Case 6:20-cv-00646-ADA Document 1 Filed 07/16/20 Page 1 of 32
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`MAXELL, LTD.,
`
`v.
`
`APPLE INC.,
`
`Plaintiff,
`
`Defendant.
`
`Civil Action No. 6:20-cv-00646
`COMPLAINT AND DEMAND
`FOR JURY TRIAL
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff Maxell, Ltd. (“Maxell”), by and through its undersigned counsel, files this
`
`complaint under 35 U.S.C. § 271 for Patent Infringement against Defendant Apple Inc. (“Apple”)
`
`and further alleges as follows, upon actual knowledge with respect to itself and its own acts, and
`
`upon information and belief as to all other matters.
`
`OVERVIEW
`
`1.
`
`This is an action for patent infringement by Maxell. Founded in 1961 as Maxell
`
`Electric Industrial Co., Ltd., Maxell is a leading global manufacturer of information storage media
`
`products, including magnetic tapes, optical discs, and battery products such as lithium ion
`
`rechargeable micro batteries and alkaline dry batteries, and the company has over 50 years of
`
`experience producing industry-leading recordable media and energy products for both the
`
`consumer and the professional markets. Maxell is also a leading manufacturer of projectors and
`
`lenses and additionally sells various other devices, such as Bluetooth headsets, wireless charging
`
`solutions, etc.
`
`1
`
`

`

`Case 6:20-cv-00646-ADA Document 1 Filed 07/16/20 Page 2 of 32
`
`2.
`
`Maxell has built up an international reputation for excellence and reliability, for
`
`pioneering the power supplies and digital recording for today’s mobile and multi-media devices,
`
`and leading the electronics industry in the fields of storage media and batteries.
`
`3.
`
`Since being one of the first companies to develop alkaline batteries and Blu Ray
`
`camcorder discs, Maxell has always assured its customers of industry leading product innovation
`
`and is one of the world’s foremost suppliers of memory, power, audio, and visual goods. Maxell’s
`
`well-recognized logo and iconic “blown away” image exemplify the reputation Maxell carefully
`
`developed in these markets.
`
`
`
`4.
`
`As more fully described below, in 2009 Hitachi, Ltd. assigned much of its consumer
`
`product-facing intellectual property to Hitachi Consumer Electronics Co., Ltd. Then, in 2013,
`
`Hitachi Consumer Electronics Co., Ltd. assigned the intellectual property, including the patents in
`
`this case, to Hitachi Maxell, Ltd., which later assigned the patents to Maxell as a result of a
`
`reorganization and name change. This reorganization was an effort to align its intellectual property
`
`with the licensing, business development, and research and development efforts of Maxell,
`
`including in the mobile and mobile-media device market (Hitachi, Ltd. and Hitachi Consumer
`
`Electronics Co., Ltd. are referred to herein collectively as “Hitachi”). Maxell continues to sell
`
`
`
`2
`
`

`

`Case 6:20-cv-00646-ADA Document 1 Filed 07/16/20 Page 3 of 32
`
`products in the mobile device market including wireless charging solutions, wireless flash drives,
`
`multimedia players, storage devices, and headphones. Maxell also maintains intellectual property
`
`related to televisions, computer products, tablets, digital cameras, and mobile phones. As a mobile
`
`technology developer and industry leader, and due to its historical and continuous investment in
`
`research and development, including in the state of Texas, Maxell owns a portfolio of patents
`
`related to such technologies and actively enforces its patents through licensing and/or litigation.
`
`Maxell is forced to bring this action against Apple as a result of Apple’s knowing and ongoing
`
`infringement of Maxell’s patents as further described herein.
`
`5.
`
`Since at least June 2013, Apple has been aware of Maxell’s patents and has had
`
`numerous meetings and interactions regarding its infringement of these patents. These meetings
`
`included Apple’s representatives being provided with detailed information regarding Maxell’s
`
`patents, the developed technology, and Apple’s ongoing use of this patented technology. Through
`
`this process, Apple’s representatives requested and received detailed explanations regarding
`
`Maxell’s patents and allegations. A resident of Marshall, Texas, Alan Loudermilk, was involved
`
`in these extensive licensing negotiations with Apple on Maxell’s behalf.
`
`6.
`
`Maxell believed that the parties could reach a mutually beneficial solution and to
`
`that end considered a potential business transaction and continued to answer multiple inquiries
`
`from Apple over the course of several years. Apple elected, however, not to enter into an agreement
`
`and did not license Maxell’s patents. Accordingly, in 2019, Apple brought litigation against Apple
`
`asserting infringement of ten other patents from the same portfolio of which the currently asserted
`
`patents are a part. Case No. 5:19-cv-00036-RWS (E.D. Tex.). Yet, Apple has still elected not to
`
`license Maxell’s patents and that litigation is pending. The result is that Apple has continued, and
`
`continues today, to make, use, sell and offer for sale Maxell’s patented technology without license.
`
`
`
`3
`
`

`

`Case 6:20-cv-00646-ADA Document 1 Filed 07/16/20 Page 4 of 32
`
`7.
`
`Since 2014, Maxell has had regular and continuous business in Texas. As a result
`
`of such business dealings and hopes to expand those and other business dealings, a Maxell affiliate,
`
`Maxell Research and Development America, LLC (“MRDA”), was founded in Marshall, Texas.
`
`MRDA is part of a joint venture with another business in Marshall, and the entities work together
`
`on research and development related to IoT, mobile, media and battery technologies. MRDA’s
`
`ongoing projects include, for example, the research and development of lensless camera
`
`technology, which Maxell hopes will be utilized for sensor and camera technology in smartphones.
`
`Maxell engineers and executives regularly travel to Marshall to meet and work to expand the
`
`research and development activities, business, and investments being made by Maxell, MRDA,
`
`and their business partners in Texas to further the goals of these companies.
`
`8.
`
`In addition to the 2019 litigation filed against Apple, noted above, Maxell has filed
`
`five other lawsuits in the Eastern District of Texas in order to enforce the patent portfolio of which
`
`the currently asserted patents are a part. Two of the patents accused of infringement herein,
`
`including U.S. Patent Nos. 8,982,086 and 7,203,517 were previously asserted in the Eastern
`
`District of Texas against Huawei Device Co., Ltd., Huawei Device USA, Inc., ZTE (USA), Inc.,
`
`ZTE Corporation, and/or ASUSTeK Computer Inc. One case, involving other patents from
`
`Maxell’s portfolio but not any of the asserted patents, Maxell Ltd. v. ZTE (USA) Inc., Case No.
`
`5:16-cv-00179-RWS, culminated in a ten day jury trial. At this point, all of Maxell’s cases, except
`
`that against Apple, have been resolved and dismissed.
`
`PARTIES
`
`9.
`
`Plaintiff Maxell, Ltd. is a Japanese corporation with a registered place of business
`
`at 1 Koizumi, Oyamazaki, Oyamazaki-cho, Otokuni-gun, Kyoto, Japan.
`
`
`
`4
`
`

`

`Case 6:20-cv-00646-ADA Document 1 Filed 07/16/20 Page 5 of 32
`
`10.
`
`On information and belief, Defendant Apple Inc. is a California corporation having
`
`a principal place of business located at One Apple Park Way Cupertino, California 95014 and
`
`regular and established places of business at 12545 Riata Vista Cir, Austin, Texas and 5501 W.
`
`Parmer Lane, Austin, Texas, as well as other locations in Texas (e.g., 2901 S. Capital of Texas
`
`Hwy, Austin, Texas and 3121 Palm Way, Austin, Texas). Apple offers and sells its products and/or
`
`services, including those accused herein of infringement, to customers and potential customers
`
`located in Texas, including in the judicial Western District of Texas. Apple may be served with
`
`process through its registered agent for service in Texas: CT Corporation System, 1999 Bryan
`
`Street, Suite 900, Dallas, Texas 75201.
`
`NATURE OF THE ACTION, JURISDICTION, AND VENUE
`
`11. Maxell brings this action for patent infringement under the patent laws of the United
`
`States, 35 U.S.C. § 271 et seq.
`
`12.
`
`This Court has subject matter jurisdiction over the subject matter of this action
`
`pursuant to 28 U.S.C. §§ 1331 and 1338(a) because the action arises under the patent laws of the
`
`United States.
`
`13.
`
`This Court has personal jurisdiction over Apple. Apple conducts business and has
`
`committed acts of direct and indirect patent infringement in this District, the State of Texas, and
`
`elsewhere in the United States. Moreover, Apple is registered to do business in the State of Texas,
`
`has offices and facilities in the State of Texas and this District, and actively directs its activities to
`
`customers located in the State of Texas and this District.
`
`14.
`
`Venue is proper in this District pursuant to 28 U.S.C. § 1400(b). Apple has regular
`
`and established places of business in this District, including at 12545 Riata Vista Cir, Austin, Texas
`
`and 5501 W. Parmer Lane, Austin, Texas, as well as Apple Stores located at, at least, 2901 S.
`
`
`
`5
`
`

`

`Case 6:20-cv-00646-ADA Document 1 Filed 07/16/20 Page 6 of 32
`
`Capital of Texas Hwy, Austin, Texas and 3121 Palm Way, Austin, Texas. Thus, Apple is deemed
`
`to reside in this District, has committed acts of infringement described herein in this District, and
`
`has purposely transacted business involving the accused devices in this District. Further, there is
`
`significant local interest in view of Apple being one of the largest private employers in this District
`
`and Apple has received a significant amount of tax subsidies in this District.
`
`15.
`
`Given Mr. Loudermilk’s role in prior licensing negotiations between Maxell and
`
`Apple, MRDA’s presence in Marshall, Apple’s operations in Texas, and the prior litigation
`
`concerning Maxell’s patent portfolio, Maxell believed the Eastern District of Texas to be the
`
`proper, and most convenient, venue for it to litigate its patent claims against Apple. Accordingly,
`
`in 2019, Maxell filed its first suit against Apple in that district. Since such case was filed, however,
`
`Apple closed its store in the Eastern District of Texas. Apple continues, however, to have regular
`
`and established places of business in the Western District of Texas, as set forth above. In view of
`
`the proximity of the Western District to Marshall, it is now the proper, most convenient, venue for
`
`Maxell to litigate its patent claims against Apple.
`
`COUNT 1 - INFRINGEMENT OF U.S. PATENT NO. 7,203,517
`
`16. Maxell incorporates paragraphs 1-15 above by reference.
`
`17.
`
`U.S. Patent No. 7,203,517 (the “’517 Patent,” attached hereto at Exhibit 1) duly
`
`issued on April 10, 2007 and is entitled Mobile Communication Terminal Device.
`
`18. Maxell is the owner by assignment of the ’517 Patent and possesses all rights under
`
`the ’517 Patent, including the exclusive right to recover for past and future infringement.
`
`19.
`
`At the time of the ’517 Patent, there were some mobile devices that included
`
`multiple communication interfaces for purposes of communicating with, for example, external
`
`devices. The mobile devices would switch between the communication interfaces to provide
`
`
`
`6
`
`

`

`Case 6:20-cv-00646-ADA Document 1 Filed 07/16/20 Page 7 of 32
`
`various services (e.g., cellular or WiFi). But conventional methods for switching among the
`
`communication interfaces were based on availability and favorability of a particular
`
`communication interface. Further, the use of such communication interfaces could be affected
`
`when the mobile devices were traveling at a high rate of speed (e.g., in a train or car). Because
`
`availability and favorability of communication interfaces is affected by movement of the mobile
`
`device, conventional methods caused communication instability by relying on just these factors
`
`when switching between communication interfaces.
`
`20.
`
`The ’517 Patent solved the problem of communication instability by selecting a
`
`suitable physical interface based on three factors: (1) communication interface availability; (2)
`
`device movement speed; and (3) position of the mobile device. The combination of these three
`
`factors ensures that switching between communication interfaces does not cause connection
`
`instability by only causing the switch when the conditions favor a better connection after the switch
`
`instead of causing unnecessary and frequent switching, For example, if the mobile device is
`
`moving at a high speed, the mobile device embodying the invention of the ’517 Patent may make
`
`a determination to not switch communication interfaces even if another communication interface
`
`becomes available because this interface may only be available for a short period of time due to
`
`the moving speed of the mobile device.
`
`21.
`
`Apple has directly infringed one or more claims of the ’517 Patent in this District
`
`and elsewhere in Texas, including at least claims 9-10 literally and/or under the doctrine of
`
`equivalents, by or through making, using, importing, offering for sale and/or selling its
`
`telecommunications technology, including at least Apple products having wireless functionality
`
`running materially similar software to iOS 12/13/14, including, without limitation, the iPhone 7
`
`(A1660/A1778), iPhone 7 Plus (A1661/A1784), iPhone 8 (A1863/A1905), iPhone 8 Plus
`
`
`
`7
`
`

`

`Case 6:20-cv-00646-ADA Document 1 Filed 07/16/20 Page 8 of 32
`
`(A1864/A1897), iPhone XR (A1984), Apple iPhone XS (A1920), iPhone XS Max (A1921),
`
`iPhone 11 (A2111), iPhone 11 Pro (A2160), iPhone 11 Pro Max (A2161), iPhone SE
`
`(A1662/A1723/A2275/A2296), Apple Watch Series 5 (A2094/A2095), Apple Watch Series 3
`
`(A1860/A1861), iPad mini 5 (A2124/A2126), iPad Pro (11”) (A2013/A2068/A2230), iPad 7th
`
`generation (A2198/A2200), iPad 6th generation (A1954), iPad Pro (12.9”) (3rd /4th generation)
`
`(A2014/A1895/A2229/A2069/A2232), and iPad Air 3 (A2123/A2153) (collectively, “the ’517
`
`Accused Products”). Attached as Exhibit 6 is a representative claim chart for the ’517 Accused
`
`Products showing infringement of claims 9-10 of the ’517 Patent by exemplary ’517 Accused
`
`Products. Maxell reserves the right to discover and pursue any additional infringing devices that
`
`incorporate infringing functionalities. For the avoidance of doubt, the ’517 Accused Products are
`
`identified to describe Apple’s infringement and in no way limit the discovery and infringement
`
`allegations against Apple concerning other devices that incorporate the same or reasonably similar
`
`functionalities.
`
`22.
`
`Apple has indirectly infringed at least claims 9-10 of the ’517 Patent in this District
`
`and elsewhere in the United States by, among other things, actively inducing the use, offering for
`
`sale, selling, or importation of at least the ’517 Accused Products. Apple’s customers who purchase
`
`devices and components thereof and operate such devices and components in accordance with
`
`Apple’s instructions directly infringe one or more claims of the ’517 Patent in violation of 35
`
`U.S.C. § 271. Apple instructs its customers through at least user guides or websites, such as those
`
`located
`
`at:
`
`https://support.apple.com/en_US/manuals
`
`or
`
`https://support.apple.com/en-
`
`us/HT205296. For example, on its website, Apple instructs its customers to use “Wi-Fi Assist”
`
`and makes sure that “Wi-Fi Assist is on by default”:
`
`
`
`8
`
`

`

`Case 6:20-cv-00646-ADA Document 1 Filed 07/16/20 Page 9 of 32
`
`
`
`See https://support.apple.com/en-us/HT205296. Exhibit 6 provides additional citations to, and
`
`excerpts from, exemplary relevant Apple web pages that demonstrate Apple’s specific intent for
`
`its customers to use the accused functionality in an infringing manner. Apple is thereby liable for
`
`infringement of the ’517 Patent pursuant to 35 U.S.C. § 271(b).
`
`23.
`
`Apple has indirectly infringed at least claims 9-10 of the ’517 Patent, by, among
`
`other things, contributing to the direct infringement of others, including customers of the ’517
`
`Accused Products by making, offering to sell, or selling, in the United States, or importing a
`
`component of a patented machine, manufacture, or combination, or an apparatus for use in
`
`practicing a patented process, constituting a material part of the invention, knowing the same to be
`
`especially made or especially adapted for use in infringement of the ’517 Patent, and not a staple
`
`article or commodity of commerce suitable for substantial non-infringing use.
`
`24.
`
`For example, the ’517 Accused Products include hardware (Wi-Fi chipset, cellular
`
`chipset, transceivers, A12 processor, antennas, and accelerometer) and software (Wi-Fi assist
`
`
`
`9
`
`

`

`Case 6:20-cv-00646-ADA Document 1 Filed 07/16/20 Page 10 of 32
`
`software, iOS software to switch between Wi-Fi and cellular connection, cellular modem software
`
`to determine mobility state). These are components of a patented machine, manufacture, or
`
`combination, or an apparatus for use in practicing a patented process. Furthermore, such
`
`components are a material part of the invention and upon information and belief are not a staple
`
`article or commodity of commerce suitable for substantial non-infringing use. Thus, Apple is liable
`
`for infringement of the ’517 Patent pursuant to 35 U.S.C. § 271(c).
`
`25.
`
`Apple has been on notice of the ’517 Patent since, at least, May 17, 2018 based on
`
`correspondence directed to Principal Counsel Heather Mewes at Apple. That correspondence set
`
`forth Maxell’s belief that Apple makes, uses, sells, offers to sell, or imports products that infringe
`
`certain of Maxell’s patents, and specifically identified the ’517 Patent as well as exemplary
`
`asserted claims and exemplary accused products for that patent. By the time of trial, Apple will
`
`thus have known and intended (since receiving such notice), that its continued actions would
`
`actively induce and contribute to actual infringement of at least claims 9-10 of the ’517 Patent.
`
`26.
`
`Apple undertook and continued its infringing actions despite an objectively high
`
`likelihood that such activities infringed the ’517 Patent, which has been duly issued by the USPTO,
`
`and is presumed valid. For example, since, at least May 17, 2018, Apple has been aware of an
`
`objectively high likelihood that its actions constituted and continue to constitute infringement of
`
`the ’517 Patent, and that the ’517 Patent is valid. On information and belief, Apple could not
`
`reasonably, subjectively believe that its actions do not constitute infringement of the ’517 Patent,
`
`nor could it reasonably, subjectively believe that the patent is invalid. Despite that knowledge and
`
`subjective belief, and the objectively high likelihood that its actions constitute infringement, Apple
`
`has continued its infringing activities. As such, Apple willfully infringes the ’517 Patent.
`
`27. Maxell has been damaged by Apple’s infringement of the ’517 Patent.
`
`
`
`10
`
`

`

`Case 6:20-cv-00646-ADA Document 1 Filed 07/16/20 Page 11 of 32
`
`COUNT 2 - INFRINGEMENT OF U.S. PATENT NO. 8,982,086
`
`28. Maxell incorporates paragraphs 1-27 above by reference.
`
`29.
`
`U.S. Patent No. 8,982,086 (the “’086 Patent,” attached hereto at Exhibit 2) duly
`
`issued on March 17, 2015 and is entitled Information Processing Apparatus.
`
`30. Maxell is the owner by assignment of the ’086 Patent and possesses all rights under
`
`the ’086 Patent, including the exclusive right to recover for past and future infringement.
`
`31.
`
`The ’086 Patent discloses techniques for unlocking information processing devices,
`
`such as smartphones, with convenience. For example, prior to the ’086 Patent, one way of
`
`unlocking devices was by inputting a passcode that was preset by a user. This process would be
`
`time consuming and would require the user to memorize the passcode. Further, if the user has
`
`multiple devices he or she would need to memorize different passcodes or have the same passcode
`
`on all of the devices but increase the risk of the security breach of all the devices if another user
`
`learnt of the passcode.
`
`32.
`
`The ’086 Patent allowed users to conveniently execute an unlock operation on their
`
`devices by using the tip or pad of their fingers as shown below in Figure 11A of the ’086 Patent:
`
`
`
`
`
`11
`
`

`

`Case 6:20-cv-00646-ADA Document 1 Filed 07/16/20 Page 12 of 32
`
`33.
`
`Further, the ’086 patent also allows users to associate specific operations with their
`
`fingertip and finger pad such that when a user uses his or her fingertip the device recognizes that
`
`the user is entering an input via the fingertip and executes a corresponding operation. This is further
`
`shown in Figure 12B of the ’086 patent:
`
`
`
`34.
`
`Apple has directly infringed one or more claims of the ’086 Patent in this District
`
`and elsewhere in Texas, including at least claims 1-4 literally and/or under the doctrine of
`
`equivalents, by or through making, using, importing, offering for sale and/or selling its
`
`telecommunications technology, including at least the iPhone 7 (A1660/A1778), iPhone 7 Plus
`
`(A1661/A1784), iPhone 8 (A1863/A1905), iPhone 8 Plus (A1864/A1897), iPhone SE
`
`(A1662/A1723/A2275/A2296), iPad mini 5 (A2133/A2124/A2126), iPad 6th generation
`
`(A1893/A1954), iPad 7th Generation (A2197/A2200), iPad Air 3 (A2152/A2123/A2153),
`
`MacBook Pro (16,3), MacBook Pro (16,2), MacBook Pro (16,1), MacBook Pro (15,4), MacBook
`
`Pro (15,1), MacBook Pro (15,2), MacBook Air (7,2), MacBook Air (8,1), MacBook Air (8,2), and
`
`MacBook Air (9,1) (collectively, “the ’086 Accused Products”). Attached as Exhibit 7 is a
`
`representative claim chart for the ’086 Accused Products showing infringement of claims 1-4 of
`
`the ’086 Patent by exemplary ’086 Accused Products. Maxell reserves the right to discover and
`
`
`
`12
`
`

`

`Case 6:20-cv-00646-ADA Document 1 Filed 07/16/20 Page 13 of 32
`
`pursue any additional infringing devices that incorporate infringing functionalities. For the
`
`avoidance of doubt, the ’086 Accused Products are identified to describe Apple’s infringement
`
`and in no way limit the discovery and infringement allegations against Apple concerning other
`
`devices that incorporate the same or reasonably similar functionalities
`
`35.
`
`Apple has indirectly infringed at least claims 1-4 of the ’086 Patent in this District
`
`and elsewhere in the United States by, among other things, actively inducing the use, offering for
`
`sale, selling, or importation of at least the ’086 Accused Products. Apple’s customers who purchase
`
`devices and components thereof and operate such devices and components in accordance with
`
`Apple’s instructions directly infringe one or more claims of the ’086 Patent in violation of 35
`
`U.S.C. § 271. Apple instructs its customers through at least user guides or websites, such as those
`
`located
`
`at:
`
`https://support.apple.com/en_US/manuals
`
`or
`
`https://support.apple.com/en-
`
`us/HT201371. For example, on its website, Apple instructs its customers to “Set up Touch ID”
`
`and “Use Touch ID”:
`
`
`
`
`
`13
`
`

`

`Case 6:20-cv-00646-ADA Document 1 Filed 07/16/20 Page 14 of 32
`Case 6:20-cv-00646—ADA Document 1 Filed 07/16/20 Page 14 of 32
`
`Set up Touch ID
`Beforeyoucan setup IoucnlD,youneedtocreatea passcode foryourdeyiceflnenfonowtnese steps:
`1. Make sure that the Home buttonand your fingerare cleanand dry.
`2. lap Settings > touch "33; Passcode.tnenen1eryuour basscode.
`3. lab Add a l- inger brim aid hold your deuiceas you normarya would '«nentouching the Home button.
`a. loucnt ne Home button witn your finger—b utdon‘t Dress. Hold it there untilyou feel a quick vibration.
`or until you're asked to lift your finger.
`
`
`
`.iw —uu—unun——
`firm
`
`Place Your Finger
`Lilt m: 'csl y-aurrigc- cum: Hnmc
`lulu" IWJII.
`
`
`
`
`
`Use Touch ID to unlock your iPhone or make purchases
`Mter will set up ltmrzlr ll), yml can use Innull II) In unlock your iPiIHIIH. Just press "In I IIIIIIP. bullun using
`the finger you registered with Touch ID.
`
`
`
`.
`
`Make purchases with Touch ID
`YIIII can use lunch ll) infill-.ad of your Apple II) password
`to make purchases in the iTunes Store. App Store,
`and Apple Books. Just follow these steps:
`‘I. Make sure iTunes 3. App Store is turned on under
`Settings ) luuclr II) It. Pasrvrzude. If you narr'l IIIIn il on,
`you might need to sign in with your Apple ID in Settings
`) i Illnes 8. App Store.
`2. Open the iTums Store, App Store. or Apple Books.
`3. Tap something to buy. You'll see a Touch ID prompt.
`4. To make a purchase, lightly touch the Home button.
`
`Use Touch ID [or Apple Pay
`with an iPhone 6 or iPhone 6 Plus or later, you can use
`Touch ID to make Apple Pay purchases in stores, within
`
`apps, and on websites In Safan. You can also use Touch
`ID on your iPhone to complete website purchases from
`your Mac. If you have an iPad Pro, iPad Air 2 or iPad Mini 3
`
`i‘rm 51m:
`
`I mssrmosm‘rsall
`.
`tmzsesmuu
`
`mi
`
`$1439
`
`within apps and Mn websites in Safari.
`
`or later, you can use Touch ID to! Apple Pay purchases
`
`Par wilh Mum
`
`Net-NI help using] Intruh ll)?
`
`
`
`
`
`14
`14
`
`

`

`Case 6:20-cv-00646-ADA Document 1 Filed 07/16/20 Page 15 of 32
`
`
`
`See https://support.apple.com/en-us/HT201371; https://support.apple.com/guide/mac-help/touch-
`
`id-mchl16fbf90a/mac. Exhibit 7 provides additional citations to, and excerpts from, exemplary
`
`relevant Apple web pages that demonstrate Apple’s specific intent for its customers to use the
`
`accused functionality in an infringing manner. Apple is thereby liable for infringement of the ’086
`
`Patent pursuant to 35 U.S.C. § 271(b)
`
`36.
`
`Apple has indirectly infringed at least claims 1-4 of the ’086 Patent, by, among
`
`other things, contributing to the direct infringement of others, including customers of the ’086
`
`Accused Products by making, offering to sell, or selling, in the United States, or importing a
`
`component of a patented machine, manufacture, or combination, or an apparatus for use in
`
`practicing a patented process, constituting a material part of the invention, knowing the same to be
`
`especially made or especially adapted for use in infringement of the ’086 Patent, and not a staple
`
`article or commodity of commerce suitable for substantial non-infringing use.
`
`37.
`
`For example, the ’086 Accused Products include hardware (finger print sensor,
`
`application processor, and display) and software (Touch ID software). These are components of a
`
`patented machine, manufacture, or combination, or an apparatus for use in practicing a patented
`
`
`
`15
`
`

`

`Case 6:20-cv-00646-ADA Document 1 Filed 07/16/20 Page 16 of 32
`
`process. Furthermore, such components are a material part of the invention and upon information
`
`and belief are not a staple article or commodity of commerce suitable for substantial non-infringing
`
`use. Thus, Apple is liable for infringement of the ’086 Patent pursuant to 35 U.S.C. § 271(c)
`
`38.
`
`Apple has been on notice of the ’086 Patent since, at least, May 17, 2018 based on
`
`correspondence directed to Principal Counsel Heather Mewes at Apple. That correspondence set
`
`forth Maxell’s belief that Apple makes, uses, sells, offers to sell, or imports products that infringe
`
`certain of Maxell’s patents, and specifically identified the ’086 Patent as well as exemplary
`
`asserted claims and exemplary accused products for that patent. By the time of trial, Apple will
`
`thus have known and intended (since receiving such notice), that its continued actions would
`
`actively induce and contribute to actual infringement of at least claims 1-4 of the ’086 Patent.
`
`39.
`
`Apple undertook and continued its infringing actions despite an objectively high
`
`likelihood that such activities infringed the ’086 Patent, which has been duly issued by the USPTO,
`
`and is presumed valid. For example, since, at least May 17, 2018, Apple has been aware of an
`
`objectively high likelihood that its actions constituted and continue to constitute infringement of
`
`the ’086 Patent, and that the ’086 Patent is valid. On information and belief, Apple could not
`
`reasonably, subjectively believe that its actions do not constitute infringement of the ’086 Patent,
`
`nor could it reasonably, subjectively believe that the patent is invalid. Despite that knowledge and
`
`subjective belief, and the objectively high likelihood that its actions constitute infringement, Apple
`
`has continued its infringing activities. As such, Apple willfully infringes the ’086 Patent.
`
`40. Maxell has been damaged by Apple’s infringement of the ’086 Patent.
`
`COUNT 3 - INFRINGEMENT OF U.S. PATENT NO. 7,199,821
`
`41. Maxell incorporates paragraphs 1-40 above by reference.
`
`
`
`16
`
`

`

`Case 6:20-cv-00646-ADA Document 1 Filed 07/16/20 Page 17 of 32
`
`42.
`
`U.S. Patent No. 7,199,821 (the “’821 Patent,” attached hereto at Exhibit 3) duly
`
`issued on April 3, 2007 and is entitled Imaging Apparatus and Method for Controlling White
`
`Balance.
`
`43. Maxell is the owner by assignment of the ’821 Patent and possesses all rights under
`
`the ’821 Patent, including the exclusive right to recover for past and future infringement.
`
`44.
`
`The ’821 patent is directed to an imaging apparatus that has the ability to capture
`
`pictures with the correct color effect. Specifically, in order for a camera to capture and generate a
`
`picture of high quality with proper color, the camera needs to balance the different portions of the
`
`image. For example, if the camera is photographing a subject that is wearing a white shirt and has
`
`a colorful background, the camera will need to process the image signals in such a way that the
`
`white portion of the image is balanced with the colorful portion. This processing is referred to as
`
`white balancing of an image or white balance correction.
`
`45.
`
`Conventional techniques prior to the ’821 patent performed white balance
`
`corrections by constructing a feedback loop such that signals corresponding to the white portion
`
`and colored portions are distinguished to detect a white balance deviation and this detected
`
`deviation is then used to adjust the signals corresponding to the colored portions. But this technique
`
`does not create pictures of high quality under all conditions as the detected deviation may not be
`
`accurate if the colored portions of the image include a large part of the picture. Further, this
`
`technique does not account for additional variations during photography including brightness of
`
`the object being photographed, distance of the object from the camera, and zoom value.
`
`46.
`
`The ’821 patent solves these problems by implementing white balance correction
`
`that takes into account the distance of the object being photographed, a zoom value, and brightness
`
`of the object being photographed. For example, the ’821 patent discloses an imaging apparatus
`
`
`
`17
`
`

`

`Case 6:20-cv-00646-ADA Document 1 Filed 07/16/20 Page 18 of 32
`
`that includes an object distance detecting means, a zoom detecting means, and a brightness
`
`detecting means such that the apparatus corrects the white balance of the image signals based on
`
`the detected brightness, zoom, and distance values. Incorporating such a white balance correction
`
`technique ensures that the imaging apparatus generates high quality pictures despite varying
`
`conditions and control parameters.
`
`47.
`
`Apple has directly infringed one or more claims of the ’821 Patent in this District
`
`and elsewhere in Texas, including at least claims 1, 4, 6, and 7 literally and/or under the doctrine
`
`of equivalents, by or through making, using, importing, offering for sale and/or selling its
`
`telecommunications technology, including at least Apple products having functionality running
`
`materially similar software to iOS 12/13/14, including, without limitation, the Apple iPhone XS
`
`(A1920), iPhone XS Max (A1921), iPhone XR (A1984), iPhone 11 (A2111), iPhone 11 Pro
`
`(A2160), iPhone 11 Pro Max (A2161), iPhone SE (A1662/A1723/A2275/A2296), iPhone 8 Plus
`
`(A1864/A1897), iPhone 8 (A1863/ A1905), iPhone 7 Plus (A1661/A1784), iPhone 7
`
`(A1660/A1778), as well as the iPad mini (5th gen.) (A2133/A2124/A2126), iPad Pro (12.9”) (3rd /
`
`4th generation) (A1876/A2014/A2229/A2069/A2232), iPad Pro 11” (A1980/A2013/A2068/
`
`A2230), iPad (6th generation) (A1893/A1954), iPad (7th generation) (A2200/A2198), iPad Air (3rd
`
`gen.) (A2152/A2123/A2153), MacBook (10,1), MacBook Pro (15,1), MacBook products
`
`(MacBook (10,1), MacBook Pro (15,1), MacBook Pro (15,2), MacBook Pro (15,4), MacBook Pro
`
`(16,1), MacBook Pro (16,2), MacBook Pro (16