`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`Advanced Silicon Technologies LLC,
`
`Plaintiff,
`
`Civil Action No.
`
`1:22-CV-425
`
`v.
`
`NXP Semiconductors N.V.,
`NXP B.V., and
`NXP USA, Inc.,
`
`Defendants.
`
`Jury Trial Demanded
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff Advanced Silicon Technologies LLC (“AST”) files this complaint for patent
`
`infringement against Defendants NXP Semiconductors N.V., NXP B.V., and NXP USA, Inc.
`
`(collectively, “NXP”), and alleges the following:
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`Nature of the Action
`
`1.
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`AST sues to stop, and to recover damages caused by, NXP’s infringement of
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`AST’s patents.
`
`2.
`
`This action involves patents that stem from the research and design of innovative
`
`and proprietary technology developed by AST’s licensee, Advanced Micro Devices, Inc.
`
`(“AMD”). AMD is an American multi-national company and pioneer of cutting-edge graphics
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`processor and microprocessor technology. The asserted patents cover inventions relating to
`
`important aspects of AMD’s integrated circuit and microfabrication technology.
`
`
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`Case 1:22-cv-00425-RP Document 1 Filed 05/05/22 Page 2 of 10
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`3.
`
`Tracing its history back to Philips and Motorola Semiconductors, NXP in its
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`present form took shape in 2015 through a merger with Freescale Semiconductor. See, e.g.,
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`https://www.nxp.com/company/about-nxp/history:NXP-HISTORY.
`
`Parties
`
`4.
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`Plaintiff Advanced Silicon Technologies LLC is a Delaware limited liability
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`company with a principal place of business in Portland, Maine, and a mailing address of 533
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`Congress Street, Portland, Maine 04101.
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`5.
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`Defendant NXP Semiconductors N.V. is a Dutch corporation with a principal
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`place of business at High Tech Campus 60, 5656 AG Eindhoven, Netherlands.
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`6.
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`Defendant NXP B.V. is a Dutch company with a principal place of business at
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`High Tech Campus 60, 5656 AG Eindhoven, Netherlands.
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`7.
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`Defendant NXP USA, Inc. is a Delaware corporation with a principal place of
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`business at 6501 W. William Cannon Drive, Austin, Texas 78735.
`
`8.
`
`On information and belief, NXP Semiconductors N.V. is a publicly traded
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`company that owns and controls NXP B.V., which in turn owns and controls NXP USA, Inc.
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`See, e.g., https://investors.nxp.com/sec-filings/sec-filing/10-k/0001413447-21-000011. NXP
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`Semiconductors N.V. trades on the NASDAQ stock exchange under the symbol NXPI.
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`Jurisdiction and Venue
`
`9.
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`This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and 1338(a)
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`because this action presents a federal question under the patent laws of the United States,
`
`including 35 U.S.C. §§ 271, 281, 284, and 285.
`
`10.
`
`This Court has specific or, alternatively, general personal jurisdiction over
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`Defendant NXP Semiconductors N.V. On information and belief, NXP Semiconductors N.V. is
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`—2—
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`Case 1:22-cv-00425-RP Document 1 Filed 05/05/22 Page 3 of 10
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`not subject to the jurisdiction of any state’s court of general jurisdiction. Shares of NXP
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`Semiconductors N.V. stock are routinely traded by investors, including investors in the United
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`States, on NASDAQ and other stock exchanges under the symbol NXPI. On information and
`
`belief, investors in the United States own shares of NXP Semiconductors N.V. stock.
`
`11.
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`This Court also has personal jurisdiction over NXP Semiconductors N.V. because
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`it is the sole owner of NXP B.V. and owns, directly or indirectly, NXP USA, Inc. On
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`information and belief, NXP Semiconductors N.V. through NXP B.V. and NXP USA, Inc.
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`directly or indirectly owns, operates, or controls facilities that include offices and fabrication
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`facilities in Austin, Texas where infringing products are designed, developed, manufactured,
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`tested, used, marketed, imported, exported, offered for sale, or sold into a stream of commerce
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`that includes this District. See https://www.nxp.com/company/about-nxp/worldwide-
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`locations/united-states:USA.
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`12.
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`This Court has specific or, alternatively, general jurisdiction over Defendant NXP
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`B.V. because NXP B.V. has engaged and continues to engage in substantial activities in this
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`District that include causing the infringement of AST’s patents. On information and belief, NXP
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`B.V. is the parent company of NXP USA, Inc. and directly or indirectly owns, operates, or
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`controls facilities that include offices and fabrication facilities in Austin, Texas where infringing
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`products are designed, developed, manufactured, tested, used, marketed, imported, exported,
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`offered for sale, or sold into a stream of commerce that includes this District. See id. As one
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`example, NXP B.V. published the i.MX 8QuadMax Applications Processor Reference Manual
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`cited in AST’s Counts I and II as detailing how NXP’s products infringe the exemplary asserted
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`claims of AST’s patents at issue in this action. See generally Exs. A, B.
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`—3—
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`
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`Case 1:22-cv-00425-RP Document 1 Filed 05/05/22 Page 4 of 10
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`13.
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`This Court specific or, alternatively, general jurisdiction over NXP USA, Inc.
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`because it is registered to do business in the State of Texas and operates its headquarters office
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`and a manufacturing facility in Austin, Texas. See https://www.nxp.com/company/about-
`
`nxp/worldwide-locations/united-states:USA. NXP USA, Inc. has caused acts of infringement to
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`occur in this District in violation of 35 U.S.C. § 271. For example, on information and belief, at
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`its Austin, Texas facilities NXP USA, Inc. designs, develops, tests, uses, markets, imports,
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`exports, offers to sell, and sells infringing products.
`
`14.
`
`In addition, NXP Semiconductors N.V., NXP B.V., and NXP USA, Inc. have
`
`acted together as a joint enterprise to design, develop, test, use, market, import, export, offer to
`
`sell, and sell infringing products in the United States, including in this District. On information
`
`and belief, NXP Semiconductors N.V. controls, dictates, or encourages the activities of NXP
`
`B.V. and NXP USA, Inc., and in turn NXP B.V. controls, dictates, or encourages the activities of
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`NXP USA, Inc., which constitute infringement of one or more claims of AST’s patents.
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`15.
`
`Because NXP maintains more than minimum contacts with this District, the
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`Court’s exercise of jurisdiction aligns with constitutional standards of fair play and substantial
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`justice and arises directly from NXP’s purposeful contacts with this District. This Court also has
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`jurisdiction over NXP Semiconductors N.V. and NXP B.V. upon service of the Complaint.
`
`16.
`
`Venue is proper in this District as to Defendants NXP Semiconductors N.V. and
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`NXP B.V. because foreign companies may be sued in any district under 28 U.S.C. § 1391(c)(3).
`
`17.
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`Venue is proper in this District as to Defendant NXP USA, Inc. under 28 U.S.C. §
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`1400(b) because it has a regular and established place of business and has committed acts of
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`infringement in this District. NXP USA, Inc. maintains two offices, including its headquarters
`
`office, in this District. NXP advertises, for example, that semiconductor design and
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`—4—
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`
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`Case 1:22-cv-00425-RP Document 1 Filed 05/05/22 Page 5 of 10
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`manufacturing activities take place at both of its Austin, Texas facilities. See, e.g.,
`
`https://www.nxp.com/company/about-nxp/worldwide-locations/united-states:USA. NXP further
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`advertises that “NXP owns and operates four wafer fabrication facilities in the US, two of which
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`are in Austin, Texas . . . ,” and that “representative products of these fabs include
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`microcontrollers (MCUs) and microprocessors (MPUs), power management devices, RF
`
`transceivers, amplifiers, and sensors.” Id.
`
`The Asserted Patents
`
`18.
`
`U.S. Patent No. 7,804,435, titled “Video decoder with reduced power
`
`consumption and method thereof,” issued September 28, 2010 (“’435 patent”). The application
`
`leading to the ’435 patent was filed August 31, 2006.
`
`19.
`
`U.S. Patent No. 8,933,945, titled “Dividing work among multiple graphics
`
`pipelines using a super-tiling technique,” issued January 13, 2015 (“’945 patent”). The
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`application leading to the ’945 patent was filed June 12, 2003, and claims priority to U.S.
`
`Provisional Appl. No. 60/429,641, filed November 27, 2002.
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`20.
`
`The ’435 and ’945 patents (collectively, the “Asserted Patents”) are presumed
`
`valid and enforceable under 35 U.S.C. § 282.
`
`21.
`
`AST owns all right, title, and interest in the Asserted Patents, including the right
`
`to assert all causes of action involving the asserted patents and the right to any remedies for
`
`infringement, including for past damages. The assignment records for the ’435 patent appear in
`
`the public prosecution history at Reel/Frames 018534/0233, 019774/0115, 024880/0593, and
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`036703/0421. The assignment records for the ’945 patents appear in the public prosecution
`
`history at Reel/Frames 014176/0613, 025573/0443, and 036703/0421.
`
`—5—
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`
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`Case 1:22-cv-00425-RP Document 1 Filed 05/05/22 Page 6 of 10
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`Count I: Infringement of the ’435 Patent
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`AST incorporates the preceding paragraphs as if it repeated them all here.
`
`The ’435 patent recites 26 claims, including independent claims 1, 9, 14, 19, 22,
`
`22.
`
`23.
`
`25, and 26.
`
`24.
`
`Claim 1 of the ’435 patent reads:
`
`An apparatus comprising:
`
`a power management controller operatively couplable to a video decoder
`that decodes at least one encoded digital video stream and in response to a
`determination of encoding description data that describes a scheme used to
`encode the input stream, varies power consumption of at least one
`operational portion of the video decoder.
`
`25.
`
`NXP has infringed and continues to infringe, literally or by the doctrine of
`
`equivalents, at least claims 1, 9, 14, 19, 22, 25, and 26 of the ’435 patent by making, using,
`
`selling, offering for sale, or importing products that infringe the ’435 patent in the United States.
`
`26.
`
`NXP’s products that infringe the ’435 patent include, for example, its i.MX
`
`family of applications processors—such as the i.MX 8 QuadMax Applications Processor—and
`
`other products with the same or similar features and functionality. Exhibit A contains an
`
`exemplary claim chart showing one way NXP infringes the ’435 patent.
`
`27.
`
`NXP has known about the ’435 patent at least as early as its receipt of AST’s
`
`letter of May 3, 2022, which notified NXP that at least its i.MX family of applications processors
`
`infringed at least claims 1, 9, 14, 19, 22, 25, and 26 of the ’435 patent.
`
`28.
`
`At least as early as NXP’s knowledge of the ’435 patent, NXP indirectly infringes
`
`the ’435 patent by inducement under 35 U.S.C. § 271(c). NXP knowingly induces infringement
`
`of the ’435 patent by intending others to make, use, offer for sale, or sell in the United States
`
`products covered by the ’435 patent. NXP provides these products and, on information and
`
`belief, provides instructions on their use to others—e.g., customers and end customers—who
`
`—6—
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`
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`Case 1:22-cv-00425-RP Document 1 Filed 05/05/22 Page 7 of 10
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`provision for use, incorporate into, offer for sale, or sell in the United States products or services
`
`that directly infringe at least claims 1, 9, 14, 19, 22, 25, and 26 of the ’435 patent.
`
`29.
`
`NXP also contributes to infringement of the ’435 patent by others by knowingly
`
`providing products that, when configured and combined with hardware and software supplied by
`
`partners or downstream customers, result in a system that directly infringes at least claims 1, 9,
`
`14, 19, 22, 25, and 26 of the ’435 patent. These products have no substantial non-infringing uses
`
`and constitute a material part of the invention claimed by the ’435 patent.
`
`30.
`
`NXP is liable for infringement of the ’435 patent due to its actions in this District
`
`and throughout the United States. NXP’s infringing conduct has caused AST to suffer damages
`
`and irreparable harm.
`
`Count II: Infringement of the ’945 Patent
`
`AST incorporates the preceding paragraphs as if it repeated them all here.
`
`The ’945 patent recites 21 claims, including independent claims 1, 18, and 21.
`
`Claim 1 of the ’945 patent reads:
`
`31.
`
`32.
`
`33.
`
`A graphics processing circuit, comprising:
`
`at least two graphics pipelines on a same chip operative to process data in a
`corresponding set of tiles of a repeating tile pattern corresponding to screen
`locations, a respective one of the at least two graphics pipelines operative
`to process data in a dedicated tile; and
`
`a memory controller on the chip in communication with the at least two
`graphics pipelines, operative to transfer pixel data between each of a first
`pipeline and a second pipeline and a memory shared among the at least two
`graphics pipelines;
`
`wherein the repeating tile pattern includes a horizontally and vertically
`repeating pattern of square regions.
`
`—7—
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`
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`Case 1:22-cv-00425-RP Document 1 Filed 05/05/22 Page 8 of 10
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`34.
`
`NXP has infringed and continues to infringe, literally or by the doctrine of
`
`equivalents, at least claims 1, 18, and 21 of the ’945 patent by making, using, selling, offering for
`
`sale, or importing products that infringe the ’945 patent in the United States.
`
`35.
`
`NXP’s products that infringe the ’945 patent include, for example, its i.MX
`
`family of applications processors—such as the i.MX 8 QuadMax Applications Processor—and
`
`other products with the same or similar features and functionality. Exhibit B contains an
`
`exemplary claim chart showing one way NXP infringes the ’945 patent.
`
`36.
`
`NXP has known about the ’945 patent at least as early as April 25, 2016, when
`
`AST issued a subpoena to non-party NXP seeking discovery of matters including NXP’s
`
`potential infringement of the ’945 patent in Certain Computing or Graphics Systems,
`
`Components Thereof, and Vehicles Containing Same, Inv. No. 337-TA-984 (U.S.I.T.C. 2016).
`
`NXP has also known about the ’945 patent at least as early as its receipt of AST’s letter of May
`
`3, 2022, which notified NXP that at least its i.MX family of applications processors infringed at
`
`least claims 1, 18, and 21 of the ’945 patent.
`
`37.
`
`At least as early as NXP’s knowledge of the ’945 patent, NXP indirectly infringes
`
`the ’945 patent by inducement under 35 U.S.C. § 271(c). NXP knowingly induces infringement
`
`of the ’945 patent by intending others to make, use, offer for sale, or sell in the United States
`
`products covered by the ’945 patent. NXP provides these products and, on information and
`
`belief, provides instructions on their use to others—e.g., customers and end customers—who
`
`provision for use, incorporate into, offer for sale, or sell in the United States products or services
`
`that directly infringe at least claims 1, 18, and 21 of the ’945 patent.
`
`38.
`
`NXP also contributes to infringement of the ’945 patent by others by knowingly
`
`providing products that, when configured and combined with hardware and software supplied by
`
`—8—
`
`
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`Case 1:22-cv-00425-RP Document 1 Filed 05/05/22 Page 9 of 10
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`partners or downstream customers, result in a system that directly infringes at least claims 1, 18,
`
`and 21 of the ’945 patent. These products have no substantial non-infringing uses and constitute
`
`a material part of the invention claimed by the ’945 patent.
`
`39.
`
`NXP is liable for infringement of the ’945 patent due to its actions in this District
`
`and throughout the United States. NXP’s infringing conduct has caused AST to suffer damages
`
`and irreparable harm.
`
`Prayer for Relief
`
`AST asks the Court to enter judgment as follows:
`
`A.
`
`B.
`
`Declaring that NXP has infringed the ’435 and ’945 patents;
`
`Awarding damages in an amount to be proven at trial, but in no event less than a
`
`reasonable royalty for NXP’s infringement and prejudgment and post-judgment interest at the
`
`maximum permissible rate;
`
`C.
`
`Awarding treble damages due to the willful, wanton, and deliberate nature of
`
`NXP’s infringement under 35 U.S.C. § 284;
`
`D.
`
`Awarding reasonable attorneys’ fees against NXP to AST as allowed under
`
`35 U.S.C. § 285;
`
`E.
`
`Awarding expenses, costs (including expert witness fees), and disbursements
`
`against NXP, including prejudgment interest;
`
`F.
`
`Permanently enjoining NXP, its officers, agents, servants, employees, attorneys,
`
`and all others acting in concert or participation with NXP from infringing the ’435 and ’945
`
`patents; and
`
`G.
`
`Awarding any other relief the Court deems just and proper.
`
`—9—
`
`
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`Case 1:22-cv-00425-RP Document 1 Filed 05/05/22 Page 10 of 10
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`Demand for Jury Trial
`
`AST demands a trial by jury for all triable claims under Fed. R. Civ. P. 38.
`
`
`
`Dated: May 5, 2022
`
`
`
`
`
`
`
`By: /s/ Brian A. Carpenter
` Brian A. Carpenter (State Bar No. 3840600)
`
`
`carpenter@cclaw.com
` Carstens & Cahoon, LLP
`
`1105 Wooded Acres, Suite 415
` Waco, Texas 76701
`
`(254) 294-8154
`
`
`Robert R. Brunelli (pro hac vice to be filed)
`rbrunelli@sheridanross.com
`
` Matthew C. Holohan (pro hac vice to be filed)
`
`mholohan@sheridanross.com
`
`Patrick A. Fitch (pro hac vice to be filed)
`
`pfitch@sheridanross.com
` Alex W. Ruge (pro hac vice to be filed)
`
`aruge@sheridanross.com
` Brian Boerman (pro hac vice to be filed)
`
`bboerman@sheridanross.com
`
`Sheridan Ross P.C.
`
`1560 Broadway, Suite 1200
` Denver, Colorado 80202
`
`Phone:
`(303) 863-9700
`
`Fax:
`(303) 863-0223
`
`Email:
`litigation@sheridanross.com
`
`Attorneys for
`Advanced Silicon Technologies LLC
`
`—10—
`
`