Case 6:21-cv-00663 Document 1 Filed 06/25/21 Page 1 of 29
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`IN THE UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`INGENIOSHARE, LLC,
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`Plaintiff,
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`v.
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` Civil Action No. 6:21-cv-00663
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`EPIC GAMES, INC.,
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` JURY TRIAL DEMANDED
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`Defendant.
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`COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff IngenioShare, LLC (“Plaintiff”) states for its Complaint against Epic
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`Games, Inc. as follows:
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`INTRODUCTION
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`1.
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`This is an action for patent infringement arising under the patent laws of
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`the United States, Title 35, United States Code.
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`PARTIES
`Plaintiff IngenioShare, LLC is a limited liability company organized
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`2.
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`and existing under laws of California.
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`3.
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`On information and belief, Defendant Epic Games, Inc. (“Defendant”)
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`is a corporation organized under the laws of Maryland, having a place of business
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`Patent Owner Ex. 2001, p. 1
`IPR2022-00294
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`
`
`IN THE UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`INGENIOSHARE, LLC,
`
`Plaintiff,
`
`v.
`
` Civil Action No. 6:21-cv-00663
`
`EPIC GAMES, INC.,
`
` JURY TRIAL DEMANDED
`
`Defendant.
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff IngenioShare, LLC (“Plaintiff”) states for its Complaint against Epic
`
`Games, Inc. as follows:
`
`INTRODUCTION
`
`1.
`
`This is an action for patent infringement arising under the patent laws of
`
`the United States, Title 35, United States Code.
`
`PARTIES
`Plaintiff IngenioShare, LLC is a limited liability company organized
`
`2.
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`and existing under laws of California.
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`3.
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`On information and belief, Defendant Epic Games, Inc. (“Defendant”)
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`is a corporation organized under the laws of Maryland, having a place of business
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`Patent Owner Ex. 2001, p. 1
`IPR2022-00294
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`Case 6:21-cv-00663 Document 1 Filed 06/25/21 Page 2 of 29
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`in Austin, Texas. Epic Games is registered to do business in Texas and can be served
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`in Texas through its registered agent, C T Corporation System, 1999 Bryan St., Ste.
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`900, Dallas, TX 75201.
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`4.
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`Defendant does business in Texas, directly or through intermediaries
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`and offers products or services, including those accused herein of infringement, to
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`customers and potential customers located in Texas, including in this Judicial
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`District.
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`JURISDICTION
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`5.
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`This Court has subject matter jurisdiction over all causes of action set
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`forth herein pursuant to 28 U.S.C. §§ 1331 and 1338(a) because this action arises
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`under the patent laws of the United States, Title 35, United States Code, including 35
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`U.S.C. § 271, et seq.
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`6.
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`Defendant is subject to personal jurisdiction in the State of Texas and
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`in this Judicial District.
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`7.
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`Venue for this suit is proper in this Judicial District pursuant to 28
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`U.S.C. § 1400(b). Defendant is registered to do business in Texas and maintains an
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`agent for service of process in Texas. On information and belief, Defendant
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`maintains a place of business within the Western District of Texas, as evidenced by
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`Patent Owner Ex. 2001, p. 2
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`Case 6:21-cv-00663 Document 1 Filed 06/25/21 Page 3 of 29
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`its website advertising job positions in Austin, Texas. On information and belief,
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`Defendant has also committed acts of infringement in this Judicial District.
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`8.
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`On information and belief, Defendant has sold and offered for sale
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`accused products to residents of this Judicial District.
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`9.
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`Defendant also has authorized retailers that offer and sell accused
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`products on its behalf in this Judicial District. These include, for example, Best
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`Buy stores, including those located at, for example, 4627 S Jack Kultgen Expy,
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`Waco, TX 76706; 3550 S General Bruce Dr., Temple, TX 76504; 3209 E. Central
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`Texas Expy., Killeen, TX 76543; 125 NW Loop 410, San Antonio, TX 78216;
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`6001 NW Loop 410, San Antonio, TX 78238; 2003 N Loop 1604 E, San Antonio,
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`TX 78232; 12909 Shops Pkwy, Bee Cave, TX 78738; and 9600 S Interstate 35,
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`Austin, TX 78748.
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`10. Plaintiff’s cause of action arises directly from Defendant’s business
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`contacts and other activities in the State of Texas and this Judicial District.
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`11. On information and belief, Defendant has derived substantial revenues
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`from its infringing acts occurring within the State of Texas and within this Judicial
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`District.
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`Patent Owner Ex. 2001, p. 3
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`12. This Court has personal jurisdiction over Defendant at least because it
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`maintains an established place of business in this Judicial District. Defendant also has
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`employees working in and from this Judicial District.
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`13. This Court also has personal jurisdiction over Defendant under the
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`provisions of the Texas Long Arm Statute and consistent with Constitutional due
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`process by virtue of the fact that, upon information and belief, Defendant has
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`availed itself of the privilege of conducting and soliciting business within this
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`State, including engaging in at least some of the infringing activities in this State, as
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`well as by others acting as Defendant’s agents and/or representatives, such that it
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`would be reasonable for this Court to exercise jurisdiction consistent with
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`principles underlying the U.S. Constitution and without offending traditional
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`notions of fair play and substantial justice.
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`14. On information and belief, Defendant has also established minimum
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`contacts with this Judicial District and regularly transacts and does business within
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`this Judicial District, including advertising, promoting and selling products over
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`the Internet, through intermediaries, representatives and/or agents located within
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`this Judicial District, that infringe Plaintiff’s patents, which products are then sold
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`and/or shipped directly to citizens residing within this State and in this Judicial
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`District. Upon further information and belief, Defendant has purposefully directed
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`Patent Owner Ex. 2001, p. 4
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`activities at citizens of this State, including those located within this Judicial
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`District.
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`15. On information and belief, Defendant has also purposefully and
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`voluntarily placed its products into the stream of commerce with the expectation
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`that they will be purchased and used by customers located in the State of Texas.
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`On information and belief, Defendant’s customers in the State of Texas, including
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`those in this Judicial District, have purchased and used and continue to purchase
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`and use Defendant’s products.
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`16. Furthermore, this Court has personal jurisdiction over Defendant under
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`the Long Arm Statute of the State of Texas because: (i) Defendant has and continues
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`to intentionally sell products and methods to customers in Texas; (ii) Defendant has
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`and continues to intentionally instruct customers and potential customers in Texas
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`with respect to how to use the products and methods that Defendant sells to
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`customers in Texas; (iii) Defendant knows and has known its products and methods,
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`including the infringing products and methods, have and continue to be sold and
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`marketed in Texas through regular and established distribution channels; (iv)
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`Defendant knows and has known its products and methods will enter and/or be
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`distributed throughout the United States of America and the State of Texas; (v)
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`Defendant has and continues to target customers and potential customers in Texas to
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`Patent Owner Ex. 2001, p. 5
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`buy and/or use Defendant’s products and methods, including the infringing products
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`and methods; (vi) Defendant has and continues to provide advice to customers in
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`Texas; (vii) it has been and continues to be foreseeable that Defendant’s products and
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`methods, including the infringing products and methods, would enter the State of
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`Texas; (viii) Defendant has and continues to market to citizens of Texas through its
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`website; (ix) Defendant has and continues to provide services to citizens of Texas
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`through its website; (x) Defendant derives substantial revenue from Texas; (xi) Texas
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`has and continues to be part of Defendant’s established distribution channels; (xii)
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`the assertion of personal jurisdiction over Defendant is reasonable and fair; and (xiii)
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`the State of Texas has an interest in this matter due to the presence of Defendant
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`within this State, as well as the presence of Defendant’s infringing products in the
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`State of Texas.
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`17. This Court also has personal jurisdiction over Defendant because: (i)
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`Defendant maintains regular and systematic business contacts with the State of Texas
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`and within this Judicial District; (ii) Defendant purposely, regularly, and
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`continuously conducts business in the State of Texas and within this Judicial District;
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`(iii) Defendant purposefully directs its activities at residents of the State of Texas;
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`(iv) the causes of action set forth herein arise out of or relate to Defendant’s activities
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`in the State of Texas; and (v) the exercise of jurisdiction over Defendant will not
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`Patent Owner Ex. 2001, p. 6
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`offend the traditional notions of fair play and substantial justice.
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`Factual Background
`18. Plaintiff has partnered with inventors and entrepreneurs to provide
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`innovative market-driven ideas and user-friendly technologies. One set of its novel
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`solutions relates to communication technologies, applicable to multiplayer video
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`games.
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`19. Plaintiff’s predecessor-in-interest partnered with Kwok-wai Cheung,
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`Ph.D. in developing this innovative technology. Dr. Cheung received his B.S. (Eng.)
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`from the University of Hong Kong (1st Class Honor), followed by an M.S. from Yale
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`University and a Ph.D. from the California Institute of Technology.
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`20. Dr. Cheung was a member of the technical staff in the Applied Research
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`Area of Bell Communications Research from 1987 until 1992.
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`21. Since 1996, Dr. Cheung has been a professor in the Department of
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`Information Engineering at the Chinese University of Hong Kong. He served as the
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`Division Head of the Department of Information Engineering from Aug. 1, 2009
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`through July 31, 2012. He also served as the Director of the Centre for Innovation
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`and Technologies, Faculty of Engineering, at the Chinese University of Hong Kong
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`from May 1996 until September 2001.
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`22. Dr. Cheung is a named inventor on more than 40 patents, including
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`Patent Owner Ex. 2001, p. 7
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`more than 20 United States patents.
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`23. Dr. Cheung has contributed to over 130 papers with over 800 Science
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`Citation Index (SCI) citations.
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`24. Dr. Cheung has been the principal investigator or co-principal
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`investigator on research grants totaling more than $10,000,000 (U.S.).
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`25. Dr. Cheung is the first-named inventor on the patents asserted in this
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`case.
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`26. Dr. Cheung, as well as the other named inventors, remain associated
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`with Plaintiff.
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`27. Defendant is a successful video game developer and publisher. In
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`2017, Defendant first released Fortnite, which is an online video game. Normally,
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`Fortnite is played by multiple players concurrently. On information and belief,
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`Fortnite has at least three distinct game mode versions that have the same general
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`gameplay and game engine: Fortnite: Save the World, which is a cooperative
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`hybrid-tower, defense-shooter-survival game in which four players fight
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`off zombie-like creatures and defend objects with traps and fortifications they
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`might build; Fortnite Battle Royale, a battle royale game in which up to 100
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`players fight to be the last person standing; and Fortnite Creative, in which players
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`are given complete freedom to create worlds and battle arenas.
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`Patent Owner Ex. 2001, p. 8
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`28. Fortnite allows players to communicate with one another. Such
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`communication features are crucial to Fortnite. As explained by Defendant’s CEO
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`Tim Sweeney, part of the appeal of Fortnite is that it is “as much a social hangout
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`for a lot of folks as it is a game.” https://www.wsj.com/articles/the-man-behind-
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`fortnite-11560571201?mod=hp_lead_pos5.
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`29. Plaintiff’s innovations applicable to communication technologies
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`concerning multiplayer video games were the result of research and development
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`efforts by the inventors. The inventors recognized the need for easier, more
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`protected and/or secured electronic communication using multiple modes.
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`Plaintiff’s innovations in this regard are well-suited to allow players of multiplayer
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`video games to communicate with ease, privately and securely, and in real-time
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`using multiple modes, while keeping their contact information private. Such
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`innovations are protected by Plaintiff’s patents. Plaintiff’s patents were first filed
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`in 2006 more than a decade before Defendant’s Fortnite product was first released.
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`30. Beginning in November 2018, Plaintiff’s predecessor-in-interest
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`approached Defendant in writing to discuss a business agreement regarding
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`Plaintiff’s patents applicable to Defendant’s Fortnite product. Defendant did not
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`respond.
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`31. Subsequently in an October 2019 letter to Defendant, Plaintiff’s
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`Patent Owner Ex. 2001, p. 9
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`predecessor-in-interest again sought a business discussion concerning Plaintiff’s
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`patents explaining some of the benefits of the patented technologies in online
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`communication. The letter included a press release, which expressly noted
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`“Fortnite [has] implemented [Plaintiff’s predecessor-in-interest’s] patented
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`technologies.” (https://www.businesswire.com/news/home/20191003005319/en/)
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`Defendant chose not to respond to the letter.
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`32. Then, in January 2020, Plaintiff’s predecessor-in-interest again
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`contacted Defendant in writing requesting a dialog to discuss its intellectual
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`property rights, even illustrating how one of Plaintiff’s patents could be infringed.
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`Defendant again did not respond. Despite these good-faith efforts to negotiate a
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`business solution, Defendant failed to show any desire for a resolution and
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`continues to use Plaintiff’s intellectual property without authority. In June 2021,
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`Plaintiff, by way of counsel, communicated in writing with Defendant alerting it of
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`its infringement of Plaintiff’s patents and offering to seek resolution.
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`Plaintiff’s U.S. Patent No. 10,708,727
`33. On July 7, 2020, the United States Patent and Trademark Office duly
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`and legally issued United States Patent No. 10,708,727 (“the ʼ727 patent”), entitled
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`“Method and Apparatus to Manage Messaging Providing Different
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`Communication Modes Using One Identifier and Not Requiring to Disclose
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`Patent Owner Ex. 2001, p. 10
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`Contact Information.” A true and correct copy of the ʼ727 patent is attached hereto
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`as Exhibit A.
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`34. Plaintiff is the owner, by assignment, of all right, title, and interest in
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`and to the ’727 patent, including the right to bring suit for past, present, and future
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`patent infringement, and to collect past, present, and future damages.
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`35. The claims of the ’727 patent are focused on advances over the prior
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`art such that their character as a whole is not directed to excluded subject matter,
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`such as an abstract idea, or any other subject matter excluded under 35 U.S.C.
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`§101.
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`36. The Patent Office determined all the claims of the ’727 patent to be
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`patent eligible, definite, novel and nonobvious.
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`37. The inventions claimed in the ’727 patent solve real-world,
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`technological problems.
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`38. The solutions disclosed and claimed in the ’727 patent are utilized in
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`computing apparatuses, including those detailed in the claim charts attached as
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`Exhibit E.
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`39. The claims of the ’727 patent recite features that address the technical
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`problems and challenges in the art, thereby providing specific technological
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`solutions that improved the state of the art. Thus, the claims are not directed to an
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`Patent Owner Ex. 2001, p. 11
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`abstract concept.
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`40. The inventions claimed in the ’727 patent were not well-understood,
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`routine, or conventional as of the priority date of the ’727 patent, but instead claim
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`specific, novel, and nonobvious improvements to the prior art.
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`41. The ’727 patent is compliant with 35 U.S.C. § 101.
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`42. The ’727 patent is compliant with 35 U.S.C. § 102.
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`43. The ’727 patent is compliant with 35 U.S.C. § 103.
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`44. The ’727 patent is compliant with 35 U.S.C. § 112.
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`45. The ’727 patent is presumed valid and enforceable in accordance with
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`35 U.S.C. § 282.
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`46. Plaintiff provided Defendant with notice of its infringement of the
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`’727 patent prior to filing suit.
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`Plaintiff’s U.S. Patent No. 10,492,038
`47. On November 26, 2019, the United States Patent and Trademark
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`Office duly and legally issued United States Patent No. 10,492,038 (“the ʼ038
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`patent”), entitled “Method and Apparatus to Manage Messaging Providing
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`Different Communication Modes Depending on One Identifier and Not Requiring
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`to Disclose Contact Information.” A true and correct copy of the ʼ038 patent is
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`attached hereto as Exhibit B.
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`Patent Owner Ex. 2001, p. 12
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`48. Plaintiff is the owner, by assignment, of all right, title, and interest in
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`and to the ’038 patent, including the right to bring suit for past, present, and future
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`patent infringement, and to collect past, present, and future damages.
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`49. The claims of the ʼ038 patent are focused on an advance over the prior
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`art such that their character as a whole is not directed to excluded subject matter,
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`such as an abstract idea, or any other subject matter excluded under 35 U.S.C.
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`§101.
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`50. The Patent Office determined all the claims of the ʼ038 patent to be
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`patent eligible, definite, novel and nonobvious.
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`51. The ʼ038 patent solves real-world, technological problems.
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`52. The solutions disclosed and claimed in the ʼ038 patent are utilized in
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`popular video games, including as detailed in the claim chart attached as Exhibit F.
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`53. The claims of the ʼ038 patent recite features that address the technical
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`problems and challenges in the art, thereby providing specific technological
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`solutions that improved the state of the art. Thus, the claims are not directed to an
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`abstract concept.
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`54. The inventions claimed in the ʼ038 patent were not well-understood,
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`routine, or conventional as of the priority date of the ʼ038 patent, but instead claim
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`specific, novel, and nonobvious improvements to the prior art.
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`Patent Owner Ex. 2001, p. 13
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`55. The ʼ038 patent is compliant with 35 U.S.C. § 101.
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`56. The ʼ038 patent is compliant with 35 U.S.C. § 102.
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`57. The ʼ038 patent is compliant with 35 U.S.C. § 103.
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`58. The ʼ038 patent is compliant with 35 U.S.C. § 112.
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`59. The ʼ038 patent is presumed valid and enforceable in accordance with
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`35 U.S.C. § 282.
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`60. Plaintiff’s predecessor-in-interest provided notice to Defendant of the
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`allowed application that matured into the ’038 patent in a letter dated October 11,
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`2019 (along with related patents) and offered to reach a business agreement with
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`Defendant regarding its intellectual property rights. Defendant did not respond.
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`Plaintiff’s predecessor-in-interest provided notice to Defendant of how the ’038
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`patent could be infringed in a letter dated January 7, 2020, and again offered to
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`reach a business resolution. Defendant again did not respond. Plaintiff also
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`provided notice to Defendant regarding its infringement of the ’038 patent prior to
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`filing suit.
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`Plaintiff’s U.S. Patent No. 10,142,810
`61. On November 27, 2018, the United States Patent and Trademark
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`Office duly and legally issued United States Patent No. 10,142,810 (“the ʼ810
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`patent”), entitled “Method and Apparatus to Manage Different Options of
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`Patent Owner Ex. 2001, p. 14
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`Communications Using One User Identifier Based on Internet Protocol.” A true
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`and correct copy of the ʼ810 patent is attached hereto as Exhibit C.
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`62. Plaintiff is the owner, by assignment, of all right, title, and interest in
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`and to the ’810 patent, including the right to bring suit for past, present, and future
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`patent infringement, and to collect past, present, and future damages.
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`63. The claims of the ʼ810 patent are focused on advances over the prior
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`art such that their character as a whole is not directed to excluded subject matter,
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`such as an abstract idea, or any other subject matter excluded under 35 U.S.C.
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`§101.
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`64. The Patent Office determined all the claims of the ʼ810 patent to be
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`patent eligible, definite, novel and nonobvious.
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`65. The ʼ810 patent solves real-world, technological problems.
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`66. The solutions disclosed and claimed in the ʼ810 patent are utilized in
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`computing apparatuses, including as detailed in the claim chart attached as Exhibit
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`G.
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`67. The claims of the ʼ810 patent recite features that address the technical
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`problems and challenges in the art, thereby providing specific technological
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`solutions that improved the state of the art.
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`68. The inventions claimed in the ʼ810 patent were not well-understood,
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`Patent Owner Ex. 2001, p. 15
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`routine, or conventional as of the priority date of the ʼ810 patent, but instead claim
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`specific, novel, and nonobvious improvements to the prior art.
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`69. The ʼ810 patent is compliant with 35 U.S.C. § 101.
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`70. The ʼ810 patent is compliant with 35 U.S.C. § 102.
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`71. The ʼ810 patent is compliant with 35 U.S.C. § 103.
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`72. The ʼ810 patent is compliant with 35 U.S.C. § 112.
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`73. The ʼ810 patent is presumed valid and enforceable in accordance with
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`35 U.S.C. § 282.
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`74. Plaintiff’s predecessor-in-interest provided notice to Defendant of the
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`’810 patent in a letter dated November 29, 2018, and offered to reach a business
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`agreement with Defendant. Plaintiff’s predecessor-in-interest again provided
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`Defendant with notice of the ’810 patent by letter dated October 11, 2019 (along
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`with related patents) and offered to reach a business agreement with Defendant
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`regarding its intellectual property rights. Defendant did not respond to either letter.
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`Plaintiff also provided Defendant with notice of its infringement of the ’810 patent
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`prior to filing suit.
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`Plaintiff’s U.S. Patent No. 8,744,407
`75. On June 3, 2014, the United States Patent and Trademark Office duly
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`and legally issued United States Patent No. 8,744,407 (“the ʼ407 patent”), entitled
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`Patent Owner Ex. 2001, p. 16
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`“Systems and Processes to Manage Multiple Modes of Communication.” A true
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`and correct copy of the ʼ407 patent is attached hereto as Exhibit D.
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`76. Plaintiff is the owner, by assignment, of all right, title, and interest in
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`and to the ʼ407 patent, including the right to bring suit for past, present, and future
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`patent infringement, and to collect past, present, and future damages.
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`77. The claims of the ʼ407 patent are focused on advances over the prior
`
`art such that their character as a whole is not directed to excluded subject matter,
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`such as an abstract idea, or any other subject matter excluded under 35 U.S.C.
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`§101.
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`78.
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`In fact, the Patent Office determined all the claims of the ʼ407 patent
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`to be patent eligible, definite, novel and nonobvious.
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`79. The ʼ407 patent solves real-world, technological problems.
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`80. The solutions disclosed and claimed in the ʼ407 patent are utilized in
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`computing apparatuses, including as detailed in the claim charts attached as
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`Exhibit H.
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`81. The claims of the ʼ407 patent recite features that address the technical
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`problems and challenges in the art, thereby providing specific technological
`
`solutions that improved the state of the art.
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`82. The inventions claimed in the ʼ407 patent were not well-understood,
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`Patent Owner Ex. 2001, p. 17
`IPR2022-00294
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`Case 6:21-cv-00663 Document 1 Filed 06/25/21 Page 18 of 29
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`routine, or conventional as of the priority date of the ʼ407 patent, but instead claim
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`specific, novel, and nonobvious improvements to the prior art.
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`83. The ʼ407 patent is compliant with 35 U.S.C. § 101.
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`84. The ʼ407 patent is compliant with 35 U.S.C. § 102.
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`85. The ʼ407 patent is compliant with 35 U.S.C. § 103.
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`86. The ʼ407 patent is compliant with 35 U.S.C. § 112.
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`87. The ʼ407 patent is presumed valid and enforceable in accordance with
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`35 U.S.C. § 282.
`
`88. Plaintiff’s predecessor-in-interest provided notice to Defendant of the
`
`’407 patent in a letter dated October 11, 2019 (along with related patents) and
`
`offered to reach a business agreement with Defendant regarding its intellectual
`
`property rights. Defendant did not respond. Plaintiff also provided Defendant with
`
`notice of its infringement of the ’407 patent prior to filing suit.
`
`COUNT ONE: DIRECT INFRINGEMENT OF THE ʼ727 PATENT
`89. Plaintiff realleges and incorporates herein the preceding allegations of
`
`this Complaint as if fully set forth herein.
`
`90. Defendant has in the past and continue to infringe one or more claims
`
`of the ʼ727 patent, including at least claims 1, 2, 3, 6, 7, 8, 9, 15, 16, and 17, in
`
`violation of 35 U.S.C. §§ 271(a) by making, using, offering to sell, or selling the
`
`Patent Owner Ex. 2001, p. 18
`IPR2022-00294
`
`
`
`Case 6:21-cv-00663 Document 1 Filed 06/25/21 Page 19 of 29
`
`patented invention within the United States or importing the patented invention
`
`into the United States.
`
`91. A representative example of Defendant’s infringing apparatuses,
`
`methods, and systems includes (but is not limited to) Defendant’s video games
`
`known as Fortnite. A representative claim chart demonstrating Defendant’s
`
`infringement of the ’727 patent, either literally or under the doctrine of equivalents,
`
`is attached as Exhibit E. Defendant’s infringing products include, without
`
`limitation, other video games providing functionality such as that shown in the
`
`representative charts (“Accused Products”).
`
`92. Plaintiff notified Defendant of its infringement of the ’727 patent prior
`
`to filing suit.
`
`93. Plaintiff has and continues to suffer damages as a direct and
`
`proximate result of Defendant’s direct infringement of the ’727 patent and will
`
`suffer additional and irreparable damages unless Defendant is permanently
`
`enjoined by this Court from continuing its infringement. Plaintiff has no adequate
`
`remedy at law.
`
`94. Plaintiff is entitled to: (i) damages adequate to compensate it for
`
`Defendant’s direct infringement of the ʼ727 patent, which amounts to, at a
`
`minimum, a reasonable royalty; (ii) attorneys’ fees; (iii) costs; and (iv) an
`
`Patent Owner Ex. 2001, p. 19
`IPR2022-00294
`
`
`
`Case 6:21-cv-00663 Document 1 Filed 06/25/21 Page 20 of 29
`
`injunction.
`
`COUNT TWO: DIRECT INFRINGEMENT OF THE ʼ038 PATENT
`95. Plaintiff realleges and incorporates herein the preceding allegations of
`
`this Complaint as if fully set forth herein.
`
`96. Defendant has in the past and continues to infringe one or more claims
`
`of the ʼ038 patent, including at least claims 46, 58, 59, 60, 61, and 62, in violation
`
`of 35 U.S.C. §§ 271(a) by making, using, offering to sell, or selling the patented
`
`invention within the United States or importing the patented invention into the
`
`United States.
`
`97. A representative example of Defendant’s infringing apparatuses,
`
`methods, and systems include (but are not limited to) Defendant’s video games
`
`known as Fortnite. A representative claim chart demonstrating Defendant’s
`
`infringement of the ʼ038 patent, either literally or under the doctrine of equivalents,
`
`is attached as Exhibit F. Defendant’s Accused Products include, without limitation,
`
`other video games providing functionality such as that shown in the representative
`
`charts.
`
`98. Plaintiff notified Defendant of its infringement of the ’038 patent prior
`
`to filing suit.
`
`99. Plaintiff has and continues to suffer damages as a direct and
`
`Patent Owner Ex. 2001, p. 20
`IPR2022-00294
`
`
`
`Case 6:21-cv-00663 Document 1 Filed 06/25/21 Page 21 of 29
`
`proximate result of Defendant’s direct infringement of the ʼ038 patent and will
`
`suffer additional and irreparable damages unless Defendant is permanently
`
`enjoined by this Court from continuing its infringement. Plaintiff has no adequate
`
`remedy at law.
`
`100. Plaintiff is entitled to: (i) damages adequate to compensate it for
`
`Defendant’s direct infringement of the ʼ038 patent, which amounts to, at a
`
`minimum, a reasonable royalty; (ii) attorneys’ fees; (iii) costs; (iv) treble damages
`
`due to willful infringement; and (v) an injunction.
`
`COUNT THREE: INDIRECT INFRINGEMENT OF THE ʼ038 PATENT
`101. Plaintiff realleges and incorporates herein the preceding allegations of
`
`this Complaint as if fully set forth herein.
`
`102. Defendant has in the past and continues to indirectly infringe at least
`
`claims 46, 58, 59, 60, 61, and 62 in violation of 35 U.S.C. § 271(b) by actively,
`
`knowingly, and intentionally inducing direct infringement by other persons,
`
`including retailers, customers and/or end users, by distributing, offering for sale
`
`and/or selling Defendant’s Accused Products in the United States and instructing
`
`on their infringing use without authority or license from Plaintiff and in a manner
`
`understood and intended to infringe the ʼ038 patent.
`
`103. Plaintiff notified Defendant of its infringement of the ’038 patent prior
`
`Patent Owner Ex. 2001, p. 21
`IPR2022-00294
`
`
`
`Case 6:21-cv-00663 Document 1 Filed 06/25/21 Page 22 of 29
`
`to filing suit.
`
`104. Plaintiff has and continues to suffer damages as a direct and
`
`proximate result of Defendant inducing infringement of the ʼ038 patent and will
`
`suffer additional and irreparable damages unless Defendant is permanently
`
`enjoined by this Court from continuing its infringement. Plaintiff has no adequate
`
`remedy at law.
`
`105. Plaintiff is entitled to: (i) damages adequate to compensate it for
`
`Defendant inducing infringement of the ʼ038 patent, which amounts to, at a
`
`minimum, a reasonable royalty; (ii) attorneys’ fees; (iii) costs; (iv) treble damages
`
`due to willful infringement; and (v) an injunction.
`
`COUNT FOUR: DIRECT INFRINGEMENT OF THE ’810 PATENT
`106. Plaintiff realleges and incorporates herein the preceding allegations of
`
`this Complaint as if fully set forth herein.
`
`107. Defendant has in the past and continue to infringe one or more claims
`
`of the ’810 patent, including at least claims 1 and 11, in violation of 35 U.S.C. §§
`
`271(a) by making, using, offering to sell, or selling the patented invention within
`
`the United States or importing the patented invention into the United States.
`
`108. A representative example of Defendant’s infringing apparatuses,
`
`methods, and systems include (but are not limited to) Defendant’s video games
`
`Patent Owner Ex. 2001, p. 22
`IPR2022-00294
`
`
`
`Case 6:21-cv-00663 Document 1 Filed 06/25/21 Page 23 of 29
`
`known as Fortnite. A representative claim chart demonstrating Defendant’s
`
`infringement of the ’810 patent, either literally or under the doctrine of equivalents,
`
`is attached as Exhibit G. Defendant’s Accused Products include, without
`
`limitation, other video games providing functionality such as that shown in the
`
`representative charts.
`
`109. Plaintiff notified Defendant of its infringement of the ’810 patent prior
`
`to filing suit.
`
`110. Plaintiff has and continues to suffer damages as a direct and
`
`proximate result of Defendant’s direct infringement of the ’810 patent and will
`
`suffer additional and irreparable damages unless Defendant is permanently
`
`enjoined by this Court from continuing its infringement. Plaintiff has no adequate
`
`remedy at law.
`
`111. Plaintiff is entitled to: (i) damages adequate to compensate it for
`
`Defendant’s direct infringement of the ’810 patent, which amounts to, at a
`
`minimum, a reasonable royalty; (ii) attorneys’ fees; (iii) costs; and (iv) an
`
`injunction.
`
`COUNT FIVE: INDIRECT INFRINGEMENT OF THE ʼ810 PATENT
`112. Plaintiff realleges and incorporates herein the preceding allegations of
`
`this Complaint as if fully set forth herein.
`
`Patent Owner Ex. 2001, p. 23
`IPR2022-00294
`
`
`
`Case 6:21-cv-00663 Document 1 Filed 06/25/21 Page 24 of 29
`
`113. Defendant has in the past and continues to indirectly infringe at least
`
`claim 11 in violation of 35 U.S.C. § 271(b) by actively, knowingly, and
`
`intentionally inducing direct infringement by other persons, including retailers,
`
`customers and/or end users, by distributing, offering for sale and/or selling
`
`Defendant’s Accused Products in the United States and instructing on their
`
`infringing use without authority or license from Plaintiff and in a ma
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