Case 6:20-cv-00522-ADA Document 1 Filed 06/12/20 Page 1 of 15
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`STC.UNM,
`
`
`Plaintiff,
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`
`
`
`CIVIL ACTION NO.6:20-cv-00522
`
`
`
`JURY TRIAL DEMANDED
`
`
`v.
`
`ZYXEL COMMUNICATIONS CORP.,
`
`
`Defendant.
`
`
`PLAINTIFF’S ORIGINAL COMPLAINT FOR
`PATENT INFRINGEMENT AND JURY DEMAND
`
`Plaintiff STC.UNM files this Original Complaint for Patent Infringement and Jury Demand
`
`against Defendant Zyxel Communications Corp. (“Defendant” or “Zyxel”). Plaintiff alleges
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`infringement of United States Patent Numbers 8,249,204 (“’204 Patent”), 8,565,326 (“’326
`
`Patent”), and 8,265,096 (“’096 Patent”) as follows:
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`I. PARTIES
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`1.
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`Plaintiff STC.UNM is a New Mexico nonprofit research park corporation formed,
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`owned, and controlled entirely by the Board of Regents of the University of New Mexico
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`(“UNM”).
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`2. UNM is a public educational institution based in Albuquerque, New Mexico and
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`serves as the State of New Mexico’s flagship research institution. UNM serves over 25,000
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`students and comprises over 1,700 faculty members across its main campus in Albuquerque and
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`branch campuses in Gallup, Los Alamos, Rio Rancho, Taos, and Los Lunas, New Mexico.
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`3. Over the past 20 years, UNM researchers have disclosed over 1,700 new inventions
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`resulting in the issue of over 500 United States patents.
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`4.
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`STC.UNM’s mission includes nurturing inventions researched and developed at
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`PLAINTIFF’S ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT AND JURY DEMAND
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`Case 6:20-cv-00522-ADA Document 1 Filed 06/12/20 Page 2 of 15
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`UNM, promoting technological collaboration between UNM and other universities and research
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`institutes, and thereby catalyzing economic development in the State of New Mexico.
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`5.
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`STC.UNM furthers its mission by licensing and, if necessary, enforcing its
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`inventions and reinvesting proceeds into continued research and development at and technological
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`collaboration with UNM, for the benefit of and for the State of New Mexico and the United States.
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`6.
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`STC.UNM is located at the UNM Lobo Rainforest Building, 101 Broadway
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`Boulevard, Suite 1100, Albuquerque, New Mexico 87102.
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`7.
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`Plaintiff STC.UNM, UNM, and the Board of Regents of UNM are arms of the State
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`of New Mexico and enjoy sovereign immunity under common law, statutes, and constitutions of
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`the United States and the State of New Mexico including, but not limited to, the Eleventh
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`Amendment of the United States Constitution and Article 12 of the New Mexico Constitution. See
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`Regents of University of New Mexico v. Knight, 321 F.3d 1111 (Fed. Cir. 2003); STC.UNM v.
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`Quest Diagnostics Inc., CIV 17-1123 MV/KBM, 2019 WL 1091390, at *1 (D.N.M. Mar. 8, 2019).
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`8.
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`By filing this lawsuit or prosecuting this action, Plaintiff STC.UNM does not waive,
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`either expressly or implicitly, its sovereign immunity, the sovereign immunity of UNM or its
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`Board of Regents, or the sovereign immunity enjoyed by any arm of the State of New Mexico
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`under the laws of the United States or the State of New Mexico, to any inter partes review, ex
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`parte reexamination, or other post-grant proceeding at the United States Patent and Trademark
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`Office or its Patent Trial and Appeal Board, to any other administrative actions or proceedings
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`whatsoever, to any noncompulsory counterclaims, or to any other federal or state proceedings
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`whatsoever, whether initiated by Defendant or an entity other than Defendant.
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`9. Defendant Zyxel is a corporation organized and existing under the laws of Taiwan,
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`having its principal place of business at No. 2, Gongye East 9th Road, East District, Hsinchu City
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`PLAINTIFF’S ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT AND JURY DEMAND
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`Case 6:20-cv-00522-ADA Document 1 Filed 06/12/20 Page 3 of 15
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`30076, Taiwan (Republic of China).
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`II. JURISDICTION
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`10. This action arises under the Patent Laws of the United States, 35 U.S.C. § 1, et seq.,
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`including 35 U.S.C. §§ 271, 281, 283, 284, and 285. This is a patent infringement lawsuit over
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`which this Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and 1338(a).
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`11. This United States District Court for the Western District of Texas has general and
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`specific personal jurisdiction over Defendant because Defendant is present in and transacts and
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`conducts business in and with residents of this District and the State of Texas.
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`12. STC.UNM’s causes of action arise, at least in part, from Defendant’s contacts with
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`and activities in this District and the State of Texas.
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`13. Defendant has committed acts of infringing the ’204 Patent, the ’096 Patent, and the
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`’326 Patent within this District and the State of Texas by making, using, selling, offering for sale,
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`and/or importing in or into this District and elsewhere in the State of Texas products made by
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`practicing the claimed method of the ’204 Patent, the ’096 Patent, and the ’326 Patent. Defendant,
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`directly and through intermediaries, makes, uses, sells, offers for sale, ships, distributes, advertises,
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`promotes, and/or otherwise commercializes such infringing products in this District and the State
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`of Texas. Defendant regularly conducts and solicits business in, engages in other persistent courses
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`of conduct in, and/or derives substantial revenue from goods and services provided to residents of
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`this District and the State of Texas.
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`III. VENUE
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`14. Venue is proper for Defendant in this District because venue in a patent infringement
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`action against a foreign defendant is proper in any judicial district. Brunette Mach. Works, Ltd. v.
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`Kochum Indus., Inc., 406 U.S. 706, 711-714 (1972), cited by TC Heartland LLC v. Kraft Foods
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`Grp. Brands LLC, 137 S. Ct. 1514, 1520 n.2 (2017).
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`PLAINTIFF’S ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT AND JURY DEMAND
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`Case 6:20-cv-00522-ADA Document 1 Filed 06/12/20 Page 4 of 15
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`15. STC.UNM does not waive its sovereign immunity as to any venue, including district
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`courts and administrative tribunals, other than this Court, namely the United States District Court
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`for the Western District of Texas, Waco Division.
`
`IV. UNITED STATES PATENT NUMBER 8,249,204
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`16. United States Patent Number 8,249,204 is titled “Apparatus and method for channel
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`state information feedback.” The ’204 Patent issued from United States Patent Application
`
`Number 12/339,000, which was filed on December 18, 2008 and claims priority to United States
`
`Provisional Patent Application Number 61/079,980, which was filed on July 11, 2008. The ’204
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`Patent was issued on August 21, 2012. A true and correct copy of the ’204 Patent is attached as
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`Exhibit A.
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`17. The ’204 Patent claims patent-eligible subject matter and is valid and enforceable.
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`18. The ’204 Patent’s named inventors are Wen-Rong Wu, Tzu-Han Hsu, Jen-Yuan Hsu,
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`and Pang-An Ting.
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`19. The ’204 Patent’s original patentee was the Industrial Technology Research Institute
`
`(“ITRI”), which acquired exclusive ownership of the patented invention by written assignments
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`from Wen-Rong Wu, Tzu-Han Hsu, Jen-Yuan Hsu, and Pang-An Ting, recorded in the U.S. Patent
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`& Trademark Office on or about February 26, 2009.
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`20. Thereafter, ITRI conveyed to Sino Matrix Technology, Inc. (“SMT”) all rights, title,
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`and interest in and to the ’204 Patent, including the right to sue and recover for past infringements,
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`by written assignment recorded in the U.S. Patent & Trademark Office (“USPTO”) on or about
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`March 14, 2018.
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`21. Thereafter, SMT conveyed to Plaintiff all rights, title, and interest in and to the ’204
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`Patent, including the right to sue and recover for past infringements, by written assignment
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`recorded in the USPTO on or about September 12, 2018.
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`22. Defendant is not licensed to the ’204 Patent, either expressly or implicitly, nor does
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`it enjoy or benefit from any rights in or to the ’204 Patent whatsoever.
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`V. UNITED STATES PATENT NUMBER 8,265,096
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`23. United States Patent Number 8,265,096 is titled “Method for Constructing Frame
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`Structures.” The ’096 Patent issued from United States Patent Application Number 12/168,855,
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`which was filed on July 7, 2008 and claims priority to United States Provisional Patent Application
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`Number 60/929,798, which was filed on July 12, 2007, and United States Provisional Patent
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`Application Number 60/973,157, which was filed on September 17, 2007. The ’096 Patent issued
`
`on September 11, 2012. A true and correct copy of the ’096 Patent is attached as Exhibit B.
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`24. The ’096 Patent claims patent-eligible subject matter and is valid and enforceable.
`
`25. The ’096 Patent’s named inventors are Yan-Xiu Zheng, Ren-Jr Chen, Chang-Lung
`
`Hsiao, and Pang-An Ting.
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`26. The ’096 Patent’s original patentee was ITRI, which acquired exclusive ownership
`
`of the patented invention by written assignments from Yan-Xiu Zheng, Ren-Jr Chen, Chang-Lung
`
`Hsiao, and Pang-An Ting, recorded in the U.S. Patent & Trademark Office on or about July 22,
`
`2008.
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`27. Thereafter, ITRI conveyed to SMT all rights, title, and interest in and to the ’096
`
`Patent, including the right to sue and recover for past infringements, by written assignment
`
`recorded in the USPTO on or about March 14, 2018.
`
`28. Thereafter, SMT conveyed to Plaintiff all rights, title, and interest in and to the ’096
`
`Patent, including the right to sue and recover for past infringements, by written assignment
`
`recorded in the USPTO on or about September 12, 2018.
`
`29. Defendant is not licensed to the ’096 Patent, either expressly or implicitly, nor does
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`it enjoy or benefit from any rights in or to the ’096 Patent whatsoever.
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`PLAINTIFF’S ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT AND JURY DEMAND
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`VI. UNITED STATES PATENT NUMBER 8,565,326
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`30. United States Patent Number 8,565,326 is titled “System and Method for Bit
`
`Allocation and Interleaving.” The ’326 Patent issued from United States Patent Application
`
`Number 12/425,004, which was filed on April 16, 2009 and claims priority to United States
`
`Provisional Patent Application Number 61/079,104, which was filed on July 8, 2008. The ’326
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`Patent issued on October 22, 2013. A true and correct copy of the ’326 Patent is attached as Exhibit
`
`C.
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`31. The ’326 Patent claims patent-eligible subject matter and is valid and enforceable.
`
`32. The ’326 Patent’s named inventors are Chien-Yu Kao, Jen-Yuan Hsu, Pang-An Ting,
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`and Chia-Lung Tsai.
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`33. The ’326 Patent’s original patentee was ITRI, which acquired exclusive ownership
`
`of the patented invention by written assignments from Chien-Yu Kao, Jen-Yuan Hsu, Pang-An
`
`Ting, and Chia-Lung Tsai, recorded in the U.S. Patent & Trademark Office on or about April 16,
`
`2009.
`
`34. Thereafter, ITRI conveyed to SMT all rights, title, and interest in and to the ’326
`
`Patent, including the right to sue and recover for past infringements, by written assignment
`
`recorded in the USPTO on or about March 14, 2018.
`
`35. Thereafter, SMT conveyed to Plaintiff all rights, title, and interest in and to the ’326
`
`Patent, including the right to sue and recover for past infringements, by written assignment
`
`recorded in the USPTO on or about September 12, 2018.
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`36. Defendant is not licensed to the ’326 Patent, either expressly or implicitly, nor does
`
`it enjoy or benefit from any rights in or to the ’326 Patent whatsoever.
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`VII. THE ACCUSED INSTRUMENTALITIES
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`37. Defendant designs, manufactures, imports, uses, sells, offers for sale, and markets
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`PLAINTIFF’S ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT AND JURY DEMAND
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`communications equipment, networking devices, wireless receivers, extenders, adapters, and mesh
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`systems, including the following “Accused Instrumentalities”: VMG3927-B50B, VMG4927-
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`B50A, EMG6726, EMG3425, EMG6726-B10A, EM6764-Q10A, WAP6804, VMG4825,
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`VMG9823, EMG3425, NWA5123-AC HD, WAC5302D-S, NWA5120 Series, NWA1302-AC,
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`NWA1123-AC HD, NWA1123-AC PRO, NWA1123-ACv2, WAC6303D-S, Multy U AC2100,
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`Multy AC3000, and Multy Plus AC3000.
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`38. Defendant’s Accused Instrumentalities are adapted to operate in and with wireless
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`telecommunications networks that at least comply with the requirements of the IEEE 802.11ac
`
`wireless networking standard (referred to as “Wireless Telecommunications Networks”).
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`VIII. DIRECT, INDUCED, AND CONTRIBUTORY INFRINGEMENT
`OF THE ’204 PATENT
`39. Defendant’s Accused Instrumentalities capable of operation on a Wireless
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`Telecommunications Network comprise mobile stations that communicate with base stations via
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`communication channels. Channel state information or “CSI” can be provided from a mobile
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`station to base station. The mobile station is configured to estimate CSI by calculating responses
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`for each communication channel and selecting channel taps from each calculated channel response.
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`It can also compress the estimated CSI and send it as feedback to the base station.
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`40. Defendant has and continues to directly infringe the ’204 Patent, literally and/or
`
`under the doctrine of equivalents, by making, using, selling, offering for sale, and/or importing in
`
`or into the United States one or more apparatuses that embody and practice at least claims 1, 11,
`
`and/or 12 of the ’204 Patent in violation of 35 U.S.C. § 271(a), including but not limited to
`
`Defendant’s Accused Instrumentalities capable of operation on a Wireless Telecommunications
`
`Network.
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`41. Defendant likewise has, with knowledge of the ’204 Patent, and without authority,
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`Case 6:20-cv-00522-ADA Document 1 Filed 06/12/20 Page 8 of 15
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`actively induced and continues to actively induce infringement of at least claims 1, 11, and/or 12
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`of the ’204 Patent under 35 U.S.C. § 271(b), by intentionally inducing the infringing use, offer for
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`sale, and/or sale of the Accused Instrumentalities by and with Wireless Telecommunication
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`Networks and their operators and end-users. Each Accused Instrumentality is intended for use as
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`a mobile station that communicates with base stations via communication channels and employs
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`the patented provision of CSI from a mobile station to base station, configuration of the mobile
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`station to estimate CSI by calculating responses for each communication channel and selecting
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`channel taps from each calculated channel response, compression of the estimated CSI, and
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`feedback to the base station. The Accused Instrumentalities are designed to be used by and with
`
`Wireless Telecommunications Networks and their operators in an infringing manner that practices
`
`the ’204 Patent. Similarly, the Accused Instrumentalities are configured to be used by end-users
`
`of the Wireless Telecommunications Networks in an infringing manner that practices the ’204
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`Patent.
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`42. Defendant actively induces Wireless Telecommunications Network operators and
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`end-users to practice the ‘204 Patent, without authority, by, inter alia, designing and introducing
`
`into the stream of commerce the Accused Instrumentalities, which are pre-configured to employ
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`the patented provision of CSI from a mobile station to base station, configuration of the mobile
`
`station to estimate CSI by calculating responses for each communication channel and selecting
`
`channel taps from each calculated channel response, compression of the estimated CSI, and
`
`feedback to the base station. Defendant encourages infringing use of the Accused Instrumentalities
`
`by the Wireless Telecommunications Network operators and end-users by, for example, publishing
`
`manuals and promotional literature describing and instructing in the operation of the Accused
`
`Instrumentalities in an infringing manner. At the encouragement by and direction of Defendant,
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`PLAINTIFF’S ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT AND JURY DEMAND
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`Case 6:20-cv-00522-ADA Document 1 Filed 06/12/20 Page 9 of 15
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`the Wireless Telecommunications Network operators sell and offer for sale Accused
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`Instrumentalities to end-users to be used in an infringing manner. Such conduct results in induced
`
`infringements of at least claims 1, 11, and/or 12 of the ’204 Patent when the Accused
`
`Instrumentalities are used for their intended purpose. Defendant has had knowledge that the acts
`
`of Wireless Telecommunications Network operators and end-users constitute direct infringement
`
`of at least one claim of the ’204 Patent since it received notice of its infringement of the ’204
`
`Patent.
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`43. Defendant likewise is liable for contributory infringement. Defendant, with
`
`knowledge of the ’204 Patent, and without authority, has offered to sell, sold, and/or imported into
`
`the United States the Accused Instrumentalities for use in practicing the patented apparatus and
`
`methods embodied in at least claims 1, 11, and/or 12, which use constitutes a material part of the
`
`claimed invention. Defendant offered to sell, sold, and/or imported into the United States the
`
`Accused Instrumentalities knowing that each is especially made or adapted for use in infringing
`
`the ‘204 Patent, and that each is not a staple article or commodity of commerce suitable for
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`substantial noninfringing use as packaged, advertised, and/or sold because the Accused
`
`Instrumentalities are pre-configured by Defendant to employ the patented provision of CSI from a
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`mobile station to base station, configuration of the mobile station to estimate CSI by calculating
`
`responses for each communication channel and selecting channel taps from each calculated
`
`channel response, compression of the estimated CSI, and feedback to the base station.
`
`44. Defendant’s direct, indirect, and contributory infringement of the ’204 Patent has
`
`caused, and will continue to cause, substantial and irreparable damage to Plaintiff. Plaintiff is,
`
`therefore, entitled to an award of damages adequate to compensate for Defendant’s infringement
`
`of the ’204 Patent, but not less than a reasonable royalty, together with pre- and post-judgment
`
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`PLAINTIFF’S ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT AND JURY DEMAND
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`interest and costs as fixed by the Court under 35 U.S.C. § 284.
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`IX. DIRECT, INDUCED, AND CONTRIBUTORY INFRINGEMENT
`OF THE ’096 PATENT
`45. Defendant’s Accused Instrumentalities capable of operation on a Wireless
`
`Telecommunications Network employ the patented frame structure for data transmission in which
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`legacy communication format and very high throughput communication format are combined into
`
`a unitary frame structure.
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`46. Defendant has and continues to directly infringe the ’096 Patent, literally and/or
`
`under the doctrine of equivalents, by making, using, selling, offering for sale, and/or importing in
`
`or into the United States one or more apparatuses that embody and practice at least claims 1, 3, 4,
`
`6, and/or 8 of the ’096 Patent in violation of 35 U.S.C. § 271(a), including but not limited to
`
`Defendant’s Accused Instrumentalities capable of operation on a Wireless Telecommunications
`
`Network.
`
`47. Defendant likewise, with knowledge of the ’096 Patent, and without authority, has
`
`actively induced and continues to actively induce infringement of at least claims 1, 3, 4, 6, and/or
`
`8 of the ’096 Patent under 35 U.S.C. § 271(b), by intentionally inducing the infringing use, offer
`
`for sale, and/or sale of the Accused Instrumentalities by and with Wireless Telecommunication
`
`Networks and their operators and end-users. Each Accused Instrumentality employs the patented
`
`frame structure for data transmission in either the legacy format or the VHT format within a single
`
`frame. The Accused Instrumentalities are designed to be used by and with Wireless
`
`Telecommunications Networks and their operators in an infringing manner that practices the ’096
`
`Patent. Similarly, the Accused Instrumentalities are configured to be used by end-users of the
`
`Wireless Telecommunications Networks in an infringing manner that practices the ’096 Patent.
`
`48. Defendant actively induces Wireless Telecommunications Network operators and
`
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`PLAINTIFF’S ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT AND JURY DEMAND
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`Case 6:20-cv-00522-ADA Document 1 Filed 06/12/20 Page 11 of 15
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`end-users to practice the ‘096 Patent, without authority, by, inter alia, designing and introducing
`
`into the stream of commerce the Accused Instrumentalities, which employ the patented frame
`
`structure for data transmission. Defendant encourages infringing use of the Accused
`
`Instrumentalities by the Wireless Telecommunications Network operators and end-users by, for
`
`example, publishing manuals and promotional literature describing and instructing in the operation
`
`of the Accused Instrumentalities in an infringing manner. At the encouragement by and direction
`
`of Defendant, the Wireless Telecommunications Network operators sell and offer for sale Accused
`
`Instrumentalities to end-users to be used in an infringing manner. Such conduct results in induced
`
`infringements of at least claims 1, 3, 4, 6, and/or 8 of the ’096 Patent when the Accused
`
`Instrumentalities are used for their intended purpose. Defendant has had knowledge that the acts
`
`of Wireless Telecommunications Network operators and end-users constitute direct infringement
`
`of at least one claim of the ’096 Patent since it received notice of its infringement of the ’096
`
`Patent.
`
`49. Defendant likewise is liable for contributory infringement. Defendant, with
`
`knowledge of the ’096 Patent, and without authority, has offered to sell, sold, and/or imported into
`
`the United States the Accused Instrumentalities for use in practicing the patented apparatus and
`
`methods embodied in at least claims 1, 3, 4, 6, and/or 8, which use constitutes a material part of
`
`the claimed invention. Defendant offered to sell, sold, and/or imported into the United States the
`
`Accused Instrumentalities knowing that each is especially made or adapted for use in infringing
`
`the ‘096 Patent, and that each is not a staple article or commodity of commerce suitable for
`
`substantial noninfringing use as packaged, advertised, and/or sold because the Accused
`
`Instrumentalities are pre-configured by Defendant to employ the patented frame structure for data
`
`transmission.
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`PLAINTIFF’S ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT AND JURY DEMAND
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`50. Defendant’s direct, indirect, and contributory infringement of the ’096 Patent has
`
`caused, and will continue to cause, substantial and irreparable damage to Plaintiff. Plaintiff is,
`
`therefore, entitled to an award of damages adequate to compensate for Defendant’s infringement
`
`of the ’096 Patent, but not less than a reasonable royalty, together with pre- and post-judgment
`
`interest and costs as fixed by the Court under 35 U.S.C. § 284.
`
`X. DIRECT, INDUCED, AND CONTRIBUTORY INFRINGEMENT
`OF THE ’326 PATENT
`51. Defendant’s Accused Instrumentalities capable of operation on a Wireless
`
`Telecommunications Network employ the patented transmitter and data transmission method
`
`claimed by the ’326 Patent.
`
`52. Defendant has and continues to directly infringe the ’326 Patent, literally and/or
`
`under the doctrine of equivalents, by making, using, selling, offering for sale, and/or importing in
`
`or into the United States one or more apparatuses that embody and practice at least claims 1, 2, 4,
`
`and/or 5 of the ’326 Patent in violation of 35 U.S.C. § 271(a), including but not limited to
`
`Defendant’s Accused Instrumentalities capable of operation on a Wireless Telecommunications
`
`Network.
`
`53. Defendant likewise, with knowledge of the ’326 Patent, and without authority, has
`
`actively induced and continues to actively induce infringement of at least claims 1, 2, 4, and/or 5
`
`of the ’326 Patent under 35 U.S.C. § 271(b), by intentionally inducing the infringing use, offer for
`
`sale, and/or sale of the Accused Instrumentalities by and with Wireless Telecommunication
`
`Networks and their operators and end-users. Each Accused Instrumentality employs the patented
`
`data transmitter and transmission method. The Accused Instrumentalities are designed to be used
`
`by and with Wireless Telecommunications Networks and their operators in an infringing manner
`
`that practices the ’326 Patent. Similarly, the Accused Instrumentalities are configured to be used
`
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`PLAINTIFF’S ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT AND JURY DEMAND
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`Case 6:20-cv-00522-ADA Document 1 Filed 06/12/20 Page 13 of 15
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`by end-users of the Wireless Telecommunications Networks in an infringing manner that practices
`
`the ’326 Patent.
`
`54. Defendant actively induces Wireless Telecommunications Network operators and
`
`end-users to practice the ‘326 Patent, without authority, by, inter alia, designing and introducing
`
`into the stream of commerce the Accused Instrumentalities, which employ the patented data
`
`transmitter and transmission method. Defendant encourages infringing use of the Accused
`
`Instrumentalities by the Wireless Telecommunications Network operators and end-users by, for
`
`example, publishing manuals and promotional literature describing and instructing in the operation
`
`of the Accused Instrumentalities in an infringing manner. At the encouragement by and direction
`
`of Defendant, the Wireless Telecommunications Network operators sell and offer for sale Accused
`
`Instrumentalities to end-users to be used in an infringing manner. Such conduct results in induced
`
`infringements of at least claims 1, 2, 4, and/or 5 of the ’326 Patent when the Accused
`
`Instrumentalities are used for their intended purpose. Defendant has had knowledge that the acts
`
`of Wireless Telecommunications Network operators and end-users constitute direct infringement
`
`of at least one claim of the ’326 Patent since it received notice of its infringement of the ’326
`
`Patent.
`
`55. Defendant likewise is liable for contributory infringement. Defendant, with
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`knowledge of the ’326 Patent, and without authority, has offered to sell, sold, and/or imported into
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`the United States the Accused Instrumentalities for use in practicing the patented apparatus and
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`methods embodied in at least claims 1, 2, 4, and/or 5, which use constitutes a material part of the
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`claimed invention. Defendant offered to sell, sold, and/or imported into the United States the
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`Accused Instrumentalities knowing that each is especially made or adapted for use in infringing
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`the ‘326 Patent, and that each is not a staple article or commodity of commerce suitable for
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`PLAINTIFF’S ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT AND JURY DEMAND
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`PAGE 13
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`Case 6:20-cv-00522-ADA Document 1 Filed 06/12/20 Page 14 of 15
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`substantial noninfringing use as packaged, advertised, and/or sold because the Accused
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`Instrumentalities are pre-configured by Defendant to employ the patented transmitter and data
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`transmission method.
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`56. Defendant’s direct, indirect, and contributory infringement of the ’326 Patent has
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`caused, and will continue to cause, substantial and irreparable damage to Plaintiff. Plaintiff is,
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`therefore, entitled to an award of damages adequate to compensate for Defendant’s infringement
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`of the ’326 Patent, but not less than a reasonable royalty, together with pre- and post-judgment
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`interest and costs as fixed by the Court under 35 U.S.C. § 284.
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`XI. JURY DEMAND
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`57. Plaintiff STC.UNM hereby demands a trial by jury for all causes of action.
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`XII. PRAYER FOR RELIEF
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`58. Plaintiff requests the following relief:
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`A. A judgment that Defendant has directly infringed either literally and/or under the
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`doctrine of equivalents and continues to directly infringe the’204 Patent, the ’096 Patent, and the
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`’326 Patent;
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`B. A judgment that Defendant has induced infringement and continues to induce
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`infringement of the ’204 Patent, the ’096 Patent, and the ’326 Patent;
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`C. A judgment that Defendant has contributorily infringed and continues to contributo-
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`rily infringe the ’204 Patent, the ’096 Patent, and the ’326 Patent;
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`D. A judgment and order requiring Defendant to pay Plaintiff damages under 35 U.S.C.
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`§ 284, including treble damages for willful infringement as provided by 35 U.S.C. § 284, and
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`supplemental damages for any continuing post-verdict infringement through entry of the final
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`judgment with an accounting as needed;
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`E. A judgment that this is an exceptional case within the meaning of 35 U.S.C. § 285
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`PLAINTIFF’S ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT AND JURY DEMAND
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`PAGE 14
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`Case 6:20-cv-00522-ADA Document 1 Filed 06/12/20 Page 15 of 15
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`and Plaintiff is therefore entitled to reasonable attorneys’ fees.
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`F. A judgment and order requiring Defendant to pay Plaintiff pre-judgment and post-
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`judgment interest on the damages awarded;
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`G. A judgment and order awarding a compulsory ongoing royalty;
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`H. A judgment granting a preliminary and permanent injunction that restrains and en-
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`joins Defendant, its officers, directors, employees, agents, servants, parents, subsidiaries, succes-
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`sors, assigns, and all those in privity, concert or participation with them from directly or indirectly
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`infringing the ’204 Patent, the ’096 Patent, and the ’326 Patent; and
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`I. Such other and further relief as the Court deems just and equitable.
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`Dated: June 12, 2020
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`Respectfully submitted,
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`
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`By: /s/ Michael W. Shore
`Charles L. Ainsworth (Texas 00783521)
`Robert Christopher Bunt (Texas 00787165)
`PARKER, BUNT & AINSWORTH, P.C.
`1000 East Ferguson, Suite 418
`Tyler, TX 75702
`Tel: (903) 531-3535
`charley@pbatyler.com
`rcbunt@pbatyler.com
`
`Michael W. Shore (Texas 18294915)
`Alfonso G. Chan (Texas 24012408)
`William D. Ellerman (Texas 24007151)
`Corey M. Lipschutz (Texas 24099303)
`SHORE CHAN DEPUMPO LLP
`901 Main Street, Suite 3300
`Dallas, Texas 75202
`Tel: (214) 593-9110
`Fax: (214) 593-9111
`mshore@shorechan.com
`achan@shorechan.com
`wellerman@shorechan.com
`clipschutz@shorechan.com
`COUNSEL FOR PLAINTIFF STC.UNM
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`PLAINTIFF’S ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT AND JURY DEMAND
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`PAGE 15
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