Case 2:16-cv-00992-JRG Document 1 Filed 09/06/16 Page 1 of 25 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-992
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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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`MOTOROLA MOBILITY LLC,
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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, Motorola Mobility LLC (“Motorola”), 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, Motorola is a Delaware corporation having a
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`principal place of business in Chicago, Illinois and does business through sales in Texas and in
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`the judicial Eastern District of Texas. Motorola may be served with process through its
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`06096768 
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` 
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`

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`Case 2:16-cv-00992-JRG Document 1 Filed 09/06/16 Page 2 of 25 PageID #: 2
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`registered agent for service of process in Texas: CT Corporation System, 1999 Bryan Street,
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`Suite 900, Dallas, Texas 75201-3140.
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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, Motorola 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 of the accused devices to
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`one or more customers in Texas.
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`7.
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`Motorola 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, including the accused devices, 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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`
`
`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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`

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`Case 2:16-cv-00992-JRG Document 1 Filed 09/06/16 Page 3 of 25 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 an exemplary Motorola
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`smartphone having instant voice messaging and/or instant video with audio messaging (“IVM”)
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`capability in a packet-switched network:
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`12.
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`Upon information and belief, the following illustrates, at least in part, the About
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`phone screen of the Motorola Android IVM smartphone
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` 
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`3
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`

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`Case 2:16-cv-00992-JRG Document 1 Filed 09/06/16 Page 4 of 25 PageID #: 4
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`13.
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`Upon information and belief, the following illustrates, at least in part, the Default
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`Apps screen of the Motorola Android IVM smartphone:
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`4
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`Case 2:16-cv-00992-JRG Document 1 Filed 09/06/16 Page 5 of 25 PageID #: 5
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`14.
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`Upon information and belief, the following illustrates, at least in part, the
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`Advanced settings screen of the Motorola Android IVM smartphone:
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`15.
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`Upon information and belief, the following illustrates, at least in part, a People &
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`options screen of the Motorola Android IVM smartphone:
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` 
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`5
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`Case 2:16-cv-00992-JRG Document 1 Filed 09/06/16 Page 6 of 25 PageID #: 6
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`16.
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`Upon information and belief, the following illustrates, at least in part, a
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`microphone screen of the Motorola Android IVM smartphone:
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`17.
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`Upon information and belief, the following illustrates, at least in part, a Change
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`photo screen of the Motorola Android IVM smartphone:
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`6
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`Case 2:16-cv-00992-JRG Document 1 Filed 09/06/16 Page 7 of 25 PageID #: 7
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`18.
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`Upon information and belief, the following illustrates, at least in part, a message
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`screen of the Motorola Android IVM smartphone:
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`19.
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`Upon information and belief, the following illustrates, at least in part, a
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`Messenger app screen of the Motorola Android IVM smartphone:
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`
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`20.
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`Upon information and belief, the following illustrates, at least in part, the photo
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`
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`image screen of the Motorola Android IVM smartphone:
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`7
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`Case 2:16-cv-00992-JRG Document 1 Filed 09/06/16 Page 8 of 25 PageID #: 8
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`21.
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`Upon information and belief, the following illustrates, at least in part, the screen
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`of the Motorola Android IVM smartphone:
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`22.
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`Upon information and belief, the following illustrates, at least in part, the
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`Messenger app screen of the Motorola Android IVM smartphone:
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`8
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`Case 2:16-cv-00992-JRG Document 1 Filed 09/06/16 Page 9 of 25 PageID #: 9
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`23.
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`Upon information and belief, the following illustrates, at least in part, a screen of
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`the Motorola Android IVM smartphone:
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`24.
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`Upon information and belief, the following illustrates, at least in part, the screen
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`of the Motorola Android IVM smartphone:
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` 
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`9
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`Case 2:16-cv-00992-JRG Document 1 Filed 09/06/16 Page 10 of 25 PageID #: 10
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`25.
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`Upon information and belief, the following illustrates, at least in part, a message
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`screen of the Motorola Android IVM smartphone:
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`
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`26.
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`Upon information and belief, the following illustrates, at least in part, the screen
`
`of the Motorola Android IVM smartphone:
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` 
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`10
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`Case 2:16-cv-00992-JRG Document 1 Filed 09/06/16 Page 11 of 25 PageID #: 11
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`27.
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`Upon information and belief, the following illustrates, at least in part, a screen of
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`the Motorola Android IVM smartphone:
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`
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`28.
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`Upon information and belief, the following illustrates, at least in part, the screen
`
`of the Motorola Android IVM smartphone:
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` 
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`11
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`Case 2:16-cv-00992-JRG Document 1 Filed 09/06/16 Page 12 of 25 PageID #: 12
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`29.
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`Upon information and belief, the following illustrates, at least in part, the screen
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`of the Motorola Android IVM smartphone:
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`
`
`
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`30. Motorola 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, 23-35, and 38 literally and/or under the doctrine of equivalents, by or
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`through making, using, importing, offering for sale and/or selling numerous versions of the
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`Motorola Android IVM smartphones (together “Motorola Android IVM smartphones”) during
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` 
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`12
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`

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`Case 2:16-cv-00992-JRG Document 1 Filed 09/06/16 Page 13 of 25 PageID #: 13
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`the pendency of the ’622 Patent which devices and associated servers perform instant voice
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`messaging over Wi-Fi and the Internet between persons using cellphones and/or other devices
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`capable of instant voice messaging; wherein digitized audio files are transmitted between a
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`plurality of recipients on a packet switched network and a list of one or more currently potential
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`recipients is displayed on the device. Upon information and belief, the additional Android
`
`devices identified in Exhibit E also provide such functionality and, thereby, infringe as set forth
`
`in this Count.
`
`31.
`
`In addition, should the Motorola Android IVM smartphones be found to not
`
`literally infringe the asserted claims of the ’622 Patent, the Motorola Android IVM smartphones
`
`would nevertheless infringe the asserted claims of the ’622 Patent. More specifically, the
`
`accused smartphones perform substantially the same function (instant voice messaging), in
`
`substantially the same way (via a digitized audio files in a client/server environment), to yield
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`substantially the same result (delivering voice messages to available intended recipients).
`
`Motorola would thus be liable for direct infringement under the doctrine of equivalents.
`
`32. Motorola has indirectly infringed and continues to indirectly infringe at least
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`claims 3, 4, 6-8, 10-19, 21, 23-35, and 38 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,
`
`or importing the Motorola Android IVM smartphones. Motorola’s customers who purchase the
`
`Motorola Android IVM smartphones and operate such devices in accordance with Motorola’s
`
`instructions directly infringe one or more of the foregoing claims of the ’622 Patent in violation
`
`of 35 U.S.C. § 271. Motorola directly and/or indirectly instructs its customers through training
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`videos, demonstrations, brochures, installation and/or user guides, such as those located at the
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`following:
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` 
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`13
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`

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`Case 2:16-cv-00992-JRG Document 1 Filed 09/06/16 Page 14 of 25 PageID #: 14
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`
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`www.motorola.com
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`https://motorola-global-portal.custhelp.com
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`www.youtube.com
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`Motorola is thereby liable for infringement of the ’622 Patent under 35 U.S.C. § 271(b).
`
`33. Motorola has indirectly infringed and continues to indirectly infringe at least
`
`claims 3, 4, 6-8, 10-19, 21, 23-35, and 38 of the ’622 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 Motorola Android IVM smartphones, 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 ’622 Patent and not a staple article or commodity of
`
`commerce suitable for substantial non-infringing use.
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`34.
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`For example, the Motorola Android IVM smartphones are components of a
`
`patented machine, manufacture, or combination, or an apparatus for use in practicing a patent
`
`process. Furthermore, the Motorola Android IVM smartphones are material parts of the claimed
`
`inventions and upon information and belief are not a staple article or commodity of commerce
`
`suitable for substantial non-infringing use. Motorola is, therefore, liable for infringement under
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`35 U.S.C. § 271(c).
`
`35. Motorola will have been on notice of the ’622 Patent since, at the latest, the
`
`service of this complaint upon Motorola. By the time of trial, Motorola will have known and
`
`intended (since receiving such notice) that its continued actions would actively induce, and
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` 
`
`14
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`

`

`Case 2:16-cv-00992-JRG Document 1 Filed 09/06/16 Page 15 of 25 PageID #: 15
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`contribute to, the infringement of one or more of claims 3, 4, 6-8, 10-19, 21, 23-35, and 38 of the
`
`’622 Patent.
`
`36. Motorola may have infringed the ’622 Patent through other devices utilizing the
`
`same or reasonably similar functionality, including other versions of the Motorola Android IVM
`
`smartphones. Uniloc reserves the right to discover and pursue all such additional infringing
`
`software/devices.
`
`37.
`
`Uniloc has been damaged, reparably and irreparably, by Motorola’s infringement
`
`of the ’622 Patent and such damage will continue unless and until Motorola is enjoined.
`
`COUNT II
`(INFRINGEMENT OF U.S. PATENT NO. 8,995,433)
`
`Uniloc incorporates paragraphs 1-37 above by reference.
`
`Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 8,995,433
`
`
`
`38.
`
`39.
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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
`
`B hereto.
`
`40.
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`Uniloc USA is the exclusive licensee of the ’433 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.
`
`41. Motorola has directly infringed, and continues to directly infringe one or more
`
`claims of the ’433 Patent in this judicial district and elsewhere in Texas, including at least claims
`
`1-5, 8-9, 11-12, 14-17, 25 and 26 literally and/or under the doctrine of equivalents, by or through
`
`making, using, importing, offering for sale and/or selling the Motorola Android IVM
`
`smartphones during the pendency of the ’433 Patent which devices and associated servers
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`perform instant voice messaging over Wi-Fi and the Internet between persons using cellphones
`
` 
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`15
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`

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`Case 2:16-cv-00992-JRG Document 1 Filed 09/06/16 Page 16 of 25 PageID #: 16
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`and/or other devices capable of instant voice messaging; wherein a list of one or more potential
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`recipients is displayed on the device, the instant messages are temporarily stored using a unique
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`identifier, and a file manager stores, retrieves and/or deletes the messages in response to the
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`users request. Upon information and belief, the additional Android devices identified in Exhibit
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`E also provide such functionality and, thereby, infringe as set forth in this Count.
`
`42.
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`In addition, should the Motorola Android IVM smartphones be found to not
`
`literally infringe the asserted claims of the ’433 Patent, the Motorola Android IVM smartphones
`
`would nevertheless infringe the asserted claims of the ’433 Patent. More specifically, the
`
`accused Motorola Android IVM smartphones perform substantially the same function (instant
`
`voice messaging), in substantially the same way (identifying potentially available recipients,
`
`storing messages using unique identifiers and a file manager for storing, retrieving and/or
`
`deleting the messages), to yield substantially the same result (delivering voice messages to
`
`available intended recipients and wherein the messages may be stored, retrieved and/or deleted).
`
`Motorola would thus be liable for direct infringement under the doctrine of equivalents.
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`43. Motorola has indirectly infringed and continues to indirectly infringe at least
`
`claims 1-5, 8-9, 11-12, 14-17, 25 and 26 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 Motorola Android IVM smartphones. Motorola’s customers who purchase the
`
`Motorola Android IVM smartphones and operate the devices in accordance with Motorola’s
`
`instructions directly infringe one or more of the foregoing claims of the ’433 Patent in violation
`
`of 35 U.S.C. § 271. Motorola directly and/or indirectly instructs its customers through training
`
`videos, demonstrations, brochures, installation and/or user guides, such as those located at the
`
`following:
`
` 
`
`16
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`

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`Case 2:16-cv-00992-JRG Document 1 Filed 09/06/16 Page 17 of 25 PageID #: 17
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`
`
`
`
`
`
`www.motorola.com
`
`https://motorola-global-portal.custhelp.com
`
`www.youtube.com
`
`Motorola is thereby liable for infringement of the ’433 Patent under 35 U.S.C. § 271(b).
`
`44. Motorola has indirectly infringed and continues to indirectly infringe at least
`
`claims 1-5, 8-9, 11-12, 14-17, 25 and 26 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 Motorola Android IVM smartphones, 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 substantial non-infringing use.
`
`45.
`
`For example, the Motorola Android IVM smartphones are components of a
`
`patented machine, manufacture, or combination, or an apparatus for use in practicing a patent
`
`process. Furthermore, the Motorola Android IVM smartphones are material parts of the claimed
`
`inventions and upon information and belief are not a staple article or commodity of commerce
`
`suitable for substantial non-infringing use. Motorola is, therefore, liable for infringement under
`
`35 U.S.C. § 271(c).
`
`46. Motorola will have been on notice of the ’433 Patent since, at the latest, the
`
`service of this complaint upon Motorola. By the time of trial, Motorola will have known and
`
`intended (since receiving such notice) that its continued actions would actively induce, and
`
` 
`
`17
`
`

`

`Case 2:16-cv-00992-JRG Document 1 Filed 09/06/16 Page 18 of 25 PageID #: 18
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`contribute to, the infringement of one or more of claims 1-5, 8-9, 11-12, 14-17, 25 and 26 of the
`
`’433 Patent.
`
`47. Motorola may have infringed the ’433 Patent through other devices utilizing the
`
`same or reasonably similar functionality, including other versions of the Motorola Android IVM
`
`smartphones. Uniloc reserves the right to discover and pursue all such additional infringing
`
`software/devices.
`
`48.
`
`Uniloc has been damaged, reparably and irreparably, by Motorola’s infringement
`
`of the ’433 Patent and such damage will continue unless and until Motorola is enjoined.
`
`COUNT III
`(INFRINGEMENT OF U.S. PATENT NO. 7,535,890)
`
`Uniloc incorporates paragraphs 1-48 above by reference.
`
`Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 7,535,890
`
`
`
`49.
`
`50.
`
`(“the ’890 Patent”), entitled SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING
`
`that issued on May 19, 2009. A true and correct copy of the ’890 Patent is attached as Exhibit C
`
`hereto.
`
`51.
`
`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.
`
`52. Motorola 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
`
`1-3, 5-6, 9, 14, 17, 19, 20, 23, 40, 42, 43, 51, 53, 54, and 57 literally and/or under the doctrine of
`
`equivalents, by or through making, using, importing, offering for sale and/or selling the Motorola
`
`Android IVM smartphones during the pendency of the ’890 Patent which devices and associated
`
`servers perform instant voice messaging over Wi-Fi and the Internet between persons using
`
` 
`
`18
`
`

`

`Case 2:16-cv-00992-JRG Document 1 Filed 09/06/16 Page 19 of 25 PageID #: 19
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`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. Upon information and belief, the additional
`
`Android devices identified in Exhibit E also provide such functionality and, thereby, infringe as
`
`set forth in this Count.
`
`53.
`
`In addition, should the Motorola Android IVM smartphones be found to not
`
`literally infringe the asserted claims of the ’890 Patent, the Motorola Android IVM smartphones
`
`would nevertheless infringe the asserted claims of the ’890 Patent. More specifically, the
`
`accused Motorola Android IVM smartphones perform 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).
`
`Motorola would thus be liable for direct infringement under the doctrine of equivalents.
`
`54. Motorola has indirectly infringed and continues to indirectly infringe at least
`
`claims 1-3, 5-6, 9, 14, 17, 19, 20, 23, 40, 42, 43, 51, 53, 54, and 57 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 Motorola Android IVM smartphones.
`
`Motorola’s customers who purchase the Motorola Android IVM smartphones and operate such
`
`devices in accordance with Motorola’s instructions directly infringe one or more of the foregoing
`
`claims of the ’890 Patent in violation of 35 U.S.C. § 271. Motorola directly and/or indirectly
`
`instructs its customers through training videos, demonstrations, brochures, installation and/or
`
`user guides, such as those located at the following:
`
`www.motorola.com
`
`https://motorola-global-portal.custhelp.com
`
` 
`
`19
`
`

`

`Case 2:16-cv-00992-JRG Document 1 Filed 09/06/16 Page 20 of 25 PageID #: 20
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`www.youtube.com
`
`Motorola is thereby liable for infringement of the ’890 Patent under 35 U.S.C. § 271(b).
`
`55. Motorola has indirectly infringed and continues to indirectly infringe at least
`
`claims 1-3, 5-6, 9, 14, 17, 19, 20, 23, 40, 42, 43, 51, 53, 54, and 57 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 Motorola
`
`Android IVM smartphones, 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.
`
`56.
`
`For example, the Motorola Android IVM smartphones are components of a
`
`patented machine, manufacture, or combination, or an apparatus for use in practicing a patent
`
`process. Furthermore, the Motorola Android IVM smartphones are material parts of the claimed
`
`inventions and upon information and belief are not a staple article or commodity of commerce
`
`suitable for substantial non-infringing use. Motorola is, therefore, liable for infringement under
`
`35 U.S.C. § 271(c).
`
`57. Motorola will have been on notice of the ’890 Patent since, at the latest, the
`
`service of this complaint upon Motorola. By the time of trial, Motorola 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, 5-6, 9, 14, 17, 19, 20, 23, 40, 42, 43,
`
`51, 53, 54, and 57 of the ’890 Patent.
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` 
`
`20
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`

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`Case 2:16-cv-00992-JRG Document 1 Filed 09/06/16 Page 21 of 25 PageID #: 21
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`58. Motorola may have infringed the ’890 Patent through other devices utilizing the
`
`same or reasonably similar functionality, including other versions of the Motorola Android IVM
`
`smartphones. Uniloc reserves the right to discover and pursue all such additional infringing
`
`software/devices.
`
`59.
`
`Uniloc has been damaged, reparably and irreparably, by Motorola’s infringement
`
`of the ’890 Patent and such damage will continue unless and until Motorola is enjoined.
`
`COUNT IV
`(INFRINGEMENT OF U.S. PATENT NO. 8,199,747)
`
`Uniloc incorporates paragraphs 1-59 above by reference.
`
`Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 8,199,747
`
`
`
`60.
`
`61.
`
`(“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.
`
`62.
`
`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.
`
`63. Motorola 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 and 13 literally and/or under the doctrine of equivalents, by or through making, using,
`
`importing, offering for sale and/or selling the Motorola Android IVM smartphones during the
`
`pendency of the ’747 Patent which devices and associated 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
`
` 
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`Case 2:16-cv-00992-JRG Document 1 Filed 09/06/16 Page 22 of 25 PageID #: 22
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`storing the message if an intended recipient is unavailable and thereafter delivered once the
`
`intend recipient becomes available. Upon information and belief, the additional Android devices
`
`identified in Exhibit E also provide such functionality and, thereby, infringe as set forth in this
`
`Count.
`
`64.
`
`In addition, should the Motorola Android IVM smartphones be found to not
`
`literally infringe the asserted claims of the ’747 Patent, the Motorola Android IVM smartphones
`
`would nevertheless infringe the asserted claims of the ’747 Patent. More specifically, the
`
`accused Motorola Android IVM smartphones perform 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). Motorola would thus be liable for direct infringement
`
`under the doctrine of equivalents.
`
`65. Motorola has indirectly infringed and continues to indirectly infringe at least
`
`claims 1 and 13 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
`
`Motorola Android IVM smartphones. Motorola’s customers who purchase the Motorola
`
`Android IVM smartphones and operate such devices in accordance with Motorola’s instructions
`
`directly infringe one or more of the foregoing claims of the ’747 Patent in violation of 35 U.S.C.
`
`§ 271. Motorola directly and/or indirectly instructs its customers through training videos,
`
`demonstrations, brochures, installation and/or user guides, such as those located at the following:
`
`www.motorola.com
`
`https://motorola-global-portal.custhelp.com
`
` 
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`Case 2:16-cv-00992-JRG Document 1 Filed 09/06/16 Page 23 of 25 PageID #: 23
`
`www.youtube.com
`
`Motorola is thereby liable for infringement of the ’747 Patent under 35 U.S.C. § 271(b).
`
`66. Motorola has indirectly infringed and continues to indirectly infringe at least
`
`claims 1 and 13 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 Motorola Android IVM smartphones, 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.
`
`67.
`
`For example, the Motorola Android IVM smartphones are components of a
`
`patented machine, manufacture, or combination, or an apparatus for use in practicing a patent
`
`process. Furthermore, the Motorola Android IVM smartphones are material parts of the claimed
`
`inventions and upon information and belief are not a staple article or commodity of commerce
`
`suitable for substantial non-infringing use. Motorola is, therefore, liable for infringement under
`
`35 U.S.C. § 271(c).
`
`68. Motorola will have been on notice of the ’747 Patent since, at the latest, the
`
`service of this complaint upon Motorola. By the time of trial, Motorola 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 and 13 of the ’747 Patent.
`
`69. Motorola may have infringed the ’747 Patent through other devices utilizing the
`
`same or reasonably similar functionality, including other versions of the Motorola Android IVM
`
` 
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`23
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`Case 2:16-cv-00992-JRG Document 1 Filed 09/06/16 Page 24 of 25 PageID #: 24
`
`smartphones. Uniloc reserves the right to discover and pursue all such additional infringing
`
`software/devices.
`
`70.
`
`Uniloc has been damaged, reparably and irreparably, by Motorola’s infringement
`
`of the ’747 Patent and such damage will continue unless and until Motorola is enjoined.
`
`PRAYER FOR RELIEF
`
`
`
`
`
`Uniloc requests that the Court enter judgment against Motorola as follows:
`
`(A)
`
`that Motorola has infringed the ’622 Patent, the ’433 Patent, the ’890 Patent and
`
`the ’747 Patent;
`
`
`
`(B)
`
`awarding Uniloc its damages suffered as a result of Motorola’s infringement of
`
`the ’622 Patent, the ’433 Patent, the ’890 Patent and the ’747 Patent pursuant to 35 U.S.C. § 284;
`
`
`
`(C)
`
`enjoining Motorola, its officers, directors, agents, servants, affiliates, employees,
`
`divisions, branches, subsidiaries and parents, and all others acting in concert or privity with it
`
`from infringing the ’622 Patent, the ’433 Patent, the ’890 Patent and the ’747 Patent pursuant to
`
`35 U.S.C. § 283;
`
`awarding Uniloc its costs, attorneys’ fees, expenses and interest, and
`
`granting Uniloc such other and further relief as the Court may deem just and
`
`
`
`
`
`(D)
`
`(E)
`
`proper.
`
`DEMAND FOR JURY TRIAL
`
`Uniloc hereby demands trial by jury on all issues so triable pursuant to Fed. R. Civ. P. 38.
`
`
`
`24
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`

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`Case 2:16-cv-00992-JRG Document 1 Filed 09/06/16 Page 25 of 25 PageID #: 25
`
`Dated: September 6, 2016
`
`
`
`
`
`
`
` 
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
` /s/ Craig Tadlock
`Craig Tadlock
`Texas State Bar No. 00791766
`TADLOCK LAW FIRM PLLC
`2701 Dallas Parkway, Suite 360
`Plano, TX 75093
`Tel: (903) 730-6789
`Email: craig@tadlocklawfirm.com
`
`Paul J. Hayes
`Kevin Gannon
`CESARI AND MCKENNA, LLP
`88 Black Falcon Ave
`Suite 271
`Boston, MA 02110
`Telephone: (617) 951-2500
`Facsimile: (617) 951-3927
`Email: pjh@c-m.com
`Email: kgannon@c-m.com
`
`
`
`
`
`ATTORNEYS FOR THE PLAINTIFFS
`
`25
`
`