Case 5:19-cv-00036-RWS Document 111 Filed 10/23/19 Page 1 of 65 PageID #: 4802
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
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`v.
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`APPLE INC.,
`
`Plaintiff,
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`Defendant.
`
`Case No. 5:19-cv-0036-RWS
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`COMPLAINT AND DEMAND
`FOR JURY TRIAL
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`FIRST AMENDED 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 Apple Inc. (“Apple”)
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`and further alleges as follows, upon actual knowledge with respect to itself and its own acts, and
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`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 media
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`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. Maxell is also a leading manufacturer of projectors and
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`lenses and additionally sells various other devices, such as Bluetooth headsets, wireless charging
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`solutions, etc.
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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., along with a significant portion of
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`its Consumer Business Group, including manufacturing and research and development
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`capabilities. Then, in 2013, Hitachi Consumer Electronics Co., Ltd. assigned the intellectual
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`property, including many of the patents in this case, along with the related manufacturing and
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`research and development capabilities, to Hitachi Maxell, Ltd., which later assigned the assets to
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`Maxell as a result of a reorganization and name change. This was an effort to align the intellectual
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`property with the licensing, business development, research and development, and manufacturing
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`efforts of Maxell, including in the mobile and mobile-media device market. Maxell continues to
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`sell products in the mobile device market including wireless charging solutions, wireless flash
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`drives, multimedia players, storage devices, and headphones. Maxell also maintains intellectual
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`property related to televisions, computer products, tablets, digital cameras, and mobile phones. As
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`a mobile technology developer and industry leader, and due to its historical and continuous
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`investment in research and development, including in this District, Maxell owns a portfolio of
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`patents related to such technologies and actively enforces its patents through licensing and/or
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`litigation. Maxell is forced to bring this action against Apple as a result of Apple’s knowing and
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`ongoing infringement of Maxell’s patents as further described herein.
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`5.
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`Since at least June 2013, Apple has been aware of Maxell’s patents and has had
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`numerous meetings and interactions regarding its infringement of these patents. These meetings
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`included Apple’s representatives being provided with detailed information regarding Maxell’s
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`patents, the developed technology, and Apple’s ongoing use of this patented technology. Through
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`this process, Apple’s representatives requested and received detailed explanations regarding
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`Maxell’s patents and allegations. Maxell believed that the parties could reach a mutually beneficial
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`solution and to that end considered a potential business transaction and continued to answer
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`multiple inquiries from Apple over the course of several years, including communicating with
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`Apple as recently as late 2018. Apple elected, however, not to enter into an agreement and did not
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`license Maxell’s patents. Instead, Apple continued, and continues today, to make, use, sell and
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`offer for sale Maxell’s patented technology without license.
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`6.
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`Since 2014, Maxell has had regular and continuous business in the Eastern District
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`of Texas. As a result of such business dealings and hopes to expand those and other business
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`dealings, a Maxell affiliate, Maxell Research and Development America, LLC (“MRDA”), was
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`founded in Marshall, Texas. Maxell and MRDA have and continue to regularly meet and work to
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`expand the research and development activities, business, and investments being made by Maxell,
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`MRDA, and their business partners in this District to further the goals of these companies.
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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 Apple Inc. is a California corporation having
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`a principal place of business located at One Apple Park Way Cupertino, California 95014. As of
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`the filing of the original Complaint, Apple had regular and established places of business at 2601
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`Preston Road, Frisco, Texas, and 6121 West Park Boulevard, Plano, Texas, as well as other
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`locations in Texas. Apple offers and sells its products and/or services, including those accused
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`herein of infringement, to customers and potential customers located in Texas, including in the
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`judicial Eastern District of Texas. Apple may be served with process through its registered agent
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`for service in Texas: CT Corporation System, 1999 Bryant Street, Suite 900, Dallas, Texas 75201.
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`NATURE OF THE ACTION, JURISDICTION, AND VENUE
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`9.
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`Maxell brings this action for patent infringement under the patent laws of the United
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`States, 35 U.S.C. § 271 et seq.
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`10.
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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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`11.
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`This Court has personal jurisdiction over Apple. Apple conducts business and has
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`committed acts of direct and indirect patent infringement in this District, the State of Texas, and
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`elsewhere in the United States. Moreover, Apple is registered to do business in the State of Texas,
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`has offices and facilities in the State of Texas and this District, and actively directs its activities to
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`customers located in the State of Texas and this District.
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`12.
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`Venue is proper in this District pursuant to 28 U.S.C. § 1400(b). As of the filing of
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`the original Complaint, Apple had regular and established places of business in this District,
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`including Apple Stores located at 2601 Preston Road, Frisco, Texas and 6121 West Park
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`Boulevard, Plano, Texas, and thus was deemed to reside in this District, has committed acts of
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`infringement described herein in this District, and has purposely transacted business involving the
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`accused devices in this District. Apple has not contested whether venue is proper in this District
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`pursuant to 28 U.S.C. § 1400(b).
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`13.
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`Six of the patents accused of infringement herein, including U.S. Patent Nos.
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`6,748,317; 8,339,493; 7,116,438; 6,408,193; 6,928,306; and 6,329,794, were previously asserted
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`in this District against Huawei Device Co., Ltd., Huawei Device USA, Inc., ZTE (USA), Inc., ZTE
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`Corporation, and/or ASUSTeK Computer Inc. Further, U.S. Patent Nos. 6,580,999 and 6,430,498
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`are the parents of the previously asserted U.S. Patent No. 6,748,317 and include similar subject
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`matter as the one the Court is familiar with. During the course of these lawsuits, this Court heard
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`from the parties and their experts regarding the technology at issue in these patents, construed
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`numerous claim terms, and even conducted a jury trial, during which all patents were found to be
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`valid and willfully infringed. Accordingly, this Court has substantial knowledge of and concerning
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`the majority of the patents asserted in this lawsuit. Judicial economy further supports venue in this
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`District.
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`COUNT 1 - INFRINGEMENT OF U.S. PATENT NO. 6,748,317
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`14. Maxell incorporates paragraphs 1-13 above by reference.
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`15.
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`U.S. Patent No. 6,748,317 (the “’317 Patent,” attached hereto at Exhibit 1) duly
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`issued on June 8, 2004 and is entitled Portable terminal with the function of walking navigation.
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`16. Maxell is the owner by assignment of the ’317 Patent and possesses all rights under
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`the ’317 Patent, including the exclusive right to recover for past and future infringement.
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`17.
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`Eight years before Apple released its first GPS-enabled iPhone and five years
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`before Google launched its first Maps product, the inventors of the ’317 Patent were experimenting
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`with ways to deliver navigation services to the small sized screens of cellular phones that were
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`available in 1999. At the time of the priority date of the ’317 Patent, even the Internet hosted map
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`applications were geared to stationary desktop computers, not to mobile phones. The inventors of
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`the ’317 Patent recognized the benefits of delivering mapping services to mobile phones and of
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`supplementing those services with real-time location information from the phones themselves.
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`’317 Patent, 1:10-30. The inventors were interested in specifically improving mapping services on
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`small screen phones within the narrow field of walking navigation. Id. at 1:31-43. The inventors
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`recognized that simply providing a map on the phone was not enough because the small, text-
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`based displays of the phones were ill-equipped to display full maps or to enable meaningful user
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`interactions. Id. at 2:17-36. The inventors also recognized that there was a need to provide a
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`solution that did not require the enormous amount of cost required to download maps in real-time
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`from a server linked to a computer network and to process this map information in a format that is
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`readable on the small screens of the phones. Id. at 1:53-2:4. The inventors also recognized that a
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`car navigation system from that time frame also did not provide a useful solution because it could
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`not be used by a pedestrian to guide his/her walk due to the size and the lack of preciseness required
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`to provide accurate route information to a pedestrian. Id. at 1:31-43.
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`18.
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`It is against this backdrop that the inventors of the ’317 Patent set about to solve
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`the problem arising specifically in the realm of computer networks that—at that time—lacked the
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`ability to provide accurate and precise route guidance information to pedestrians in a device that
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`would be portable and that would not require the cost of constantly downloading maps and
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`processing this data over a computer network in real-time. Id. at 2:51-61.
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`19.
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`In order to solve this problem of computer, the inventors disclose a portable device
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`with a particular combination of hardware components tailored for delivering mobile mapping
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`services. The device includes a “[c]ellular antenna and … an infrared ray sensor” such as a “GSP
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`[sic], PHS, or the like,” with which it can obtain “location information.” Id. at 5:66-6:2. The
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`specification discloses that “location information” is “a latitude/longitude or coordinates and an
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`altitude.” Id. at 5:62-64. Moreover, the device includes “a compass, a gyro, and such a sensor as a
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`clinometer,” with which it can obtain “direction information.” Id. at 6:2-12. The specification
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`discloses that “direction information” is “the direction of the tip of the [device] or the orientation
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`of the display screen.” Id. The ’317 Patent thus discloses a portable device with a specific
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`combination of hardware that has a particular set of capabilities and in order to ensure that they
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`did not preempt the concept of simply including a map on a computer, the inventors claimed a
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`combination of “devices” within a “portable terminal with the function of walking navigation.”
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`See e.g., id. at 10:42-57 (claim 1). Further, each of the claimed “devices” recites a specific function
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`that as a whole solve the problem of the prior art devices that could not provide accurate and
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`precise navigation information to pedestrians. Id.
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`20.
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`For example, claim 1 recites at least “a device for getting location information,” “a
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`device for getting direction information denoting an orientation,” “an input device for inputting a
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`destination,” and “a display” wherein the display specifically provides the claimed functionality
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`of displaying positions of a “destination and a present place, and a relation of said direction and a
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`direction from said present place to said destination.” Id. Further, the display also specifically
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`provides the claimed functionality of changing the display “according to a change of said direction
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`of said portable terminal orientation for walking navigation,” thus ensuring that the portable
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`terminal can guide the pedestrian accurately in real-time in response to, for example, the pedestrian
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`changing the direction he/she is walking. Independent claims 6 and 10 also recite similar
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`combinations of hardware and also recite additional narrowing features (e.g., “a device connected
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`to a server”). Id. at 11:6-21 and 11:34-51. Similarly, at least dependent claims 2, 3, 5, 7, and 11
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`also provide additional narrowing features limiting the claims to specific improvements in the field
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`providing navigation information on portable terminals. See id. at 10:58-64, 11:3-5, 11:21-22, and
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`12:1-4.
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`21. When considered as a whole the combination of hardware recited in the claims of
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`the ’317 Patent is directed to a specific novel and non-obvious portable terminal that includes
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`specific functionality of providing guidance for walking navigation. Indeed, a jury in this
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`jurisdiction made a determination that when considered as a whole, at least claims 1-3 of the ’317
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`Patent are directed to a novel device and are not invalid over prior art.
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`22.
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`Further, the patentability of the ’317 Patent was challenged in IPR2018-00235,
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`wherein the Patent Trial and Appeal Board was asked to consider the teachings of prior art (e.g.,
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`U.S. Patent Nos. 5,781,150, 5,173,709, and 5,592,382, and Japanese Patent Application
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`Publication No. H10-232992) in a challenge to the validity of claims 1-3, 6-8, 10, 15-17, and 20.
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`In response, the Patent Trial and Appeal Board denied the petition, finding that the information
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`presented does not “demonstrate a reasonable likelihood that Petitioner would prevail in showing
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`that at least one of the challenged claims of the ’317 Patent is unpatentable.”
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`23.
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`Apple has directly infringed one or more claims of the ’317 Patent in this District
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`and elsewhere in Texas, including at least claims 1-3, 5-15, 17, and 18 literally and/or under the
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`doctrine of equivalents, by or through making, using, importing, offering for sale and/or selling its
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`telecommunications technology, including by way of example a product known as the iPhone XS.
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`24.
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`The iPhone XS includes a screen for displaying information, at least a GPS
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`chipset/cellular chipset/Wi-Fi chipset/iBeacon/compass/gyroscope for providing location and/or
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`orientation information, “Maps” and “Find My Friends” software that allows users to access
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`location information including the present location of the device and orientation of the device and
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`use such information to provide walking navigation information and/or share location. The iPhone
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`XS further uses location servers to provide walking navigation information, route information,
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`and/or to provide its position to additional devices in order to allow users to walk to a particular
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`shared location. For example, the following excerpts from Apple’s websites provide non-limiting
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`examples of the iPhone XS infringing at least claims 1-3, 5-15, 17, and 18 of the ’317 Patent:
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`See https://support.apple.com/en-us/HT201493
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`See https://www.apple.com/ios/maps/
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`25.
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`The foregoing features and capabilities of the iPhone XS, and Apple’s description
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`and/or demonstration thereof, including in user manuals and advertising, reflect Apple’s direct
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`infringement by satisfying every element of at least claims 1-3, 5-15, 17, and 18 of the ’317 Patent,
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`under 35 U.S.C. § 271(a).
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`26.
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`On information and belief, Apple further infringes the ’317 Patent through
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`additional products utilizing the same or reasonably similar functionalities as described above with
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`respect to the iPhone XS (collectively, “the ’317 Accused Products”). The ’317 Accused Products
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`include all iOS devices including “Maps” and/or “Find My Friends” applications, for example,
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`Apple iPhones (e.g., iPhone XS (model no. A1920), iPhone XS Max (model no. A1921), iPhone
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`XR (model no. A1984), iPhone X (model nos. A1865 and A1901), iPhone 8 Plus (model nos.
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`A1864 and A1897), iPhone 8 (model nos. A1863 and A1905), iPhone 7 Plus (model nos. A1661
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`and A1784), iPhone 7 (model nos. A1660 and A1778), iPhone 6s Plus (model nos. A1634 and
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`A1687), iPhone 6s (model nos. A1633 and A1688), iPhone 6 Plus (model nos. A1522 and A1524),
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`iPhone 6 (model nos. A1549 and A1586), iPhone SE (model nos. A1723 and A1662), iPhone 5s
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`(model nos. A1453 and A1533), iPhone 5c (model nos. A1456 and A1532), iPhone 11 (model no.
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`A2111), iPhone 11 Pro (model no. A2160), and iPhone 11 Pro Max (model no. A2161)); Apple
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`iPads with cellular functionality and/or Apple iPads with Wi-Fi and Indoor Maps (e.g., iPad Air
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`(model no. A1475), iPad mini 2 (model no. A1490), iPad Air 2 (model no. A1567), iPad Air 3
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`(model nos. A2123 and 2153), iPad mini 3 (model no. A1600), iPad mini 4 (model no. A1550),
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`iPad mini 5 (model nos. A2124 and A2126), iPad Pro (model no. A1709), iPad Pro (model no.
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`A1652), iPad Pro (model nos. A1674 and A1675), iPad Pro (model no. A2013), iPad (5th
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`generation) (model no. A1823), iPad (6th generation) (model no. A1954), iPad (7th generation)
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`(model nos. A2200 and A2198), iPad Pro (2nd generation) (model no. A1671), and iPad Pro (3rd
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`generation) (model nos. A2014 and A1895)); and Apple Watches (Apple Watch Series 5 (model
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`nos. A2092, A2093, A2094, and A2095), Apple Watch Series 4 (model nos. A1975, A1976,
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`A1977, and A1978), Series 3 (model nos. A1860, A1861, A1858, and A1859), and Series 2 (model
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`nos. A1757, A1758, A1816, and A1817)). For example, each of these products also include a
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`“Maps” application, a “Find My Friends” application, and/or “Location” services as advertised on
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`Apple’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 ’317 Accused
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`Products are identified to describe Apple’s infringement and in no way limit the discovery and
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`infringement allegations against Apple concerning other devices that incorporate the same or
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`reasonably similar functionalities.
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`27.
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`Apple has indirectly infringed at least claims 1-3, 5-15, 17, and 18 of the ’317 Patent
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`in this District and elsewhere in the United States by, among other things, actively inducing the
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`use, offering for sale, selling, or importation of at least the ’317 Accused Products. Apple’s
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`customers who purchase devices and components thereof and operate such devices and
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`components in accordance with Apple’s instructions directly infringe one or more claims of the
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`’317 Patent in violation of 35 U.S.C. § 271. Apple instructs its customers through at least user
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`guides or websites, such as those located at: https://support.apple.com/en_US/manuals or
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`https://www.apple.com/ios/maps/. Apple is thereby liable for infringement of the ’317 Patent
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`pursuant to 35 U.S.C. § 271(b).
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`28.
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`Apple has indirectly infringed at least claims 1-3, 5-15, 17, and 18 of the ’317
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`Patent, by, among other things, contributing to the direct infringement of others, including
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`customers of the ’317 Accused Products by making, offering to sell, or selling, in the United States,
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`or importing a component of a patented machine, manufacture, or combination, or an apparatus
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`for 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 ’317 Patent, and
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`not a staple article or commodity of commerce suitable for substantial non-infringing use.
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`29.
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`For example, the ’317 Accused Products include hardware (e.g., GPS chip, cellular
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`chip, Wi-Fi chip, gyroscope, compass, A12 processor) and/or software (e.g., “Maps” or “Find My
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`Friends”). These are components of a patented machine, manufacture, or combination, or an
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`apparatus for use in practicing a patented process. Furthermore, such components are a material
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`part of the invention and upon information and belief are not a staple article or commodity of
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`commerce suitable for substantial non-infringing use. Thus, Apple is liable for infringement of the
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`’317 Patent pursuant to 35 U.S.C. § 271(c).
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`30.
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`Apple has been on notice of the ’317 Patent since, at least, June 25, 2013. By the
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`time of trial, Apple will thus have known and intended (since receiving such notice), that its
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`continued actions would actively induce and contribute to actual infringement of at least claims 1-
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`3, 5-15, 17, and 18 of the ’317 Patent.
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`31.
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`Apple undertook and continued its infringing actions despite an objectively high
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`likelihood that such activities infringed the ’317 Patent, which has been duly issued by the USPTO,
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`and is presumed valid. For example, since, at least June 25, 2013, Apple has been aware of an
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`objectively high likelihood that its actions constituted and continue to constitute infringement of
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`the ’317 Patent, and that the ’317 Patent is valid. On information and belief, Apple could not
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`reasonably, subjectively believe that its actions do not constitute infringement of the ’317 Patent,
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`nor could it reasonably, subjectively believe that the patent is invalid. Despite that knowledge and
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`subjective belief, and the objectively high likelihood that its actions constitute infringement, Apple
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`has continued its infringing activities. As such, Apple willfully infringes the ’317 Patent.
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`32. Maxell has been damaged by Apple’s infringement of the ’317 Patent.
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`COUNT 2 - INFRINGEMENT OF U.S. PATENT NO. 6,580,999
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`33. Maxell incorporates paragraphs 1-32 above by reference.
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`34.
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`U.S. Patent No. 6,580,999 (the “’999 Patent,” attached hereto at Exhibit 2) duly
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`issued on June 17, 2003 and is entitled Portable terminal with the function of walking navigation.
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`35. Maxell is the owner by assignment of the ’999 Patent and possesses all rights under
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`the ’999 Patent, including the exclusive right to recover for past and future infringement.
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`36.
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`The ’999 Patent is the parent of the ’317 Patent, and like claims of the ’317 Patent,
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`claims of the ’999 Patent are also directed to a specific novel and non-obvious portable terminal
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`that includes specific functionality of providing guidance for walking navigation. Further, claims
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`1-2 and 6 of the ’999 Patent even include a “device for getting the location information of another
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`portable terminal” (’999 Patent, 10:44-45), thus specifically claiming a portable terminal that can
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`receive a location from another portable terminal and providing in real-time route guidance
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`information to a pedestrian so that the pedestrian can walk to the location of the other portable
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`terminal after receiving the location.
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`37.
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`Apple has directly infringed one or more claims of the ’999 Patent in this District
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`and elsewhere in Texas, including at least claims 1-6 literally and/or under the doctrine of
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`equivalents, by or through making, using, importing, offering for sale and/or selling its
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`telecommunications technology, including by way of example a product known as the iPhone XS.
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`38.
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`The iPhone XS includes a screen for displaying information, at least a GPS
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`chipset/cellular chipset/Wi-Fi chipset/iBeacon/compass/gyroscope for providing location and/or
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`orientation information, “Maps” and “Find My Friends” software that allows users to access
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`location information including the present location of the device and orientation of the device and
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`use such information to provide walking navigation information and/or share location. The iPhone
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`XS further uses location servers to provide walking navigation information, route information,
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`and/or to provide its position to additional devices in order to allow users to walk to a particular
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`shared location. For example, the following excerpts from Apple’s websites provide non-limiting
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`examples of the iPhone XS infringing at least claims 1-6 of the ’999 Patent:
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`See https://support.apple.com/en-us/HT201493
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`Case 5:19-cv-00036-RWS Document 111 Filed 10/23/19 Page 16 of 65 PageID #: 4817
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`See https://www.apple.com/ios/maps/
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`39.
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`The foregoing features and capabilities of the iPhone XS, and Apple’s description
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`and/or demonstration thereof, including in user manuals and advertising, reflect Apple’s direct
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`infringement by satisfying every element of at least claims 1-6 of the ’999 Patent, under 35 U.S.C.
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`§ 271(a).
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`40.
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`On information and belief, Apple further infringes the ’999 Patent through
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`additional products utilizing the same or reasonably similar functionalities as described above with
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`respect to the iPhone XS (collectively, “the ’999 Accused Products”). The ’999 Accused Products
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`include all iOS devices including “Maps” and/or “Find My Friends” applications, for example,
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`Apple iPhones (e.g., iPhone XS (model no. A1920), iPhone XS Max (model no. A1921), iPhone
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`XR (model no. A1984), iPhone X (model nos. A1865 and A1901), iPhone 8 Plus (model nos.
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`A1864 and A1897), iPhone 8 (model nos. A1863 and A1905), iPhone 7 Plus (model nos. A1661
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`Case 5:19-cv-00036-RWS Document 111 Filed 10/23/19 Page 17 of 65 PageID #: 4818
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`and A1784), iPhone 7 (model nos. A1660 and A1778), iPhone 6s Plus (model nos. A1634 and
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`A1687), iPhone 6s (model nos. A1633 and A1688), iPhone 6 Plus (model nos. A1522 and A1524),
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`iPhone 6 (model nos. A1549 and A1586), iPhone SE (model nos. A1723 and A1662), iPhone 5s
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`(model nos. A1453 and A1533), iPhone 5c (model nos. A1456 and A1532), iPhone 11 (model no.
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`A2111), iPhone 11 Pro (model no. A2160), and iPhone 11 Pro Max (model no. A2161)); Apple
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`iPads with cellular functionality and/or Apple iPads with Wi-Fi and Indoor Maps (e.g., iPad Air
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`(model no. A1475), iPad mini 2 (model no. A1490), iPad Air 2 (model no. A1567), iPad Air 3
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`(model nos. A2123 and A2153), iPad mini 3 (model no. A1600), iPad mini 4 (model no. A1550),
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`iPad mini 5 (model nos. A2124 and A2126), iPad Pro (model no. A1709), iPad Pro (model no.
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`A1652), iPad Pro (model nos. A1674 and A1675), iPad Pro (model no. A2013), iPad (5th
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`generation) (model no. A1823), iPad (6th generation) (model no. A1954), iPad (7th generation)
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`(model nos. A2200 and A2198), iPad Pro (2nd generation) (model no. A1671), and iPad Pro (3rd
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`generation) (model nos. A2014 and A1895); and Apple Watches (Apple Watch Series 5 (model
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`nos. A2092, A2093, A2094, and A2095), Apple Watch Series 4 (model nos. A1975, A1976,
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`A1977, and A1978), Series 3 (model nos. A1860, A1861, A1858, and A1859), and Series 2 (model
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`nos. A1757, A1758, A1816, and A1817)). For example, each of these products also include a
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`“Maps” application, a “Find My Friends” application, and/or “Location” services as advertised on
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`Apple’s website. Maxell reserves the right to discover and pursue any additional infringing devices
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`that incorporate infringing functionalities. For the avoidance of doubt, the ’999 Accused Products
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`are identified to describe Apple’s infringement and in no way limit the discovery and infringement
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`allegations against Apple concerning other devices that incorporate the same or reasonably similar
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`functionalities.
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`Case 5:19-cv-00036-RWS Document 111 Filed 10/23/19 Page 18 of 65 PageID #: 4819
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`41.
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`Apple has indirectly infringed at least claims 1-6 of the ’999 Patent in this District
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`and elsewhere in the United States by, among other things, actively inducing the use, offering for
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`sale, selling, or importation of at least the ’999 Accused Products. Apple’s customers who purchase
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`devices and components thereof and operate such devices and components in accordance with
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`Apple’s instructions directly infringe one or more claims of the ’999 Patent in violation of 35
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`U.S.C. § 271. Apple instructs its customers through at least user guides or websites, such as those
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`located at: https://support.apple.com/en_US/manuals or https://www.apple.com/ios/maps/. Apple
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`is thereby liable for infringement of the ’999 Patent pursuant to 35 U.S.C. § 271(b).
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`42.
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`Apple has indirectly infringed at least claims 1-6 of the ’999 Patent, by, among
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`other things, contributing to the direct infringement of others, including customers of the ’999
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`Accused Products by making, offering to sell, or selling, in the United States, or importing a
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`component of a patented machine, manufacture, or combination, or an apparatus for use in
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`practicing a patented process, constituting a material part of the invention, knowing the same to be
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`especially made or especially adapted for use in infringement of the ’999 Patent, and not a staple
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`article or commodity of commerce suitable for substantial non-infringing use.
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`43.
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`For example, the ’999 Accused Products include hardware (e.g., GPS chip, cellular
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`chip, Wi-Fi chip, gyroscope, compass, A12 processor) and/or software (e.g., “Maps” or “Find My
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`Friends”). These are components of a patented machine, manufacture, or combination, or an
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`apparatus for use in practicing a patented process. Furthermore, such components are a material
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`part of the invention and upon information and belief are not a staple article or commodity of
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`commerce suitable for substantial non-infringing use. Thus, Apple is liable for infringement of the
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`’999 Patent pursuant to 35 U.S.C. § 271(c).
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`Case 5:19-cv-00036-RWS Document 111 Filed 10/23/19 Page 19 of 65 PageID #: 4820
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`44.
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`Apple has been on notice of the ’999 Patent since, at least, June 25, 2013. By the
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`time of trial, Apple will thus have known and intended (since receiving such notice), that its
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`continued actions would actively induce and contribute to actual infringement of at least claims 1-
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`6 of the ’999 Patent.
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`45.
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`Apple undertook and continued its infringing actions despite an objectively high
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`likelihood that such activities infringed the ’999 Patent, which has been duly issued by the USPTO,
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`and is presumed valid. For example, since, at least June 25, 2013, Apple has been aware of an
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`objectively high likelihood that its actions constituted and continue to constitute infringement of
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`the