUE
`
`9.
`
`This Court has jurisdiction over the subject matter of this action under 28 U.S.C.
`
`§§ 1331 and 1338(a) at least because this action arises under the patent laws of the United States,
`
`including 35 U.S.C. § 271 et seq.
`
`10.
`
`11.
`
`Personal jurisdiction exists over each Qualcomm Defendant.
`
`Personal jurisdiction exists over Qualcomm Inc. and QTI at least because each is a
`
`Delaware corporation organized under the laws of the State of Delaware. Each also has a
`
`3
`
`Page 3 of 51
`
`

`

`registered agent for service of process in Delaware. In addition, Qualcomm Inc. and QTI have
`
`each committed, aided, abetted, contributed to and/or participated in the commission of acts of
`
`infringement giving rise to this action within the State of Delaware by, inter alia, directly and/or
`
`indirectly making, using, selling, offering for sale, importing products and/or practicing methods
`
`that practice one or more claims of the Patents-in-Suit. Furthermore, Qualcomm Inc. and QTI
`
`have transacted and conducted business in the State of Delaware and with Delaware residents by
`
`making, using, selling, offering to sell, and/or importing (including importing products made by a
`
`patented process) products and instrumentalities that practice one or more claims of the Patents-
`
`in-Suit. Among other things, Qualcomm Inc. and QTI, directly and/or through intermediaries, use,
`
`sell, ship, distribute, import into, offer for sale, and/or advertise or otherwise promote their
`
`products throughout the United States, including in the State of Delaware. See, e.g.,
`
`www.qualcomm.com. At least for those reasons, Qualcomm Inc. and QTI have the requisite
`
`minimum contacts within the forum such that the exercise of jurisdiction over Qualcomm Inc. and
`
`QTI would not offend traditional notions of fair play and substantial justice.
`
`12.
`
`Personal jurisdiction exists over QCTAP at least because it has committed, aided,
`
`abetted, contributed to and/or participated in the commission of acts of infringement giving rise to
`
`this action within the State of Delaware by, inter alia, directly and/or indirectly making, using,
`
`selling, offering for sale, importing products and/or practicing methods that practice one or more
`
`claims of the Patents-in-Suit. Furthermore, QCTAP transacted and conducted business in the State
`
`of Delaware and with Delaware residents with respect to the products and instrumentalities
`
`accused of infringing the Patents-in-Suit. Among other things, QCTAP, directly and/or through
`
`intermediaries, uses, sells, ships, distributes, imports into, offers for sale, and/or advertises or
`
`otherwise promotes its products throughout the United States, including in the State of Delaware.
`
`4
`
`Page 4 of 51
`
`

`

`See, e.g., www.qualcomm.com. For example, QCTAP develops products for sale in the United
`
`States, including in the State of Delaware, and tests and verifies products developed in the United
`
`States before selling them in the United States, including in the State of Delaware. See, e.g.,
`
`https://www.qualcomm.com/news/releases/2008/10/30/qualcomm-opens-asia-pacific-test-center-
`
`excellence-singapore. As an additional example, QCTAP contracts with and is responsible for
`
`accepting orders and sending invoices to customers in the United States. See, e.g., Tessera Inc. v.
`
`Motorola, Inc. et al, No. 12-cv-692, slip op. at 3 (N.D. Ca. Aug. 7, 2013). At least for those
`
`reasons, QCTAP has the requisite minimum contacts within the forum such that the exercise of
`
`jurisdiction over QCTAP would not offend traditional notions of fair play and substantial justice.
`
`13.
`
`Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391(b) and (c) and 1400(b).
`
`Qualcomm Inc. and QTI reside in this district and have committed acts of infringement in this
`
`district. Venue is proper with respect to QCTAP at least because QCTAP is a foreign corporation,
`
`has committed acts of infringement in this district, and venue is proper in any district in which
`
`QCTAP is subject to personal jurisdiction. Venue is further proper based on the facts alleged in
`
`the preceding paragraphs, which Monterey incorporates by reference as if fully set forth herein.
`
`THE PATENTS-IN-SUIT
`
`14. Monterey incorporates by reference the preceding paragraphs as if fully set forth
`
`herein.
`
`A.
`
`U.S. Patent No. 6,459,625
`
`15.
`
`The ’625 patent, titled “Three Metal Process for Optimizing Layout Density,” was
`
`duly and properly issued by the USPTO on October 1, 2002. A true and correct copy of the ’625
`
`patent is attached hereto as Exhibit A.
`
`16. Monterey is the owner and assignee of the ’625 patent; owns all right, title, and
`
`interest in the ’625 patent; and holds the right to sue for and recover damages for infringement
`
`5
`
`Page 5 of 51
`
`

`

`thereof, including past infringement.
`
`B.
`
`U.S. Patent No. 6,534,805
`
`17.
`
`The ’805 patent, titled “SRAM Cell Design,” was duly and properly issued by the
`
`USPTO on March 18, 2003. On October 14, 2014, the USPTO issued an Ex Parte Reexamination
`
`Certificate for the ’805 patent, which confirmed the patentability of the ’805 patent. A true and
`
`correct copy of the ’805 patent and the Ex Parte Reexamination Certificate for the ’805 patent is
`
`attached hereto as Exhibit B.
`
`18. Monterey is the owner and assignee of the ’805 patent; owns all right, title, and
`
`interest in the ’805 patent; and holds the right to sue and recover damages for infringement thereof,
`
`including past infringement.
`
`C.
`
`U.S. Patent No. 6,642,573
`
`19.
`
`The ’573 patent, titled “Use of High-K Dielectric Material in Modified ONO
`
`Structure for Semiconductor Devices,” was duly and properly issued by the USPTO on November
`
`4, 2003. A true and correct copy of the ’573 patent is attached hereto as Exhibit C.
`
`20. Monterey is the owner and assignee of the ’573 patent; owns all right, title, and
`
`interest in the ’573 patent; and holds the right to sue and recover damages for infringement thereof,
`
`including past infringement.
`
`D.
`
`U.S. Patent No. 6,651,134
`
`21.
`
`The ’134 patent, titled “Memory Device with Fixed Length Non Interruptible
`
`Burst,” was duly and properly issued by the USPTO on November 18, 2003. A true and correct
`
`copy of the ’134 patent is attached hereto as Exhibit D.
`
`22. Monterey is the owner and assignee of the ’134 patent; owns all right, title, and
`
`interest in the ’134 patent; and holds the right to sue and recover damages for infringement thereof,
`
`including past infringement.
`
`6
`
`Page 6 of 51
`
`

`

`E.
`
`U.S. Patent No. 6,680,516
`
`23.
`
`The ’516 patent, titled “Controlled Thickness Gate Stack,” was duly and properly
`
`issued by the United States Patent and Trademark Office (“USPTO”) on January 20, 2004. On
`
`December 12, 2006, the USPTO issued a Certificate of Correction for the ’516 patent. A true and
`
`correct copy of the ’516 patent and the Certificate of Correction is attached hereto as Exhibit E.
`
`24. Monterey is the owner and assignee of the ’516 patent; owns all right, title, and
`
`interest in the ’516 patent; and holds the right to sue and recover damages for infringement thereof,
`
`including past infringement.
`
`F.
`
`U.S. Patent No. 6,765,407
`
`25.
`
`The ’407 patent, titled “Digital Configurable Macro Architecture,” was duly and
`
`properly issued by the USPTO on July 20, 2004. A true and correct copy of the ’407 patent is
`
`attached hereto as Exhibit F.
`
`26. Monterey is the owner and assignee of the ’407 patent; owns all right, title, and
`
`interest in the ’407 patent; and holds the right to sue and recover damages for infringement thereof,
`
`including past infringement.
`
`G.
`
`U.S. Patent No. 7,572,727
`
`27.
`
`The ’727 patent, titled “Semiconductor Formation Method that Utilizes Multiple
`
`Etch Stop Layers,” was duly and properly issued by the USPTO on August 11, 2009. A true and
`
`correct copy of the ’727 patent is attached hereto as Exhibit G.
`
`28. Monterey is the owner and assignee of the ’727 patent; owns all right, title, and
`
`interest in the ’727 patent; and holds the right to sue and recover damages for infringement thereof,
`
`including past infringement.
`
`H.
`
`U.S. Patent No. 7,977,797
`
`29.
`
`The ’797 patent, titled “Integrated Circuit with Contact Region and Multiple Etch
`
`7
`
`Page 7 of 51
`
`

`

`Stop Insulation Layer,” was duly and properly issued by the USPTO on July 12, 2011. A true and
`
`correct copy of the ’797 patent is attached hereto as Exhibit H.
`
`30. Monterey is the owner and assignee of the ’797 patent; owns all right, title, and
`
`interest in the ’797 patent; and holds the right to sue and recover damages for infringement thereof,
`
`including past infringement.
`
`FACTUAL BACKGROUND
`
`31. Monterey incorporates by reference the preceding paragraphs as if fully set forth
`
`herein.
`
`32.
`
`The Patents-in-Suit stem from the research and design of innovative and proprietary
`
`technology developed by leading high-technology companies, including Cypress Semiconductor
`
`Corporation (“Cypress”).1 Cypress is an American multinational company and pioneer of cutting-
`
`edge semiconductor technology. Founded in 1982, Cypress has made substantial investments in
`
`researching, developing, and manufacturing high-quality semiconductor devices, integrated
`
`circuits, and products containing the same.
`
`33.
`
`The Patents-in-Suit are directed to inventive technology relating to semiconductor
`
`devices, integrated circuits, and/or products containing the same.
`
`34.
`
`The Qualcomm Defendants work closely with their customers, OEMs, foundry
`
`suppliers, distributors, and/or other third parties to make, use, sell, offer to sell, and/or import
`
`semiconductor devices, integrated circuits, and/or products containing the same. Among other
`
`things, the Qualcomm Defendants optimize their manufacturing process for their customers and
`
`optimize their products for integration into downstream products. The Qualcomm Defendants’
`
`affirmative acts in furtherance of the manufacture, use, sale, offer to sell, and importation of their
`
`
`1 Other leading high-technology companies that contributed to inventions disclosed in the Patents-
`in-Suit include Advanced Micro Devices, Inc. (“AMD”) and Spansion LLC (“Spansion”).
`
`8
`
`Page 8 of 51
`
`

`

`products in and/or into the United States include, but are not limited to, any one or combination
`
`of: (i) designing specifications for manufacture of their products; (ii) collaborating on,
`
`encouraging, and/or funding the development of processes for the manufacture of their products;
`
`(iii) soliciting and/or sourcing the manufacture of their products; (iv) licensing, developing, and/or
`
`transferring technology and know-how to enable the manufacture of their products; (v) enabling
`
`and encouraging the use, sale, or importation of their products in the United States; and (vi)
`
`advertising their products and/or downstream products incorporating them in the United States.
`
`35.
`
`The Qualcomm Defendants also provide marketing and/or technical support
`
`services for their products from their facilities in the United States. For example, Qualcomm
`
`maintains a website that advertises their products, including identifying the applications for which
`
`they can be used and specifications for their products. See, e.g., www.qualcomm.com.
`
`Qualcomm’s publicly-available website also contains user manuals, product documentation, and
`
`other materials related to their products. See, e.g., www.qualcomm.com. For example, Qualcomm
`
`provides development content for specific chip products and applications; catalogs of hardware,
`
`software, and tools documentation; relevant support articles; various software code and tools; and
`
`case-specific technical assistance. See, e.g., www.qualcomm.com.
`
`QUALCOMM’S PRE-SUIT KNOWLEDGE OF MONTEREY’S PATENTS AND
`CHARGE OF INFRINGEMENT
`
`36.
`
`Before filing this action, Monterey, through its agent IPValue Management, Inc.
`
`(“IPValue”), notified Qualcomm about the Patents-in-Suit and Qualcomm’s infringement thereof.
`
`Among other things, Monterey, through its agent IPValue, identified the Patents-in-Suit to
`
`Qualcomm; alleged that Qualcomm infringed the Patents-in-Suit, including identifying exemplary
`
`infringing products; and offered to license the Patents-in-Suit to Qualcomm. For example:
`
`9
`
`Page 9 of 51
`
`

`

`a.
`
`On January 31, 2018, Monterey sent a letter to Qualcomm, notifying
`
`Qualcomm of their infringement of certain Monterey patents, including the ’625, ’516, ’805, ’407,
`
`’727, and ’797 patents. Among other things, Monterey identified representative Qualcomm
`
`products that utilize those patents, expressly charged that Qualcomm and their customers infringed
`
`those patents, and explained that Qualcomm required a license from Monterey. Monterey
`
`identified IPValue as Monterey’s appointed agent and requested a meeting with Qualcomm.
`
`b.
`
`On May 14, 2018, IPValue met in-person with Qualcomm and presented
`
`Qualcomm an overview of Monterey’s patent portfolio. Among other things, IPValue further
`
`explained Monterey’s patent portfolio’s relevance to Qualcomm and further explained that
`
`Qualcomm required a license from Monterey.
`
`c.
`
`On July 17, 2018, IPValue again met in-person with Qualcomm and
`
`presented Qualcomm with detailed infringement claim charts of certain Monterey patents. Among
`
`other things, IPValue’s presentations identified specific Monterey patents including the ’625, ’516,
`
`’805, ’407, ’727, and ’797 patents (as well as exemplary patent claims); identified representative
`
`Qualcomm products that utilize those patents; identified where every element of each of those
`
`exemplary patent claims was found in the representative Qualcomm products; expressly charged
`
`that Qualcomm and their customers infringed those patents; and explained that Qualcomm
`
`required a license from Monterey.
`
`d.
`
`On July 24, 2018, IPValue, on behalf of Monterey, emailed copies of those
`
`infringement claim charts to Qualcomm.
`
`e.
`
`On October 9, 2018, IPValue met a third time in-person with Qualcomm
`
`and presented Qualcomm with additional infringement claim charts of certain Monterey patents.
`
`Among other things, IPValue’s presentation identified specific Monterey patents including the
`
`10
`
`Page 10 of 51
`
`

`

`’573 and ’134 patents (as well as exemplary patent claims); identified representative Qualcomm
`
`products that utilize those patents; identified where every element of each of those exemplary
`
`patent claims was found in the representative Qualcomm products; expressly charged that
`
`Qualcomm and their customers infringed those patents; and explained that Qualcomm required a
`
`license from Monterey.
`
`f.
`
`On October 16, 2018, IPValue, on behalf of Monterey, emailed Qualcomm
`
`copies of the ’573 infringement claim chart.
`
`g.
`
`On October 17, 2018, IPValue, on behalf of Monterey, emailed Qualcomm
`
`copies of the ’134 infringement claim chart.
`
`h.
`
`On November 13, 2018, IPValue met for a fourth time in-person with
`
`Qualcomm, and once again offered to license the Patents-in-Suit to Qualcomm.
`
`avail.
`
`i.
`
`j.
`
`Monterey continued to contact Qualcomm in the succeeding months to no
`
`Despite the numerous meetings and related prior and subsequent
`
`communications, at no time during any of those meetings, or at any time prior to Monterey’s filing
`
`of this Complaint, did Qualcomm deny infringing any element of any claim of the Patents-in-Suit,
`
`nor did Qualcomm identify any alleged prior art to any of the Patents-in-Suit.
`
`37.
`
`Despite Monterey’s repeated efforts—which have continued for well over a year—
`
`Qualcomm still has not engaged in any meaningful discussions to end their infringement of the
`
`Patents-in-Suit and has not taken a license to them. Instead, Qualcomm continues to knowingly,
`
`intentionally, and willfully infringe Monterey’s patents directly, contributorily, and by
`
`inducement, to obtain their significant benefits without a license from Monterey.
`
`COUNT ONE
`INFRINGEMENT OF THE ’625 PATENT
`
`11
`
`Page 11 of 51
`
`

`

`38. Monterey incorporates by reference the preceding paragraphs as if fully set forth
`
`herein.
`
`39. Monterey is the assignee and lawful owner of all right, title, and interest in and to
`
`the ’625 patent.
`
`40.
`
`41.
`
`The ’625 patent is valid and enforceable.
`
`The ’625 patent is directed to memory device layout, and particularly to systems
`
`for optimizing layout density in the periphery area of a memory device using a three-metal or more
`
`interconnect process.
`
`42.
`
`The ’625 patent explains that metallization can involve depositing a thin film of
`
`conductive metal on a memory device such that the electrical components are formed and
`
`electrically connected with the conductive metal. A periphery area of a memory device can
`
`include, for example, a plurality of electrical components such as transistors, resistors, capacitors
`
`and diodes formed in the silicon substrate during fabrication. Some types of previously known
`
`memory used a two-metal layer metallization process to electrically connect the electrical
`
`components in the periphery area of the memory. A problem with this two-metal layer
`
`metallization method was layout area consumed by the periphery area. The layout area for the
`
`traditional electrical connection systems and methods increased the size of the periphery area on
`
`the memory. The area on the memory that is not consumed by the periphery area can be, for
`
`example, reserved for the core cell area, allowing more core memory cells to be fabricated on the
`
`memory. It is therefore desirable to minimize the amount of periphery area consumed, thereby
`
`increasing the amount of information stored in the memory.
`
`43.
`
`The ’625 patent teaches, among other things, how to selectively place and
`
`electrically connect a plurality of electrical components to form sub-circuits and selectively
`
`12
`
`Page 12 of 51
`
`

`

`electrically connect the sub-circuits, including using three or more metal layers, resulting in,
`
`among other things, minimizing the layout area of the sub-circuits in the periphery area.
`
`44.
`
`Qualcomm products use three or more metal layers in their memory device’s
`
`periphery area. This has enabled Qualcomm to, among other things, decrease their memory
`
`device’s periphery area. Memory devices containing an infringing periphery area are found
`
`integrated in Qualcomm products, including their system-on-chip semiconductor products.
`
`Specifically, at least the Qualcomm products which are manufactured with a 7 nm process node
`
`have infringing three metal layer or more metallization in their memory device’s periphery area
`
`and other infringing features that use the technology of the ’625 patent.
`
`45.
`
`Qualcomm has directly infringed, and continues to directly infringe, one or more
`
`claims of the ’625 patent under 35 U.S.C. § 271(a), either literally and/or under the doctrine of
`
`equivalents, by, among other things, making, using, selling, offering to sell, and/or importing in or
`
`into the United States without authorization products covered by one or more claims of the ’625
`
`patent, including, but not limited to, products that use three or more metal layers in their integrated
`
`memory device’s periphery area, such as the SM8150 semiconductor device and other products in
`
`the Snapdragon 855 series product family; other Qualcomm 7 nm process node semiconductor
`
`devices, integrated circuits, and products; and all other semiconductor devices, integrated circuits,
`
`and products with similar integrated memory devices containing a periphery area which uses the
`
`infringing technology (“the Accused ’625 Products”).
`
`46.
`
`As one non-limiting example, Qualcomm infringes claim 10 of the ’625 patent. For
`
`example, the SM8150 Snapdragon 855 semiconductor device contains:
`
`a.
`
`a plurality of sub-circuits in a periphery area of a memory device (e.g., sub-
`
`circuits in the periphery of the SRAM of the SM8150 Snapdragon 855), wherein each sub-circuit
`
`13
`
`Page 13 of 51
`
`

`

`includes at least one electrical circuit with a plurality of circuit components (e.g., electrical circuit
`
`with a plurality of circuit components in the periphery of the SRAM of the SM8150 Snapdragon
`
`855);
`
`b.
`
`a first metal interconnect layer that partially connects the circuit
`
`components, wherein first metal layer lines are oriented in substantially one direction (e.g., metal
`
`layer connecting circuit components in the periphery of the SRAM of the SM8150 Snapdragon
`
`855);
`
`c.
`
`a second metal interconnect layer that completes the connection of the
`
`circuit components, and where the second metal interconnect layer lines are fabricated
`
`substantially perpendicular to the first metal layer lines (e.g., metal layer perpendicular to the first
`
`that completes the connection of the circuit components in the periphery of the SRAM of the
`
`SM8150 Snapdragon 855); and
`
`d.
`
`a third metal interconnect layer that connects the plurality of sub-circuits,
`
`wherein the third metal interconnect layer lines are fabricated substantially parallel to the first
`
`metal layer lines (e.g., metal layer substantially parallel to the first that connects the plurality of
`
`sub-circuits in the periphery of the SRAM of the SM8150 Snapdragon 855).
`
`47.
`
`Claim 10 of the ’625 patent applies to each Accused ’625 Product at least because
`
`each of those products contains the same or similar three or more metal layers in their memory
`
`device’s periphery area as the Qualcomm SM8150 Snapdragon 855.
`
`48. Monterey has complied with the requirements of 35 U.S.C. § 287(a) at least because
`
`Monterey provided Qualcomm with written notice of the infringement as discussed above.
`
`49.
`
`Qualcomm has known of the ’625 patent and their infringement of that patent since
`
`at least as early as January 31, 2018.
`
`14
`
`Page 14 of 51
`
`

`

`50.
`
`Qualcomm, knowing their products infringe the ’625 patent and with the specific
`
`intent for others to infringe the ’625 patent, has induced infringement of, and continues to induce
`
`infringement of, one or more claims of the ’625 patent under 35 U.S.C. § 271(b), either literally
`
`and/or under the doctrine of equivalents, by, among other things, actively inducing others,
`
`including their customers, to make, use, sell, offer to sell, and/or import in or into the United States
`
`without authorization the Accused ’625 Products, as well as products containing the same.
`
`Qualcomm knowingly and intentionally instructs their customers, OEMs, foundry suppliers,
`
`distributors, and/or other third parties to infringe at least through user manuals, product
`
`documentation, and other materials, such as those located on Qualcomm’s website at
`
`www.qualcomm.com. For example, Qualcomm provides data sheets, development content,
`
`diagrams, white papers, and software instructing customers on uses of Qualcomm’s products that
`
`infringe
`
`the
`
`’625
`
`patent.
`
`
`
`See,
`
`e.g.,
`
`https://www.qualcomm.com/support
`
`and
`
`https://www.qualcomm.com/system/files/document/files/prod_brief_qcom_sd855_0.pdf.
`
`Additional non-limiting examples include the materials found on Qualcomm’s website at
`
`www.qualcomm.com/products/snapdragon-855-mobile-platform.
`
`51.
`
`Qualcomm has contributed to the infringement of, and continues to contribute to
`
`the infringement of, one or more claims of the ’625 patent under 35 U.S.C. § 271(c), either literally
`
`and/or under the doctrine of equivalents, by, among other things, selling, offering to sell, and/or
`
`importing in or into the United States the Accused ’625 Products, which constitute a material part
`
`of the invention of the ’625 patent, knowing the Accused ’625 Products 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
`
`noninfringing
`
`use.
`
`
`
`See,
`
`e.g.,
`
`https://www.qualcomm.com/support
`
`and
`
`15
`
`Page 15 of 51
`
`

`

`https://www.qualcomm.com/system/files/document/files/prod_brief_qcom_sd855_0.pdf.
`
`52. Monterey has sustained and is entitled to recover damages as a result of
`
`Qualcomm’s past and continuing infringement.
`
`53.
`
`Qualcomm’s infringement of the ’625 patent has been knowing, deliberate, and
`
`willful, since at least as early as January 31, 2018, the date of Monterey’s letter to Qualcomm and
`
`therefore the date on which Qualcomm knew of the ’625 patent and that their conduct constituted
`
`and resulted in infringement of the ’625 patent. Monterey continued to put Qualcomm on notice
`
`of the ’625 patent and Qualcomm’s infringement thereof, including without limitation through
`
`communications on July 17, 2018; July 24, 2018; and yet again through this amended complaint.
`
`Qualcomm nonetheless has committed—and continues to commit—acts of direct and indirect
`
`infringement despite knowing that their actions constituted infringement of the valid and
`
`enforceable ’625 patent, despite a risk of infringement that was known or so obvious that it should
`
`have been known to Qualcomm, and/or even though Qualcomm otherwise knew or should have
`
`known that their actions constituted an unjustifiably high risk of infringement of that valid and
`
`enforceable patent. Qualcomm’s conduct in light of these circumstances is egregious.
`
`Qualcomm’s knowing, deliberate, and willful infringement of the ’625 patent entitles Monterey to
`
`increased damages under 35 U.S.C. § 284 and to attorney fees and costs incurred in prosecuting
`
`this action under 35 U.S.C. § 285.
`
`COUNT TWO
`INFRINGEMENT OF THE ’805 PATENT
`
`54. Monterey incorporates by reference the preceding paragraphs as if fully set forth
`
`herein.
`
`55. Monterey is the assignee and lawful owner of all right, title, and interest in and to
`
`the ’805 patent.
`
`16
`
`Page 16 of 51
`
`

`

`56.
`
`57.
`
`The ’805 patent is valid and enforceable.
`
`The ’805 patent is generally directed to static random access memory (“SRAM”)
`
`cell design, particularly to optimizing SRAM cell design using a simpler geometric layout.
`
`58.
`
`As semiconductor structure size continued to shrink with time, one exemplary issue
`
`with the prior art of the ’805 patent was increased difficulties in manufacturing. Specifically, the
`
`then-existing memory cells contained complex geometric designs which required numerous
`
`processing steps and larger cell sizes. Generally, more processing steps lead to increased
`
`manufacturing costs and reduced profits.
`
`59.
`
`The ’805 patent teaches, among other things, an improved memory cell layout
`
`which allows the features to be arranged in such a way as to minimize cell size. For example, the
`
`single local interconnect layer of the ’805 patent allows for a thinner product and fewer processing
`
`steps.
`
`60.
`
`Qualcomm products use SRAM with a six-transistor (“6T”) and/or eight-transistor
`
`(“8T”) cell design. Qualcomm’s 6T and 8T SRAM contain a single local interconnect layer. This
`
`has resulted in, among other things, Qualcomm’s ability to decrease the size of their SRAM area
`
`and to decrease the number of manufacturing steps.
`
`61.
`
`Qualcomm has directly infringed, and continues to directly infringe, one or more
`
`claims of the ’805 patent under 35 U.S.C. § 271(a), either literally and/or under the doctrine of
`
`equivalents, by, among other things, making, using, selling, offering to sell, and/or importing in or
`
`into the United States without authorization products covered by one or more claims of the ’805
`
`patent, including, but not limited to, all Qualcomm devices incorpor