Case 2:16-cv-00725-JRG Document 1 Filed 07/05/16 Page 1 of 22 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Civil Action No. 2:16-cv-725
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`PATENT CASE
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`JURY TRIAL DEMANDED
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`UNILOC USA, INC. and
`UNILOC LUXEMBOURG, S.A.,
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`Plaintiffs,
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`v.
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`BEETALK PRIVATE LTD.,
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`Defendant.
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`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiffs, Uniloc USA, Inc. and Uniloc Luxembourg, S.A. (together “Uniloc”), as and
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`for their complaint against defendant, BeeTalk Private Ltd. (“BeeTalk”), allege as follows:
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`THE PARTIES
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`1.
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`Uniloc USA, Inc. (“Uniloc USA”) is a Texas corporation having a principal place
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`of business at Legacy Town Center I, Suite 380, 7160 Dallas Parkway, Plano Texas 75024.
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`Uniloc also maintains a place of business at 102 N. College, Suite 603, Tyler, Texas 75702.
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`2.
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`Uniloc Luxembourg S.A. (“Uniloc Luxembourg”) is a Luxembourg public limited
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`liability company having a principal place of business at 15, Rue Edward Steichen, 4th Floor, L-
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`2540, Luxembourg (R.C.S. Luxembourg B159161).
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`3.
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`Uniloc Luxembourg owns a number of patents in the field of text/voice instant
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`messaging.
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`4.
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`Upon information and belief, BeeTalk is a private limited Singapore company
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`having a principal place of business at 1 Fusionopolis Place #17-10, Galaxis, Singapore 138522.
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`06096768 
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` 
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`

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`Case 2:16-cv-00725-JRG Document 1 Filed 07/05/16 Page 2 of 22 PageID #: 2
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`BeeTalk may be served with process in accordance with the provisions of The Hague Service
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`Convention.
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`JURISDICTION AND VENUE
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`5.
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`Uniloc brings this action for patent infringement under the patent laws of the
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`United States, 35 U.S.C. § 271 et seq. This Court has subject matter jurisdiction pursuant to 28
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`U.S.C. §§ 1331, 1338(a) and 1367.
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`6.
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`Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391(c) and
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`1400(b). Upon information and belief, BeeTalk is deemed to reside in this judicial district, has
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`committed acts of infringement in this judicial district, and/or has purposely transacted business
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`involving the accused products in this judicial district, including sales to one or more customers
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`in Texas.
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`7.
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`BeeTalk is subject to this Court’s jurisdiction pursuant to due process and/or the
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`Texas Long Arm Statute due at least to its substantial business in this State and judicial district,
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`including: (A) at least part of its past infringing activities, (B) regularly doing or soliciting
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`business in Texas and/or (C) engaging in persistent conduct and/or deriving substantial revenue
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`from goods and services provided to customers in Texas.
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`COUNT I
`(INFRINGEMENT OF U.S. PATENT NO. 8,724,622)
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`Uniloc incorporates paragraphs 1-7 above by reference.
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`Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 8,724,622
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`
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`8.
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`9.
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`(“the ’622 Patent”), entitled SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING
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`that issued on May 13, 2014. A true and correct copy of the ’622 Patent is attached as Exhibit A
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`hereto.
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` 
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`2
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`Case 2:16-cv-00725-JRG Document 1 Filed 07/05/16 Page 3 of 22 PageID #: 3
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`10.
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`Uniloc USA is the exclusive licensee of the ’622 Patent with ownership of all
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`substantial rights therein, including the right to grant sublicenses, to exclude others, and to
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`enforce, sue and recover past damages for the infringement thereof.
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`11.
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`Upon information and belief, the following identifies the BeeTalk app:
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`12.
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`Upon information and belief, the following describes, at least in part, the BeeTalk
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`
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`app:
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`app:
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` 
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`13.
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`Upon information and belief, the following describes, at least in part, the BeeTalk
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`3
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`

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`Case 2:16-cv-00725-JRG Document 1 Filed 07/05/16 Page 4 of 22 PageID #: 4
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`14.
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`Upon information and belief, the following describes, at least in part, how the
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`
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`BeeTalk app works:
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`15.
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`Upon information and belief, the following describes, at least in part, how the
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`
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`BeeTalk app works:
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` 
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`4
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`Case 2:16-cv-00725-JRG Document 1 Filed 07/05/16 Page 5 of 22 PageID #: 5
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`16.
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`Upon information and belief, the following describes, at least in part, how the
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`
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`BeeTalk app works:
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`17.
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`Upon information and belief, the following describes, at least in part, how the
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`
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`BeeTalk app works:
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` 
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`5
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`Case 2:16-cv-00725-JRG Document 1 Filed 07/05/16 Page 6 of 22 PageID #: 6
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`18.
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`Upon information and belief, the following describes, at least in part, how the
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`
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`BeeTalk app works:
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`6
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`Case 2:16-cv-00725-JRG Document 1 Filed 07/05/16 Page 7 of 22 PageID #: 7
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`19.
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`Upon information and belief, the following describes, at least in part, how the
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`BeeTalk app works:
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`20.
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`BeeTalk has directly infringed, and continues to directly infringe one or more
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`claims of the ’622 Patent in this judicial district and elsewhere in Texas, including at least claims
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`3, 4, 6-8, 10-19, 21-23 and 38-39 literally and/or under the doctrine of equivalents, by or through
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`making, using, importing, offering for sale and/or selling the BeeTalk application for/on mobile
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`and/or desktop devices during the pendency of the ’622 Patent which software and associated
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`BeeTalk servers perform instant voice messaging over Wi-Fi and the Internet between persons
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`using cellphones and/or other devices capable of instant voice messaging; wherein digitized
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`audio files are transmitted between a plurality of recipients on a packet switched network and a
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`list of one or more currently potential recipients is displayed on the device.
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`21.
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`In addition, should the BeeTalk app system be found to not literally infringe the
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`asserted claims of the ’622 Patent, the BeeTalk app system would nevertheless infringe the
`
`asserted claims of the ’622 Patent. More specifically, the accused BeeTalk app system performs
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` 
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`7
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`

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`Case 2:16-cv-00725-JRG Document 1 Filed 07/05/16 Page 8 of 22 PageID #: 8
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`substantially the same function (instant voice messaging), in substantially the same way (via a
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`digitized audio files in a client/server environment), to yield substantially the same result
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`(delivering voice messages to available intended recipients). BeeTalk would thus be liable for
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`direct infringement under the doctrine of equivalents.
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`22.
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`BeeTalk has indirectly infringed and continues to indirectly infringe at least
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`claims 3-4, 6-8, 10-19, 21-23 and 38-39 of the ‘622 Patent in this judicial district and elsewhere
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`in the United States by, among other things, actively inducing the using, offering for sale, selling,
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`or importing the BeeTalk application. BeeTalk’s customers who purchase the BeeTalk
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`application and operate such application in accordance with BeeTalk’s instructions directly
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`infringe one or more of the forgoing claims of the ’622 Patent in violation of 35 U.S.C. § 271.
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`BeeTalk directly and/or
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`indirectly
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`instructs
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`its customers
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`through
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`training videos,
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`demonstrations, brochures, installation and/or user guides, such as those located at the following:
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`http://beetalkmobile.com
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`http://beetalk.en.uptown.com
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`https://itunes.apple.com/us/app
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`https://play.google.com/store/apps
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`BeeTalk is thereby liable for infringement of the ’622 Patent under 35 U.S.C. § 271(b).
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`23.
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`BeeTalk has indirectly infringed and continues to indirectly infringe at least
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`claims 3-4, 6-8, 10-19, 21-23 and 38-39 of the ’622 Patent in this judicial district and elsewhere
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`in the United States by, among other things, contributing to the direct infringement by others
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`including, without limitation customers using the BeeTalk application, by making, offering to
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`sell, selling and/or importing into the United States, a component of a patented machine,
`
`manufacture or combination, or an apparatus for use in practicing a patented process,
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` 
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`8
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`

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`Case 2:16-cv-00725-JRG Document 1 Filed 07/05/16 Page 9 of 22 PageID #: 9
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`constituting a material part of the invention, knowing the same to be especially made or
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`especially adapted for use in infringing the ’622 Patent and not a staple article or commodity of
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`commerce suitable for substantial non-infringing use.
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`24.
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`For example, the BeeTalk application is a component of a patented machine,
`
`manufacture, or combination, or an apparatus for use in practicing a patent process.
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`Furthermore, the BeeTalk application is a material part of the claimed inventions and upon
`
`information and belief is not a staple article or commodity of commerce suitable for substantial
`
`non-infringing use. BeeTalk is, therefore, liable for infringement under 35 U.S.C. § 271(c).
`
`25.
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`BeeTalk will have been on notice of the ’622 Patent since, at the latest, the service
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`of this complaint upon BeeTalk. By the time of trial, BeeTalk will have known and intended
`
`(since receiving such notice) that its continued actions would actively induce, and contribute to,
`
`the infringement of one or more of claims 3-4, 6-8, 10-19, 21-23 and 38-39 of the ’622 Patent.
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`26.
`
`BeeTalk may have infringed the ’622 Patent through other software utilizing the
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`same or reasonably similar functionality, including other versions of the BeeTalk application.
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`Uniloc reserves the right to discover and pursue all such additional infringing software/devices.
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`27.
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`Uniloc has been damaged, reparably and irreparably, by BeeTalk’s infringement
`
`of the ’622 Patent and such damage will continue unless and until BeeTalk is enjoined.
`
`COUNT II
` (INFRINGEMENT OF U.S. PATENT NO. 8,995,433)
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`Uniloc incorporates paragraphs 1-27 above by reference.
`
`Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 8,995,433
`
`
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`28.
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`29.
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`(“the ’433 Patent”), entitled SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING
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`that issued on March 31, 2015. A true and correct copy of the ’433 Patent is attached as Exhibit
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`B hereto.
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` 
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`9
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`Case 2:16-cv-00725-JRG Document 1 Filed 07/05/16 Page 10 of 22 PageID #: 10
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`30.
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`Uniloc USA is the exclusive licensee of the ’433 Patent with ownership of all
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`substantial rights therein, including the right to grant sublicenses, to exclude others, and to
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`enforce, sue and recover past damages for the infringement thereof.
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`31.
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`BeeTalk has directly infringed, and continues to directly infringe one or more
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`claims of the ’433 Patent in this judicial district and elsewhere in Texas, including at least claims
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`1-5, 7-12, 14-17 and 25-27 literally and/or under the doctrine of equivalents, by or through
`
`making, using, importing, offering for sale and/or selling the BeeTalk application for/on mobile
`
`and/or desktop devices during the pendency of the ’433 Patent which software and associated
`
`BeeTalk servers perform instant voice messaging over Wi-Fi and the Internet between persons
`
`using cellphones and/or other devices capable of instant voice messaging; wherein a list of one
`
`or more potential recipients is displayed on the device, the instant messages are temporarily
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`stored using a unique identifier, and a file manager stores, retrieves and/or deletes the messages
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`in response to the users request.
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`32.
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`In addition, should the BeeTalk app system be found to not literally infringe the
`
`asserted claims of the ’433 Patent, the BeeTalk app system would nevertheless infringe the
`
`asserted claims of the ’433 Patent. More specifically, the accused app BeeTalk system performs
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`substantially the same function (instant voice messaging), in substantially the same way
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`(identifying potentially available recipients, storing messages using unique identifiers and a file
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`manager for storing, retrieving and/or deleting the messages), to yield substantially the same
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`result (delivering voice messages to available intended recipients and wherein the messages may
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`be stored, retrieved and/or deleted). BeeTalk would thus be liable for direct infringement under
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`the doctrine of equivalents.
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` 
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`10
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`

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`Case 2:16-cv-00725-JRG Document 1 Filed 07/05/16 Page 11 of 22 PageID #: 11
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`33.
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`BeeTalk has indirectly infringed and continues to indirectly infringe at least
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`claims 1-5, 7-12, 14-17 and 25-27 of the ’433 Patent in this judicial district and elsewhere in the
`
`United States by, among other things, actively inducing the using, offering for sale, selling, or
`
`importing the BeeTalk application. BeeTalk’s customers who purchase the BeeTalk application
`
`and operate such application in accordance with BeeTalk’s instructions directly infringe one or
`
`more of the forgoing claims of the ’433 Patent in violation of 35 U.S.C. § 271. BeeTalk directly
`
`and/or indirectly instructs its customers through training videos, demonstrations, brochures,
`
`installation and/or user guides, such as those located at the following:
`
`http://beetalkmobile.com
`
`http://beetalk.en.uptown.com
`
`https://itunes.apple.com/us/app
`
`https://play.google.com/store/apps
`
`BeeTalk is thereby liable for infringement of the ’433 Patent under 35 U.S.C. § 271(b).
`
`34.
`
`BeeTalk has indirectly infringed and continues to indirectly infringe at least
`
`claims 1-5, 7-12, 14-17 and 25-27 of the ’433 Patent in this judicial district and elsewhere in the
`
`United States by, among other things, contributing to the direct infringement by others including,
`
`without limitation customers using the BeeTalk application, by making, offering to sell, selling
`
`and/or importing into the United States, a component of a patented machine, manufacture or
`
`combination, or an apparatus for use in practicing a patented process, constituting a material part
`
`of the invention, knowing the same to be especially made or especially adapted for use in
`
`infringing the ’433 Patent and not a staple article or commodity of commerce suitable for
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`substantial non-infringing use.
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` 
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`11
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`Case 2:16-cv-00725-JRG Document 1 Filed 07/05/16 Page 12 of 22 PageID #: 12
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`35.
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`For example, the BeeTalk application is a component of a patented machine,
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`manufacture, or combination, or an apparatus for use in practicing a patent process.
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`Furthermore, the BeeTalk application is a material part of the claimed inventions and upon
`
`information and belief is not a staple article or commodity of commerce suitable for substantial
`
`non-infringing use. BeeTalk is, therefore, liable for infringement under 35 U.S.C. § 271(c).
`
`36.
`
`BeeTalk will have been on notice of the ’433 Patent since, at the latest, the service
`
`of this complaint upon BeeTalk. By the time of trial, BeeTalk will have known and intended
`
`(since receiving such notice) that its continued actions would actively induce, and contribute to,
`
`the infringement of one or more of claims 1-5, 7-12, 14-17 and 25-27 of the ’433 Patent.
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`37.
`
`BeeTalk may have infringed the ’433 Patent through other software utilizing the
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`same or reasonably similar functionality, including other versions of the BeeTalk application.
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`Uniloc reserves the right to discover and pursue all such additional infringing software/devices.
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`38.
`
`Uniloc has been damaged, reparably and irreparably, by BeeTalk’s infringement
`
`of the ’433 Patent and such damage will continue unless and until BeeTalk is enjoined.
`
`COUNT III
` (INFRINGEMENT OF U.S. PATENT NO. 7,535,890)
`
`Uniloc incorporates paragraphs 1-38 above by reference.
`
`Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 7,535,890
`
`
`
`39.
`
`40.
`
`(“the ’890 Patent”), entitled SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING
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`that issued on May 19, 2009. A true and correct copy of the ’890 Patent is attached as Exhibit C
`
`hereto.
`
`41.
`
`Uniloc USA is the exclusive licensee of the ’890 Patent with ownership of all
`
`substantial rights therein, including the right to grant sublicenses, to exclude others, and to
`
`enforce, sue and recover past damages for the infringement thereof.
`
` 
`
`12
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`

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`Case 2:16-cv-00725-JRG Document 1 Filed 07/05/16 Page 13 of 22 PageID #: 13
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`42.
`
`BeeTalk has directly infringed, and continues to directly infringe one or more
`
`claims of the ’890 Patent in this judicial district and elsewhere in Texas, including at least claims
`
`1-6, 9, 14-15, 17-20, 23, 28-29, 31-34, 37, 40-43, 46, 51-54, 57, 62-65 and 68-69 literally and/or
`
`under the doctrine of equivalents, by or through making, using, importing, offering for sale
`
`and/or selling the BeeTalk application for/on mobile and desktop devices during the pendency of
`
`the ’890 Patent which software and associated BeeTalk servers perform instant voice messaging
`
`over Wi-Fi and the Internet between persons using cellphones and/or other devices capable of
`
`instant voice messaging; wherein the instant messages are temporarily stored if an intended
`
`message recipient is unavailable and thereafter delivered once the intend recipient becomes
`
`available.
`
`43.
`
`In addition, should the BeeTalk app system be found to not literally infringe the
`
`asserted claims of the ’890 Patent, the BeeTalk app system would nevertheless infringe the
`
`asserted claims of the ’890 Patent. More specifically, the accused BeeTalk app system performs
`
`substantially the same function (instant voice messaging), in substantially the same way (via a
`
`client/server environment), to yield substantially the same result (delivering voice messages to
`
`available intended recipients). BeeTalk would thus be liable for direct infringement under the
`
`doctrine of equivalents.
`
`44.
`
`BeeTalk has indirectly infringed and continues to indirectly infringe at least
`
`claims 1-6, 9, 14-15, 17-20, 23, 28-29, 31-34, 37, 40-43, 46, 51-54, 57, 62-65 and 68-69 of the
`
`’890 Patent in this judicial district and elsewhere in the United States by, among other things,
`
`actively inducing the using, offering for sale, selling, or importing the BeeTalk application.
`
`BeeTalk’s customers who purchase the BeeTalk application and operate such application in
`
`accordance with BeeTalk’s instructions directly infringe one or more of the forgoing claims of
`
` 
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`13
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`

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`Case 2:16-cv-00725-JRG Document 1 Filed 07/05/16 Page 14 of 22 PageID #: 14
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`the ’890 Patent in violation of 35 U.S.C. § 271. BeeTalk directly and/or indirectly instructs its
`
`customers through training videos, demonstrations, brochures, installation and/or user guides,
`
`such as those located at the following:
`
`http://beetalkmobile.com
`
`http://beetalk.en.uptown.com
`
`https://itunes.apple.com/us/app
`
`https://play.google.com/store/apps
`
`BeeTalk is thereby liable for infringement of the ’890 Patent under 35 U.S.C. § 271(b).
`
`45.
`
`BeeTalk has indirectly infringed and continues to indirectly infringe at least
`
`claims 1-6, 9, 14-15, 17-20, 23, 28-29, 31-34, 37, 40-43, 46, 51-54, 57, 62-65 and 68-69 of the
`
`’890 Patent in this judicial district and elsewhere in the United States by, among other things,
`
`contributing to the direct infringement by others including, without limitation customers using
`
`the BeeTalk application, by making, offering to sell, selling and/or importing into the United
`
`States, a component of a patented machine, manufacture or combination, or an apparatus for use
`
`in practicing a patented process, constituting a material part of the invention, knowing the same
`
`to be especially made or especially adapted for use in infringing the ’890 Patent and not a staple
`
`article or commodity of commerce suitable for substantial non-infringing use.
`
`46.
`
`For example, the BeeTalk application is a component of a patented machine,
`
`manufacture, or combination, or an apparatus for use in practicing a patent process.
`
`Furthermore, the BeeTalk application is a material part of the claimed inventions and upon
`
`information and belief is not a staple article or commodity of commerce suitable for substantial
`
`non-infringing use. BeeTalk is, therefore, liable for infringement under 35 U.S.C. § 271(c).
`
` 
`
`14
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`

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`Case 2:16-cv-00725-JRG Document 1 Filed 07/05/16 Page 15 of 22 PageID #: 15
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`47.
`
`BeeTalk will have been on notice of the ’890 Patent since, at the latest, the service
`
`of this complaint upon BeeTalk. By the time of trial, BeeTalk will have known and intended
`
`(since receiving such notice) that its continued actions would actively induce, and contribute to,
`
`the infringement of one or more of claims 1-6, 9, 14-15, 17-20, 23, 28-29, 31-34, 37, 40-43, 46,
`
`51-54, 57, 62-65 and 68-69 of the ‘’890 Patent.
`
`48.
`
`BeeTalk may have infringed the ’890 Patent through other software utilizing the
`
`same or reasonably similar functionality, including other versions of the BeeTalk application.
`
`Uniloc reserves the right to discover and pursue all such additional infringing software/devices.
`
`49.
`
`Uniloc has been damaged, reparably and irreparably, by BeeTalk’s infringement
`
`of the ’890 Patent and such damage will continue unless and until BeeTalk is enjoined.
`
`COUNT IV
` (INFRINGEMENT OF U.S. PATENT NO. 8,199,747)
`
`Uniloc incorporates paragraphs 1-49 above by reference.
`
`Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 8,199,747
`
`
`
`50.
`
`51.
`
`(“the ’747 Patent”), entitled SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING
`
`that issued on June 12, 2012. A true and correct copy of the ’747 Patent is attached as Exhibit D
`
`hereto.
`
`52.
`
`Uniloc USA is the exclusive licensee of the ’747 Patent with ownership of all
`
`substantial rights therein, including the right to grant sublicenses, to exclude others, and to
`
`enforce, sue and recover past damages for the infringement thereof.
`
`53.
`
`BeeTalk has directly infringed, and continues to directly infringe one or more
`
`claims of the ’747 Patent in this judicial district and elsewhere in Texas, including at least claims
`
`1-3 and 12-14 literally and/or under the doctrine of equivalents, by or through making, using,
`
`importing, offering for sale and/or selling the BeeTalk application for/on mobile and/or desktop
`
` 
`
`15
`
`

`

`Case 2:16-cv-00725-JRG Document 1 Filed 07/05/16 Page 16 of 22 PageID #: 16
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`devices during the pendency of the ’747 Patent which software and associated BeeTalk servers
`
`perform instant voice messaging over Wi-Fi and the Internet between persons using cellphones
`
`and/or other devices capable of instant voice messaging; wherein the instant message audio file
`
`is generated and one or more files attached thereto and transmitting the files to available
`
`recipients and temporarily storing the message if an intended recipient is unavailable and
`
`thereafter delivered once the intend recipient becomes available.
`
`54.
`
`In addition, should the BeeTalk app system be found to not literally infringe the
`
`asserted claims of the ’747 Patent, the BeeTalk app system would nevertheless infringe the
`
`asserted claims of the ’747 Patent. More specifically, the accused BeeTalk app system performs
`
`substantially the same function (instant voice messaging), in substantially the same way
`
`(recording and transmitting a message to be audibly played by one or more recipients and
`
`temporarily storing messages for a recipient who is unavailable), to yield substantially the same
`
`result (delivering voice messages with attached file(s) to available intended recipients). BeeTalk
`
`would thus be liable for direct infringement under the doctrine of equivalents.
`
`55.
`
`BeeTalk has indirectly infringed and continues to indirectly infringe at least
`
`claims 1-3 and 12-14 of the ’747 Patent in this judicial district and elsewhere in the United States
`
`by, among other things, actively inducing the using, offering for sale, selling, or importing the
`
`BeeTalk application. BeeTalk’s customers who purchase the BeeTalk application and operate
`
`such application in accordance with BeeTalk’s instructions directly infringe one or more of the
`
`forgoing claims of the ’747 Patent in violation of 35 U.S.C. § 271. BeeTalk directly and/or
`
`indirectly instructs its customers through training videos, demonstrations, brochures, installation
`
`and/or user guides, such as those located at the following:
`
`http://beetalkmobile.com
`
` 
`
`16
`
`

`

`Case 2:16-cv-00725-JRG Document 1 Filed 07/05/16 Page 17 of 22 PageID #: 17
`
`http://beetalk.en.uptown.com
`
`https://itunes.apple.com/us/app
`
`https://play.google.com/store/apps
`
`BeeTalk is thereby liable for infringement of the ’747 Patent under 35 U.S.C. § 271(b).
`
`56.
`
`BeeTalk has indirectly infringed and continues to indirectly infringe at least
`
`claims 1-3 and 12-14 of the ’747 Patent in this judicial district and elsewhere in the United States
`
`by, among other things, contributing to the direct infringement by others including, without
`
`limitation customers using the BeeTalk application, by making, offering to sell, selling and/or
`
`importing into the United States, a component of a patented machine, manufacture or
`
`combination, or an apparatus for use in practicing a patented process, constituting a material part
`
`of the invention, knowing the same to be especially made or especially adapted for use in
`
`infringing the ’747 Patent and not a staple article or commodity of commerce suitable for
`
`substantial non-infringing use.
`
`57.
`
`For example, the BeeTalk application is a component of a patented machine,
`
`manufacture, or combination, or an apparatus for use in practicing a patent process.
`
`Furthermore, the BeeTalk application is a material part of the claimed inventions and upon
`
`information and belief is not a staple article or commodity of commerce suitable for substantial
`
`non-infringing use. BeeTalk is, therefore, liable for infringement under 35 U.S.C. § 271(c).
`
`58.
`
`BeeTalk will have been on notice of the ’747 Patent since, at the latest, the service
`
`of this complaint upon BeeTalk. By the time of trial, BeeTalk will have known and intended
`
`(since receiving such notice) that its continued actions would actively induce, and contribute to,
`
`the infringement of one or more of claims 1-3 and 12-14 of the ’747 Patent.
`
` 
`
`17
`
`

`

`Case 2:16-cv-00725-JRG Document 1 Filed 07/05/16 Page 18 of 22 PageID #: 18
`
`59.
`
`BeeTalk may have infringed the ’747 Patent through other software utilizing the
`
`same or reasonably similar functionality, including other versions of the BeeTalk application.
`
`Uniloc reserves the right to discover and pursue all such additional infringing software/devices.
`
`60.
`
`Uniloc has been damaged, reparably and irreparably, by BeeTalk’s infringement
`
`of the ’747 Patent and such damage will continue unless and until BeeTalk is enjoined.
`
`COUNT V
` (INFRINGEMENT OF U.S. PATENT NO. 8,243,723)
`
`Uniloc incorporates paragraphs 1-60 above by reference.
`
`Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 8,243,723
`
`
`
`61.
`
`62.
`
`(“the ’723 Patent”), entitled SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING
`
`that issued on August 14, 2012. A true and correct copy of the ’723 Patent is attached as Exhibit
`
`E hereto.
`
`63.
`
`Uniloc USA is the exclusive licensee of the ’723 Patent with ownership of all
`
`substantial rights therein, including the right to grant sublicenses, to exclude others, and to
`
`enforce, sue and recover past damages for the infringement thereof.
`
`64.
`
`BeeTalk has directly infringed, and continues to directly infringe one or more
`
`claims of the ’723 Patent in this judicial district and elsewhere in Texas, including at least claims
`
`1-3 literally and/or under the doctrine of equivalents, by or through making, using, importing,
`
`offering for sale and/or selling the BeeTalk application for/on mobile and/or desktop devices
`
`during the pendency of the ’723 Patent which software and associated BeeTalk servers perform
`
`instant voice messaging over Wi-Fi and the Internet between persons using cellphones and/or
`
`other devices capable of instant voice messaging; wherein the availability of the recipients’
`
`nodes is monitored, recorded and displayed and the instant message(s) are temporarily stored if
`
` 
`
`18
`
`

`

`Case 2:16-cv-00725-JRG Document 1 Filed 07/05/16 Page 19 of 22 PageID #: 19
`
`an intended message recipient is unavailable and thereafter delivered once the intend recipient
`
`becomes available.
`
`65.
`
`In addition, should the BeeTalk app system be found to not literally infringe the
`
`asserted claims of the ’723 Patent, the BeeTalk app system would nevertheless infringe the
`
`asserted claims of the ’723 Patent. More specifically, the accused BeeTalk app system performs
`
`substantially the same function (instant voice messaging), in substantially the same way
`
`(monitoring, recording and displaying recipients’ availability), to yield substantially the same
`
`result (delivering voice messages to available intended recipients and storing messages for
`
`unavailable recipients until they become available). BeeTalk would thus be liable for direct
`
`infringement under the doctrine of equivalents.
`
`66.
`
`BeeTalk has indirectly infringed and continues to indirectly infringe at least
`
`claims 1-3 of the ’723 Patent in this judicial district and elsewhere in the United States by,
`
`among other things, actively inducing the using, offering for sale, selling, or importing the
`
`BeeTalk application. BeeTalk’s customers who purchase the BeeTalk application and operate
`
`such application in accordance with BeeTalk’s instructions directly infringe one or more of the
`
`forgoing claims of the ’723 Patent in violation of 35 U.S.C. § 271. BeeTalk directly and/or
`
`indirectly instructs its customers through training videos, demonstrations, brochures, installation
`
`and/or user guides, such as those located at the following:
`
`
`
`
`
`
`
`
`
`http://beetalkmobile.com
`
`http://beetalk.en.uptown.com
`
`https://itunes.apple.com/us/app
`
`https://play.google.com/store/apps
`
`BeeTalk is thereby liable for infringement of the 723 Patent under 35 U.S.C. § 271(b).
`
` 
`
`19
`
`

`

`Case 2:16-cv-00725-JRG Document 1 Filed 07/05/16 Page 20 of 22 PageID #: 20
`
`67.
`
`BeeTalk has indirectly infringed and continues to indirectly infringe at least
`
`claims 1-3 of the ’723 Patent in this judicial district and elsewhere in the United States by,
`
`among other things, contributing to the direct infringement by others including, without
`
`limitation customers using the BeeTalk application, by making, offering to sell, selling and/or
`
`importing into the United States, a component of a patented machine, manufacture or
`
`combination, or an apparatus for use in practicing a patented process, constituting a material part
`
`of the invention, knowing the same to be especially made or especially adapted for use in
`
`infringing the ’723 Patent and not a staple article or commodity of commerce suitable for
`
`substantial non-infringing use.
`
`68.
`
`For example, the BeeTalk application is a component of a patented machine,
`
`manufacture, or combination, or an apparatus for use in practicing a patent process.
`
`Furthermore, the BeeTalk application is a material part of the claimed inventions and upon
`
`information and belief is not a staple article or commodity of commerce suitable for substantial
`
`non-infringing use. BeeTalk is, therefore, liable for infringement under 35 U.S.C. § 271(c).
`
`69.
`
`BeeTalk will have been on notice of the ’723 Patent since, at the latest, the service
`
`of this complaint upon BeeTalk. By the time of trial, BeeTalk will have known and intended
`
`(since receiving such notice) that its continued actions would actively induce, and contribute to,
`
`the infringement of one or more of claims 1-3 of the ’723 Patent.
`
`70.
`
`BeeTalk may have infringed the ’723 Patent through other software utilizing the
`
`same or reasonably similar functionality, including other versions of it’s the BeeTalk application.
`
`Uniloc reserves the right to discover and pursue all such additional infringing software/devices.
`
`71.
`
`Uniloc has been damaged, reparably and irreparably, by BeeTalk’s infringement
`
`of the ’723 Patent and such damage will continue unless and until BeeTalk is enjoined.
`
` 
`
`20
`
`

`

`Case 2:16-cv-00725-JRG Document 1 Filed 07/05/16 Page 21 of 22 PageID #: 21
`
`PRAYER FOR RELIEF
`
`
`
`
`
`Uniloc requests that the Court enter judgment against BeeTalk as follows:
`
`(A)
`
`that BeeTalk has infringed the ’622 Patent, ’433 Patent, ’890 Patent, ’747 Patent
`
`and the ’723 Patent;
`
`
`
`(B)
`
`awarding Uniloc its damages suffered as a result of BeeTalk’s infringement of the
`
`‘622 Patent, ’433 Patent, ’890 Patent, ’747 Patent and the ’723 Patent pursuant to 35 U.S.C. §
`
`284;
`
`
`
`(C)
`
`enjoining BeeTalk, its officers, directors, agents, servants, affiliates, employees,
`
`divis