Case 6:21-cv-00696-ADA Document 35 Filed 11/22/21 Page 1 of 27
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`CAROLYN W. HAFEMAN,
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`Plaintiff,
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`v.
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`Civil Action No. 6:21-cv-00696-ADA
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`LG ELECTRONICS, INC.,
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` JURY TRIAL DEMANDED
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`Defendant.
`
`PLAINTIFF’S FIRST AMENDED
`COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff, Carolyn W. Hafeman (“Hafeman” or “Plaintiff”), by and through her undersigned
`counsel, hereby files this First Amended Complaint for Patent Infringement against Defendant LG
`Electronics, Inc. (“LG” or “Defendant”). For her complaint, Hafeman alleges as follows:
`INTRODUCTION
`This is an action for patent infringement against Defendant LG. Plaintiff seeks
`1.
`judgment that LG has directly and indirectly infringed United States Patent Nos. (i) 9,892,287, (ii)
`10,325,122, and (iii) 10,789,393 (collectively, the “Asserted Patents”) by manufacturing and
`selling cellular, computer tablet, and laptop devices which include systems for displaying the
`owner’s name and contact information, as well as a remote access system to change the information
`displayed and lock future uses of the device, to aid in the recovery of the device.
`THE PARTIES
`Plaintiff Carolyn W. Hafeman is an individual who is a resident and citizen of the
`2.
`State of Colorado, and currently resides in the County of Jefferson.
`3.
`Defendant LG Electronics, Inc. is a corporation organized and existing under the
`laws of Korea with its principal place of business at LG Twin Towers, 128 Yeoui-daero,
`Yeongdungpo-gu, Seoul 150-721, Republic of Korea. On information and belief, LG may be
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`Case 6:21-cv-00696-ADA Document 35 Filed 11/22/21 Page 2 of 27
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`served with process at its principal place of business. LG designs, makes, and sells many products
`throughout the world for consumer use, including wireless mobile communications devices.
`JURISDICTION AND VENUE
`4.
`This Court has subject matter jurisdiction over Hafeman’s claims pursuant to 28
`U.S.C. §§ 1338(a) because this matter arises under the patent laws of the United States, Title 35
`of the United States Code.
`5.
`This Court has personal jurisdiction over Defendant in this action because
`Defendant has committed acts within this District giving rise to this action, and has established
`minimum contacts with this forum such that the exercise of jurisdiction over Defendant would not
`offend traditional notions of fair play and substantial justice. Defendant, directly or through
`subsidiaries or intermediaries, has committed and continues to commit acts of infringement in this
`District by, among other things, importing, offering to sell, and selling products that infringe the
`asserted patents.
`6.
`Venue is proper in this District under 28 U.S.C. §§ 1391(c)(3). Personal jurisdiction
`over Defendant exists in this District. Upon information and belief, Defendant has transacted
`business in this District and has committed acts of direct and indirect infringement in this District
`by, among other things, making, using, offering to sell, selling, and importing products that
`infringe the asserted patents. Further, the Accused Products asserted in this complaint are sold
`throughout Waco, Texas, and the infringing features are used throughout Waco, Texas.
`Additionally, venue is proper as to a foreign defendant in any district. 28 U.S.C. § 1391(c)(3); In
`re HTC Corp., 889 F.3d 1349 (Fed. Cir. 2018). LG is a foreign corporation organized under the
`laws of Korea with a principal place of business in Korea.
`THE INVENTOR AND ASSERTED PATENTS
`7.
`Hafeman began working in the security business with her father after she graduated
`from college. Together, the father-daughter duo worked to develop and sell security locks that
`were physically installed on computers to prevent theft. Upon her father’s retirement, Hafeman
`began developing systems of electronic security that could be used to fully protect a device.
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`8.
`On November 25, 2002, Hafeman applied for a patent for her computer recovery
`and return invention. U.S. Patent No. 8,601,606, a continuation-in-part of this application, entitled
`“Computer Recovery or Return” (“the ’606 Patent”) was duly issued by the United States Patent
`and Trademark Office (the “USPTO”) on December 3, 2013, after years of extensive review.
`9.
`In 2007, realizing that no one else was utilizing this type of technology still,
`Hafeman developed a system that could be uploaded and stored onto the memory of a device that
`would display the owner’s name and contact information to assist in the device’s recovery. This
`information would be displayed either before or with a lock screen, allowing it to be visible to any
`person in possession of the device. Hafeman also developed the system to include remote access.
`Using the internet, the owner (or an authorized third party) could remotely access the security
`system through an interactive program stored in the memory of the device. With this remote access,
`the owner could change the information displayed on the screen of the device to show a warning
`message (e.g., “This computer has been stolen!”) and even lock the device from future use.
`10.
`In 2007, Hafeman incorporated FrontDoorSoftware Corporation and brought the
`computer recovery system to market. By 2009, FrontDoorSoftware had customers in government,
`retail, corporate, healthcare, and education. Educational customers included campus-wide licenses
`for universities like UCLA, USC, Cornell, Brown, Johns Hopkins, and dozens more. In 2011,
`FrontDoorSoftware received an award, placing first out of 175 companies, as the top start-up at a
`Vator Pitching Event in San Francisco.
`11.
`Since Hafeman’s initial patent, she has been granted six additional patents relating
`to the ’606 Patent: U.S. Patent Nos. (i) 9,021,610 (“the ’610 Patent”), (ii) 9,390,296 (“the ’296
`Patent”), (iii) 9,672,388 (“the ’388 Patent”), (iv) 9,892,287 (“the ’287 Patent”), (v) 10,325,122
`(“the ’122 Patent”), and (vi) 10,789,393 (“the ’393 Patent”). Relevant to the claims in this matter
`are the ’287 Patent, the ’122 Patent, and the ’393 Patent (collectively, the “Asserted Patents”).
`Each of the Asserted Patents are attached as Exhibit A to this complaint. Hafeman is the sole owner
`of the Asserted Patents, as she has never sold or otherwise transferred her ownership.
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`12.
`Each Asserted Patent includes method, system, apparatus, and stored computer
`program claims. The asserted claims in this case include the independent and dependent claims of
`the method, system, apparatus, and stored computer program claims in the Asserted Patents (the
`“Asserted Claims”).
`13.
`Claim 1 of the ’122 Patent is an exemplary method claim. It recites:
`A method for displaying information to assist with returning a computer comprising the
`steps of:
`[a] activating a processor to display on a display screen on the computer which
`displays information concerning the return information for returning the computer
`to an owner from data stored in a memory of the computer, the screen displaying
`return information before or with a lock screen, to facilitate return of the computer
`and which is maintained on or before or with the lock is screen so the return
`information is visible to anyone viewing the display screen, the lock screen locks
`the display screen and protects the computer;
`[b] initiating or changing return information which appears on the display through
`remote communications without assistance by a user with the computer, wherein
`the changing of the return information is done through an interactive program
`stored in the memory of the computer which is remotely accessed only by the owner
`of the computer or the party authorized by the owner to enable the initiating or
`changing of the display screen;
`[c] displaying the screen before or with a security prompt which prevents the user
`from accessing operatively the computer; and
`[d] activating the processor to allow a warning message to the user.
`14.
`Claim 4 of the ’122 Patent is an exemplary apparatus claim. It recites:
`An apparatus for displaying information at a computer owned by an owner which can be
`used by an owner or user, the apparatus comprising:
`[a] a computer comprising;
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`[b] a memory;
`[c] a display; and
`[d] a processor in communication with the display and the memory which displays
`on the display with the computer recovery information for returning the computer
`to an owner from data stored in the memory of the computer to facilitate return of
`the computer and which is maintained on or before or with the lock screen so the
`return information is visible to anyone viewing the display, the processor initiating
`or changing the return information through remote communication without
`assistance by the user with the computer, wherein the changing of the recovery
`information is done through an interactive program stored in the memory of the
`computer and which is remotely accessed only by the owner of the computer or the
`party authorized by the owner to enable the initiating or changing of the recovery
`information on the display, the lock screen locks the display screen and protects the
`computer.
`Finally, Claim 7 of the ’122 Patent is an exemplary stored computer program claim.
`
`15.
`It recites:
`A computer program stored in a non-transient memory for displaying information to assist
`with returning a computer to its owner comprising the computer generated steps of:
`[a] displaying by a processor on a display of the computer which displays recovery
`information for the returning the computer to an owner from data stored in a
`memory of the computer, the display displaying the recovery information before or
`with a lock screen, to facilitate return of the computer and which is maintained on
`or before or with the lock screen so the return information is visible to anyone
`viewing the display, the lock screen locks the display screen and protects the
`computer; and
`[b] initiating or changing the recovery information through remote communication
`without assistance by the user with the computer, wherein the initiating or changing
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`of the recovery information is done through an interactive program stored in the
`memory of the computer and is remotely accessed only by the owner of the
`computer of the party authorized by the owner to enable the initiating or changing
`of the recovery information.
`DEFENDANT’S ACCUSED PRODUCTS
`16.
`Defendant and/or its divisions, subsidiaries, and/or agents is engaged in the
`business of making, offering for sale and/or selling cellular and computer devices that are
`configured to include systems that display the owner’s name and contact information on the screen
`before or with the lock screen, as well as provide remote access to allow the owner (or authorized
`third party) to lock the device from future access and display a warning message. As so configured,
`LG’s devices, when used, perform all of the steps of the methods claimed and include all of the
`components recited in the Asserted Claims. These devices include all LG-made Android OS cell
`phones, tablets, and laptops with the “Find My Device” feature, including: (i) LG Wing LM-
`F100TM, (ii) LG K92 LM-K920TM, (iii) LG Velvet LM-G900TM, (iv) LG Velvet LM-G900MM,
`(v) LG G8X ThinQ, (vi) LG Q70, LG K51, (vii) LM-K300QM, (viii) LG Stylo6, (ix) LG Stylo5,
`(x) LG Xpression Plus 3 LM-K400AKR, (xi) LG K30 LM-X320QMG, (xii) LG K22 LM-
`K200QM, (xiii) LG K31 Rebel LGL355DL, (xiv) LG K8X LM-K300UM, (xv) LG Harmony 4
`LM-K400AM, (xvi) LG Reflect LG L555DL, (xvii) LG Risio 4 LM-K300AM4, (xviii) LG Risio
`4 LM-K300CMR, (xix) LG V60 ThinQ LM-V600TM, (xx) LG Neon Plus LM-X320APM, (xxi)
`LG Neon Plus LM-X320AM8, (xxii) LG Tribute Royal LM-X320PM, (xxiii) LG K40 LM-
`X420AS, (xxiv) LG Journey LTE LG L322DL, (xxv) LG G7 Fit, (xxvi) LG Arena 2 LM-
`X320APM, (xxvii) LG Arena 2 LM-X320AM8, (xxviii) LG Prime 2 LM-X320AA, (xxxix) LG
`GPad 5 10.1 LM-T600TS, (xl) LG GPad 5 10.1 LM-T600QS, (xli) LG GPad 5 10.1 LM-T600MS,
`(xlii) LG Gram Laptop, 14Z90P Series, (xliii) LG Gram Laptop, 15Z90P Series, (lxiv) LG Gram
`Laptop, 15Z90P Series, (lxv) LG Ultra Laptop, 13U70P Series, and (lxvi) LG Ultra Laptop,
`15U70P Series (the “Accused Products”).
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`17.
`Each Accused Product is configured to perform all of the steps and includes all of
`the components recited in the Asserted Claims, during normal use. On information and belief, LG
`has actually used the Accused Products to perform each step of the methods and included
`components recited in the Asserted Claims, within the United States, either itself, through
`intermediaries, or in conjunction with one or more joint ventures or customers.
`18.
`LG’s product literature, website, and other publicly available information shows
`that the Accused Products are configured to perform all of the steps and include all of the
`components of the Asserted Claims during normal use.
`19.
`The Accused Products are pre-loaded with a “Find My Device” feature that is meant
`to assist in the recovery of such device. Specifically, the cellular and tablet Accused Products are
`pre-loaded with Google’s “Find My Device” feature, which is now part of Google Play Protect.
`The laptop/computer Accused Products are pre-loaded with Microsoft’s “Find My Device”
`feature, which is automatically included in all Windows 10 devices. Using these built-in features,
`each Accused Product displays the owner’s contact information through a processor using data
`stored in the device’s memory. This owner contact information is displayed before or with the
`device’s lock screen, such that it is visible to anyone in possession of the device. By using an
`internet browser, each Accused Product is also capable of being remotely accessed in order to
`change and/or add additional information displayed on the device’s screen. This access can only
`be initiated by the owner, or authorized third party, using a Google or Microsoft Account login.
`Through this remote access, the owner of an Accused Product can also lock the device to prevent
`future access, as well as display a custom warning message at or before the lock screen. With the
`Accused Product being locked through remote access, the device cannot be accessed until the
`newly set password has been provided through a security prompt on the device.
`20.
`Thus, as configured, the Accused Products directly infringe the method Asserted
`Claims of the Asserted Patents.
`21.
`Further, the Accused Products, which are “computers” (i.e., cell phones, computer
`tablets, and laptops), include components of a memory, a display, and a processor in
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`communication with the display. When in use, the “Find My Device” pre-loaded onto the Accused
`Product uses a processor to communicate with the display to show the owner’s contact information
`by using data stored in the device’s memory. This contact information is displayed at or before the
`lock screen. In addition to the features described above, the Accused Products also allow the owner
`to remotely control and design the display screen to include custom buttons (e.g., a “Call” button)
`and design the layout of the displayed contact information.
`22.
`In combination of the features and components described above, the Accused
`Products directly infringe the apparatus Asserted Claims of the Asserted Patents.
`23.
`As described, the Accused Products are pre-loaded with Google’s (for the cellular
`and tablet devices) and Microsoft’s (for the laptop devices) Find My Device features. As such, the
`Accused Products include a computer program that is stored, at least in part, in their non-transient
`memory. This feature is pre-loaded into the Accused Products to assist in the return of a device to
`its owner. As stated above, the “Find My Device” feature displays the owner’s contact information
`through a processor using data stored in the device’s memory. This owner contact information is
`displayed before or with the device’s lock screen so that it is visible to anyone in possession of the
`device. By using an internet browser, each Accused Product is also capable of being remotely
`accessed in order to change and/or add additional information displayed on the device’s screen.
`This access can only be initiated by the owner, or authorized third party, using a Google or
`Microsoft Account login. Through this remote access, the owner of an Accused Product can also
`lock the device to prevent future access, as well as display a custom warning message at or before
`the lock screen. With the Accused Product being locked through remote access, the device cannot
`be accessed until the newly set password has been provided through a security prompt on the
`device.
`24.
`As the Accused Products are pre-loaded with the “Find My Device” feature, which
`preforms the steps of the stored computer program Asserted Claims of the Asserted Patents, the
`Accused Products infringe those Asserted Claims.
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`25.
`Additionally, on information and belief, LG has been and is aware of the Asserted
`Patents. On or about March of 2018, Tangible IP, a patent broker retained by Plaintiff, began to
`assist in efforts to enforce, license, or sell Plaintiff’s patent portfolio. On information and belief,
`sometime after March 2018 Tangible IP communicated with Defendant, notifying it of the
`Asserted Patents (the “Tangible IP 2018 Notification”). Tangible IP further created an Executive
`Summary of Plaintiff’s Patent Portfolio that, on information and belief, was made available to
`Defendant. The Executive Summary included, among other things, a list of the patents in the
`portfolio, claim charts showing how the Asserted Patents read on Defendant’s Accused Devices
`that use Android’s and Microsoft’s “Find My Device” features, a description of the patents’ market
`relevance, information about Plaintiff and her company, and evidence of use. On information and
`belief, Tangible IP sent Defendant multiple follow-up notifications, which included the additional
`information from the original Executive Summary. LG never responded to the notice of
`information regarding the Asserted Patents. On information and belief, Defendant was also aware
`of the Asserted Patents as Plaintiff took substantial efforts to make information regarding the
`Asserted Patents publicly available via news outlets mentioning Plaintiff’s patents, Plaintiff’s press
`releases, Plaintiff’s participation in large start-up contests attended by thousands, IPWatchdog’s
`media news story coverage, Tangible IP’s marketing efforts, Tangible IP’s monthly newsletters,
`information provided at Intellectual Property conferences, LinkedIn posts, as well as information
`provided by organizations such as RPX Corporation, of which Defendant is a member.
`26.
`LG has not obtained a license to use the methods apparatuses, and stored programs
`claimed in the Assert Patents or to offer for sale in the United States products containing the recited
`apparatuses and stored programs, and/or that perform the recited methods.
`COUNT I – DIRECT PATENT INFRINGEMENT (35 U.S.C. § 271(a))
`(U.S. Patent No. 9,892,287)
`27.
`Plaintiff repeats and realleges each and every allegation contained in Paragraphs 1–
`26 above, as if fully set forth herein.
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`28.
`Defendant has infringed, and is continuing to infringe, the ’287 Patent, either
`literally or under the doctrine of equivalents, by, inter alia, making, selling, or otherwise offering
`to sell in the United States products, including the Accused Products, for commercial sale which
`incorporate the methods and components of the Asserted Claims of the ’287 Patent.
`29.
`Defendant’s acts detailed herein, including the making and selling of the Accused
`Products, directly infringe the ’287 Patent, because—as shown in Paragraphs 13–25 supra—the
`Accused Products are configured to perform all of the steps during normal use and include all of
`the components recited in those claims.
`30.
`Defendant has directly infringed the Asserted Claims of the ’287 Patent by making
`and selling the Accused Products, which perform all of the steps and include all of the components
`of those claims within the U.S., either itself, through intermediaries, or in conjunction with joint
`ventures and/or customers. Specifically, on information and belief, Defendant has performed all
`of the steps and Defendant’s Accused Products contain all limitations, recited in each Asserted
`Claim of the ’287 Patent, either personally, through intermediaries, or in conjunction with joint
`venturers and/or customers, by operating the Accused Products within the U.S., and making and
`selling the Accused Products within the United States. Such manufacturing, sales, and operations
`necessarily perform all the steps and include all the components recited in those claims, as shown
`in Paragraphs 13–25 supra.
`COUNT II – INDUCEMENT OF INFRINGEMENT (35 U.S.C. § 271(b))
`(U.S. Patent No. 9,892,287)
`31.
`Plaintiff repeats and realleges each and every allegation contained in Paragraphs 1–
`30 above, as if fully set forth herein.
`32.
`Upon information and belief, Defendant has actively induced infringement of the
`Asserted Claims of the ’287 Patent, in violation of 35 U.S.C. § 271(b).
`33.
`Upon information and belief, Defendant has actively induced infringement of these
`claims by selling the Accused Products to one or more customers in the U.S., along with documents
`and instructions demonstrating how to use the devices to infringe the claims, and/or by providing
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`service, support, or other active assistance to its customers in using the Accused Products in the
`U.S. The documentation which Defendant has provided includes, at least: (i) the product
`information for
`the Accused Products set forth on Defendant’s websites,
`including
`httpps://lg.com/us, which includes various manuals, specifications, and other technical
`documentation for the Accused Products provided on Defendant’s websites; and (ii) the other
`product documentation which, on information and belief, Defendant provides in electronic and/or
`paper form to its customers for the Accused Products.
`34.
`For instance, Defendant published technical support information on its website
`which instructs users on how to use the Accused Product to display such information described
`above and how to remotely access such features. See https://www.lg.com/us/support/help-
`library/how-to-use-google-find-my-phone-and-device-reset-CT10000026-20150375512868 (LG
`Support Page).
`35.
`The LG Support Page contains extensive instructions on how to configure and
`operate the Accused Products to perform the infringing activities. For instance, the LG Support
`Page lays out in a step-by-step process how to correctly remotely log in to the processor to access
`information on the device which could either display the contact information of the owner, lock
`the device, and/or write a custom message to the individual in possession of the device. See LG
`Support Page.
`36.
`Accordingly, the LG Support Page expressly teaches Defendant’s customers how
`to use the Accused Products to infringe the Asserted Claims of the ’287 Patent. Defendant’s
`publication of this website shows both that Defendant specifically intended to induce infringement
`by its customers, and that Defendant engaged in acts—including the publication of the LG Support
`Page—which actually did induce infringement by its customers. A customer, following the
`instructions on the LG Support Page, would necessarily infringe each of the Asserted Claims of
`the ’287 Patent.
`37.
`As shown in Paragraphs 13–25 supra, when Defendant’s customers use the
`Accused Products in the U.S., such use meets all of the elements recited in the Asserted Claims of
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`the ’287 Patent. Thus, Defendant has committed affirmative acts (i.e., selling the Accused
`Products, providing documents on how to use the Accused Products, and/or providing service or
`technical support, or other active assistance to its customers) which have resulted in the direct
`infringement of the ’287 Patent by its customers in the United States.
`38.
`Further, on information and belief, when Defendant performed the acts of
`inducement outlined in paragraphs 33–36 supra (and other acts of inducement), it was aware of
`the Asserted Patents, and knew (or was willfully blind) that its customers’ normal use of the
`Accused Products would infringe the Asserted Claims of the Asserted Patents.
`39.
`As stated above, on information and belief, sometime after March 2018, Tangible
`IP, a patent broker retained by Plaintiff, communicated with Defendant, notifying it of the Asserted
`Patents. Tangible IP further created an Executive Summary of Plaintiff’s Patent Portfolio that, on
`information and belief, was made available to Defendant. The Executive Summary included,
`among other things, a list of the patents in the portfolio, claim charts showing how the Asserted
`Patents read on Defendant’s Accused Devices that use Android’s and Microsoft’s “Find My
`Device” features, a description of the patents’ market relevance, information about Plaintiff and
`her company, and evidence of use. On information and belief, LG never responded to the notice
`of information regarding the Asserted Patents.
`40.
`Defendant is a sophisticated company with ~$50 billion in annual revenue. On
`information and belief, Defendant has a large intellectual property department, with multiple in-
`house counsel devoted to analyzing patent issues. Defendant also has relationships with many
`outside law firms to address patent issues.
`41.
`In view of the foregoing, at all relevant times, Defendant has known about the
`existence and relevance of the Asserted Patents and has known that the operation of the Accused
`Products, as configured and used during normal operation, infringes the Asserted Claims of the
`Asserted Patents during normal use.
`42.
`On information and belief, when Defendant sold the Accused Products to U.S.
`customers, and/or provides technical support, or other active assistance to such customers, it did
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`so with the specific intent to encourage the customers to perform acts constituting direct
`infringement of the Asserted Patents. This is evidenced by Paragraphs 38–41 supra, which show
`that Defendant was aware of the existence and relevance of the Asserted Patents at all relevant
`times. Because Defendant was aware of the Asserted Patents’ relevance and existence, it always
`knew—based on information and belief—that its customers’ use of the Accused Products would
`constitute infringement of the Asserted Patents. Defendant’s decision to continue marketing the
`Accused Products to U.S. customers, despite knowing that such customers’ use would constitute
`direct infringement, evidences that Defendant had specific intent to encourage direct infringement
`of the Asserted Patents by its customers.
`43.
`Therefore, Defendant has unlawfully induced infringement of the ’287 Patent, in
`violation of 35 U.S.C. § 271(b).
`COUNT III – CONTRIBUTORY INFRINGEMENT (35 U.S.C. § 271(c))
`(U.S. Patent No. 9,892,287)
`44.
`Plaintiff repeats and realleges each and every allegation contained in Paragraphs 1–
`43 above, as if fully set forth herein.
`45.
`Defendant has committed contributory infringement of the method claims of the
`’287 Patent, in violation of 35 U.S.C. § 271(c).
`46.
`Defendant has committed contributory infringement by selling, offering to sell,
`and/or importing into the United States the Accused Products which allows customers to perform
`the steps of the method claims of the ’287 Patent. As shown in Paragraphs 13–25 supra, the
`Accused Products, as normally configured, allow customers to perform actions which display the
`contact information for the device’s owner and allow for remote access to either lock the device
`to prevent future access or display a custom message to the individual in possession of the device.
`These actions, when used as configured during normal operation, perform the steps of the method
`claims of the ’287 Patent.
`47.
`The “Find My Device” feature of the Accused Products practices a material part of
`the method claims of the ’287 Patent, because it performs several of the key functions of the ’287
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`Patent—i.e., it displays the contact information for the device’s owner, and it allows for remote
`access to either lock the device to prevent future access or to display a custom message to the
`individual in possession of the device.
`48.
`On information and belief, prior to the filing of the complaint, Defendant had actual
`knowledge, or was willfully blind, that the “Find My Device” feature of the Accused Products was
`especially made or adapted for use in a manner that infringes the Asserted Claims of the ’287
`Patent. As shown in Paragraphs 38–41 supra, Defendant knew, or was willfully blind, that the
`Accused Products are configured to infringe the ’287 Patent upon normal use, at least because of
`the March 2018 Letter. For the reasons set forth in Paragraphs 38–41 supra, and on information
`and belief, Defendant knew, or was willfully blind, that normal use of the Accused Products
`infringes the Asserted Claims of the ’287 Patent. Despite that knowledge (or willful blindness),
`Defendant actively sold the Accused Products in the United States, knowing that its customers
`would use the Accused Products in the United States, and knowing (or being willfully blind) that
`such use would constitute direct infringement of the Asserted Claims of the ’287 Patent.
`49.
`The “Find My Device” feature of the Accused Products is not a staple article of
`commerce, and—as configured to perform the steps of the method claims —is not capable of
`substantial non-infringing use, as its only function is to perform the steps of the method claims.
`For the reasons set forth above, use of the Find My Device feature will always, during normal use,
`infringe the method claims of the ’287 Patent.
`50.
`Accordingly, Defendant has unlawfully contributed to infringement of the method
`claims of the ’287 Patent, in violation of 35 U.S.C. § 271(c), by selling the Accused Products,
`whose “Find My Device” feature is especially adapted to infringe the method claims of the ’287
`Patent.
`
`COUNT IV – DIRECT PATENT INFRINGEMENT (35 U.S.C. § 271(a))
`(U.S. Patent No. 10,325,122)
`51.
`Plaintiff repeats and realleges each and every allegation contained in Paragraphs 1–
`50 above, as if fully set forth herein.
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`Case 6:21-cv-00696-ADA Document 35 Filed 11/22/21 Page 15 of 27
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`52.
`Defendant has infringed, and is continuing to infringe, the ’122 Patent, either
`literally or under the doctrine of equivalents, by, inter alia, making, selling, or otherwise offering
`to sell in the United States products, including the Accused Products, for commercial sale which
`incorporates the methods and components of the Asserted Claims of the ’122 Patent.
`53.
`Defendant’s acts complained herein, including the making and selling of the
`Accused Products, directly infringe the ’122 Patent, because—as shown in Paragraphs 13–25
`supra—the Accused Products are configured to perform all of the steps during normal use and
`include all of the components recited in those claims.
`54.
`Defendant has directly infringed the Asserted Claims of the ’122 Patent by making
`and selling the Accused Products, which perform all of the steps and include all of the components
`of those claims within the U.S., either itself, through intermediaries, or in conjunction with joint
`ventures and/or customers. Specifically, on information and belief, Defendant has performed all
`of the steps and Defen