Case 1:21-cv-05205-LGS Document 35 Filed 08/23/21 Page 1 of 45
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF NEW YORK
`
`SAMSUNG ELECTRONICS CO., LTD.,
`and SAMSUNG ELECTRONICS
`AMERICA, INC.,
`
`Plaintiffs,
`
`v.
`
`SOLAS OLED LTD. and NEODRON
`LTD.
`
`Defendants.
`
`FILED UNDER SEAL
`
`Civil Action No. 1:21-cv-05205-LGS
`
`AMENDED COMPLAINT
`
`Plaintiffs Samsung Electronics Co., Ltd. (“SEC”) and Samsung Electronics America, Inc.
`
`(“SEA” and, collectively, “Samsung”), by and through their undersigned counsel, for their
`
`Amended Complaint against Defendants Solas OLED Ltd. (“Solas”) and Neodron Ltd.
`
`(“Neodron”), allege as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`Neodron and Solas have engaged in a relentless campaign of litigation against
`
`various Samsung entities. Neodron and Solas are “patent trolls” associated with the same hedge
`
`fund—Magnetar Capital. Neodron and Solas buy patents not to use the patented technology, but
`
`to accuse others of infringement. They hope to obtain large damage awards or, more often,
`
`extort settlement payments for unnecessary licenses to practice the patents. Between the two of
`
`them, they have filed no fewer than twelve lawsuits in the United States since May 2019 against
`
`members of the Samsung family.
`
`2.
`
`Defendants’ campaign began in May 2019 with Solas filing an action in the
`
`Eastern District of Texas, ultimately asserting infringement of three patents. Over the eight
`
`weeks that followed, Neodron filed three more actions against Samsung in the International
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2004
`Page 1
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`

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`Case 1:21-cv-05205-LGS Document 35 Filed 08/23/21 Page 2 of 45
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`Trade Commission and the Western District of Texas asserting infringement of eleven more
`
`patents. These lawsuits were followed a few months later by more actions from Neodron and
`
`then, a few months after that, more actions by Solas. Samsung has incurred, and continues to
`
`incur, substantial expense in defending these actions.
`
`3.
`
`In
`
`, Samsung settled all of Neodron’s pending actions against
`
`Samsung. In exchange for paying more than
`
`
`
`
`
`
`
`. To document the settlement, SEC and Neodron entered into a broad
`
`Patent License Agreement (the “PLA”) that incorporated an escrow agreement (the “Escrow
`
`Agreement”). The PLA, the Escrow Agreement, and their exhibits are referred to collectively
`
`herein as the “License Agreement” (attached as Exhibit A and filed under seal). In the PLA,
`
`Neodron represented and warranted that it
`
`
`
`. Samsung wanted worldwide peace forever.
`
`4.
`
`But Solas continued the campaign. Not only did it fail to drop any of its pending
`
`lawsuits against Samsung, it added to the list. In late December 2020, Solas filed another action
`
`in the International Trade Commission asserting three patents and in March 2021, Solas filed two
`
`more lawsuits against Samsung in the Eastern District of Texas alleging infringement of six more
`
`patents. It now appears that Solas and Neodron are alter egos, or at least closely related entities
`
`that work together to maximize their revenue from infringement claims. Neodron controls at
`
`least some of Solas’s patents and has the ability to license them. In fact, two of the patents Solas
`
`has asserted
`
` to
`
`2
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2004
`Page 2
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`

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`Case 1:21-cv-05205-LGS Document 35 Filed 08/23/21 Page 3 of 45
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`Samsung. That means the license Samsung bought and paid for in
`
` encompasses
`
`at least some of Solas’s patents.
`
`5.
`
`Samsung cannot have liability under patents Neodron controls, even if Solas owns
`
`them and continues to assert them. And Neodron is required to
`
`
`
` from any litigation in which Solas asserts a patent that Neodron controls. Moreover,
`
`under the License Agreement’s
`
`
`
`for any claim by Solas that Samsung is infringing a patent that Neodron controls because that
`
`question rests in part on the License Agreement.
`
`6.
`
`Samsung therefore brings this action for damages from the breach of the License
`
`Agreement, for a declaration that the License Agreement is being breached by Defendants
`
`continuing litigations against Samsung based on licensed patents, for a declaration that Samsung
`
`is licensed to practice patents Defendants have asserted, and for a declaration that Samsung does
`
`not infringe those patents.
`
`PARTIES
`
`7.
`
`SEC is a corporation organized under the laws of South Korea, with its principal
`
`place of business at 129, Samsung-Ro, YeongTong-Gu, Suwon-Si, Gyonggi-Do, 443-742, South
`
`Korea.
`
`8.
`
`SEA is a New York corporation with its principal place of business at 85
`
`Challenger Road, Ridgefield Park, New Jersey 07660. SEA is a wholly owned subsidiary of
`
`SEC.
`
`9.
`
`On information and belief, Solas is a technology licensing company organized
`
`under the laws of Ireland, with its headquarters at The Hyde Building, Suite 23, The Park,
`
`Carrickmines, Dublin 18, Ireland. On information and belief, Realta Investments Ireland DAC,
`
`an Irish corporation managed by Magnetar Capital LLC, owns much of Solas. On information
`
`3
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2004
`Page 3
`
`

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`Case 1:21-cv-05205-LGS Document 35 Filed 08/23/21 Page 4 of 45
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`and belief since no later than November 2020, Solas and Neodron were and are closely related
`
`entities or alter egos.
`
`10.
`
`On information and belief, Neodron is a technology licensing company organized
`
`under the laws of Ireland, with its headquarters at The Hyde Building, Suite 23, The Park,
`
`Carrickmines, Dublin 18, Ireland. On information and belief, Realta Investments Ireland DAC,
`
`an Irish corporation managed by Magnetar Capital LLC, owns much of Neodron. On
`
`information and belief, since no later than November 2020, Neodron and Solas were and are
`
`closely related entities or alter egos.
`
`JURISDICTION AND VENUE
`
`11.
`
`Samsung brings this action under the Declaratory Judgment Act, 28 U.S.C.
`
`§§ 2201–02, for declaratory judgments of non-infringement of certain patents 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 and 1338.
`
`12.
`
`This Court has supplemental jurisdiction under 28 U.S.C. § 1367(a) over the
`
`state-law causes of action because they are related to claims in the action within the Court’s
`
`subject-matter jurisdiction and form part of the same case or controversy. In this case, the state-
`
`law claims are derived from the same common nucleus of operative fact.
`
`13.
`
`This Court has personal jurisdiction over Defendants in the Southern District of
`
`New York. On August 19, 2021, Defendants informed the Court that Defendants consent to
`
`jurisdiction in this District. Under
`
` of the Escrow Agreement and
`
` of the
`
`PLA, Neodron
`
`designate
`
` and agreed to
`
`
`
`the License Agreement. Solas also consented to personal jurisdiction in this forum because, as
`
`explained below, Solas is bound by the License Agreement for the reasons provided throughout
`
`4
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2004
`Page 4
`
`

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`Case 1:21-cv-05205-LGS Document 35 Filed 08/23/21 Page 5 of 45
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`this complaint. Moreover, on information and belief, Defendants, directly or through their
`
`agents and alter egos, have conducted the business activities at issue in this lawsuit in New York.
`
`Those activities include patent licensing efforts, such as negotiating and signing agreements
`
`related to patent licenses within the Southern District of New York. This action arises out of and
`
`relates to those activities that Defendants have purposefully conducted in New York or directed
`
`at New York and this District. Neodron requested that Samsung
`
`
`
`, which location is within this
`
`District. On information and belief, the Defendants or their agents and alter egos have an office
`
`at this location. On information and belief, Gerald Padian, a director of Neodron and a director
`
`of Solas, also has an office at 81 Main Street, Suite 209, White Plains, New York, from which he
`
`conducts business for Defendants within this District, including negotiating the License
`
`Agreement on behalf of Defendants and offering to commence license negotiations with
`
`Samsung on patents at issue in this litigation.
`
`14.
`
`Venue is proper within this District under 28 U.S.C. §§ 1391(b) and 1391(c).
`
`Defendants Begin Their Campaign
`
`BACKGROUND
`
`15.
`
`On or about May 2, 2019, Solas filed an action in the Eastern District of Texas
`
`asserting patent infringement against several Samsung affiliates, ultimately asserting three
`
`patents. See Amended Complaint, Solas OLED Ltd. v. Samsung Display Co., Ltd., et al., No.
`
`2:19-cv-00152-JRG (E.D. Tex. Aug. 23, 2019), ECF No. 15.1
`
`1 The Patent Trial and Appeals Board has since determined in Final Written Decisions that all
`asserted claims in all three patents are unpatentable, precluding Solas’s infringement claims. A
`jury also found the asserted claims of one of those patents invalid. Samsung therefore at this time
`does not burden the Court with claims associated with those patents.
`
`5
`
`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2004
`Page 5
`
`

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`Case 1:21-cv-05205-LGS Document 35 Filed 08/23/21 Page 6 of 45
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`16.
`
` On or about May 21, 2019, Neodron filed actions in the International Trade
`
`Commission and the Western District of Texas asserting that Samsung was infringing four
`
`patents. See Complaint, Certain Touch-Controlled Mobile Devices, Computers, and
`
`Components Thereof, No. 337-TA-1162 (U.S. Int’l Trade Comm’n); Complaint, Neodron Ltd. v.
`
`Samsung Elec. Co., Ltd., et al., No. 6:19-cv-00323-ADA (W.D. Tex. May 21, 2019), ECF No. 1.
`
`On or about June 28, 2019, Neodron filed another complaint in the Western District of Texas,
`
`ultimately asserting seven more patents. While Neodron was actively litigating these patents
`
`against Samsung, Neodron assigned to Solas U.S. Patent No. 9,292,144 (the “’144 Patent”)
`
`(Exhibit B). See Second Amended Complaint, Neodron Ltd. v. Samsung Elec. Co., Ltd., et al.,
`
`No. 1:19-cv-00903-ADA (W.D. Tex. Nov. 17, 2020), ECF No. 71. Within a few months, it
`
`became clear why—by assigning the ’144 Patent to Solas, Neodron sought, on information and
`
`belief, to attempt to exclude it from any future settlement or license agreements with Samsung.
`
`17.
`
`On or about February 14, 2020, Neodron filed actions in the International Trade
`
`Commission and the Western District of Texas asserting four more patents against Samsung.
`
`See Complaint, Capacitive Touch-Controlled Mobile Devices, Computer, and Components
`
`Thereof, No. 337-TA-1193 (U.S. Int’l Trade Comm’n); Complaint, Neodron Ltd. v. Samsung
`
`Elec. Co., Ltd., et al., No. 6:20-cv-00121-ADA (W.D. Tex. Feb. 14, 2020), ECF No. 1.
`
`18.
`
`On or about September 14, 2020, Solas filed corresponding actions in the
`
`International Trade Commission and the Eastern District of Texas asserting two patents against
`
`Samsung—U.S. Patent Nos. 7,573,068 (the “’068 Patent”) (Exhibit C) and 7,868,880 (the “’880
`
`Patent”) (Exhibit D). See Certain Active Matrix OLED Display Devices and Components
`
`Thereof, No. 337-TA-1225 (U.S. Int’l Trade Comm’n); Complaint, Solas OLED Ltd. v. Samsung
`
`6
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2004
`Page 6
`
`

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`Case 1:21-cv-05205-LGS Document 35 Filed 08/23/21 Page 7 of 45
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`Elec. Co., Ltd., et al., No. 2:20-cv-00307-JRG (E.D. Tex. Sept. 15, 2020), ECF No. 1.2 On
`
`November 6, 2020, Solas filed an unopposed motion to terminate the International Trade
`
`Commission investigation, which was granted soon after.
`
`Samsung Wants Lasting Peace and Therefore Pays a Substantial Sum
`
`19.
`
`In
`
`, Neodron and Samsung agreed to settle their disputes, with
`
`Neodron dismissing its Texas actions with prejudice and dropping the International Trade
`
`Commission investigation and Samsung dismissing its Texas counterclaims with prejudice and
`
`dropping the related inter partes reviews then pending before the Patent Trial and Appeals
`
`Board. In connection with the settlement, Neodron and SEC entered into the License
`
`Agreement.
`
`20.
`
`In the PLA, Neodron provided SEC and affiliates (including SEA) a broad license
`
`to all of Neodron’s “Patents.” The PLA defines “Patents” to mean
`
`“Term” is defined in the PLA as
`
`
`
`
`
`. The
`
`
`
` In other words, Samsung bargained and paid for the
`
`broadest possible license—a license to every patent Neodron
`
`
`
`
`
`. The patents listed on the
`
` were just a starting point.
`
`21.
`
`The broad definition of “Patents,” rather than a limitation to an
`
`, makes sense in context. Samsung wanted to buy complete peace, but could
`
`2 Solas also asserted a third patent in the ITC matter, but that patent is not at issue in this case.
`
`7
`
`
`
`
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2004
`Page 7
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`

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`Case 1:21-cv-05205-LGS Document 35 Filed 08/23/21 Page 8 of 45
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`not possibly know what patents Neodron
`
`what patents Neodron would
`
`, much less
`
`. That Neodron, at least
`
`as of today, controls some or all of Solas’s patents even if they are not
`
`has only recently come to light.
`
`22.
`
`In the PLA, Neodron represented that it was
`
`, and Neodron has
`
`that it would
`
`
`
`
`
`
`
` Neodron also agreed
`
`
`
`
`
`. In exchange,
`
`SEC agreed, among other things, to pay Neodron over
`
`. SEC has fully performed its
`
`obligations under the PLA.
`
`Neodron and Solas Breach the PLA As Solas Continues the Campaign
`
`23.
`
`Despite the settlement—and SEC’s large payment—Solas continued to litigate its
`
`claims under the ’068 and ’880 Patents against Samsung in the Eastern District of Texas. On or
`
`about December 28, 2020, Solas filed another complaint in the International Trade Commission
`
`reasserting those same two patents against Samsung—the ’068 Patent and the ’880 Patent (as
`
`well as a third patent that Solas later dropped). See Complaint, Certain Active Matrix OLED
`
`Display Devices and Components Thereof, No. 337-TA-1243 (U.S. Int’l Trade Comm’n). The
`
`new International Trade Commission investigation and the September 14, 2020 Eastern District
`
`of Texas action are referred to here collectively as the “First Action.”
`
`24.
`
`On or about March 22, 2021, Solas filed a new action in the Eastern District of
`
`Texas (the “Second Action”) against Samsung asserting two more patents—the ’144 Patent and
`
`8,526,767 (the “’767 Patent”) (Exhibit E). See Complaint, Solas OLED Ltd. v. Samsung Elec.
`
`8
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2004
`Page 8
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`

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`Case 1:21-cv-05205-LGS Document 35 Filed 08/23/21 Page 9 of 45
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`Co., Ltd., et al., No. 2:21-cv-00105-JRG (E.D. Tex. Mar. 22, 2021), ECF No. 1. The same day,
`
`Solas filed yet another action against Samsung in the Eastern District of Texas (the “Third
`
`Action”) asserting two more patents—U.S. Patent Nos. 7,499,042 (the “’042 Patent”) (Exhibit F)
`
`and 7,663,615 (the “’615 Patent”) (Exhibit G)—and reasserting two other patents that were
`
`asserted in earlier actions against Samsung. See Complaint, Solas OLED Ltd. v. Samsung
`
`Display Co., Ltd., et al., No. 2:21-cv-00104-JRG (E.D. Tex. Mar. 22, 2021), ECF No. 1.
`
`25.
`
`Solas’s decision to continue the First Action and to commence the Second Action
`
`and the Third Action violates the License Agreement because the patents asserted are all covered
`
`by the PLA. Most obvious is the ’144 Patent asserted in the Second Action, because it is
`
`. But
`
`in truth all the patents Solas asserts in these pending actions—the ’144 Patent, the ’767 Patent,
`
`the ’068 Patent, the ’880 Patent, the ’042 Patent, and the ’615 Patent (collectively, the “Patents-
`
`in-Suit”)—are covered by the License Agreement for the reasons explained below. Solas’s
`
`assertion of the Patents-in-Suit against Samsung therefore violates the PLA’s
`
`
`
`. Samsung
`
`has suffered, and continues to suffer, damages from being forced to defend itself in these actions.
`
`26.
`
`Upon learning of the Second Action, Samsung notified Defendants that the suit is
`
`frivolous for several reasons, including because Samsung is licensed to Solas’s asserted patents.
`
`Despite this notice, Defendants refused to dismiss the suit. On April 16, 2021, however, Solas
`
`filed an amended complaint alleging infringement of the ’767 Patent, but not the ’144 Patent.
`
`See Amended Complaint, Solas OLED Ltd. v. Samsung Elec. Co., Ltd., et al, No. 2:21-cv-00105-
`
`JRG (E.D. Tex. Apr. 16, 2021), ECF No. 11. This amended complaint did not bring Defendants
`
`into compliance with the PLA because the PLA requires Defendants to
`
`
`
`9
`
`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2004
`Page 9
`
`

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`Case 1:21-cv-05205-LGS Document 35 Filed 08/23/21 Page 10 of 45
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` involving a “Patent” under the PLA, not just amend a complaint to
`
`drop a single cause of action.
`
` And because the ’767 Patent is also
`
`covered by the License Agreement, Solas’s continued assertion of that patent in the Second
`
`Action still violates the PLA.
`
`27.
`
`In any event, the amended complaint does not resolve the parties’ dispute about
`
`the ’144 Patent. After Solas filed the amended complaint, a representative of Neodron and Solas
`
`disavowed the License Agreement’s application to the ’144 Patent and asserted that Samsung
`
`still needed a license to sell the products accused of infringing it.
`
`The License Agreements Cover the Patents-in-Suit
`
`28.
`
`For multiple reasons, the Patents-in-Suit are properly considered “Patents” under
`
`the PLA, meaning Samsung has the right under the License Agreement to practice them and is
`
`immune from any suit asserting them. First, it is undisputed that Neodron is bound to the PLA.
`
`And Neodron and Solas have such a unity of interest and ownership that they should be
`
`considered closely related or alter egos, meaning Solas should also be bound to the PLA. On
`
`information and belief, Solas and Neodron have overlapping officers and directors, share offices
`
`and employees, and in general have such a unity of interest and ownership that the separate
`
`personalities of the corporations no longer exist. They should not be allowed to retain their
`
`separate corporate status in order to achieve inequitable results such as suing Samsung for
`
`patents that Samsung paid Neodron to license. Solas should also be bound to the PLA, because
`
`Solas and Neodron are so closely related that Solas should have foreseen that it would be bound
`
`to the PLA by virtue of its relationship with Neodron.
`
`29.
`
`As an example of Solas and Neodron’s interconnectedness, the PLA requires that
`
` who, on information and belief, is
`
`and has been a director of Solas for the last five years. Mr. Padian is also a director of Neodron.
`
`10
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2004
`Page 10
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`

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`Case 1:21-cv-05205-LGS Document 35 Filed 08/23/21 Page 11 of 45
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`Similarly, Ciaran O’Gara,
`
`, on information and belief,
`
`serves as an officer for both Neodron and Solas and is also a director of Neodron and Solas.
`
`Further, on information and belief, James Prusko and Sean O’Sullivan are also directors of both
`
`Neodron and Solas.
`
`30.
`
`Indeed, Mr. Padian cannot even separate the two companies in his mind. In May
`
`2021, Samsung emailed Mr. Padian to request that Neodron
`
`. The PLA requires Neodron to
`
` against
`
`
`
`
`
`
`
`
`
`
`
`would not
`
` Mr. Padian responded that Neodron
`
`, but offered, on
`
`Solas’s behalf, to begin license negotiations for the asserted patents (seeking to extract more
`
`money from Samsung for a license that Samsung already bought and paid for). Thus, in the
`
`exact same email, Mr. Padian spoke for both Neodron and Solas on the PLA, its application to
`
`the ’144 Patent, and negotiating a license.
`
`31. Mr. Padian also has led Samsung to believe that another suit on the ’144 Patent is
`
`likely. He said in a later email in the same exchange that although Solas had dropped its claim
`
`for infringement of the ’144 Patent in the Second Action, this was voluntary rather than required
`
`under the PLA. He also outright denied that the ’144 Patent is covered by the License
`
`Agreement
`
` And Mr.
`
`Padian’s offer to commence license negotiations on the ’144 Patent is another implicit accusation
`
`11
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2004
`Page 11
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`

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`Case 1:21-cv-05205-LGS Document 35 Filed 08/23/21 Page 12 of 45
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`that Samsung is somehow infringing the ’144 Patent. Samsung has reasonable apprehension of
`
`suit on the ’144 Patent.
`
`32.
`
`Neodron and its officers’ apparent ability to control and assert patents from
`
`Solas’s patent portfolio, and vice versa, shows that Neodron and Solas are closely related or alter
`
`egos, and are truly one entity. The Patents-in-Suit are thus “Patents” licensed to Samsung under
`
`the License Agreement, even if Solas, rather than Neodron, owns them.
`
`33.
`
`Second, the PLA defines “Patents” as
`
`
`
`
`
`
`
`(emphasis added). As evidenced by its recent actions, Neodron has control over the Patents-in-
`
`Suit, and they should therefore be considered “Patents” under the PLA. That Neodron does not
`
`own the Patents-in-Suit does not matter—the “Patents” definition is written in the disjunctive.
`
`As an example, when
`
`, USPTO records showed that Solas was the
`
`owner of the ’144 Patent. Yet Neodron still represented that it
`
`
`
` it to Samsung.
`
` In other words, at the time the PLA was signed, the ’144
`
`Patent was
`
` by Neodron without regard to its ownership. Having made
`
`these representations and warrantees, Neodron is now estopped from arguing otherwise. In
`
`addition, on information and belief, at least some of Solas’s owners, officers, and directors
`
`financially benefitted from Samsung’s payments to Neodron for the license granted by the
`
`License Agreement, including the license to the ’144 Patent. And when Samsung informed
`
`Neodron that Solas had filed suit on patents to which Samsung had a license under the License
`
`Agreement Neodron signed, Solas dropped the ’144 Patent from the Second Action. Nothing
`
`differentiates the ’144 Patent from Solas’s other patents meaning that, as these actions show,
`
`12
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2004
`Page 12
`
`

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`Case 1:21-cv-05205-LGS Document 35 Filed 08/23/21 Page 13 of 45
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`Neodron has control over all of the Patents-in-Suit, even if it is not the recorded owner, because
`
`it can license those patents to third parties, direct Solas to transfer those patents, and direct Solas
`
`to dismiss causes of action based on those patents. Due to Neodron’s demonstrated level of
`
`control, the Patents-in-Suit should be considered “Patents” under the PLA regardless of whether
`
`Neodron is the recorded owner.
`
`34.
`
`Third, the Patents-in-Suit might also be considered “Patents” under the PLA
`
`because Solas is an “Affiliate” of Neodron within the meaning of the PLA. The PLA defines
`
`“Affiliate” to include entities that Neodron “Controls,” and the PLA defines “Control” as
`
`
`
`
`
`
`
`. Samsung
`
`requires discovery to ascertain whether Neodron “Controls” Solas under this definition. If it
`
`does, this is another reason the Patents-in-Suit are covered by the License Agreement.
`
`35.
`
`Fourth, Solas should be considered a “Licensor” under the PLA. The recitals
`
`state in the PLA that
`
`and warrants in the PLA that
`
`and that
`
` then represents
`
`
`
`
`
`that
`
`
`
`
`
`
`
`
`
` Because the
`
`USPTO assignment database shows that Neodron assigned Solas the ’144 Patent before Neodron
`
`13
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2004
`Page 13
`
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`Case 1:21-cv-05205-LGS Document 35 Filed 08/23/21 Page 14 of 45
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2004
`Page 14
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`is
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`Case 1:21-cv-05205-LGS Document 35 Filed 08/23/21 Page 15 of 45
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` and requires that the parties be
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`. The Escrow Agreement
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` It also states that
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` implying that the clause will survive termination.
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` The PLA also requires that
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` The Second Action and the Third Action are
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`further breaches of the PLA because Solas filed these actions after the PLA was in effect even
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`though these actions arise out of or relate to the PLA, and the PLA requires that these actions be
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`filed in New York.
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`COUNT ONE
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`Breach of Contract
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`38.
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`39.
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`Samsung incorporates all of the above paragraphs as though fully stated herein.
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`As described above, Neodron entered into the PLA with Samsung, whereby
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`Neodron agreed to license patents and also made certain representations, warranties, and
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`covenants.
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`40.
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`Among other representations, warranties, and covenants, Neodron stated that it
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`had
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`. Neodron also represented that there had
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`15
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2004
`Page 15
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`

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`Case 1:21-cv-05205-LGS Document 35 Filed 08/23/21 Page 16 of 45
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2004
`Page 16
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`Case 1:21-cv-05205-LGS Document 35 Filed 08/23/21 Page 17 of 45
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`“Patent.” Either Solas is a Licensor or Neodron breached the PLA’s representations and
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`warranties. Moreover, if Solas is not a Licensor, then Neodron’s September 19, 2019 assignment
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`of the ’144 Patent to Solas (while a Neodron-initiated ITC Investigation against Samsung was
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`ongoing), taken together with the PLA’s express representation that Neodron
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` and Solas’s later filing of the Second Action, would appear to be part of a scheme by
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`Neodron and Solas to strip Samsung of patent rights that it paid over
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` to license.
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`44.
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`Neodron represented that there had been
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` to the Patents before
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`, the PLA’s signature date. But the
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`’144 Patent had been transferred from Neodron to Solas on September 19, 2019. Neodron
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`breached its representations in the PLA.
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`45.
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`Neodron agreed to license all of the “Patents,” as defined in the PLA, to Samsung.
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`Now Defendants assert that the ’144 Patent is not licensed even though it is one of the Patents
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`and have implicitly threatened further litigation based on the ’144 Patent. Neodron’s
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`repudiation of the licenses and implicit threats of further litigation on the ’144 Patent breaches
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`the PLA.
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`46.
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`Defendants agreed to promptly
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` that any of the “Patents” under the PLA were involved.
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`Samsung provided Defendants written notice that in the Second Action Solas has sued Samsung
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`based on “Patents” under the PLA. Defendants have refused to dismiss the Second Action with
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`prejudice and are still improperly asserting the ’767 Patent against Samsung. Neodron has
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`breached the PLA by failing to cause Solas to dismiss the Second Action.
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`17
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2004
`Page 17
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`Case 1:21-cv-05205-LGS Document 35 Filed 08/23/21 Page 18 of 45
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`47.
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`For the same reason, Neodron is also breaching the PLA by allowing Solas to
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`continue prosecuting the First Action and the Third Action, both of which are improperly
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`asserting patents that are “Patents” under the PLA, and to threaten additional suits on the Patents.
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`48.
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`Neodron agreed to
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`.
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`Neodron now refuses to
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` Samsung and has instead threatened further litigation when
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`Samsung raised the issue of
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` Neodron has breached the PLA by refusing to
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`, despite Samsung’s request that
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`Neodron do so.
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`49.
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`For the same reason, Neodron is also breaching the PLA by failing to
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`.
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`50.
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`Neodron agreed not to sue or threaten to sue Samsung as to the licensed
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`“Patents.” Since the PLA’s effective date, Defendants have engaged in litigation and threatened
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`to file additional litigation asserting licensed “Patents.” Neodron has breached the PLA by
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`allowing Solas to sue Samsung on the Patents-in-Suit.
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`51.
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`Solas is bound to the PLA because Solas is the alter ego of Neodron, they are
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`closely related entities, and Solas should be considered a “Licensor” under the PLA for the
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`reasons explained above.
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`52.
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`The above-enumerated breaches are exemplary, not exhaustive, and Samsung
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`reserves all rights to allege additional breaches by Neodron and Solas, to be proven at trial.
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`53.
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`As a direct and proximate cause of Defendants’ conduct, Samsung has been
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`damaged in the amount it paid for the License Agreement and continues to be damaged by costs
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`18
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2004
`Page 18
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`Case 1:21-cv-05205-LGS Document 35 Filed 08/23/21 Page 19 of 45
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2004
`Page 19
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`

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`Case 1:21-cv-05205-LGS Document 35 Filed 08/23/21 Page 20 of 45
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2004
`Page 20
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`Case 1:21-cv-05205-LGS Document 35 Filed 08/23/21 Page 21 of 45
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`61.
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`An actual and justiciable controversy exists between Samsung and Defendants
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`concerning the non-infringement of the ’144 Patent.
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`62.
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`Defendants have alleged and have threatened to again allege that Samsung and its
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`laptop computers, mobile phones, and tablets made, used, offered for sale, sold, and imported by
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`Samsung in the United States, including Samsung laptop computers and Galaxy mobile phones
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`and tablet devices (the “Accused ’144 Products”), infringe the ’144 Patent.
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`63.
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`Samsung has not infringed and is not now infringing, directly or indirectly, and
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`has not induced or contributed to and is not now inducing or contributing to the infringement of,
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`any valid and enforceable claim of the ’144 Patent, either literally or by application of the
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`doctrine of equivalents.
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`64.
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`The Accused ’144 Products have not infringed, and do not infringe, directly or
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`indirectly, any valid and enforceable claim of the ’144 Patent, either literally or under the
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`doctrine of equivalents.
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`65.
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`66.
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`Claims 1, 6, and 11 are the only independent claims of the ’144 Patent.
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`Claims 1, 6, and 11 of the ’144 Patent require “the control of the other sensors
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`occurring at least in part concurrently with the acquisition of the touch-sensor signals from the
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`touch sensor or the pre-processing of the touch-sensor signals.”
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`67.
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`The Accused ’144 Products do not meet the claim requirement of “the control of
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`the other sensors occurring at least in part concurrently with the acquisition of the touch-sensor
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`signals from the touch sensor or the pre-processing of the touch-sensor signals” at least because,
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`to the extent the Accused ’144 Products comprise the control of the other sensors and/or the
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`acquisition of the touch-sensor signals from the touch sensor or the pre-processing of the touch-
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`21
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2004
`Page 21
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`Case 1:21-cv-05205-LGS Document 35 Filed 08/23/21 Page 22 of 45
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`sensor signals, the Accused ’144 Products do not comprise said control occurring at least in part
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`concurrently with said acquisition or said pre-processing.
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`68.
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`Claims 1, 6, and 11 of the ’144 Patent require “pre-processing of the touch-sensor
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`signals; and processing of the touch-sensor signals to determine: whether a touch or proximity
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`input has occurred with respect to the touch sensor; [and] if the touch or proximity input has
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`occurred with respect to the touch sensor, a location of the touch or proximity input.”
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`69.
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`The Accused ’144 Products do not meet the claim requirement of “pre-processing
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`of the touch-sensor signals; and processing of the touch-sensor signals to determine: whether a
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`touch or proximity input has occurred with respect to the touch sensor; [and] if the touch or
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`proximity input has occurred with respect to the touch sensor, a location of the touch or
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`proximity input” at least because the Accused ’144 Products do not comprise pre-processing the
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`touch-sensor signals before processing the touch-sensor signals to determine whether a touch or
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`proximity input has occurred and a location of the touch or proximity input.
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`70.
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`For at least the above reasons, the Accused ’144 Products do not infringe any
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`claims of the ’144 Patent, either literally or under the doctrine of equivalents.
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`71.
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`Samsung does not induce infringement of claims 1–14 of the ’144 Patent because,
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`for at least the reasons stated above, there is no direct infringement of those claims because the
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`Accused ’144 Products do not satisfy several limitations of those claims. Additionally, Samsung
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`has not acted with the knowledge or specific intent necessary for induced infringement and has
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`not encouraged others’ infringement.
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`72.
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`Samsung does not contributorily infringe claims 1–14 of the ’144 Patent because,
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`for at least the reasons stated above, there is no direct infringement of those claims because the
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`Accused ’144 Products do not satisfy several limitations of those claims. In addition, the
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`22
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2004
`Page 22
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`Case 1:21-cv-05205-LGS Document 35 Filed 08/23/21 Page 23 of 45
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`Accused ’144 Products were not especially made or especially adapted for use in