Case 5:18-cv-00136-RWS Document 1 Filed 11/02/18 Page 1 of 31 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`MAXELL, LTD.,
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`Plaintiff,
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`v.
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`ASUSTEK COMPUTER INC.,
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`Defendant.
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`
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`Civil Action No. ___________
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`COMPLAINT AND DEMAND
`FOR JURY TRIAL
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`COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff Maxell, Ltd. (“Maxell”), by and through its undersigned counsel, files this
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`complaint under 35 U.S.C. § 271 for Patent Infringement against Defendant ASUSTeK
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`Computer Inc. (“ASUS” or “Defendant”) and further alleges as follows, upon actual knowledge
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`with respect to itself and its own acts, and upon information and belief as to all other matters.
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`OVERVIEW
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`1.
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`This is an action for patent infringement by Maxell. Founded in 1961 as Maxell
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`Electric Industrial Co., Ltd., Maxell is a leading global manufacturer of information storage
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`media products, including magnetic tapes, optical discs, and battery products such as lithium ion
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`rechargeable micro batteries and alkaline dry batteries, and the company has over 50 years of
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`experience producing industry-leading recordable media and energy products for both the
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`consumer and the professional markets.
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`2.
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`Maxell has built up an international reputation for excellence and reliability, for
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`pioneering the power supplies and digital recording for today’s mobile and multi-media devices,
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`and leading the electronics industry in the fields of storage media and batteries.
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`3.
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`Since being one of the first companies to develop alkaline batteries and Blu Ray
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`camcorder discs, Maxell has always assured its customers of industry leading product innovation
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`and is one of the world’s foremost suppliers of memory, power, audio, and visual goods.
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`4.
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`As more fully described below, in 2009 Hitachi, Ltd. assigned much of its
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`intellectual property to Hitachi Consumer Electronics Co., Ltd. Then, in 2013, Hitachi Consumer
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`Electronics Co., Ltd. assigned the intellectual property, including the patents in this case, to
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`Hitachi Maxell, Ltd., which later assigned the patents to Maxell as a result of a reorganization
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`and name change. This was an effort to align its intellectual property with the licensing, business
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`development, and research and development efforts of Maxell, including in the mobile and
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`mobile-media device market (Hitachi, Ltd., Hitachi Consumer Electronics Co., Ltd., and Hitachi
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`Maxell, Ltd. are referred to herein collectively as “Hitachi”). Maxell continues to sell products
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`in the mobile device market including wireless charging solutions, wireless flash drives,
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`multimedia players, storage devices, and headphones. Maxell also maintains intellectual property
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`related to televisions, computer products, tablets, digital cameras, and mobile phones. As a
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`mobile technology developer and industry leader, and due to its historical and continuous
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`investment in research and development, Maxell owns a portfolio of patents related to such
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`technologies and actively enforces its patents through licensing and/or litigation. Maxell is
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`forced to bring this action against Defendants as a result of Defendants’ knowing and ongoing
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`infringement of Maxell’s patents.
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`5.
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`Since 2014, Maxell has had regular and continuous business in the Eastern
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`District of Texas. As a result of such business dealings and hopes to expand those and other
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`business dealings, a Maxell affiliate, Maxell Research and Development America, LLC
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`(“MRDA”), was founded in Marshall, Texas. Maxell has and continues to regularly meet and
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`work with MRDA to expand its business and substantial investments are being made by Maxell
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`and MRDA to further the goals of these companies.
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`6.
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`On October 13, 2017, Maxell filed a case against ASUS and its subsidiary ASUS
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`Computer International, Inc. in the Central District of California. (Case No. 2:17-cv-7528-R-
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`MRW). On March 21, 2018, that case was transferred to the Northern District of California.
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`(Case No. 3:18-cv-01788-VC). That case is still pending. During the course of litigation, Maxell
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`identified additional patents in its portfolio and additional products of ASUS that infringe such
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`patents, including the patents and products at issue in this complaint. In particular, Maxell
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`provided on October 30, 2017 a list of its patents that relate to certain software and hardware
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`incorporated in certain of ASUS’s products. Thereafter, on August 30, 2018, the parties mediated
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`the above mentioned lawsuit, during which time a license to Maxell’s portfolio, including the
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`patents at issue here was discussed. On information and belief, ASUS was aware of the patents at
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`issue in this complaint and had notice of their infringement by at least August 30, 2018 when the
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`parties met for mediation.
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`PARTIES
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`7.
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`Plaintiff Maxell, Ltd. is a Japanese corporation with a registered place of business
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`at 1 Koizumi, Oyamazaki, Oyamazaki-cho, Otokuni-gun, Kyoto, Japan.
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`8.
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`On information and belief, Defendant ASUSTeK Computer Inc. is a corporation
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`organized under the laws of the Republic of China (also known as Taiwan) and has a principal
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`place of business at No. 15, Li-De Rd., Beitou, Taipei 112, Taiwan, R.O.C.
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`9.
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`On information and belief, Defendant is in the business of providing information
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`and communications
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`technology solutions. Specifically, Defendant provides wireless
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`telecommunications equipment, including smart phones, tablets, and mobile phones, as well as
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`computer hardware, including notebooks. On information and belief, ASUS’s products,
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`including the accused products, are generally developed in ASUS’s facilities located in Taiwan
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`and China. See Maxell, Ltd. v. ASUSTeK Computer Inc., et al., Case No. 2:17-cv-7528-R-MRW,
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`Declaration of Godwin Yan, Docket No. 35-2, at ¶ 8.
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`NATURE OF THE ACTION, JURISDICTION, AND VENUE
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`10. Maxell 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.
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`11.
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`This Court has subject matter jurisdiction over the subject matter of this action
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`pursuant to 28 U.S.C. §§ 1331 and 1338(a) because the action arises under the patent laws of the
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`United States.
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`12.
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`The Court has personal jurisdiction over the Defendant because (1) Maxell’s
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`claims arise in whole or in part from Defendant’s conduct in Texas; and (2) Defendant is subject
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`to personal jurisdiction under the provisions of the Texas Long Arm Statute, TX CIV PRAC. &
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`REM CODE §17.041 et seq., by virtue of the fact that, upon information and belief, Defendant
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`has availed itself of the privilege of conducting and soliciting business within this State,
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`including engaging in at least some of the infringing acts alleged herein through the sales and
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`marketing of infringing products in this State. The allegations and claims set forth in this action
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`arise out of Defendant’s infringing activities in this State, as well as by others acting as
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`Defendant’s agents and/or representatives, such that it would be reasonable for this Court to
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`exercise jurisdiction consistent with the principles underlying the U.S. Constitution, and would
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`not offend traditional notions of fair play and substantial justice.
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`13.
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`Upon further information and belief, Defendant has also established minimum
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`contacts with this District and regularly transacts and does business within this District, including
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`advertising, promoting and selling products over the internet, through intermediaries,
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`representatives and/or agents located within this District, that infringe Maxell’s patents, which
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`products are then sold, packaged and shipped directly to citizens residing within this State and
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`this District. Upon further information and belief, Defendant has purposefully directed activities
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`at citizens of this State and located within this District.
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`14.
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`On information and belief, Defendant has purposefully and voluntarily placed its
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`products into the stream of commerce with the expectation that they will be purchased and used
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`by customers located in the State of Texas and the Eastern District of Texas. On information and
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`belief, Defendant’s customers in the Eastern District of Texas have purchased and used and
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`continue to purchase and use Defendant’s products.
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`15.
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`Venue in the Eastern District of Texas is proper pursuant to 28 U.S.C. §§ 1391
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`because, among other things, Defendant is a defendant not resident in the United States, and thus
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`may be sued in any Judicial District pursuant to 28 U.S.C. § 1391(c)(3). Defendant has admitted
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`this fact before other Courts. See Maxell, Ltd. v. ASUSTeK Computer Inc., et al., Case No. 2:17-
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`cv-7528-R-MRW, Memorandum in Support of Defendant’s Motion to Transfer Venue, Docket
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`No. 35-1, at 5 (“Pursuant to 28 U.S.C. § 1391, ASUSTeK may be sued in any judicial district.”
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`(citations omitted)).
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`COUNT 1 - INFRINGEMENT OF U.S. PATENT NO. 8,982,086
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`16. Maxell incorporates paragraphs 1-15 above by reference.
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`17.
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`U.S. Patent No. 8,982,086 (the “’086 Patent,” attached hereto at Exhibit 1) duly
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`issued on March 17, 2015 and is entitled Information Processing Apparatus.
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`18. Maxell is the owner by assignment of the ’086 Patent and possesses all rights
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`under the ’086 Patent, including the exclusive right to recover for past and future infringement.
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`19.
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`Defendant has directly infringed one or more claims of the ’086 Patent in this
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`judicial district and elsewhere in Texas, including at least claims 1, 2, and 4 literally and/or under
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`the doctrine of equivalents, by or through making, using, importing, offering for sale and/or
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`selling its telecommunications technology, including by way of example products known as the
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`ROG Phone and Zenbook S (UX391UA).
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`20.
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`The ROG Phone and Zenbook S are both information processing apparatuses.
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`The ROG Phone and Zenbook S both include a touch panel, for example, a fingerprint sensor,
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`configured to detect a contact of a finger of a user. The ROG Phone and Zenbook S both include
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`a detector configured to detect information, such as a user’s fingerprint, to identify the user when
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`the contact is detected between the touch panel and the finger of the user. The ROG Phone and
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`Zenbook S both include a memory that is configured to store information relating to the
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`identification of the user. The ROG Phone and Zenbook S both include one controller configured
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`to control the information processing apparatus to operate into two operating modes and another
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`controller configured to execute a specified process when the information of the detected user
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`and the information stored in the memory are coincident within one of the modes.
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`21.
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`The foregoing features and capabilities of the ROG Phone and Zenbook S, and
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`Defendant’s description and/or demonstration thereof, including in user manuals and advertising,
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`reflect Defendant’s direct infringement by satisfying every element of at least claims 1, 2, and 4
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`of the ’086 Patent, under 35 U.S.C. § 271(a).
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`22.
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`On information and belief, Defendant further infringes the ’086 Patent through
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`additional products utilizing the same or reasonably similar functionalities as described above
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`with respect to the ROG Phone and Zenbook S (collectively, “the ’086 Accused Products”). The
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`’086 Accused Products include, by way of examples, ZenFone 4 Pro (ZS551KL), ZenFone 4
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`(ZS551KL), ZenFone V (V520KL), ZenFone 5Z (ZS620KL), ZenFone 5Q (ZC600KL), Zenfone
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`3 Zoom (ZE553KL), Zenfone 4 Max (ZC554KL), Zenfone Max Plus (M1), Zenfone AR
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`(V570KL), Zenfone Max Plus (M1), Zenfone AR (V570KL), ZenPad S3 10 (Z500 M), Zenbook
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`Flip 14 (UX461UN), Zenbook Flip 14 (UX461UA), Zenbook UX430UA, F542UA, Vivobook
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`Pro 15 N580VD, Vivobook Pro 17 N705UN, Vivobook Pro 15 N580GD, VivoBook S15
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`S510UA, Vivobook S15 S510UN, Vivobook S15 S510UQ, Vivobook S14 S430UN, ASUSPRO
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`B9440UA, ASUSPRO P2540UA, ASUSPRO P2430UA, ASUSPRO P2440UA, and ASUSPRO
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`P2540UB. These additional products each include all necessary hardware and operating systems
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`and work as described above with respect to the ROG Phone and Zenbook S. For example, each
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`of these products also include a fingerprint sensor, memory, and a control unit as advertised on
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`ASUS’s website. Maxell reserves the right to discover and pursue any additional infringing
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`devices that incorporate infringing functionalities. For the avoidance of doubt, the ’086 Accused
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`Products are identified to describe the Defendant’s infringement and in no way limit the
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`discovery and infringement allegations against Defendant concerning other devices that
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`incorporate the same or reasonably similar functionalities.
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`23.
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`Defendant has indirectly infringed at least claims 1, 2, and 4 of the ’086 Patent in
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`this judicial district and elsewhere in the United States by, among other things, actively inducing
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`the use, offering for sale, selling, or importation of at least the ’086 Accused Products.
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`Defendant’s customers who purchase devices and components thereof and operate such devices
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`and components in accordance with Defendant’s instructions directly infringe one or more
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`claims of the ’086 Patent in violation of 35 U.S.C. § 271. Defendant instructs its customers
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`through
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`at
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`least
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`user
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`guides
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`or websites,
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`such
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`as
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`those
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`located
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`at:
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`https://www.asus.com/support/FAQ/1032407/;https://www.asus.com/us/support/FAQ/1011744/.
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`Defendant is thereby liable for infringement of the ’086 Patent pursuant to 35 U.S.C. § 271 (b).
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`24.
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`Defendant has indirectly infringed at least claims 1, 2, and 4 of the ’086 Patent,
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`by, among other things, contributing to the direct infringement of others, including customers of
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`the ’086 Accused Products by making, offering to sell, or selling, in the United States, or
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`importing a component of a patented machine, manufacture, or combination, or an apparatus for
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`use in practicing a patented process, constituting a material part of the invention, knowing the
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`same to be especially made or especially adapted for use in infringement of the ’086 Patent, and
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`not a staple article or commodity of commerce suitable for substantial non-infringing use.
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`25.
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`For example, the ’086 Accused Products include a component for detecting a
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`finger of a user. This is a component of a patented machine, manufacture, or combination, or an
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`apparatus for use in practicing a patented process. Furthermore, such component is a material
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`part of the invention and upon information and belief is not a staple article or commodity of
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`commerce suitable for substantial non-infringing use. Thus, Defendant is liable for infringement
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`of the ’086 Patent pursuant to 35 U.S.C. § 271(c).
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`26.
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`Defendant has been on notice of the ’086 Patent since, at least, the mediation held
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`between the parties on August 30, 2018. By the time of trial, Defendant will thus have known
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`and intended (since receiving such notice), that its continued actions would actively induce and
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`contribute to actual infringement of at least claims 1, 2, and 4 of the ’086 Patent.
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`27.
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`Defendant undertook and continued its infringing actions despite an objectively
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`high likelihood that such activities infringed the ’086 Patent, which has been duly issued by the
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`USPTO, and is presumed valid. For example, since, at least, the mediation held between the
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`parties on August 30, 2018, Defendant has been aware of an objectively high likelihood that its
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`actions constituted and continue to constitute infringement of the ’086 Patent, and that the ’086
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`Patent is valid. On information and belief, Defendant could not reasonably, subjectively believe
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`that its actions do not constitute infringement of the ’086 Patent, nor could it reasonably,
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`subjectively believe that the patent is invalid. Despite that knowledge and subjective belief, and
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`the objectively high likelihood that its actions constitute infringement, Defendant has continued
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`its infringing activities. As such, Defendant willfully infringes the ’086 Patent.
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`28. Maxell has been damaged by Defendant’s infringement of the ’086 Patent.
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`COUNT 2 – INFRINGEMENT OF U.S. PATENT NO. 7,995,897
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`29. Maxell incorporates paragraphs 1-28 above by reference.
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`30.
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`U.S. Patent No. 7,995,897 (the “’897 Patent,” attached hereto at Exhibit 2) duly
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`issued on August 9, 2011 and is entitled Video Recording and Reproducing Method, and Video
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`Reproducing Apparatus and Method.
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`31. Maxell is the owner by assignment of the ’897 Patent and possesses all rights
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`under the ’897 Patent, including the exclusive right to recover for past and future infringement.
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`32.
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`Defendant has directly infringed one or more claims of the ’897 Patent in this
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`judicial district and elsewhere in Texas, including at least claims 4-6 and 10-12 literally and/or
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`under the doctrine of equivalents, by or through making, using, importing, offering for sale
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`and/or selling its telecommunications technology, including by way of example products known
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`as the ROG Phone and the ASUS Q505UA Laptop.
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`33.
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`The ROG Phone and the ASUS Q505UA Laptop are both a video reproducing
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`apparatus that are capable of reproducing video by one encoding method, such as MPEG-4, and
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`pictures by a second encoding method, such as JPEG. For example, the ROG Phone includes a
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`main rear camera, a second rear camera, and a front camera, one or more of which are capable of
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`capturing videos and still pictures that are stored in the memory of the ROG phone and
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`reproduced from memory and displayed. Similarly, the ASUS Q505UA Laptop includes a
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`webcam that is capable of capturing videos and still pictures that are stored in the memory of the
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`ASUS Q505UA Laptop and reproduced from memory and displayed.
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`34.
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`The ROG Phone and the ASUS Q505UA Laptop both also record, reproduce,
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`and/or output thumbnails that are encoded via, for example JPEG, and have a smaller number of
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`pixels than the pictures as evidenced by, for example, the file size. The ROG Phone and the
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`ASUS Q505UA Laptop both also have a recording medium for storing the videos, pictures, and
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`thumbnails and a display for reproducing the same.
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`35.
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`The foregoing features and capabilities of the ROG Phone and the ASUS
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`Q505UA Laptop, and Defendant’s description and/or demonstration thereof, including in user
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`manuals and advertising, reflect Defendant’s direct infringement by satisfying every element of
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`at least claims 4-6 and 10-12 of the ’897 Patent, under 35 U.S.C. § 271(a).
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`36.
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`On information and belief, Defendant further infringes the ’897 Patent through
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`additional products utilizing the same or reasonably similar functionalities as described above
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`with respect to the ROG Phone and the ASUS Q505UA Laptop (collectively, “the ’897 Accused
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`Products”). The ’897 Accused Products include, by way of examples, phones in the Asus
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`ZenFone Series (e.g., ZenFone AR (ZS571KL), Max Pro (M1), 3 Max (ZC520TL), 3 Laser
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`(ZC551KL), 2 Laser (ZE551KL), Live L1, 5Z (ZS620KL), Max M1, 5 Lite (ZC600KL), 5
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`(ZE620KL), Max Plus (M1), Live (ZB553KL), Live (ZB553KL), 4 Selfie Pro (ZD552KL), Live
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`(ZB501KL), Go (ZB500KG), Go (ZB500KL), Go (ZB500KL), 3 Max (ZC553KL), Go
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`(ZB450KL), Go (ZB552KL), 3 (ZE520KL), 3 (ZE552KL), 3 Ultra (ZU680KL), Go TV
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`(ZB551KL), MAX (ZC550KL), 2 Laser (ZE600KL), 2 Laser (ZE601KL), 2 Laser (ZE500KL), 2
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`Laser (ZE550KL), GO (ZC500TG), Selfie (ZD551KL), 2 (ZE500CL), 2 (ZE550ML), C
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`(ZC451CG), 2 (ZE551ML), 3 Deluxe (ZS550KL), 3 Zoom (Ze553KL), 4 (ZE554KL), 4 Pro
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`(ZS551KL), 4 Max (ZC554KL), V (V520KL), 3 Deluxe (ZS570KL), Zoom (ZX551ML),
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`PadFone X (US), ZenFone 2E, 2 Deluxe Special Edition, 4 Max (ZC520KL)), the Asus ZenPad
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`Series (e.g., ZenPad 3S10 (Z500M), 10 (Z300M), S8.0 (Z580C), C 7.0 (Z170C), 3 8.0
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`(Z581KL), 10 (Z300C), 10 (Z301MFL), 10 (Z300CL), C 7.0 (Z170MG), 10 (Z301MF), 7.0
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`(Z370KL), Z10 (ZT500KL), Z8s (ZT582KL), 8.0 (Z380M), Z8 (ZT581KL)), the Asus MeMO
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`Pad Series (Asus MeMO Pad 8 (ME181C), Pad 7 (ME572C), Pad 7 (ME176CX)), the Asus
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`VivoTab 8 (M81C), Zenbook Pro 15 UX550GE, Zenbook Pro 15 UX580GD, Zenbook Pro 15
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`UX580GE, Zenbook S UX391UA, Zenbook 3 Deluxe UX490UA, Zenbook Flip 14 UX461UN,
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`Zenbook Flip 14 UX461UA, Zenbook 3 Deluxe UX490UA (Classic series), Zenbook 13
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`UX331UN, Zenbook UX430UA, Zenbook 13 UX331UA, Zenbook UX430UQ, Zenbook
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`UX510UW, Zenbook Flip S UX370UA, Asus Laptop E406SA, Asus Laptop E203MA, Asus
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`Laptop X507LA, Asus Laptop X507MA, Asus Laptop X507UA, Asus Laptop X507UB, Asus
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`Laptop X507UF, ROG G752VS, ROG Zephyrus M (GM501), ROG Strix GL503, ROG Strix
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`SCAR II, ROG Zephyrus (GX501), ROG Strix GL703, ROG GL533VD, ROG G703, ROG
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`GL502VM, ROG Strix SCAR Edition, ROG Strix GL7027C, ROG GL702VS, ROG Strix
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`GL702VI, ROG GL553VE, ROG GX800VH (7th Gen Intel Core), ROG GU501, ROG Strix
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`Hero Edition, ROG GL702VM (7th Gen Intel Core), ROG Strix SKT T1 Hero Edition, ROG
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`G701VO, ROG Zephyrus S (GX531), X555LA (Vivobook), E402SA, E403SA, VivoBook 15
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`X540NA, Vivobook 15 X510UQ, VivoBook E403NA, K570UD, Vivobook 15 X505BA,
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`Vivobook 15 X505ZA, ASUS 203NA, Vivobook W202, ASUS E203NAH, F542UA, R540NA,
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`Vivobook Pro 17 N705UD, Vivobook Pro 15 N580VD, Vivobook Pro 17 N705UN, Vivobook
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`Pro 15 N580GD, Vivobook Pro 17 N705UQ, Vivobook S15 S530UN, VivoBook S15 S510UA,
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`Vivobook S14 S410UN, Vivobook S15 S510UN, Vivobook S14 S410UA, Vivobook S15
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`S510UQ, Vivobook S14 S410UQ, Vivobook S14 S430UN, Vivobook S15 S530UA, ASUSPRO
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`P2530UA, ASUSPRO P2430UA, ASUSPRO P2440UQ, ASUSPRO P2440UA, ASUSPRO
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`P2540UB, ASUSPRO P2540NV, Q324UA, Q325UA, Q405UA, Q505UA, Q525UA, FX503,
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`FX502VM, FX502VD, ASUS TUF Gaming Fx504, ASUS TUF Gaming FX505, and ASUS
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`TUF FX705. These additional products each include all necessary hardware and operating
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`systems and work as described above with respect to the ROG Phone and the ASUS Q505UA
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`Laptop. For example, all of these products include one or more cameras, webcams, memory,
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`and/or encoders, for capturing and reproducing still pictures and moving pictures. Maxell
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`reserves the right to discover and pursue any additional infringing devices that incorporate
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`infringing functionalities. For the avoidance of doubt, the ’897 Accused Products are identified
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`to describe the Defendant’s infringement and in no way limit the discovery and infringement
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`allegations against Defendant concerning other devices that incorporate the same or reasonably
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`similar functionalities.
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`37.
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`Defendant has indirectly infringed at least claims 4-6 and 10-12 of the ’897 Patent
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`in this judicial district and elsewhere in the United States by, among other things, actively
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`inducing the use, offering for sale, selling, or importation of at least the ’897 Accused Products.
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`Defendant’s customers who purchase devices and components thereof and operate such devices
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`and components in accordance with Defendant’s instructions directly infringe one or more
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`claims of the ’897 Patent in violation of 35 U.S.C. § 271. Defendant instructs its customers
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`through at least user guides, such as those for the ROG Phone located at the following website:
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`Case 5:18-cv-00136-RWS Document 1 Filed 11/02/18 Page 13 of 31 PageID #: 13
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`https://www.asus.com/us/Phone/ROG-Phone/ (“Dual Cameras”). Defendant is thereby liable for
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`infringement of the ’897 Patent pursuant to 35 U.S.C. § 271(b).
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`38.
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`Defendant has indirectly infringed at least claims 4-6 and 10-12 of the ’897
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`Patent, by, among other things, contributing to the direct infringement of others, including
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`customers of the ’897 Accused Products by making, offering to sell, or selling, in the United
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`States, or importing a component of a patented machine, manufacture, or combination, or an
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`apparatus for use in practicing a patented process, constituting a material part of the invention,
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`knowing the same to be especially made or especially adapted for use in infringement of the ’897
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`Patent, and not a staple article or commodity of commerce suitable for substantial non-infringing
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`use.
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`39.
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`For example, the ’897 Accused Products include components for moving and still
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`picture encoding and reproducing functionalities. These are components of a patented machine,
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`manufacture, or combination, or an apparatus for use in practicing a patented process.
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`Furthermore, such components are a material part of the invention and upon information and
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`belief are not staple articles or commodities of commerce suitable for substantial non-infringing
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`use. Thus, Defendant is liable for infringement of the ’897 Patent pursuant to 35 U.S.C. § 271(c).
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`40.
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`Defendant has been on notice of the ’897 Patent since, at least, the mediation held
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`between the parties on August 30, 2018. By the time of trial, Defendant will thus have known
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`and intended (since receiving such notice), that its continued actions would actively induce and
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`contribute to actual infringement of at least claims 4-6 and 10-12 of the ’897 Patent.
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`41.
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`Defendant undertook and continued its infringing actions despite an objectively
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`high likelihood that such activities infringed the ’897 Patent, which has been duly issued by the
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`USPTO, and is presumed valid. For example, since, at least, the mediation held between the
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`13
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`Case 5:18-cv-00136-RWS Document 1 Filed 11/02/18 Page 14 of 31 PageID #: 14
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`parties on August 30, 2018, Defendant has been aware of an objectively high likelihood that its
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`actions constituted and continue to constitute infringement of the ’897 Patent, and that the ’897
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`Patent is valid. On information and belief, Defendant could not reasonably, subjectively believe
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`that its actions do not constitute infringement of the ’897 Patent, nor could it reasonably,
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`subjectively believe that the patent is invalid. Despite that knowledge and subjective belief, and
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`the objectively high likelihood that its actions constitute infringement, Defendant has continued
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`its infringing activities. As such, Defendant willfully infringes the ’897 Patent.
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`42. Maxell has been damaged by Defendant’s infringement of the ’897 Patent.
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`COUNT 3 – INFRINGEMENT OF U.S. PATENT NO. 6,765,616
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`43. Maxell incorporates paragraphs 1-42 above by reference.
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`44.
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`U.S. Patent No. 6,765,616 (the “’616 Patent,” attached hereto at Exhibit 3) duly
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`issued on July 20, 2004 and is entitled Electric Camera.
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`45. Maxell is the owner by assignment of the ’616 Patent and possesses all rights
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`under the ’616 Patent, including the exclusive right to recover for past and future infringement.
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`46.
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`Defendant has directly infringed one or more claims of the ’616 Patent in this
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`judicial district and elsewhere in Texas, including at least claim 13 literally and/or under the
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`doctrine of equivalents, by or through making, using, importing, offering for sale and/or selling
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`their telecommunications technology, including by way of example products known as the ROG
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`Phone and Zenbook S (UX391UA).
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`47.
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`The ROG Phone and Zenbook S both include an electric camera. The ROG
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`Phone and Zenbook S both include an image sensing device with an array of pixels arranged
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`vertically and horizontally in a grid pattern (e.g., CMOS sensor). For example, the ROG Phone
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`includes a main rear camera, a second rear camera, and a front camera and the Zenbook S
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`14
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`Case 5:18-cv-00136-RWS Document 1 Filed 11/02/18 Page 15 of 31 PageID #: 15
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`includes a HD Webcam. On information and belief, these cameras include image sensors that
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`have a light receiving surface having an array of pixels arranged vertically and horizontally in a
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`grid pattern with an arbitrary number of vertically arranged pixels N, where N is equal to or more
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`than three times the number of effective scanning lines M of each field of a display screen at
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`least in order to display the image in horizontal and vertical planes on the devices.
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`48.
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`The ROG Phone and Zenbook S both include color filters that on information and
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`belief are arranged on grid-arrayed pixels of the image sensing device, to pass designated colors
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`respectively arranged to cyclically appear horizontally at a designated interval and to pass the
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`same colors arranged vertically.
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`49.
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`The ROG Phone and Zenbook S both include a driver to drive the image sensing
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`device. On information and belief, these drivers are arranged to drive the image sensing device,
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`to vertically mix or cull signal charges accumulated in individual pixels of every K pixels to
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`produce a number of lines of output signals which corresponds to the number of effective
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`scanning lines M, K being at least one of integers equal to or less than an integral part of a
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`quotient of N divided by M.
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`50.
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`The ROG Phone and Zenbook S both include a processor programmed to perform
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`various signal processing functions including video recording, picture recording, and image
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`stabilization. In addition, the ROG Phone and Zenbook S include a processor programmed to
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`perform signal processing to generate video in various formats by using the pixel data received
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`from the image sensing device.
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`51.
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`The ROG Phone and Zenbook S both include a display for displaying an image
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`corresponding to the image signals. On information and belief, the ROG Phone and Zenbook S
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`both include a driver that vertically mixes or culls signal charges accumulated in individual
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`15
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`Case 5:18-cv-00136-RWS Document 1 Filed 11/02/18 Page 16 of 31 PageID #: 16
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`pixels of every K1 pixels, when first images are displayed on the display unit. On information
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`and belief, the ROG Phone and Zenbook S both include a driver that vertically mixes or culls
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`signal charges accumulated in individual pixels of every K2 pixels, when second images are
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`displayed on the display unit. On information and belief, the ROG Phone and Zenbook S both
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`use different values K1 and K2 for different formats and/or for different zoom levels.
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`52.
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`The foregoing features and capabilities of the ROG Phone and Zenbook S, and
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`Defendant’s description and/or demonstration thereof, including in user manuals and advertising,
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`reflect Defendant’s direct infringement by satisfying every element of at least claim 13 of the
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`’616 Patent, under 35 U.S.C. § 271(a).
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`53.
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`On information and belief, Defendant further infringes the ’616 Patent through
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`additional products utilizing the same or reasonably similar functionalities as described above
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`with respect to the ROG Phone and Zenbook S (collectively, “the ’616 Accused Products”). The
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`’616 Accused Products include, by way of examples, Asus ZenFone Series (e.g., ZenFone AR
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`(ZS571KL), Max Pro (M1), 3 Max (ZC520TL), 3 Laser (ZC551KL), 2 Laser (ZE551KL), Live
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`L1, 5Z (ZS620KL), Max M1, 5 Lite (ZC600KL), 5 (ZE620KL), Max Plus (M1), Live
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`(ZB553KL), Live (ZB553KL), 4 Selfie Pro (ZD552KL), Live (ZB501KL), Go (ZB500KG), Go
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`(ZB500KL), Go (ZB500KL), 3 Max (ZC553KL), Go (ZB450KL), Go (ZB552KL), 3
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`(ZE520KL), 3 (ZE552KL), 3 Ultra (ZU680KL), Go TV (ZB551KL), MAX (ZC550KL), 2 Laser
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`(ZE600KL), 2 Laser (ZE601KL), 2 Laser (ZE500KL), 2 Laser (ZE550KL), GO (ZC500TG),
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`Selfie (ZD551KL), 2 (ZE500CL), 2 (ZE550ML), C (ZC451CG), 2 (ZE551ML), 3 Deluxe
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`(ZS550KL), 3 Zoom (Ze553KL), 4 (ZE554KL), 4 Pro (ZS551KL), 4 Max (ZC554KL), V
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`(V520KL), 3 Deluxe (ZS570KL), Zoom (ZX551ML), PadFone X (US), ZenFone 2E, 2 Deluxe
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`Special Edition, 4 Max (ZC520KL)), the Asus ZenPad Series (e.g., ZenPad 3S10 (Z500M), 10
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`16
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`Case 5:18-cv-00136-RWS Document 1 Filed 11/02/18 Page 17 of 31 PageID #: 17
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`(Z300M), S8