throbber
UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`CASE NO. 2:23-cv-00212-JRG
`(Lead Case)
`
`CASE NO. 2:23-cv-00157-JRG
`(Member Case)
`
`CASE NO. 2:23-cv-00179-JRG
`(Member Case)
`
`)))))
`
`))))))
`
`))))))
`
`GREENTHREAD, LLC
`
`v.
`
`OMNIVISION TECHNOLOGIES, INC.
`
`GREENTHREAD, LLC
`
`v.
`
`TEXAS INSTRUMENTS INCORPORATED
`
`GREENTHREAD, LLC
`
`v.
`
`AMS-OSRAM AG, OSRAM GMBH, & AMS
`SENSORS USA INC.
`
`DEFENDANTS AMS-OSRAM AG’S, OSRAM GMBH’S, AND AMS SENSORS USA
`INC.’S ANSWER AND COUNTERCLAIMS
`
`Defendants ams-OSRAM AG, OSRAM GmbH, and ams Sensors USA Inc. (collectively,
`
`“ams OSRAM”) submit their answer, defenses and counterclaims to Greenthread, LLC’s
`
`(“Plaintiff”) Original Complaint for Patent Infringement. For convenience, ams OSRAM answers
`
`Plaintiff’s allegations on a paragraph-by-paragraph basis, and retain the headings used by Plaintiff
`
`in its Complaint.
`
`IPR2024-001, -00016, -00017, -00018,
`-00019, -00020, -00021 Ex. 3003
`
`

`

`NATURE OF THE ACTION
`
`1.
`
`ams OSRAM lacks sufficient knowledge or information to form a belief about the
`
`truth of the allegations in paragraph 1, and therefore denies the same.
`
`2.
`
`ams OSRAM admits that the Complaint alleges that ams OSRAM has infringed and
`
`continues to infringe six patents purported to be owned by Plaintiff: U.S. Patent Nos. 8,421,195
`
`(the “’195 Patent”), 9,190,502 (the “’502 Patent”), 10,510,842 (the “’842 Patent”), 10,734,481 (the
`
`“’481 Patent”), 11,121,222 (the “’222 Patent”), and 11,316,014 (the “’014 Patent”), (collectively,
`
`the “Asserted Patents”). ams OSRAM admits documents marked as Exhibits 1-6 were attached to
`
`the Complaint. ams OSRAM denies the remaining allegations in Paragraph 2.
`
`THE PARTIES
`
`3.
`
`ams OSRAM lacks sufficient knowledge or information to form a belief about the
`
`truth of the allegations in paragraph 3, and therefore denies the same.
`
`4.
`
`ams OSRAM admits that ams-OSRAM AG is a foreign corporation organized and
`
`existing under the laws of Austria and has its office located at Tobelbader Strasse 30, 8141
`
`Premstaetten Austria. The remaining allegations in paragraph 4 are legal conclusions to which no
`
`response is required. To the extent a response is required, the allegations are denied.
`
`5.
`
`ams OSRAM admits that OSRAM GmbH is a foreign corporation organized and
`
`existing under the laws of Germany and has its office located at Marcel-Breuer-Strasse 4, 80807
`
`Munich, Germany. The remaining allegations in paragraph 5 are legal conclusions to which no
`
`response is required. To the extent a response is required, the allegations are denied.
`
`6.
`
`ams OSRAM admits that ams Sensors USA Inc. in organized and exists under the
`
`laws of Nevada and has an office located at 5556 Tennyson Parkway, Plano, Texas 75024. ams
`
`OSRAM admits that ams Sensors USA Inc. is a wholly-owned indirect subsidiary of ams-OSRAM
`
`2
`
`

`

`AG. ams OSRAM admits that ams Sensors USA Inc. lists the address at 5556 Tennyson Parkway,
`
`Plano, Texas 75024 on Nevada’s corporate registration. The remaining allegations in paragraph 6
`
`are legal conclusions to which no response is required. To the extent a response is required, the
`
`allegations are denied.
`
`7.
`
`ams OSRAM admits that ams Sensors USA, Inc. is a wholly-owned indirect
`
`subsidiary of ams-OSRAM AG. The remaining allegations in paragraph 7 are legal conclusions to
`
`which no response is required. To the extent a response is required, the allegations are denied.
`
`8.
`
`With the understanding that the terms “AMS OSRAM enterprise” and “AMS-
`
`OSRAM” as used in this paragraph refer collectively to various affiliates of Defendant ams-
`
`OSRAM AG, admitted.
`
`SUBJECT MATTER JURISDICTION
`
`9.
`
`ams OSRAM admits that the Complaint purports to allege patent infringement. The
`
`remaining allegations in paragraph 9 are legal conclusions to which no response is required. To the
`
`extent a response is required, the allegations are denied.
`
`10.
`
`Denied.
`
`PERSONAL JURISDICTION AND VENUE
`
`11.
`
`ams OSRAM admits that ams Sensors USA Inc. is a Nevada corporation and
`
`associates the address at 5556 Tennyson Parkway, Plano, Texas 75024 on Nevada’s corporate
`
`registration with ams Sensors USA Inc.’s officers and directors. The remaining allegations in
`
`paragraph 11 are legal conclusions to which no response is required. To the extent a response is
`
`required, the allegations are denied.
`
`12.
`
`ams OSRAM admits that the complaint cites to https://ams-osram.com/about-
`
`us/locations-distribution/headquarters. The remaining allegations in paragraph 12 are denied.
`
`3
`
`

`

`13.
`
`ams OSRAM admits that ams Sensors USA Inc. sells products manufactured by
`
`ams-OSRAM AG. ams OSRAM further admits that ams-OSRAM AG manufactures some of the
`
`Accused Products. The remaining allegations in paragraph 13 are denied.
`
`14.
`
`ams OSRAM admits that the complaint quotes from ams-osram.com, which speaks
`
`for itself. The remaining allegations in paragraph 14 are denied.
`
`15.
`
`16.
`
`17.
`
`Denied.
`
`Denied.
`
`ams OSRAM
`
`admits
`
`that
`
`the
`
`complaint
`
`attempts
`
`to
`
`cite
`
`https://ams.com/documents/20143/6015057/TMF882X_DS000693_5-00.pdf, which is a broken
`
`link and does not open any advertisements. ams OSRAM further admits that the TMF8828 is
`
`designed to meet the Class 1 laser safety limits and complies with 21 CFR 1040.10 and 1040.11.
`
`The remaining allegations in paragraph 17 are denied.
`
`18.
`
`ams OSRAM admits that ams-OSRAM AG owns the www.ams-osram.com
`
`domain. The remaining allegations in paragraph 18 are denied.
`
`19.
`
`ams OSRAM admits that its website includes links to purchase its products from
`
`various distributors, including Mouser Electronics. The remaining allegations in paragraph 19 are
`
`denied.
`
`20.
`
`ams OSRAM admits that ams Sensors USA Inc. maintains a principal place of
`
`business at 5556 Tennyson Parkway, Plano, Texas 75024. The remaining allegations in paragraph
`
`20 are denied.
`
`21.
`
`22.
`
`Denied.
`
`Denied.
`
`4
`
`

`

`THE GREENTHREAD PATENTS
`
`23.
`
`ams OSRAM admits a document marked as Exhibit 1 was attached to the Complaint,
`
`U.S. Patent No. 8,421,195 (the “’195 Patent”), which speaks for itself. ams OSRAM denies any
`
`remaining allegations in paragraph 23.
`
`24.
`
`ams OSRAM admits a document marked as Exhibit 2 was attached to the Complaint,
`
`U.S. Patent No. 9,190,502 (the “’502 Patent”), which speaks for itself. ams OSRAM denies any
`
`remaining allegations in paragraph 24.
`
`25.
`
`ams OSRAM admits a document marked as Exhibit 3 was attached to the Complaint,
`
`U.S. Patent No. 10,510,842 (the “’842 Patent”), which speaks for itself. ams OSRAM denies any
`
`remaining allegations in paragraph 25.
`
`26.
`
`ams OSRAM admits a document marked as Exhibit 4 was attached to the Complaint,
`
`U.S. Patent No. 10,734,481 (the “’481 Patent”), which speaks for itself. ams OSRAM denies any
`
`remaining allegations in paragraph 26.
`
`27.
`
`ams OSRAM admits a document marked as Exhibit 5 was attached to the Complaint,
`
`U.S. Patent No. 11,121,222 (the “’222 Patent”), which speaks for itself. ams OSRAM denies any
`
`remaining allegations in paragraph 27.
`
`28.
`
`ams OSRAM admits a document marked as Exhibit 6 was attached to the Complaint,
`
`U.S. Patent No. 11,316,014 (the “’014 Patent”), which speaks for itself. ams OSRAM denies any
`
`remaining allegations in paragraph 28.
`
`29.
`
`Paragraph 29 does not require a response. To the extent a response is required, the
`
`allegations are denied.
`
`30.
`
`ams OSRAM admits documents marked as Exhibit 7 were attached to the
`
`Complaint, purporting to be an assignment bearing a filing date of May 13, 2015 and an assignment
`
`5
`
`

`

`bearing a filing date of July 22, 2021. ams OSRAM lacks sufficient knowledge or information to
`
`form a belief about the truth of the remaining allegations in paragraph 30, and therefore denies the
`
`same.
`
`31.
`
`ams OSRAM lacks sufficient knowledge or information to form a belief about the
`
`truth of the allegations in paragraph 31, and therefore denies the same.
`
`32.
`
`Denied.
`
`FACTUAL BACKGROUND
`
`33.
`
`ams OSRAM lacks sufficient knowledge or information to form a belief about the
`
`truth of the allegations in paragraph 33, and therefore denies the same.
`
`34.
`
`ams OSRAM lacks sufficient knowledge or information to form a belief about the
`
`truth of the allegations in paragraph 34, and therefore denies the same.
`
`35.
`
`ams OSRAM lacks sufficient knowledge or information to form a belief about the
`
`truth of the allegations in paragraph 35, and therefore denies the same.
`
`36.
`
`ams OSRAM lacks sufficient knowledge or information to form a belief about the
`
`truth of the allegations in paragraph 36, and therefore denies the same.
`
`37.
`
`ams OSRAM lacks sufficient knowledge or information to form a belief about the
`
`truth of the allegations in paragraph 37, and therefore denies the same.
`
`38.
`
`ams OSRAM lacks sufficient knowledge or information to form a belief about the
`
`truth of the allegations in paragraph 38, and therefore denies the same.
`
`39.
`
`ams OSRAM lacks sufficient knowledge or information to form a belief about the
`
`truth of the allegations in paragraph 39, and therefore denies the same.
`
`40.
`
`ams OSRAM lacks sufficient knowledge or information to form a belief about the
`
`truth of the allegations in paragraph 40, and therefore denies the same.
`
`6
`
`

`

`41.
`
`ams OSRAM denies that Dr. Rao invented graded dopants to create a “drift layer”
`
`to facilitate the movement of carriers, as graded dopants have been used in semiconductor devices
`
`long before the priority date of the Asserted Patents. ams OSRAM lacks sufficient knowledge or
`
`information to form a belief about the truth of the remaining allegations in paragraph 41, and
`
`therefore denies the same.
`
`42.
`
`ams OSRAM lacks sufficient knowledge or information to form a belief about the
`
`truth of the allegations in paragraph 42, and therefore denies the same.
`
`AMS-OSRAM'S INFRINGEMENT
`
`43.
`
`44.
`
`45.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNT I: INFRINGEMENT OF THE U.S. PATENT NO. 8,421,195
`
`46.
`
`ams OSRAM repeats and realleges its answers to the preceding paragraphs as if fully
`
`set forth herein.
`
`47.
`
`Paragraph 47 does not require a response. To the extent a response is required, the
`
`allegations are denied.
`
`48.
`
`49.
`
`50.
`
`51.
`
`52.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`7
`
`

`

`COUNT II: INFRINGEMENT OF U.S. PATENT NO. 9,190,502
`
`53.
`
`ams OSRAM repeats and realleges its answers to the preceding paragraphs as if fully
`
`set forth herein.
`
`54.
`
`Paragraph 54 does not require a response. To the extent a response is required, the
`
`allegations are denied.
`
`55.
`
`56.
`
`57.
`
`58.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNT III: INFRINGEMENT OF THE U.S. PATENT NO. 10,510,842
`
`59.
`
`ams OSRAM repeats and realleges its answers to the preceding paragraphs as if fully
`
`set forth herein.
`
`60.
`
`Paragraph 60 does not require a response. To the extent a response is required, the
`
`allegations are denied.
`
`61.
`
`62.
`
`63.
`
`64.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNT IV: INFRINGEMENT OF THE U.S. PATENT NO. 10,734,481
`
`65.
`
`ams OSRAM repeats and realleges its answers to the preceding paragraphs as if fully
`
`set forth herein.
`
`66.
`
`Paragraph 66 does not require a response. To the extent a response is required, the
`
`allegations are denied.
`
`8
`
`

`

`67.
`
`68.
`
`69.
`
`70.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNT V: INFRINGEMENT OF U.S. PATENT NO. 11,121,222
`
`71.
`
`ams OSRAM repeats and realleges its answers to the preceding paragraphs as if fully
`
`set forth herein.
`
`72.
`
`Paragraph 72 does not require a response. To the extent a response is required, the
`
`allegations are denied.
`
`73.
`
`74.
`
`75.
`
`76.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`COUNT VI: INFRINGEMENT OF U.S. PATENT NO. 11,316,014
`
`77.
`
`ams OSRAM repeats and realleges its answers to the preceding paragraphs as if fully
`
`set forth herein.
`
`78.
`
`Paragraph 78 does not require a response. To the extent a response is required, the
`
`allegations are denied.
`
`79.
`
`80.
`
`81.
`
`82.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`9
`
`

`

`DAMAGES
`
`83.
`
`Denied.
`
`DEMAND FOR JURY TRIAL
`
`The jury demand requires neither admission nor denial.
`
`PRAYER FOR RELIEF
`
`In answer to Plaintiff’s Prayer for Relief, ams OSRAM denies that Plaintiff is entitled to
`
`any of the relief request in paragraphs A-G, or to any relief whatsoever from ams OSRAM. ams
`
`OSRAM specifically denies committing, or being liable for, any act of infringement.
`
`AFFIRMATIVE DEFENSES
`
`84.
`
`ams OSRAM asserts the following affirmative and other defenses in response to
`
`Plaintiff’s claim for patent infringement, without waiving or conceding which party or parties carry
`
`the burden of proof with respect to any such affirmative or other defense.
`
`85.
`
`ams OSRAM’s investigation of its defenses is continuing. Accordingly, ams
`
`OSRAM expressly reserves the right to allege and assert any additional affirmative or other
`
`defenses under Rule 8 of the Federal Rules of Civil Procedure, the patent laws of the United States,
`
`and any other defense, at law or in equity, that may now exist or in the future be available based
`
`upon discovery and further investigation in this case.
`
`First Defense: Non-Infringement
`
`86.
`
`ams OSRAM has not infringed and does not infringe any of the claims of the ’195
`
`Patent literally, under the doctrine of equivalents, directly, contributorily, by inducement, or in any
`
`other manner.
`
`10
`
`

`

`87.
`
`ams OSRAM has not infringed and does not infringe any of the claims of the ’502
`
`Patent literally, under the doctrine of equivalents, directly, contributorily, by inducement, or in any
`
`other manner.
`
`88.
`
`ams OSRAM has not infringed and does not infringe any of the claims of the ’842
`
`Patent literally, under the doctrine of equivalents, directly, contributorily, by inducement, or in any
`
`other manner.
`
`89.
`
`ams OSRAM has not infringed and does not infringe any of the claims of the ’481
`
`Patent literally, under the doctrine of equivalents, directly, contributorily, by inducement, or in any
`
`other manner.
`
`90.
`
`ams OSRAM has not infringed and does not infringe any of the claims of the ’222
`
`Patent literally, under the doctrine of equivalents, directly, contributorily, by inducement, or in any
`
`other manner.
`
`91.
`
`ams OSRAM has not infringed and does not infringe any of the claims of the ’014
`
`Patent literally, under the doctrine of equivalents, directly, contributorily, by inducement, or in any
`
`other manner.
`
`Second Defense: Invalidity
`
`92.
`
`The claims of the ’195 Patent are invalid for failing to comply with the conditions
`
`and requirements for patentability as set forth in the United States Patent Laws, Title 35 U.S.C.,
`
`including for example §§ 102, 103, and/or 112.
`
`93.
`
`The claims of the ’502 Patent are invalid for failing to comply with the conditions
`
`and requirements for patentability as set forth in the United States Patent Laws, Title 35 U.S.C.,
`
`including for example §§ 102, 103, and/or 112.
`
`11
`
`

`

`94.
`
`The claims of the ’842 Patent are invalid for failing to comply with the conditions
`
`and requirements for patentability as set forth in the United States Patent Laws, Title 35 U.S.C.,
`
`including for example §§ 102, 103, and/or 112, and the rules, regulations, and laws pertaining
`
`thereto.
`
`95.
`
`The claims of the ’481 Patent are invalid for failing to comply with the conditions
`
`and requirements for patentability as set forth in the United States Patent Laws, Title 35 U.S.C.,
`
`including for example §§ 102, 103, and/or 112, and the rules, regulations, and laws pertaining
`
`thereto.
`
`96.
`
`The claims of the ’222 Patent are invalid for failing to comply with the conditions
`
`and requirements for patentability as set forth in the United States Patent Laws, Title 35 U.S.C.,
`
`including for example §§ 102, 103, and/or 112, and the rules, regulations, and laws pertaining
`
`thereto.
`
`97.
`
`The claims of the ’014 Patent are invalid for failing to comply with the conditions
`
`and requirements for patentability as set forth in the United States Patent Laws, Title 35 U.S.C.,
`
`including for example §§ 102, 103, and/or 112, and the rules, regulations, and laws pertaining
`
`thereto.
`
`Third Defense: Failure to State a Claim upon Which Relief Can Be Granted
`
`98.
`
`Plaintiff’s Complaint fails to state a claim upon which relief may be granted.
`
`Fourth Defense: Limitation on Damages
`
`99.
`
`Plaintiff’s claim for relief is barred, in whole or in part, by 35 U.S.C. §§ 286, 287,
`
`and/or 288.
`
`12
`
`

`

`100.
`
`For example, and without limitation, Plaintiff is barred from recovering damages
`
`from ams OSRAM prior to the date of the complaint, based on Plaintiff’s and its licensees’ failure
`
`to mark products that practice one or more claims of the Asserted Patents.
`
`Fifth Defense: Equitable Doctrines
`
`101.
`
`Plaintiff’s claims are barred, in whole or in part, by the doctrines of estoppel, waiver,
`
`acquiescence, misuse, and/or unclean hands.
`
`Sixth Defense: Exhaustion
`
`102.
`
`Plaintiff’s claims are barred, in whole or in part, by the doctrines of patent
`
`exhaustion and/or implied license.
`
`Seventh Defense: Adequate Relief at Law
`
`103.
`
`To the extent Plaintiff seeks injunctive relief for the alleged infringement, Plaintiff
`
`is not entitled to injunctive relief, including because any alleged injury is not immediate or
`
`irreparable, and Plaintiff has an adequate remedy at law.
`
`Eighth Defense: No Attorney’s Fees
`
`104.
`
`Plaintiff is not entitled to attorneys’ fees under 35 U.S.C. § 285.
`
`Ninth Defense: No Personal Jurisdiction
`
`105.
`
`ams-OSRAM AG is a foreign corporation organized and existing under the laws of
`
`Austria and this Court lacks personal jurisdiction over ams-OSRAM AG.
`
`106. OSRAM GmbH is a foreign corporation organized and existing under the laws of
`
`Germany and this Court lacks personal jurisdiction over OSRAM GmbH.
`
`Tenth Defense: No Standing
`
`107.
`
`Plaintiff lacks constitutional and prudential standing to bring this action because it
`
`is not the owner of all right and title to the Patents-in-Suit.
`
`13
`
`

`

`108. On September 30, 2003, G.R. Mohan Rao executed an assignment to GlobiTech
`
`Incorporated transferring the entire right, title, and interest in the inventions described in U.S.
`
`Patent Application No. 10/664,091, which issued as U.S. Patent No. 6,921,943.
`
`109. As part of the assignment, G.R. Mohan Rao agreed to transfer to GlobiTech
`
`Incorporated “any improvements on said invention or inventions now or hereafter made by us
`
`during the period of our employment,” as well as “the entire right, title and interest in and to any
`
`and all patents or reissues or extensions thereof to be obtained in this or any foreign country upon
`
`said invention, inventions, or improvements.”
`
`110. U.S. Patent No. 6,921,943 describes using a graded dopant concentration to aid
`
`minority carrier movement down towards and into the substrate.
`
`111. Upon information and belief, the Patents-in-Suit were conceived or reduced to
`
`practice during the period of G.R. Mohan Rao’s employment with GlobiTech Incorporated.
`
`112.
`
`The Patents-in-Suit are improvements on U.S. Patent No. 6,921,943.
`
`113. GlobiTech Incorporated is the lawful owner of the Patents-in-Suit.
`
`114.
`
`Thus, Plaintiff lacks both constitutional and prudential standing to bring this
`
`lawsuit.
`
`COUNTERCLAIMS FOR DECLARATORY JUDGMENT
`
`ams Sensors USA Inc. (“ams Sensors USA”) brings the following counterclaims against
`
`Greenthread, LLC (“Plaintiff”):
`
`PARTIES
`
`1.
`
`ams Sensors USA is a Nevada corporation with a principal place of business at 5556
`
`Tennyson Parkway, Plano, Texas 75024.
`
`14
`
`

`

`2.
`
`Upon information and belief, Plaintiff is a Texas limited liability company with a
`
`principal place of business at 7424 Mason Dells Drive, Dallas, Texas 75230.
`
`JURISDICTION AND VENUE
`
`3.
`
`This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331, 1338(a),
`
`2201, and 2202, and the Patent Laws of the United States, 35 U.S.C. § 1, et seq.
`
`4.
`
`This Court has personal jurisdiction over Plaintiff because Plaintiff has voluntarily
`
`submitted to personal jurisdiction in this District by filing the Complaint to which these
`
`counterclaims relate.
`
`5.
`
`Without waiving ams Sensors USA’s own challenge to venue, and assuming this
`
`Court determines that venue is proper, ams Sensors USA alternatively asserts venue is also proper
`
`in this judicial district because Plaintiff has voluntarily submitted to jurisdiction in this District by
`
`filing the Complaint to which these counterclaims relate.
`
`FACTS
`
`6.
`
`Plaintiff alleges it owns U.S. Patent Nos. 8,421,195 (the “’195 Patent”), 9,190,502
`
`(the “’502 Patent”), 10,510,842 (the “’842 Patent”), 10,734,481 (the “’481 Patent”), 11,121,222
`
`(the “’222 Patent”), and 11,316,014 (the “’014 Patent”), (collectively, the “Asserted Patents”) and
`
`that ams Sensors USA infringes one or more claims of the Asserted Patents.
`
`7.
`
`ams Sensors USA denies it infringes any valid and enforceable claim of the Asserted
`
`Patents and contend that the claims of the Asserted Patents are invalid and not infringed.
`
`COUNT I
`
`DECLARATORY JUDGMENT OF PATENT INVALIDITY
`
`8.
`
`ams Sensors USA repeats and incorporates by reference the allegations in the
`
`preceding paragraphs as if fully set forth herein.
`
`15
`
`

`

`9.
`
`The claims of the ’195 Patent are invalid for failing to comply with the conditions
`
`and requirements for patentability as set forth in the United States Patent Laws, Title 35 U.S.C.,
`
`including for example §§ 102, 103, and/or 112, and the rules, regulations, and laws pertaining
`
`thereto.
`
`COUNT II
`
`DECLARATORY JUDGMENT OF PATENT INVALIDITY
`
`10.
`
`ams Sensors USA repeats and incorporates by reference the allegations in the
`
`preceding paragraphs as if fully set forth herein.
`
`11.
`
`The claims of the ’502 Patent are invalid for failing to comply with the conditions
`
`and requirements for patentability as set forth in the United States Patent Laws, Title 35 U.S.C.,
`
`including for example §§ 102, 103, and/or 112, and the rules, regulations, and laws pertaining
`
`thereto.
`
`COUNT III
`
`DECLARATORY JUDGMENT OF PATENT INVALIDITY
`
`12.
`
`ams Sensors USA repeats and incorporates by reference the allegations in the
`
`preceding paragraphs as if fully set forth herein.
`
`13.
`
`The claims of the ’842 Patent are invalid for failing to comply with the conditions
`
`and requirements for patentability as set forth in the United States Patent Laws, Title 35 U.S.C.,
`
`including for example §§ 102, 103, and/or 112, and the rules, regulations, and laws pertaining
`
`thereto.
`
`16
`
`

`

`COUNT IV
`
`DECLARATORY JUDGMENT OF PATENT INVALIDITY
`
`14.
`
`ams Sensors USA repeats and incorporates by reference the allegations in the
`
`preceding paragraphs as if fully set forth herein.
`
`15.
`
`The claims of the ’481 Patent are invalid for failing to comply with the conditions
`
`and requirements for patentability as set forth in the United States Patent Laws, Title 35 U.S.C.,
`
`including for example §§ 102, 103, and/or 112, and the rules, regulations, and laws pertaining
`
`thereto.
`
`COUNT V
`
`DECLARATORY JUDGMENT OF PATENT INVALIDITY
`
`16.
`
`ams Sensors USA repeats and incorporates by reference the allegations in the
`
`preceding paragraphs as if fully set forth herein.
`
`17.
`
`The claims of the ’222 Patent are invalid for failing to comply with the conditions
`
`and requirements for patentability as set forth in the United States Patent Laws, Title 35 U.S.C.,
`
`including for example §§ 102, 103, and/or 112, and the rules, regulations, and laws pertaining
`
`thereto.
`
`COUNT VI
`
`DECLARATORY JUDGMENT OF PATENT INVALIDITY
`
`18.
`
`ams Sensors USA repeats and incorporates by reference the allegations in the
`
`preceding paragraphs as if fully set forth herein.
`
`19.
`
`The claims of the ’014 Patent are invalid for failing to comply with the conditions
`
`and requirements for patentability as set forth in the United States Patent Laws, Title 35 U.S.C.,
`
`17
`
`

`

`including for example §§ 102, 103, and/or 112, and the rules, regulations, and laws pertaining
`
`thereto.
`
`20.
`
`Thus, ams Sensors USA seeks a declaratory judgment that all the claims of the
`
`Asserted Patents are invalid.
`
`COUNT VII
`
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT
`
`21.
`
`ams Sensors USA repeats and incorporates by reference the allegations in the
`
`preceding paragraphs as if fully set forth herein.
`
`22.
`
`ams Sensors USA has not infringed and does not infringe any of the claims of the
`
`’195 Patent literally, under the doctrine of equivalents, directly, contributorily, by inducement, or
`
`in any other manner.
`
`COUNT VIII
`
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT
`
`23.
`
`ams Sensors USA repeats and incorporates by reference the allegations in the
`
`preceding paragraphs as if fully set forth herein.
`
`24.
`
`ams Sensors USA has not infringed and does not infringe any of the claims of the
`
`’502 Patent literally, under the doctrine of equivalents, directly, contributorily, by inducement, or
`
`in any other manner.
`
`COUNT IX
`
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT
`
`25.
`
`ams Sensors USA repeats and incorporates by reference the allegations in the
`
`preceding paragraphs as if fully set forth herein.
`
`18
`
`

`

`26.
`
`ams Sensors USA has not infringed and does not infringe any of the claims of the
`
`’842 Patent literally, under the doctrine of equivalents, directly, contributorily, by inducement, or
`
`in any other manner.
`
`COUNT X
`
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT
`
`27.
`
`ams Sensors USA repeats and incorporates by reference the allegations in the
`
`preceding paragraphs as if fully set forth herein.
`
`28.
`
`ams Sensors USA has not infringed and does not infringe any of the claims of the
`
`’481 Patent literally, under the doctrine of equivalents, directly, contributorily, by inducement, or
`
`in any other manner.
`
`COUNT XI
`
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT
`
`29.
`
`ams Sensors USA repeats and incorporates by reference the allegations in the
`
`preceding paragraphs as if fully set forth herein.
`
`30.
`
`ams Sensors USA has not infringed and does not infringe any of the claims of the
`
`’222 Patent literally, under the doctrine of equivalents, directly, contributorily, by inducement, or
`
`in any other manner.
`
`COUNT XII
`
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT
`
`31.
`
`ams Sensors USA repeats and incorporates by reference the allegations in the
`
`preceding paragraphs as if fully set forth herein.
`
`19
`
`

`

`32.
`
`ams Sensors USA has not infringed and does not infringe any of the claims of the
`
`’014 Patent literally, under the doctrine of equivalents, directly, contributorily, by inducement, or
`
`in any other manner.
`
`33.
`
`Thus, ams Sensors USA seeks a declaratory judgment that ams Sensors USA has
`
`not infringed and does not infringe any valid claim of the Asserted Patents.
`
`JURY DEMAND
`
`34.
`
`ams Sensors USA demands a trial by jury on all issues so triable.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, ams Sensors USA respectfully requests the following relief:
`
`A.
`
`B.
`
`Dismissal with prejudice of Plaintiff’s Complaint;
`
`A judgment declaring that ams Sensors USA has not and does not infringe any of
`
`the claims of the Asserted Patents literally, under the doctrine of equivalents, directly,
`
`contributorily, by inducement, or in any other manner;
`
`C.
`
`D.
`
`A judgment declaring that all the claims of the Asserted Patents are invalid;
`
`A judgment that this case is exceptional under 35 U.S.C. § 285, and that Plaintiff be
`
`required to pay ams Sensors USA its reasonable attorneys’ fees, costs, and expenses, and pre- and
`
`post-judgment interest; and
`
`E.
`
`Such other relief that the Court may deem just and proper and to which ams Sensors
`
`USA is entitled.
`
`20
`
`

`

`Dated: September 7, 2023
`
`Respectfully Submitted,
`
`/s/ Charles S. Baker
`Charles S. Baker
`Attorney-in-Charge
`Texas State Bar No. 01566200
`cbaker@lockelord.com
`Daniel G. Nguyen
`Texas State Bar No. 24025560
`dnguyen@lockelord.com
`Ryan E. Dornberger
`Texas State Bar No. 24121388
`ryan.dornberger@lockelord.com
`Emma A. Bennett
`Texas State Bar No. 24131250
`Emma.bennett@lockelord.com
`LOCKE LORD LLP
`600 Travis St., Suite 2800
`Houston, Texas 77002
`(713) 226-1200 Telephone
`(214) 223-3717 Facsimile
`
`Mark Hannemann (pro hac vice)
`New York State Bar No. 2770709
`mark.hannemann@lockelord.com
`LOCKE LORD LLP
`Brookfield Place
`200 Vesey Street, 20th Floor
`New York, NY 10281
`(212)-415-8600 Telephone
`(212)-303-2754 Facsimile
`
`ATTORNEYS FOR DEFENDANTS, AMS-
`OSRAM AG, OSRAM GMBH, AND AMS
`SENSORS USA INC.
`
`21
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that, on September 7, 2023, a true and correct copy of the foregoing
`
`document was served on all counsel of record through the Court’s CM/ECF system.
`
`/s/ Charles S. Baker
`Charles S. Baker
`
`22
`
`

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