IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`MONTEREY RESEARCH, LLC,
`
`
`
`
`
`QUALCOMM INCORPORATED,
`QUALCOMM TECHNOLOGIES, INC., and
`QUALCOMM CDMA TECHNOLOGIES
`ASIA-PACIFIC PTE LTD.,
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`C.A. No. ________________
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`) ) ) ) ) ) ) ) ) )
`
`
`
`Plaintiff,
`
`Defendants.
`
`
`
`
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff Monterey Research, LLC (“Monterey”), for its 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
`IPR2020-01492
`Qualcomm EX1024
`Page 1 of 47
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`2.
`
`The Qualcomm Defendants, jointly and severally, have infringed and continue to
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`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. 6,534,805 (“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”);
`
`7,092,281 (“the ’281 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
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`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
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`in part through the actions of QTI. Qualcomm Inc. controls and directs the actions of QTI, and
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`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
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`registered agent for service of process in Delaware. In addition, Qualcomm Inc. and QTI have
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`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.
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`See, e.g., www.qualcomm.com. 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. 6,534,805
`
`15.
`
`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 A.
`
`16. 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.
`
`B.
`
`U.S. Patent No. 6,642,573
`
`17.
`
`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
`
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`4, 2003. A true and correct copy of the ’573 patent is attached hereto as Exhibit B.
`
`18. 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.
`
`C.
`
`U.S. Patent No. 6,651,134
`
`19.
`
`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 C.
`
`20. 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.
`
`D.
`
`U.S. Patent No. 6,680,516
`
`21.
`
`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 D.
`
`22. 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.
`
`E.
`
`U.S. Patent No. 6,765,407
`
`23.
`
`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 E.
`
`24. Monterey is the owner and assignee of the ’407 patent; owns all right, title, and
`
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`interest in the ’407 patent; and holds the right to sue and recover damages for infringement thereof,
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`including past infringement.
`
`F.
`
`U.S. Patent No. 7,092,281
`
`25.
`
`The ’281 patent, titled “Method and Apparatus for Reducing Soft Error Rate in
`
`SRAM Arrays Using Elevated SRAM Voltage During Periods of Low Activity,” was duly and
`
`properly issued by the USPTO on August 15, 2006. A true and correct copy of the ’281 patent is
`
`attached hereto as Exhibit F.
`
`26. Monterey is the owner and assignee of the ’281 patent; owns all right, title, and
`
`interest in the ’281 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
`
`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.
`
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`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
`
`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
`
`
`1 Other leading high-technology companies that contributed to inventions disclosed in the Patents-
`in-Suit include Advanced Micro Devices, Inc. (“AMD”), Spansion LLC (“Spansion”), and
`International Business Machines Corporation (“IBM”).
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`transferring technology and know-how to enable the manufacture of their products; (v) enabling
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`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:
`
`a.
`
`On January 31, 2018, Monterey sent a letter to Qualcomm, notifying
`
`Qualcomm of their infringement of certain Monterey patents, including the ’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
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`patents, and explained that Qualcomm required a license from Monterey. Monterey identified
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`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 ’516, ’805,
`
`’407, ’727, ’797, and ’281 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
`
`’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
`
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`Qualcomm and their customers infringed those patents; and explained that Qualcomm required a
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`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 ’805 PATENT
`
`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
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`the ’805 patent.
`
`40.
`
`The ’805 patent is valid and enforceable.
`
`41.
`
`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.
`
`42.
`
`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.
`
`43.
`
`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.
`
`44.
`
`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.
`
`45.
`
`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 incorporating SRAM with a 6T and/or
`
`8T cell design, such as the MSM8974 semiconductor device and other products in the Snapdragon
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`800, Snapdragon S4 Play, Snapdragon S4 Plus, Snapdragon S4 Pro, Snapdragon 200, Snapdragon
`
`205, Snapdragon 208, Snapdragon 210, Snapdragon 212, Snapdragon 400, Snapdragon 410,
`
`Snapdragon 412, Snapdragon 415, Snapdragon 425, Snapdragon 427, Snapdragon 430,
`
`Snapdragon 435, Snapdragon 429, Snapdragon 439, Snapdragon 450, Snapdragon 600,
`
`Snapdragon 610, Snapdragon 615, Snapdragon 616, Snapdragon 617, Snapdragon 625,
`
`Snapdragon 626, Snapdragon 650, Snapdragon 652, Snapdragon 653, Snapdragon 630,
`
`Snapdragon 636, Snapdragon 660, Snapdragon 632, Snapdragon 670, Snapdragon 675,
`
`Snapdragon 665, Snapdragon 710, Snapdragon 712, Snapdragon 730, Snapdragon 730G,
`
`Snapdragon 801, Snapdragon 805, Snapdragon 808, Snapdragon 810, Snapdragon 820,
`
`Snapdragon 821, Snapdragon 835, Snapdragon 845, Snapdragon 850, Snapdragon 855, and
`
`Snapdragon 8cx series product families; and all other semiconductor devices, integrated circuits,
`
`and products with similar infringing technology (“the Accused ’805 Products”).
`
`46.
`
`As one non-limiting example, Qualcomm infringes claim 8 of the ’805 patent. For
`
`example, the MSM8974 Snapdragon 800 semiconductor device contains:
`
`a.
`
`a memory cell (e.g., SRAM cell of the MSM8974 Snapdragon 800)
`
`comprising a plurality of substantially oblong active regions (e.g., N-type and/or P-type diffusion
`
`areas of the MSM8974 Snapdragon 800) formed in a semiconductor substrate and arranged
`
`substantially in parallel with one another, and a plurality of substantially oblong local interconnects
`
`(e.g., structures formed at the polysilicon layer on top of the substrate of the MSM8974
`
`Snapdragon 800) above said substrate that extend only partially across the memory cell and are
`
`arranged substantially in parallel with one another and substantially perpendicular to said active
`
`regions; and
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`b.
`
`a single local interconnect layer (e.g., metal 1 (“M1”) layer of the
`
`MSM8974 Snapdragon 800) comprising local interconnects (e.g., structures formed at the M1
`
`layer of the MSM8974 Snapdragon 800) corresponding to bitlines (e.g., those formed at the metal
`
`2 (“M2”) layer of the MSM8974 Snapdragon 800) and a global word-line (e.g., those formed at
`
`the metal 3 (“M3”) layer of the MSM8974 Snapdragon 800).
`
`47.
`
`Claim 8 of the ’805 patent applies to each Accused ’805 Product at least because
`
`each of those products contain the same or similar structures as the Qualcomm MSM8974
`
`Snapdragon 800.
`
`48.
`
`Qualcomm has known of the ’805 patent and their infringement of that patent since
`
`at least as early as January 31, 2018.
`
`49.
`
`Qualcomm has induced infringement of, and continues to induce infringement of,
`
`one or more claims of the ’805 patent under 35 U.S.C. § 271(b), either literally and/or under the
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`doctrine of equivalents, by, among other things, actively inducing others, including their
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`customers, to make, use, sell, offer to sell, and/or import in or into the United States without
`
`authorization the Accused ’805 Products, as well as products containing the same. Qualcomm
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`knowingly and intentionally instructs their customers, OEMs, foundry suppliers, distributors,
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`and/or third parties to infringe at least through user manuals, product documentation, and other
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`materials, such as those located on Qualcomm’s website at www.qualcomm.com. Additional,
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`non-limiting examples
`
`include
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`the materials
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`found on Qualcomm’s websites at
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`www.qualcomm.com/products/snapdragon-processors-800
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`and
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`https://www.qualcomm.com/media/documents/files/snapdragon-800-product-brief.pdf.
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`50.
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`Qualcomm has contributed to the infringement of, and continues to contribute to
`
`the infringement of, one or more claims of the ’805 patent under 35 U.S.C. § 271(c), either literally
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`and/or under the doctrine of equivalents, by, among other things, selling, offering to sell, and/or
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`importing in or into the United States the Accused ’805 Products, which constitute a material part
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`of the invention of the ’805 patent, knowing the Accused ’805 Products to be especially made or
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`especially adapted for use in an infringement of such patent, and not a staple article or commodity
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`of commerce suitable for substantial noninfringing use.
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`51. Monterey has sustained and is entitled to recover damages as a result of
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`Qualcomm’s past and continuing infringement.
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`52.
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`Qualcomm’s infringement of the ’805 patent has been knowing, deliberate, and
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`willful, since at least as early as January 31, 2018, the date of Monterey’s letter to Qualcomm and
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`therefore the date on which Qualcomm knew of the ’805 patent and that their conduct constituted
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`and resulted in infringement of the ’805 patent. Monterey continued to put Qualcomm on notice
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`of the ’805 patent and Qualcomm’s infringement thereof, including without limitation through
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`communications on July 17, 2018; July 24, 2018; and yet again through this complaint. Qualcomm
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`nonetheless has committed—and continues to commit—acts of direct and indirect infringement
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`despite knowing that their actions constituted infringement of the valid and enforceable ’805
`
`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
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`actions constituted an unjustifiably high risk of infringement of that valid and enforceable patent.
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`Qualcomm’s conduct in light of these circumstances is egregious. Qualcomm’s knowing,
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`deliberate, and willful infringement of the ’805 patent entitles Monterey to increased damages
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`under 35 U.S.C. § 284 and to attorney fees and costs incurred in prosecuting this action under 35
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`U.S.C. § 285.
`
`COUNT TWO
`INFRINGEMENT OF THE ’573 PATENT
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`53. Monterey incorporates by reference the preceding paragraphs as if fully set forth
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`herein.
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`54. Monterey is the assignee and lawful owner of all right, title, and interest in and to
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`the ’573 patent.
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`55.
`
`The ’573 patent is valid and enforceable.
`
`56.
`
`The ’573 patent is generally directed to semiconductor devices including a modified
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`oxide-nitride-oxide (“ONO”) structure comprising a high-K dielectric material.
`
`57.
`
`The ’573 patent explains that as device dimensions continue to be reduced, the
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`electrical thickness of the ONO layer must be reduced accordingly. Previously, that had been
`
`accomplished by scaling down the physical thickness of the ONO layer. However, as the ONO
`
`layer was made physically thinner, leakage current through the ONO layer could increase, and the
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`charge trapping ability of the nitride layer could be reduced, limiting the scaling down of the total
`
`physical thickness of the ONO layer.
`
`58.
`
`Consequently, the ’573 patent describes, among other things, the use of a mid-K or
`
`a high-K dielectric material in a modified ONO structure having reduced dimensions without
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`creation of interface states coming from contamination which could provide charge leakage paths
`
`and without sacrificing the charge trapping ability of the modified ONO structure. It thus provided
`
`advantages such as (1) reduction of equivalent oxide thickness of ONO in next generation devices;
`
`(2) high-K film devices are expected to have improved data retention and reliability; and (3) the
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`high-K dielectric material layer replacing one of both silicon dioxide layers allows fabrication of
`
`an ONO layer which is physically thicker, resulting in fewer charge leakage paths within the
`
`modified ONO structure.
`
`59.
`
`Qualcomm has directly infringed, and continues to directly infringe, one or more
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`claims of the ’573 patent under 35 U.S.C. § 271(a) and/or 35 U.S.C. § 271(g), either literally and/or
`
`under the doctrine of equivalents, by, among other things, making, using, selling, offering to sell,
`
`and/or importing (including importing products made by a patented process) in or into the United
`
`States without authorization products covered by one or more claims of the ’573 patent, including,
`
`but not limited to, products with high-k dielectrics, such as the MSM8994 semiconductor device
`
`and other products in the Snapdragon 810 and Snapdragon 808 series product families; other
`
`Qualcomm 20 nm process node semiconductor devices, integrated circuits, and products; and all
`
`other semiconductor devices, integrated circuits, and products with similar infringing technology
`
`(“the Accused ’573 Products”).
`
`60.
`
`As one non-limiting example, Qualcomm infringes claim 1 of the ’573 patent. For
`
`example, the MSM8994 Snapdragon 810 semiconductor device comprises a semiconductor device
`
`comprising a modified ONO structure:
`
`a.
`
`wherein the modified ONO structure comprises a bottom dielectric material
`
`layer, a nitride layer on the bottom dielectric material layer, and a top dielectric material layer on
`
`the nitride layer, in which at least one of the bottom dielectric material layer and the top dielectric
`
`material layer comprises a composite dielectric material, wherein the composite dielectric material
`
`comprises elements of at least one mid-K or high-K dielectric material (e.g., modified ONO
`
`structure of the MSM8994 Snapdragon 810);
`
`b.
`
`wherein each mid-K or high-K dielectric material independently comprises
`
`at least one of hafnium oxide (HfO2), zirconium oxide (ZrO2), barium titanate (BaTiO3), cerium
`
`oxide (CeO2), lanthanum oxide (La2O3), lanthanum aluminum oxide (LaAlO3), lead titanate
`
`(PbTiO3), strontium titanate (SrTiO3), lead zirconate (PbZrO3), tungsten oxide (WO3), yttrium
`
`oxide (Y2O3), bismuth silicon oxide (Bi4Si2O12), barium strontium titanate (BST) (Ba1-
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`xSrxTiO3), PMN (PbMgxNb1-xO3), PZT (PbZrxTi1-xO3), PZN (PbZnxNb1-xO3), and PST
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`(PbScxTa1-xO3) (e.g., dielectric material of the MSM8994 Snapdragon 810 comprising hafnium
`
`oxide).
`
`61.
`
`Claim 1 of the ’573