Case 2:22-cv-00279-JRG-RSP Document 16 Filed 10/17/22 Page 1 of 11 PageID #: 376
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`Case No. 2:22-cv-00279-JRG-RSP
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`JURY TRIAL DEMANDED
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`Plaintiff,
`
`v.
`
`
`AX WIRELESS LLC,
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`
`
`
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`HP INC.,
`
`
`
`
`Defendant.
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`
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`
`
`
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`FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff AX Wireless LLC (“Plaintiff” or “AX Wireless”) hereby alleges patent
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`infringement against Defendant HP Inc. (“Defendant” or “HP”) as follows:
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`PARTIES
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`1.
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`Plaintiff AX Wireless is a limited liability company organized and existing under
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`the laws of the State of Texas, having a principal place of business at 2025 Guadalupe Street,
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`Suite 260, Austin, Texas 78705.
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`2.
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`Defendant HP is a corporation organized and existing under the laws of the State
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`of Delaware, with an address at 1501 Page Mill Road, Palo Alto, California 94304, and may be
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`served with process through its registered agent CT Corporation System, 1999 Bryant Street,
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`Suite 900, Dallas, Texas 75201.
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`JURISDICTION AND VENUE
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`3.
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`This patent infringement action arises under the patent laws of the United States,
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`Title 35 of the United States Code (“U.S.C.”) § 101 et seq.
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`4.
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`This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331, 1332, and
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`1338(a).
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`5.
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`Defendant is subject to this Court’s specific and general personal jurisdiction
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`consistent with the principles of due process and/or the Texas Long Arm Statute.
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`6.
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`Defendant sells and offers to sell products and services throughout the State of
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`Texas, including in this District, and introduces infringing products and services into the stream
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`of commerce knowing that they will be sold in the State of Texas and this District. Defendant is
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`registered with the Secretary of State to do business in the State of Texas.
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`7.
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`Defendant has authorized sellers and sales representatives that offer for sale and
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`sell products pertinent to this Complaint throughout the State of Texas, including in this District
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`and to consumers throughout this District, such as: Best Buy, 422 West Loop 281, Suite 100,
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`Longview, Texas 75605; Costco Wholesale, 3650 West University Drive, McKinney, Texas
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`75071; Office Depot, 422 West Loop 281, Suite 300, Longview, Texas 75605; Target, 3092
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`North Eastman Road, Suite 100, Longview, Texas 75605; and Wal-Mart, 1701 East End
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`Boulevard North, Marshall, Texas 75670.
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`8.
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`Personal jurisdiction exists generally over Defendant because Defendant has
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`sufficient minimum contacts with the forum as a result of business conducted within the State of
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`Texas and this District.
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`9.
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`Personal jurisdiction also exists over Defendant because it, directly, through, or in
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`consort with subsidiaries, affiliates or intermediaries, makes, uses, sells, offers for sale, imports,
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`advertises, makes available, and/or markets products and services within the State of Texas and
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`this District that infringe one or more claims of the asserted patents, as alleged more particularly
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`below.
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`
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`10.
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`Venue in this District is proper under 28 U.S.C. §§ 1391 and 1400. Defendant
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`resides in this District and/or has committed acts of infringement and has a regular and
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`established place of business in this District. For example, Defendant previously had, operated
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`out of, or made use of and/or currently has, operates out of, or makes use of offices and facilities
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`in this District, such as at 6901 Windcrest Drive, Plano, Texas 75024; 7000 Parkwood
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`Boulevard, Plano, Texas 75024; and 2800 Dallas Parkway, Plano, Texas 75093. On information
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`and belief, Defendant currently operates out of or makes use of leased, work-share, co-op or
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`other arrangements for space, offices or facilities in this District, including through its partners
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`and/or agents.
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`11.
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`For example, Defendant implements a comprehensive work-from-home policy
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`under which it has adopted or ratified one or more additional places of business in this District,
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`including but not limited to the homes of employees, such that the collection of these locations
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`constitutes an aggregate network of regular and established places in this District, in and from
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`which business is operated. On information and belief, Defendant specifically advertises jobs for
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`and solicits employees to reside and work remotely in this District, including to support its
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`customers in the District, and provides and/or stores literature, equipment and/or inventory at
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`those locations for the purpose of enabling these employees to conduct their jobs and use such
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`literature, equipment and/or inventory specifically in this District.
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`12.
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`Defendant makes, uses, sells, offers to sell, and/or imports infringing products and
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`services into and/or within this District, maintains a permanent and/or continuing presence
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`within this District, and/or has the requisite minimum contacts with this District such that this
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`venue is a fair and reasonable one. Upon information and belief, Defendant has transacted and,
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`at the time of the filing of the Complaint, is continuing to transact business within this District.
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`AX WIRELESS PATENTS
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`3
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`13.
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`AX Wireless owns the entire right, title, and interest in and to each of the
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`following patents, including the right to seek damages for past and ongoing infringement: U.S.
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`Patent Nos. 9,584,262 (“the ’262 Patent”); 9,614,566 (“the ’566 Patent”); 9,973,361 (“the ’361
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`Patent”); 10,079,707 (“the ’707 Patent”); 10,291,449 (“the ’449 Patent”); 10,554,459 (“the ’459
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`Patent”); 10,917,272 (“the ’272 Patent”); and 11,212,146 (“the ’146 Patent”) (collectively, “AX
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`Wireless Patents”).
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`14.
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`The ‘262 Patent issued on February 28, 2017. A true and correct copy of this
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`patent is attached hereto as Exhibit 1.
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`15.
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`The ‘566 Patent issued on April 4, 2017. A true and correct copy of this patent is
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`attached hereto as Exhibit 2.
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`16.
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`The ‘361 Patent issued on May 15, 2018. A true and correct copy of this patent is
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`attached hereto as Exhibit 3.
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`17.
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`The ‘707 Patent issued on September 18, 2018. A true and correct copy of this
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`patent is attached hereto as Exhibit 4.
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`18.
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`The ‘449 Patent issued on May 14, 2019. A true and correct copy of this patent is
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`attached hereto as Exhibit 5.
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`19.
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`The ‘459 Patent issued on February 4, 2020. A true and correct copy of this
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`patent is attached hereto as Exhibit 6.
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`20.
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`The ‘272 Patent issued on February 9, 2021. A true and correct copy of this
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`patent is attached hereto as Exhibit 7.
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`21.
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`The ‘146 Patent issued on December 28, 2021. A true and correct copy of this
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`patent is attached hereto as Exhibit 8.
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`22.
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`The named inventors of each of the AX Wireless Patents are: Marcos C. Tzannes
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`and Joon Bae Kim.
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`23.
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`The AX Wireless Patents are directed to wireless OFDM (orthogonal frequency
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`division multiplexing) networks and systems, including wireless OFDM transceivers, which
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`employ variable header repetition.
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`24.
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`The technology claimed in the AX Wireless Patents is adopted in the 802.11ax
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`standard promulgated by the Institute of Electrical and Electronics Engineers (IEEE), which sets
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`forth certain technical specifications for wireless local area networks (“WLANs”), also known as
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`“Wi-Fi.”
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`25.
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`The IEEE 802.11ax standard and its enhancements are marketed by the Wi-Fi
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`Alliance as “Wi-Fi 6” and “Wi-Fi 6E.” Wi-Fi 6 was approved on or about February 9, 2021 and
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`published on or about May 19, 2021. Wi-Fi 6E is an extension of Wi-Fi 6 (2.4 GHz and 5 GHz)
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`to the 6 GHz frequency band.
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`26. Wi-Fi 6 utilizes OFDM and OFDMA (orthogonal frequency-division multiple
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`access) technology, and employs variable header repetition, to provide enhanced data
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`throughput, increased spectral efficiency, auto-detection, backwards compatibility, and other
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`benefits.
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`27. Wi-Fi 6 may be deployed in dense environments, such as corporate offices,
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`shopping centers, and apartment complexes, and provides backwards compatibility, increased
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`network capacity and simultaneous connectivity, greater channel width, more effective
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`bandwidth, and reduced power consumption.
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`ACCUSED INSTRUMENTALITIES
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`28.
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`Defendant makes, uses, sells, and/or offers to sell in, and/or imports into, the
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`United States products that implement or embody Wi-Fi 6 technology and/or implement or
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`comply with the Wi-Fi 6 standard (“Wi-Fi 6 Instrumentalities”). Defendant’s Wi-Fi 6
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`Instrumentalities infringe the AX Wireless Patents, including the ‘361 Patent, ‘707 Patent, ‘272
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`Patent, ‘146 Patent, ‘262 Patent, ‘566 Patent, ‘449 Patent and ‘459 Patent (collectively, the
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`“Asserted Patents”) (“Accused Instrumentalities”).
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`29. Wi-Fi 6 Instrumentalities include, but are not limited to, smartphones, personal
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`computers (PCs) (desktops and laptops), tablets, networking devices, Internet of things (“IoT”)
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`devices, appliances, and other consumer and home electronics. On information and belief,
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`Defendant certifies the interoperability of its Wi-Fi 6 Instrumentalities as Wi-Fi CERTIFIED 6
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`(based on IEEE 802.11ax standard) through the Wi-Fi Alliance.
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`30.
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`Appendix A provides a non-exhaustive list of Defendant’s Accused
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`Instrumentalities. Each Accused Instrumentality comprises a Wi-Fi 6 or 802.11ax transceiver.
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`For example, the EliteBook 835 G8 Notebook PC comprises a Wi-Fi 6 or 802.11ax transceiver.
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`On information and belief, the Accused Instrumentalities employ, implement, or utilize
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`materially the same Wi-Fi 6 technology, such that facts material to infringement by one Accused
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`Instrumentality will be material to all Accused Instrumentalities.
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`COUNT I: THE ‘361 PATENT
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`31.
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`Defendant infringes at least claim 1 of the ‘361 Patent. Appendix B details the
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`manner in which the Accused Instrumentalities infringe this patent by way of an exemplary chart
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`as illustrated through a representative example. On information and belief, the Accused
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`Instrumentalities are materially the same with respect to infringement of this patent.
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`COUNT II: THE ‘707 PATENT
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`32.
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`Defendant infringes at least claim 1 of the ‘707 Patent. Appendix C details the
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`manner in which the Accused Instrumentalities infringe this patent by way of an exemplary chart
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`as illustrated through a representative example. On information and belief, the Accused
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`Instrumentalities are materially the same with respect to infringement of this patent.
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`COUNT III: THE ‘272 PATENT
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`33.
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`Defendant infringes at least claim 1 of the ‘272 Patent. Appendix D details the
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`manner in which the Accused Instrumentalities infringe this patent by way of an exemplary chart
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`as illustrated through a representative example. On information and belief, the Accused
`
`Instrumentalities are materially the same with respect to infringement of this patent.
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`COUNT IV: THE ‘146 PATENT
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`34.
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`Defendant infringes at least claim 1 of the ‘146 Patent. Appendix E details the
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`manner in which the Accused Instrumentalities infringe this patent by way of an exemplary chart
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`as illustrated through a representative example. On information and belief, the Accused
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`Instrumentalities are materially the same with respect to infringement of this patent.
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`COUNT V: THE ‘262 PATENT
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`35.
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`Each Defendant infringes at least claim 1 of the ‘262 Patent. Appendix F details
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`the manner in which the Accused Instrumentalities infringe this patent by way of an exemplary
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`chart as illustrated through a representative example. On information and belief, the Accused
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`Instrumentalities are materially the same with respect to infringement of this patent.
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`COUNT VI: THE ‘566 PATENT
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`36.
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`Each Defendant infringes at least claim 1 of the ‘566 Patent. Appendix G details
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`the manner in which the Accused Instrumentalities infringe this patent by way of an exemplary
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`chart as illustrated through a representative example. On information and belief, the Accused
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`Instrumentalities are materially the same with respect to infringement of this patent.
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`COUNT VII: THE ‘449 PATENT
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`7
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`37.
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`Each Defendant infringes at least claim 1 of the ‘449 Patent. Appendix H details
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`the manner in which the Accused Instrumentalities infringe this patent by way of an exemplary
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`chart as illustrated through a representative example. On information and belief, the Accused
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`Instrumentalities are materially the same with respect to infringement of this patent.
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`COUNT VIII: THE ‘459 PATENT
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`38.
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`Each Defendant infringes at least claim 1 of the ‘459 Patent. Appendix I details
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`the manner in which the Accused Instrumentalities infringe this patent by way of an exemplary
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`chart as illustrated through a representative example. On information and belief, the Accused
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`Instrumentalities are materially the same with respect to infringement of this patent.
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`39.
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`Defendant has actual notice of the Asserted Patents and/or its infringing activities
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`since prior to and no later than the filing of the Complaint, including but not limited to notice via
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`a January 27, 2022 letter, which identified specific AX Wireless Patents and infringing
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`instrumentalities.
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`40.
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`Defendant has committed and continues to commit acts of direct infringement of
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`the Asserted Patents by making, using, selling, offering to sell, and/or importing Accused
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`Instrumentalities.
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`41.
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`Defendant has been and is indirectly infringing the Asserted Patents by actively
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`inducing or contributing to the direct infringement by others of the Asserted Patents, in the
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`United States, the State of Texas, and this District.
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`42.
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`Defendant has induced and continues to induce its customers, and other third
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`parties, such as resellers and end-consumers of Accused Instrumentalities, to directly infringe the
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`Asserted Patents by making, using, selling, offering to sell, and/or importing into the United
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`States the Accused Instrumentalities through affirmative acts.
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`43.
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`The affirmative acts of inducement by Defendant include, but are not limited to,
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`any one or a combination of encouraging and/or facilitating third-party infringement through the
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`advertisement, marketing, and dissemination of the Accused Instrumentalities and their
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`components; and creating and publishing promotional and marketing materials, supporting
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`materials, product manuals, and/or technical support and information relating to the Accused
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`Instrumentalities.
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`44.
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`Defendant specifically intended and was aware that the ordinary and customary
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`use of the Accused Instrumentalities would infringe the Asserted Patents.
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`45.
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`Defendant knew that the induced conduct would constitute infringement, and
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`intended said infringement at the time of committing the aforementioned acts, such that those
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`acts and conduct have been and continue to be committed with the specific intent to induce
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`infringement, or to deliberately avoid learning of the infringing circumstances at the time those
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`acts were committed, so as to be willfully blind to the infringement they induced.
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`46.
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`Defendant took active steps to encourage end users to use and operate the
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`Accused Instrumentalities, despite knowing of the Asserted Patents in the United States, in a
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`manner it knew directly infringes each element of the claims of the Asserted Patents. Further,
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`Defendant provided product manuals and other technical information that cause its subscribers,
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`customers, and other third parties to use and to operate the Accused Instrumentalities for their
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`ordinary and customary use, such that Defendant’s customers and other third parties have
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`directly infringed the Asserted Patents, through the normal and customary use of the Accused
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`Instrumentalities.
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`47.
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`Therefore, Defendant is liable for infringement of the Asserted Patents and that
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`infringement has been and continues to be willful in nature.
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`48.
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`AX Wireless has incurred and will continue to incur substantial damages; and has
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`been and continues to be irreparably harmed by Defendant’s infringement. Therefore, AX
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`Wireless is entitled to an injunction, actual and/or compensatory damages, reasonable royalties,
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`pre- and post-judgment interest, enhanced damages, attorney fees, and costs.
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`PRAYER FOR RELIEF
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`
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`WHEREFORE, Plaintiff AX Wireless respectfully requests that this Court:
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`A.
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`Enter judgment in favor of AX Wireless that each of the Asserted Patents is valid
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`and enforceable;
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`B.
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`Enter judgment in favor of AX Wireless that Defendant has infringed and
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`continues to infringe each of the Asserted Patents, and that such infringement is willful;
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`C.
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`Award AX Wireless all monetary relief available under the laws of the United
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`States, including but not limited to 35 U.S.C. § 284;
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`D.
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`Order Defendant to pay ongoing royalties in an amount to be determined for any
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`continued infringement after the date of judgment;
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`E.
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`Declare this case exceptional and award AX Wireless its reasonable attorney fees
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`under 35 U.S.C. § 285;
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`F.
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`Enjoin Defendant and its subsidiaries, and their officers, agents, servants,
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`employees, and all persons in active concert with any of the foregoing from further infringement;
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`and
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`G.
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`Grant AX Wireless all such other relief as the Court deems just and reasonable.
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`DEMAND FOR JURY TRIAL
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`
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`AX Wireless demands a jury trial on all issues so triable pursuant to Federal Rule of Civil
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`Procedure 38.
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`
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`Date: October 17, 2022
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`
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`
`
`/s/ Andrew Y. Choung
`Elizabeth L. DeRieux
`Email: ederieux@capshawlaw.com
`CAPSHAW DERIEUX, LLP
`TEXAS BAR NO. 05770585
`114 E. Commerce Ave.
`Gladewater, Texas 75647
`(903) 845-5770
`
`Andrew Y. Choung (admitted in E.D. Texas)
`Email: achoung@nixonpeabody.com
`Jennifer Hayes (admission in E.D. Texas
`forthcoming)
`Email: jenhayes@nixonpeabody.com
`Joshua J. Pollack (admitted in E.D. Texas)
`Email: jpollack@nixonpeabody.com
`Desmond Jui (admission in E.D. Texas
`forthcoming)
`Email: djui@nixonpeabody.com
`Nixon Peabody LLP
`300 S. Grand Avenue, Suite 4100
`Los Angeles, CA 90071
`Telephone: (213) 629-6000
`
`Brendan O’Callaghan (admission in E.D. Texas
`forthcoming)
`Email: bocallaghan@nixonpeabody.com
`Nixon Peabody LLP
`799 9th Street NW, Suite 500
`Washington, DC 20001-5327
`Telephone: (202) 585-8000
`
`Attorneys for Plaintiff AX Wireless LLC
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