EXHIBIT 1010
`EXHIBIT 1010
`
`Ex. 1010 – TCL Indus Holdings Co., Ltd.
`Ex. 1010 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE – IPR2023-00240
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
`Page 1 of 26
`Page 1 of 26
`
`

`

`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALLDIVISION
`
`LG ElectronicsInc.,
`
`Plaintiff,
`
`Civil Action No.
`
`JURY TRIAL DEMANDED
`
`Vv.
`
`TCL Electronics Holdings Ltd. (f/k/a TCL
`Multimedia Technology Holdings, Ltd.); TCL
`Industries Holdings Co., Ltd.; TCL Industries
`Holdings (H.K.) Limited; TTE Technology,
`Inc. (d/b/a TCL North America); TTE
`Corporation; TCL MokaInternational
`Limited; TCL Moka Manufacturing S.A. de
`C.V.; TCL King Electrical Appliances
`(Huizhou) Co. Ltd.; Manufacturas Avanzadas
`S.A. de C.V.; TCL Smart Device (Vietnam)
`Co., Ltd.; Shenzhen TCL New Technology
`Co., Ltd.; TCL Optoelectronics Technology
`(Huizhou) Co., Ltd.; TCL Overseas
`Marketing Ltd.; and TCL Technology Group
`Corporation (f/k/a TCL Corp.),
`
`Defendants.
`
`
`COMPLAINT FOR PATENT INFRINGEMENT AND DEMAND FOR JURY TRIAL
`
`Plaintiff LG Electronics Inc. (“LGE” or “Plaintiff’), by and through its undersigned
`
`attorneys, for its Complaint against Defendants TCL Electronics Holdings Ltd. (f/k/a TCL
`
`Multimedia Technology Holdings, Ltd.); TCL Industries Holdings Co., Ltd.; TCL Industries
`
`Holdings (H.K.) Limited; TTE Technology,Inc. (d/b/a TCL North America); TTE Corporation;
`
`TCL MokaInternational Limited; TCL Moka Manufacturing S.A. de C.V.; TCL King Electrical
`
`Appliances (Huizhou) Co. Ltd.; Manufacturas Avanzadas S.A. de C.V.; TCL Smart Device
`
`(Vietnam) Co., Ltd.; Shenzhen TCL New Technology Co., Ltd.; TCL Optoelectronics Technology
`
`(Huizhou) Co., Ltd.; TCL Overseas Marketing Ltd.; and TCL Technology Group Corporation
`
`(f/k/a TCL Corp.) (collectively “TCL” or “Defendants”) alleges as follows:
`
`Ex. 1010 – TCL Indus Holdings Co., Ltd.
`Ex. 1010 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE – IPR2023-00240
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
`Page 2 of 26
`Page 2 of 26
`
`

`

`THE PARTIES
`
`1.
`
`Plaintiff LG Electronics Inc. (“LGE”) is a corporation organized under the laws of
`
`the Republic of Korea, havingits principal place ofbusiness at LG Twin Towers, 128 Yeoui-daero,
`
`Yeongdeungpo-gu, Seoul, Republic of Korea, 07336. LGE is a global leader in consumer
`
`electronics, mobile communications, and homeappliances, employing over 75,000 people in over
`
`100 locations worldwide.
`
`2.
`
`On information and belief, Defendant TCL Electronics Holdings Ltd. (f/k/a TCL
`
`Multimedia Technology Holdings, Ltd.) is a corporation organized and existing under the laws of
`
`Cayman Island with its principal place of business at 7th Floor, Building 22E, 22 Science Park
`
`East Avenue, Hong KongScience Park, Shatin, New Territories, Hong Kong.
`
`3.
`
`On information and belief, Defendant TCL Industries Holdings Co., Ltd.
`
`is a
`
`corporation organized and existing under the laws of the People’s Republic of China with its
`
`principal place of business at 22nd Floor, TCL Technical Tower, Huifeng 3 Road, Zhongkai
`
`Development Zone Huizhou, China.
`
`4.
`
`On information and belief, Defendant TCL Industries Holdings (H.K.) Limited is a
`
`corporation organized and existing under the laws of Hong Kong with its principal place of
`
`business at 8th Floor, Building 22E, Phase Three, Hong Kong Science Park, Pak Shek Kok, New
`
`Territories, Hong Kong.
`
`5.
`
`On information and belief, Defendant TTE Technology, Inc. (d/b/a TCL North
`
`America) is a corporation organized and existing under the laws of Delaware with its principal
`
`place of business at 1860 Compton Avenue, Corona, CA 92881.
`
`6.
`
`On information and belief, Defendant TTE Corporation is a corporation organized
`
`and existing under the law of the British Virgin Islands with its principal place of businessat 7th
`
`-2-
`Ex. 1010 – TCL Indus Holdings Co., Ltd.
`Ex. 1010 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE – IPR2023-00240
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
`Page 3 of 26
`Page 3 of 26
`
`

`

`Floor, Building 22E, 22 Science Park East Avenue, Hong Kong Science Park, Shatin, New
`
`Territories, Hong Kong.
`
`7.
`
`On information and belief, Defendant TCL MokaInternational Limited is a Hong
`
`Kong corporation with a principal place of business at 7th Floor Hong Kong Science Park,
`
`Building 22 E, 22 Science Park East Avenue, Shatin, New Territories, Hong Kong or 13th Floor,
`
`TCL Tower, 8 Tai Chung Road, Tsuen Wan, New Territories, Hong Kong.
`
`8.
`
`On information and belief, Defendant TCL Moka Manufacturing S.A. de C.V.is a
`
`company organized under the laws of Mexico with a principal place of business at Calle Cuarta.
`
`No. 55, Ciudad Industrial Nueva Tijuana, Tijuana, BJ 66050, Mexico.
`
`9.
`
`On information and belief, Defendant TCL King Electrical Appliances (Huizhou)
`
`Co. Ltd. is a corporation organized and existing under the laws of the People’s Republic of China
`
`with its principal place of business at No. 78, Huifeng 4 Road, Zhongkai Development Zone
`
`Huizhou, 516006 P.R. China.
`
`10.
`
`On information and belief, Defendant Manufacturas Avanzadas S.A. de C.V.is a
`
`corporation organized and existing under the law of Mexico with a principal place of business at
`
`Blvd. Independecia No. 2151, Ciudad Juarez, Chihuahua, 32580, Mexico.
`
`11.
`
`On information and belief, Defendant TCL Smart Device (Vietnam) Co., Ltd. is a
`
`corporation organized and existing under the laws of Vietnam with its principal place of business
`
`at No. 26 VSIP I-A, Street 32, Vietnam Singapore Industrial Park II-A, Tan Binh Commune, Bac
`
`Tan UyenDistrict, Binh Duong Province, 75000, Vietnam.
`
`12.
`
`On information andbelief, Defendant Shenzhen TCL New Technology Co., Ltd. is
`
`a corporation organized and existing under the laws of the People’s Republic of China with its
`
`-3-
`Ex. 1010 – TCL Indus Holdings Co., Ltd.
`Ex. 1010 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE – IPR2023-00240
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
`Page 4 of 26
`Page 4 of 26
`
`

`

`principal place of business at 9th Floor, TCL Electronics Holdings Limited Building, TCL
`
`International E City, No. 1001 Zhongshan Park Road, Nanshan, China.
`
`13.
`
`On information andbelief, Defendant TCL Optoelectronics Technology (Huizhou)
`
`Co., Ltd. is a corporation organized and existing under the laws of the People’s Republic of China
`
`with its principal place of business at Ltd. No. 78 Huifeng Si Rd, Zhongkai High-New
`
`Development Zone, Huizhou, Guangdong, 516006, China.
`
`14.
`
`On information and belief, Defendant TCL Overseas Marketing Ltd.
`
`is a
`
`corporation organized and existing under the lawsofthe British Virgin Islands with its principal
`
`place of business at 5th Floor, Building 22E, 22 Science Park East Avenue, Hong Kong Science
`
`Park, Shatin, New Territories, Hong Kong.
`
`15.
`
`On information and belief, Defendant TCL Technology Group Corporation
`
`(formerly known as TCL Corp.) is a corporation organized and existing under the lawsof the
`
`People’s Republic of China with its principal place of business at TCL Technology Building,
`
`No.17, Huifeng 3rd Road, Zhongkai High-tech Zone, Huizhou City, Guangdong, 516006, China.
`
`16.
`
`On information and belief, Defendant TCL Industries Holdings Co., Ltd is the
`
`ultimate parent companyofall of the other named defendants, andas the ultimate parent, induces
`
`its subsidiaries, affiliates, retail partners, and customers in the making,using, selling, offering for
`
`sale, and/or importing of products accused of infringement
`
`in this Complaint
`
`through its
`
`subsidiaries.
`
`17.
`
`On information and belief, Defendants are part of the same corporate structure and
`
`distribution chain for making, using, selling, offering for sale, and/or importing the accused
`
`televisions in the United States, including in this State and this District. Defendants do business
`
`as a collective whole under the TCL brand.
`
`-4-
`Ex. 1010 – TCL Indus Holdings Co., Ltd.
`Ex. 1010 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE – IPR2023-00240
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
`Page 5 of 26
`Page 5 of 26
`
`

`

`18.
`
`Defendants form an interrelated group of companies which together comprise one
`
`of the largest makers and sellers of televisions in the world. Defendants are part of the same
`
`corporate structure and distribution chain for the making, importing, offering tosell, selling, and
`
`using of the accused devices in the United States, including in the State of Texas generally and
`
`this District in particular. On information and belief, Defendants (and their affiliates) share the
`
`same management, common ownership, advertising platforms, facilities, distribution chains and
`
`platforms, and accused product
`
`lines and products involving related technologies. Thus,
`
`Defendants (andtheir affiliates and subsidiaries) operate as a unitary business and are jointly and
`
`severally liable for the acts of patent infringement alleged herein.
`
`19.
`
`On information and belief, Defendants do business themselves, or through their
`
`subsidiaries, affiliates, and agents, in the State of Texas and the Eastern District of Texas.
`
`Defendants placed or contributed to placing infringing products, including one or more of those
`
`specifically accused of infringement below,
`
`into the stream of commerce via established
`
`distribution channels knowing or understanding that such products would be sold and used in the
`
`United States, including in the Eastern District of Texas.
`
`20.
`
`On information and belief, Defendants have derived substantial revenue from
`
`infringing acts in the Eastern District of Texas, including from the sale and use of these infringing
`
`products like those specifically accused of infringement below.
`
`JURISDICTION AND VENUE
`
`21.
`
`This is an action for patent infringementarising under the patent laws of the United
`
`States, Title 35 United States Code.
`
`22.
`
`This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and
`
`1338(a).
`
`-5-
`Ex. 1010 – TCL Indus Holdings Co., Ltd.
`Ex. 1010 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE – IPR2023-00240
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
`Page 6 of 26
`Page 6 of 26
`
`

`

`23.
`
`Personal jurisdiction exists over each of the Defendants because each Defendant
`
`has sufficient minimum contacts with this forum as a result of business conducted within this State
`
`and this District or directed thereto, and subsidiaries registered to do businessin this State.
`
`24.
`
`Personal jurisdiction also exists specifically over each of the Defendants because
`
`each,directly or throughaffiliates, subsidiaries, agents, or intermediaries, transacts businessin this
`
`State or purposefully directed at this State by making, importing, offeringto sell, selling, and/or
`
`having sold infringing televisions within this State and District or purposefully directed at this
`
`State or District.
`
`25.
`
`This Court previously found that a number of the Defendants are subject to personal
`
`jurisdiction in this forum. See Canon, Inc. v. TCL Elecs. Holdings Ltd., No. 2:18-CV-00546-JRG,
`
`2020 WL 1478356, at *3 (E.D. Tex. Mar. 25, 2020).
`
`26.
`
`Personal jurisdiction also exists specifically over each of the Defendants because
`
`they have overlapping executives, interlocking corporate structures, and close relationships as
`
`manufacturer, importer, and distributor of accused products.
`
`27.
`
` Tothe extent any foreign Defendant is not subject to jurisdiction in any state’s court
`
`of general jurisdiction, exercising jurisdiction over the defendant in this State and this District
`
`would be consistent with due process and this State’s long-arm statute in light of facts alleged in
`
`this Complaint.
`
`28.
`
`In addition, each of the Defendants, directly or through affiliates, subsidiaries,
`
`agents, or intermediaries, places infringing televisions into the stream of commerce knowing they
`
`will be sold and used in this State, and economically benefits from the retail sale of infringing
`
`televisions in this State. For example, Defendants’ products have been sold and are available for
`
`sale in this District at retail stores, and are also available for sale and offered for sale in this District
`
`-6-
`Ex. 1010 – TCL Indus Holdings Co., Ltd.
`Ex. 1010 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE – IPR2023-00240
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
`Page 7 of 26
`Page 7 of 26
`
`

`

`through online retailers. Defendants also advertise their infringing products to consumersin this
`
`State
`
`and
`
`this
`
`District
`
`through
`
`the
`
`TCL.com
`
`website.
`
`See,
`
`eg.,
`
`https://www.tcl.com/us/en/catalog/home-theater.
`
`29.
`
`Venueis properin this District pursuant to 28 U.S.C. §§ 1391(b), (c) and (d) and
`
`1400(b).
`
`30.
`
`Venue is proper over Defendants TCL Electronics Holdings Ltd. (f/k/a TCL
`
`Multimedia Technology Holdings, Ltd.); TCL Industries Holdings Co., Ltd.; TCL Industries
`
`Holdings (H.K.) Limited; TTE Corporation; TCL Moka International Limited; TCL Moka
`
`Manufacturing S.A. de C.V.; TCL King Electrical Appliances (Huizhou) Co. Ltd.; Manufacturas
`
`Avanzadas S.A. de C.V.; TCL Smart Device (Vietnam) Co., Ltd.; Shenzhen TCL New Technology
`
`Co., Ltd.; TCL Optoelectronics Technology (Huizhou) Co., Ltd.; TCL Overseas Marketing Ltd.;
`
`and TCL Technology Group Corporation (f/k/a TCL Corp.) at least because they are not resident
`
`in the United States, and are all subject to personal jurisdiction in this District.
`
`31.
`
`On information and belief, venue is proper over Defendant TTE Technology,Inc.
`
`at least because it has committed acts of direct and/or indirect infringementin this District, has a
`
`regular and established place of business in this District, and has transacted business in this
`
`District, including offeringto sell, selling, having sold and/or importing televisions which infringe
`
`at least one of the patents-in-suit.
`
`32.
`
`Defendant TTE Technology, Inc. has previously availed itself of courts in the
`
`Eastern District of Texas, including voluntarily submitting to jurisdiction and venuein this forum
`
`for purposesof a patentlitigation. See, e.g., American Patents LLC, v. TCL Corp.et al., No. 4:18-
`
`cv-00767, Dkt. 46 at 2 (E.D. Tex., Feb. 20, 2019) (“TCL King Electrical Appliances (Huizhou)
`
`Co. Ltd., TTE Technology, Inc., Huizhou TCL Mobile Communication Co. Ltd., and TCT Mobile
`
`-7-
`Ex. 1010 – TCL Indus Holdings Co., Ltd.
`Ex. 1010 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE – IPR2023-00240
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
`Page 8 of 26
`Page 8 of 26
`
`

`

`(US) Inc. agree that, for this case only, they will not assert that venue in the Eastern District of
`
`Texas is improper under Section 1400(b).”).
`
`33.
`
`On information and belief, Defendant TTE Technology, Inc. maintains a regular
`
`and established place of business in the Eastern District of Texas at least because repair shops
`
`conduct the business of Defendant TTE Technology, Inc. by performing, processing, and/or
`
`handling warranty services for TCL branded products according to the TCL North America
`
`Limited Product Warranty published at https://www.tcl.com/us/en/warranty/tv-warranty.
`
`THE ASSERTED PATENTS
`
`34.
`
`On July 19, 2011, the USPTO duly and legally issued United States Patent No.
`
`7,982,803 (“803 patent’), entitled “Audio and Video Synchronizing Apparatus and Method,” and
`
`it is publicly available on the USPTO website.
`
`35.
`
`On November23, 2010, the USPTO duly andlegally issued United States Patent
`
`No.7,839,452 (‘452 patent”), entitled “Image Display Device in Digital TV,” andit is publicly
`
`available on the USPTO website.
`
`36.
`
`On June 25, 2019, the USPTO duly and legally issued United States Patent No.
`
`10,334,311311 patent’), entitled “Method of Providing External Device List and Image Display
`
`Device,” andit is publicly available on the USPTO website.
`
`37.
`
`On July 14, 2015, the USPTO duly and legally issued United States Patent No.
`
`9,080,740 (“740 patent’’), entitled “Planar Lighting Device,” and it is publicly available on the
`
`USPTO website.
`
`38.
`
`On October 10, 2017, the USPTO duly and legally issued United States Patent No.
`
`9,788,346 (346 patent’), entitled “Channel Access Method for Very High Throughput (VHT)
`
`Wireless Local Access Network System and Station Supporting the Channel Access Method,” and
`
`it is publicly available on the USPTO website.
`
`-8-
`Ex. 1010 – TCL Indus Holdings Co., Ltd.
`Ex. 1010 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE – IPR2023-00240
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
`Page 9 of 26
`Page 9 of 26
`
`

`

`39.|OnDecember3, 2019, the USPTO duly and legally issued United States Patent No.
`
`10,499,431 (“431 patent’), entitled “Channel Access Method for Very High Throughput (VHT)
`
`Wireless Local Access Network System and Station Supporting the Channel Access Method,” and
`
`it is publicly available on the USPTO website.
`
`40.|LGE is the ownerbyassignmentofall right, title and interest in and to the ’803
`
`patent, °452 patent, °311 patent, ’740 patent, °346 patent, and ’431 patent (collectively, the
`
`“Patents-in-Suit”), now and for the entire period of and relevant to the infringement, including the
`
`right to assert all causes of action arising under said patent and the right to any remedies for
`
`infringementofit, including the right to sue for and collect past damages.
`
`41.|LGE has complied with all statutory requirements to collect past damages for
`
`infringementof the Patents-in-Suit, including under 35 U.S.C. § 287.
`
`KNOWLEDGE OF THE PATENTS-IN-SUIT AND INFRINGEMENT
`
`42.
`
`The Defendants have had knowledgeof the Patents-in-Suit and their infringement
`
`of the Patents-in-Suit since before the date of this Complaint as explained in the following
`
`paragraphs, yet Defendants knowingly and intentionally continued making, using, importing,
`
`offering to sell, and selling infringing products in this State and District.
`
`43.|Defendants and LGEpreviously negotiated and entered into a First Patent License
`
`Agreement.
`
`44.
`
`Defendants and LGEpreviously negotiated and entered into a Second Patent
`
`License Agreement.
`
`45.
`
`By email from Mr. Sangsoo Kim of LGE to Mr. Tom Gong of TCL on November
`
`5, 2018, LGEsent a letter dated November 5, 2018, addressed to Mr. Tom Gong, Controller &
`
`Director of TTE Technology Inc. LGE notedthat the previous patent license agreements between
`
`-9-
`Ex. 1010 – TCL Indus Holdings Co., Ltd.
`Ex. 1010 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE – IPR2023-00240
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
`Page 10 of 26
`Page 10 of 26
`
`

`

`the parties had expired and proposed discussions concerning the renewal of a patent license
`
`agreement. LGE further requested confirmation for proposed meeting dates.
`
`46.
`
`By email from Mr. Sangsoo Kim of LGE to Mr. Tom Gong of TCL on November
`
`21, 2018, LGE noted that it had not received any response from TCLto its first email. LGE stated
`
`its belief that TCL needed to renew its patent licenses with LGE, in order for TCL to continue
`
`using LGE’s patents in the United States. LGE requested that TCL respond so that renewal
`
`negotiations could begin by the end of 2018.
`
`47.
`
`By email from Mr. Sangsoo Kim of LGE to Mr. Simon Choi and Mr. Tom Gong
`
`of TCL on January 16, 2019, LGE sent a letter dated January 16, 2019, addressed to Mr. Chen
`
`Wang, CEO of TCL Electronics Holdings Limited. LGE notedthat it still had not received any
`
`response to its prior correspondence in November 2018. LGEreiterated its request to discuss
`
`renewing the expired patent license agreements. LGE included two attachmentslisting exemplary
`
`commercial patents and standard essential Wi-Fi patents. The list of exemplary commercial
`
`patents included the °452 patent, and the list of Wi-Fi patents included the ’346 patent. LGE
`
`further identified specific TV models that it believed were using LGE’s patented features and/or
`
`supporting the Wi-Fi standard: 55P607, 55C807, 438517, and 43UP130. With respect to LGE’s
`
`standard essential patents, LGE confirmedthat it would grant a license underfair, reasonable, and
`
`non-discriminatory terms.
`
`48.|By email from Mr. Changhwan Lee of LGEto Mr. Simon Choi and Mr. Tom Gong
`
`of TCL on April 18, 2019, LGEsent a letter dated April 18, 2019, addressed to Mr. Chen Wang,
`
`CEO of TCL Electronics Holdings Limited. LGE notedthatit still had not received any response
`
`to its prior correspondence in November 2018 or January 2019. LGE expressed concern over
`
`TCL’s lack of response. LGEreferred again to the LGE patents and TCL TV models identified in
`
`-10-
`Ex. 1010 – TCL Indus Holdings Co., Ltd.
`Ex. 1010 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE – IPR2023-00240
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
`Page 11 of 26
`Page 11 of 26
`
`

`

`LGE’s previous letter. With respect to LGE’s standard essential patents, LGE again confirmed
`
`that it would grant a license underfair, reasonable, and non-discriminatory terms.
`
`49.
`
`By email from Mr. TaeHee Ahn of LGE to Mr. Simon Choi and Mr. Tom Gong of
`
`TCL on January 20, 2020, LGEsenta letter dated January 21, 2020, addressed to Mr. Chen Wang,
`
`CEO of TCL Electronics Holdings Limited. LGE notedthatit still had not received any response
`
`to its prior four correspondences dating back to November 2018. LGE expressed concern over
`
`TCL’s lack of response. LGEreferred again to the LGE patents and TCL TV models identified in
`
`LGE’s previousletters. LGE also identified further exemplary commercial patents that LGE stated
`
`were implemented in many of TCL/TTE’s products including models 55P607 and 438517. This
`
`list of further exemplary commercial patents included the ’311 patent. With respect to LGE’s
`
`standard essential patents, LGE again confirmed that it would grant a license under fair,
`
`reasonable, and non-discriminatory terms.
`
`50.
`
`By email dated February 21, 2020, to Mr. TaeHee Ahn of LGE, Mr. Hao Long of
`
`TCL acknowledged receipt of the January 21 letter regarding LGE’s request for patent license
`
`negotiations. TCL stated it would formally reply to LGE before February 28, 2020.
`
`51.
`
`By email dated February 24, 2020, to Mr. Hao Long of TCL, Mr. Kwang Won Lee
`
`of LGE confirmed that he would becomea contact for communication with TCL.
`
`52.|By email dated March 8, 2020, LGE requested a conference call on March 24, 2020.
`
`53.
`
`By two emails both dated March 9, 2020, LGE provided additional claim charts
`
`and updated lists of patents. The updated list of patents included the ’431 patent, and the claim
`
`charts included charts for the 311 patent, ’346 patent, and ’452 patent.
`
`54.
`
`By email dated March 16, 2020, LGEreiterated its desire for a conferencecall on
`
`March 24.
`
`-11-
`Ex. 1010 – TCL Indus Holdings Co., Ltd.
`Ex. 1010 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE – IPR2023-00240
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
`Page 12 of 26
`Page 12 of 26
`
`

`

`55.
`
`TCL did not participate in any conference call with LGE on or about March 24,
`
`2020.
`
`56.
`
`By email dated March 26, 2020, LGE noted that TCL has had almost a year to
`
`review claim charts from LGE, and LGEreiterated its desire to start substantive discussions as
`
`soon as possible. LGE asked for a date certain when TCL would be ready to engage in such
`
`discussions.
`
`57.|By email dated April 22, 2020, LGE again reiterated its desire to engage in
`
`substantive discussions and requested a timeline or schedule for a meeting with TCL.
`
`58.
`
`By email dated May 14, 2020, LGE confirmed that the identified patent lists
`
`included LGE’s standard essential patents. LGE again requested a date certain for the parties to
`
`have substantive discussions.
`
`59.
`
`By email dated June 26, 2020, LGE again requested a date certain when TCL would
`
`complete its evaluation of LGE’s patents.
`
`60.
`
`By email dated July 23, 2020, LGE requested again a date whentheparties could
`
`begin negotiations on LGE’s Wi-Fi and commercial TV patents.
`
`61.
`
`By email dated June 4, 2021, LGE provided an updated patent list and additional
`
`claim charts showing infringement by TCL. This included an identification of the ’740 patent and
`
`°803 patent, and it included claim charts for the ’740 patent and ’803 patent.
`
`62.
`
`63.
`
`The parties had a conferencecall on July 9, 2021.
`
`By email dated July 9, 2021, to Mr. Lawrence Wu of TCL, Mr. Kwang Won Lee
`
`of LGE expressed disappointment in the conference call of that same day because TCL had
`
`requested additional time to evaluate LGE’s patents. LGE noted that its first contact with TCL
`
`wasalmost two anda half yearsearlier.
`
`-12-
`Ex. 1010 – TCL Indus Holdings Co., Ltd.
`Ex. 1010 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE – IPR2023-00240
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
`Page 13 of 26
`Page 13 of 26
`
`

`

`64.
`
`65.
`
`‘All of the emails between LGE and TCL,and vice versa, were written in English.
`
`From the time LGE sent the email and letter on November 5, 2018, TCL did not
`
`respond to LGE substantively with regard to LGE’s commercial patents or Wi-Fi patents.
`
`Specifically, TCL did not assert non-infringement or invalidity of any of LGE’s commercial
`
`patents or Wi-Fi patents, including the Patents-in-Suit.
`
`66.
`
`TCLhas been awareofthe ’803 patent since at least June 4, 2021, and TCL received
`
`a claim chart for the ’803 patent no later than June 4, 2021.
`
`67.
`
`TCL has been awareof the ’452 patent since at least January 16, 2019, and TCL
`
`received a claim chart for the ’452 patent no later than March 9, 2020.
`
`68.|TCL has been aware of the ’311 patent since at least January 20, 2020, and TCL
`
`received a claim chart for the ’311 patent no later than March 9, 2020.
`
`69.
`
`TCLhas been awareofthe ’740 patent since at least June 4, 2021, and TCL received
`
`a claim chart for the ’740 patent no later than June 4, 2021.
`
`70.
`
`TCL has been awareofthe ’346 patent since at least January 16, 2019, and TCL
`
`received a claim chart for the ’346 patent no later than March 9, 2020.
`
`71.
`
`TCL has been aware of the’431 patent, since at least March 9, 2020.
`
`72.|LGE has complied with its obligations to offer TCL a license to any standard
`
`essential patent on fair, reasonable, and non-discriminatory terms.
`
`73.
`
`Since the date of expiration of Defendants’
`
`license agreements with LGE,
`
`Defendants have not been licensed under and have not agreed to license any of the Patents-in-Suit.
`
`74.
`
`Instead, Defendants knowingly and intentionally have continued to make,use,sell,
`
`offer to sell, and import infringing products, including in this State and this District.
`
`-13-
`Ex. 1010 – TCL Indus Holdings Co., Ltd.
`Ex. 1010 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE – IPR2023-00240
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
`Page 14 of 26
`Page 14 of 26
`
`

`

`COUNT I-— INFRINGEMENTOFU.S. PATENT NO.7,982,803
`
`75.|LGErealleges and incorporates by reference the allegations set forth in paragraphs
`
`1 through 74.
`
`76.
`
`Defendants are, and have been, on notice of the ’803 patent since before the lawsuit
`
`was filed. Among the ways that actual notice was provided to Defendants is the email
`
`correspondence beginning in November 2018, referenced above, including detailed claim charts
`
`sent to Defendants on March 9, 2020.
`
`77.
`
`Defendants have been and are currently directly infringing, literally and/or under
`
`the doctrine of equivalents, the ’803 patent by, among other things, making,using, offeringto sell,
`
`selling and/or importing, without authority or license from LGE,televisions in this State and
`
`District and elsewhere in the United States, which embody, incorporate, or otherwise practice one
`
`or more claimsof the ’803 patent, including at least TCL models having the audio “passthrough”
`
`feature found in at least TCL model 508535.
`
`78.
`
`By way of example, the accused TCLtelevisionsinfringe at least exemplary claim
`
`6 of the ’803 patent as described in detail in the attached claim chart, Exhibit A.
`
`79.
`
`Defendants have and continue to induce infringement of one or moreclaims of the
`
`°803 patent under 35 U.S.C § 271(b) by actively inducing the other Defendants, related entities,
`
`retailers, and/or customers to make, use,sell, offer to sell, and/or import, products covered by one
`
`or more claims of the ’803 patent.
`
`80.
`
`For example, TCL’s user manuals include instructions to users regarding the
`
`selection of an audio setting that infringes at least claim 6 of the ’803 patent.
`
`81.
`
`As explained above, TCL has had actual knowledge of the ’803 patent priorto this
`
`Complaint and at least as of the date of this Complaint.
`
`In addition, LGE provided TCL with
`
`detailed claim charts demonstrating that TCL’s televisions infringe the ’803 patent on June 4,
`
`-14-
`Ex. 1010 – TCL Indus Holdings Co., Ltd.
`Ex. 1010 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE – IPR2023-00240
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
`Page 15 of 26
`Page 15 of 26
`
`

`

`2021. Despite having actual knowledgeof its infringement, TCL has continued to infringe and
`
`induce infringement of one or more claimsof the ’803 patent.
`
`82.
`
`Defendants have and continue to infringe one or more claims of the ’803 patent
`
`under 35 U.S.C § 271(f)(1) at least by importing components of televisions into this State and
`
`District, and then exporting them to foreign countries, including but not limited to Mexico, for
`
`assembly into infringing televisions.
`
`83.
`
`84.
`
`Defendants’ infringement of the ’803 patent has been and continuesto be willful.
`
`Unless enjoined by this Court, Defendants will continueto infringe the ’803 patent,
`
`and LGE will continue to suffer irreparable harm and harm for which damages are inadequate.
`
`Accordingly, LGEis entitled to injunctive relief against such infringement under 35 U.S.C. § 283.
`
`85.
`
`As a result of Defendants’ infringement of the ’803 patent, LGE has been and
`
`continuesto be irreparably injured with respect to its business andintellectual property rights, and
`
`is entitled to recover past damages for such injuries pursuant to 35 U.S.C. § 284.
`
`COUNTII —- INFRINGEMENTOF U.S. PATENT NO.7.839.452
`
`86.|LGE realleges and incorporates by reference the allegations set forth in paragraphs
`
`1 through 74.
`
`87.
`
`Defendants are, and have been, on notice of the ’452 patent since before the lawsuit
`
`was filed. Among the ways that actual notice was provided to Defendants is the email
`
`correspondence beginning in November 2018, referenced above, including detailed claim charts
`
`sent to Defendants on March9, 2020.
`
`88.|Defendants have been and are currently directly infringing, literally and/or under
`
`the doctrine of equivalents, the ’452 patent by, among other things, making,using, offeringto sell,
`
`selling and/or importing, without authority or license from LGE, televisions in this State and
`
`District and elsewhere in the United States, which embody,incorporate, or otherwise practice one
`
`-15-
`Ex. 1010 – TCL Indus Holdings Co., Ltd.
`Ex. 1010 — TCL Indus Holdings Co., Ltd.
`TCL Indus Holdings Co., Ltd. v. LGE – IPR2023-00240
`TCL Indus Holdings Co., Ltd. v. LGE — IPR2023-00240
`Page 16 of 26
`Page 16 of 26
`
`

`

`or more claimsof the ’452 patent, including at least TCL model 438435 and other similar 4K or
`
`higher resolution televisions, including TCL 4-Series and 5-Series televisions which have an
`
`upscaling feature.
`
`89.
`
`By wayof example, the accused TCLtelevisions infringe at least exemplary claim
`
`1 of the ’452 patent as described in detail in the attached claim chart, Exhibit B.
`
`90.
`
`Defendants have and continue to induce infringement of one or more claimsof the
`
`452 patent under 35 U.S.C § 271(b) by actively inducing the other Defendants, related entities,
`
`retailers, and/or customers to make, use,sell, offer to sell, and/or import, products covered by one
`
`or more claimsof the ’452 patent.
`
`91.
`
`For example, TCL’s user manual for the 438435 television instructs users to use
`
`the television in a mannerthat infringesat least claim 1 of the ’452 patent.
`
`92.
`
`As explained above, TCL has had actual knowledge of the ’452 patentpriorto this
`
`Complaint and at least as of the date of this Complaint. LGE provided TCL with detailed claim
`
`charts demonstrating that TCL’s televisions infringe the *452 patent on March 9, 2020. Despite
`
`having actual knowledgeofits infringement, TCL has continued to induce infringement of one or
`
`more claims of the ’452 patent.
`
`93.|Defendants have and continue to infringe one or more claims of the ’452 patent
`
`under 35 U.S.C § 271(f)(1) at least by importing components of televisions into this State and
`
`District, and then exporting them to foreign countries, including but not limited to Mexico, for
`
`assembly into infringing televisions.
`
`94.
`
`Defendants’ infringementof the ’452 patent has been and continuesto be willful.
`
`-16-
`Ex