Case 6:21-cv-00040-ADA Document 1 Filed 01/15/21 Page 1 of 58
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`
`
`
`
`
`TRANSCEND SHIPPING SYSTEMS, LLC,
`
`Plaintiff,
`
`
`
`
`
`
` v.
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`MEDITERRANEAN SHIPPING
`COMPANY S.A.,
`
`Defendant.
`
`
`Case No. 6:21-cv-0040
`
`JURY TRIAL DEMANDED
`
`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`
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`Transcend Shipping Systems, LLC (“Transcend”) hereby files this Original Complaint
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`for Patent Infringement against Mediterranean Shipping Company S.A. (“MSC”), and alleges,
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`upon information and belief, as follows:
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`THE PARTIES
`
`1.
`
`Transcend is a limited liability company organized and existing under the laws of the State of
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`Florida with its principal place of business at 600 S. Dixie Highway, Suite 605, West Palm
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`Beach, Florida 33401.
`
`2.
`
`Upon information and belief, Mediterranean Shipping Company S.A. is a limited liability
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`company organized and existing under the laws of Switzerland with its principal office at
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`Chemin Rieu 12-14, 1208 Geneva Switzerland.
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`3.
`
`Upon information and belief, Mediterranean Shipping Company (USA) Inc. is a corporation
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`organized and existing under the laws of the State of New York with its principal office at
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`420 5th Avenue, 8th Floor, New York, New York 10018-2702. Upon information and belief,
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`

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`Case 6:21-cv-00040-ADA Document 1 Filed 01/15/21 Page 2 of 58
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`Mediterranean Shipping Company (USA) Inc. also maintains an office in Texas at 4700 W
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`Sam Houston Parkway N., Suite 250, Houston, Texas 77041.
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`JURISDICTION AND VENUE
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`4.
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`5.
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`Subject matter jurisdiction is proper under 28 U.S.C. §§ 1331, 1332, 1338, and 1367.
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`The Court has personal jurisdiction under the Texas Long Arm Statute and the Due Process
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`Clause of the U.S. Constitution over MSC because they are present within or have minimum
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`contacts within the State of Texas, including the Western District of Texas.
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`6. MSC has sought protection and benefit from the laws of the State of Texas; MSC regularly
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`conduct business within the State of Texas and within the Western District of Texas; and
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`Plaintiff’s cause of action arises directly from MSC’s business contacts and other activities in
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`the State of Texas and in the Western District of Texas.
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` More specifically, MSC, directly and/or through intermediaries, ship, distribute, use, offer
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`for sale, sell, and/or advertise products and services in the United States, the State of Texas,
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`and the Western District of Texas including but not limited to the Accused Instrumentalities
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`as detailed below. Upon information and belief, MSC has committed patent infringement in
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`the State of Texas and in the Western District of Texas. MSC solicits and has solicited
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`customers in the State of Texas and in the Western District of Texas. MSC has paying
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`customers, who are residents of the State of Texas and the Western District of Texas, who
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`each use and have used the MSC’s products and services in the State of Texas and in the
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`Western District of Texas.
`
`7.
`
`As an example, Mediterranean Shipping Company (USA) Inc. (“MSC USA”), which is
`
`affiliated with MSC, is a corporation organized and existing under the laws of the State of
`
`New York with its principal office at 420 5th Avenue, 8th Floor, New York, New York
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`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`PAGE | 2
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`

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`Case 6:21-cv-00040-ADA Document 1 Filed 01/15/21 Page 3 of 58
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`10018-2702. MSC USA also maintains an office in Texas at 4700 W Sam Houston Parkway
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`N., Suite 250, Houston, Texas 77041. (See Figure 1A below).
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`
`
`
`
`Figure 1A1
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`
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`8. MSC indicates on its website that “[MSC USA] . . . with offices in . . . Houston, TX . . . is
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`General Agent in U.S.A. for [MSC]” and that “MSC USA is authorized to accept service of
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`legal proceedings issued against [MSC].” (See Figure 1B below).
`
`
`1 Source, as visited on January 15, 2021: https://www.msc.com/usa/contact-us/msc-houston
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`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`PAGE | 3
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`

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`Case 6:21-cv-00040-ADA Document 1 Filed 01/15/21 Page 4 of 58
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`
`
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`Figure 1B2
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`
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`9. MSC also states in its website that “[a]ny and all cargo booked by MSC USA [including
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`cargo booked by its office in Houston, TX] is for and on behalf of [MSC].” (See Figure 1
`
`above).
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`10. Upon information and belief, the registered agent for MSC USA in Texas is Corporation
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`Service Company d/b/a CSC-Lawyers Incorporating Service Company at 211 E. 7th Street,
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`Suite 620, Austin, Texas 78701-3136.
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`11. Venue is proper pursuant to 28 U.S.C. §§ 1391 and 1400(b).
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`12. Venue is also proper in this judicial district pursuant to 28 U.S.C. §§ 1391(c)(3) because
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`Defendant Mediterranean Shipping Company S.A. is not a resident of the United States and
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`therefore may be sued in any judicial district.
`
`
`
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`2 Source, as visited on January 15, 2021: https://www.msc.com/usa/contract-of-carriage/agency-
`terms-conditions?lang=en-gb
`
`
`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`PAGE | 4
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`

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`Case 6:21-cv-00040-ADA Document 1 Filed 01/15/21 Page 5 of 58
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`PATENTS-IN-SUIT
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`13. Transcend Shipping Systems, LLC is the sole and exclusive owner, by assignment, of U.S.
`
`Patent Nos. 7,253,731 (“the ’731 Patent”); 7,482,920 (“the ’920 Patent”); 9,847,029 (“the
`
`’029 Patent”); 10,181,109 (“the ’109 Patent”); and 10,796,268 (“the ’268 Patent”)
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`(hereinafter collectively referred to as “the Transcend Patents”).
`
`14. The Transcend Patents are valid, enforceable, and were duly issued in full compliance with
`
`Title 35 of the United States Code.
`
`15. The Transcend Patents each include numerous claims defining distinct inventions.
`
`16. The priority date of each of the Transcend Patents is at least as early January 23, 2001. As of
`
`the priority date, the inventions as claimed were novel, non-obvious, unconventional, and
`
`non-routine.
`
`17.
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`Plaintiff alleges infringement on the part of MSC of each of the Transcend Patents.
`
`18. The ’731 Patent relates generally to an apparatus, including a shipment conveyance device,
`
`associated with a shipment, which is a shipping a container, pallet, or tote, a memory device,
`
`located at the shipment conveyance device, in which information regarding the shipment is
`
`stored, a global positioning device, located at the shipment conveyance device, which
`
`determines a position or location of the shipment conveyance device, a processing device
`
`which processes information regarding the shipment and/or shipment conveyance device in
`
`response to an occurrence of an event or in response to a request for information and
`
`generates a message containing information regarding the position or location of the
`
`shipment conveyance device and information regarding the occurrence of an event, a status
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`of the shipment, a shipment temperature, or an impact or force on the shipment conveyance
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`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`PAGE | 5
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`Case 6:21-cv-00040-ADA Document 1 Filed 01/15/21 Page 6 of 58
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`device, and a transmitter, located at the shipment conveyance device, which transmits the
`
`message to a communication device. See Abstract, ’731 Patent.
`
`19. The ’920 Patent relates generally to an apparatus, including a shipment conveyance device
`
`which is a shipping container, pallet, piece of luggage, or tote, a memory device located in,
`
`on, or at, the shipment conveyance device which stores information regarding the shipment
`
`conveyance device, a global positioning device located in, on, or at, the shipment conveyance
`
`device which determines a position or location of the shipment conveyance device, a
`
`processing device which processes information regarding the shipment conveyance device in
`
`response to an occurrence of an event or a request for information and which generates a
`
`message containing information regarding the position or location of the shipment
`
`conveyance device and information regarding the occurrence of an event, a status of a
`
`shipment or transportation involving the shipment conveyance device, a temperature, or an
`
`impact or force on the shipment conveyance device, and a transmitter located in, on, or at, the
`
`shipment conveyance device which transmits the message to a communication device. See
`
`Abstract, ’920 Patent.
`
`20. The ’029 Patent relates generally to an apparatus, including a shipment conveyance device
`
`which is a shipping container, pallet, or piece of luggage, a memory device located in, on, or
`
`at, the shipment conveyance device which stores information regarding the shipment
`
`conveyance device, a global positioning device which determines a position or location of the
`
`shipment conveyance device, a processing device which processes information regarding the
`
`shipment conveyance device in response to an occurrence of an event or a request for
`
`information and which generates a message containing information regarding the position or
`
`location of the shipment conveyance device and information regarding the occurrence of an
`
`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`PAGE | 6
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`Case 6:21-cv-00040-ADA Document 1 Filed 01/15/21 Page 7 of 58
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`event, a status of a shipment or transportation involving the shipment conveyance device, a
`
`temperature, or an impact or force on the shipment conveyance device, and a transmitter
`
`located in, on, or at, the shipment conveyance device which transmits the message to a
`
`communication device. See Abstract, ’029 Patent.
`
`21. The ’109 Patent relates generally to an apparatus, including a shipment conveyance device,
`
`wherein the shipment conveyance device is a shipping container, pallet, or piece of luggage;
`
`a receiver; a global positioning device which is located in, on, or at, the shipment conveyance
`
`device and which determines a position or location of the shipment conveyance device; a
`
`processor which generates a message in response to an occurrence of an event or in response
`
`to a request for information regarding the shipment conveyance device, wherein the request
`
`for information is automatically received by the receiver, wherein the message contains
`
`information regarding a position or location of the shipment conveyance device; and a
`
`transmitter which is located in, on, or at, the shipment conveyance device and which
`
`transmits the message to a communication device associated with an owner of the shipment
`
`conveyance device or an individual authorized to receive the message. See Abstract, ’109
`
`Patent.
`
`22. The ’268 Patent relates generally to an apparatus, including a shipment conveyance device
`
`which is a shipping container, a pallet, or a piece of luggage; a global positioning device,
`
`located in, on, or at, the shipment conveyance device, which determines a position or location
`
`of the shipment conveyance device; a processor which generates a message in response to an
`
`occurrence of an event or in response to a request for information regarding the shipment
`
`conveyance device which request is automatically received by a receiver, and which message
`
`contains information regarding a shipment of the shipment conveyance device; and a
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`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`PAGE | 7
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`Case 6:21-cv-00040-ADA Document 1 Filed 01/15/21 Page 8 of 58
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`transmitter, located in, on, or at, the shipment conveyance device, which transmits the
`
`message to a communication device associated with an owner of the shipment conveyance
`
`device or an individual authorized to receive the message. See Abstract, ’268 Patent.
`
`23. The claims of the Transcend Patents are not drawn to laws of nature, natural phenomena, or
`
`abstract ideas. Although the systems and methods claimed in the Transcend Patents are
`
`ubiquitous now (and, as a result, are widely infringed), the specific combinations of
`
`elements, as recited in the claims, was not conventional or routine at the time of the
`
`invention.
`
`24. The ’731 Patent was examined by Primary United States Patent Examiner Van T. Trieu.
`
`During the examination of the ’731 Patent, the United States Patent Examiner searched for
`
`prior art in the following US Classifications: 340/539.13, 340/568.1 and 340/572.1.
`
`25. After conducting searches for prior art during the examination of the ’731 Patent, the United
`
`States Patent Examiner identified and cited the following as the most relevant prior art
`
`references found during the searches: (i) US 3,669,288, 06/1972, Young; (ii) US 5,317,323,
`
`05/1994, Kennedy et al.; (iii) “Envirokare announces letter of intent with Electroship . . .” 2
`
`page Envirokare press release dated Jul. 25, 2000”; (iv) US 5,825,283, 10/1998, Camhi; (v)
`
`US 6,044,990, 04/2000, Palmeri; (vi) US 6,464,142, 10/2002, Denenberg et al.; (vii) US
`
`2002/0017996, 02/2002, Niemiec; (viii) FR 2816434, 05/2002, Touzet; (ix) US 5,877,707,
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`03/1999, Kowalick; (x) US 5,917,405, 06/1999, Joao; (xi) US 5,917,434, 06/1999, Murphy;
`
`(xii) US 6,046,678, 04/2000, Wilk; (xiii) US 6,148,291, 11/2000, Radican; (xiv) US
`
`6,281,797, 08/2001, Forster et al.; (xv) US 6,292,828, 09/2001, Williams; (xvi) US
`
`6,332,098, 12/2001, Ross et al.; (xviii) US 6,474,927, 11/2002, McAdams et al.; (xix) US
`
`6,542,076, 04/2003, Joao; (xx) US 6,542,077, 04/2003, Joao; (xxi) US 6,549,130, 04/2003,
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`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`PAGE | 8
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`Case 6:21-cv-00040-ADA Document 1 Filed 01/15/21 Page 9 of 58
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`Joao; (xxii) US 6,587,046, 07/2003, Joao; (xxiii) US 6,610,954, 08/2003, Takizawa; (xxiv)
`
`US 6,844,473, 01/2005, Quinlin et al.; (xxv) US 2002/0016655, 02/2002, Joao; (xxvi) US
`
`2002/0049622, 04/2002, Lettich et al.; (xxvi) US 2002/0049622, 04/2002, Lettich et al.;
`
`(xxvii) US 2002/0116318, 08/2002, Thomas et al.; (xxviii) US 2002/0121969, 09/2002, Joao;
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`(xxix) US 2002/0198774, 12/2002, Weirich; (xxx) US 2003/0009361, 01/2003, Hancock et
`
`al.; (xxxi) US 2003/0016130, 01/2003, Joao; (xxxii) US 2003/0067541, 04/2003, Joao;
`
`(xxxiii) US 2003/0071899, 04/2003, Joao; (xxxiv) US 2003/0084125, 05/2003, Nagda et al.;
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`(xxxv) US 2003/0193404, 10/2003, Joao; (xxxvi) US 2003/0206102, 11/2003, Joao; (xxxvii)
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`US 2004/0160319, 08/2004, Joao; (xxxviii) US 2004/0230601, 11/2004, Joao; (xxxix) US
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`2005/0171835, 08/2005, Mook et al.; (xxxx) US 2005/0248444, 11/2005, Joao; (xxxxi)
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`“Technology Executive . . . joins Envirokare as president and Director”, 2 page Envirokare
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`press release dated Sep. 5, 2000; and (xxxxii) “Envirokare Tech Inc. announces additions to
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`advisory board”, 3 page Envirokare press release dated Sep. 7, 2000.
`
`26. After giving full proper credit to the prior art and having conducted a thorough search for all
`
`relevant art and having fully considered the most relevant art known at the time, the United
`
`States Patent Examiner allowed all of the claims of the ’731 Patent to issue. In so doing, it is
`
`presumed that Examiner Trieu used his or her knowledge of the art when examining the
`
`claims. K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1369 (Fed. Cir. 2014). It is
`
`further presumed that Examiner Trieu has experience in the field of the invention, and that
`
`the Examiner properly acted in accordance with a person of ordinary skill. In re Sang Su
`
`Lee, 277 F.3d 1338, 1345 (Fed. Cir. 2002).
`
`27. The ’731 Patent is a pioneering patent, and has been cited as relevant prior art in over 130
`
`subsequent United States Patent Applications, including Applications assigned to technology
`
`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`PAGE | 9
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`Case 6:21-cv-00040-ADA Document 1 Filed 01/15/21 Page 10 of 58
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`and business leaders such as Google, Inc., AT&T, FedEx, Qualcomm, Inc., Fujitsu, Ltd.,
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`United Parcel Services of America, American Airlines and NEC Corp.
`
`28. The ’920 Patent was examined by Primary United States Patent Examiner Van T. Trieu.
`
`During the examination of the ’920 Patent, the United States Patent Examiner searched for
`
`prior art in the following US Classifications: 340/539.11, 340/568.1 and 340/572.1.
`
`29. After conducting searches for prior art during the examination of the ’731 Patent, the United
`
`States Patent Examiner identified and cited the following as the most relevant prior art
`
`references found during the searches: (i) US 5,825,283, 10/1998, Camhi; (ii) US 6,046,678,
`
`04/2000, Wilk; (iii) US 6,148,291, 11/2000, Radican; (iv) US 6,323,782, 11/2001, Stephens
`
`et al.; (v) US 6,429,810, 08/2002, De Roche; (vi) US 6,610,954, 08/2003, Takizawa; (vii) US
`
`6,745,027, 06/2004, Twitchell, Jr.; and (viii) US 6,882,269, 04/2005, Moreno.
`
`30. After giving full proper credit to the prior art and having conducted a thorough search for all
`
`relevant art and having fully considered the most relevant art known at the time, the United
`
`States Patent Examiner allowed all of the claims of the ’920 Patent to issue. In so doing, it is
`
`presumed that Examiner Trieu used his or her knowledge of the art when examining the
`
`claims. K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1369 (Fed. Cir. 2014). It is
`
`further presumed that Examiner Trieu has experience in the field of the invention, and that
`
`the Examiner properly acted in accordance with a person of ordinary skill. In re Sang Su
`
`Lee, 277 F.3d 1338, 1345 (Fed. Cir. 2002).
`
`31. The ’920 Patent is a pioneering patent, and has been cited as relevant prior art in over 130
`
`subsequent United States Patent Applications, including Applications assigned to technology
`
`and business leaders such as Google, Inc., AT&T, FedEx, Qualcomm, Inc., Fujitsu, Ltd.,
`
`United Parcel Services of America, American Airlines and NEC Corp.
`
`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`PAGE | 10
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`Case 6:21-cv-00040-ADA Document 1 Filed 01/15/21 Page 11 of 58
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`32. The ’029 Patent was examined by Primary United States Patent Examiner Van T. Trieu.
`
`During the examination of the ’029 Patent, the United States Patent Examiner searched for
`
`prior art in the following US Classifications: G08G 1/20, G01S 13/84, G06Q 10/08, G06Q
`
`10/087, G08B 1/08, G08G 1/202, G08G 1/205, H04W 4/02, and H04W 4/021.
`
`33. After conducting searches for prior art during the examination of the ’029 Patent, the United
`
`States Patent Examiner identified and cited the following as the most relevant prior art
`
`references found during the searches: (i) US 5,640,002, 06/1997, Ruppert et al.; (ii) US
`
`5,825,283, 10/1998, Camhi; (iii) US 5,959,568, 09/1999, Woolley; (iv) US 6,046,678,
`
`04/2000, Wilk; (v) US 6,148,291, 11/2000, Radican; (vi) US 6,281,797, 08/2001, Forster et
`
`al.; (vii) US 6,304,856, 10/2001, Soga; (viii) US 6,356,802, 03/2002, Takehara; (ix) US
`
`6,411,891, 06/2002, Jones; (x) US 6,429,810, 08/2002, De Roche; (xi) US 6,610,954,
`
`08/2003, Takizawa; (xii) US 6,745,027, 06/2004, Twitchell, Jr.; (xiii) US 6,748,318,
`
`06/2004, Jones; (xix) US 6,859,722, 02/2005, Jones; (xx) US 6,882,269, 04/2005, Moreno;
`
`(xxi) US 6,904,359, 06/2005, Jones; (xxii) US 7,035,856, 04/2006, Morimoto; (xxiii) US
`
`7,085,775, 08/2006, Short et al.; (xxiv) US 7,212,829, 05/2007, Lau et al.; (xxv) US
`
`2002/0046173, 04/2002, Kelly; (xxvi) US 2002/0061758, 05/2002, Zarlengo et al.; (xxvii)
`
`US 2002/0120475, 08/2002, Morimoto; and (xxviii) US 2002/0132855, 07/2003, Swan.
`
`34. After giving full proper credit to the prior art and having conducted a thorough search for all
`
`relevant art and having fully considered the most relevant art known at the time, the United
`
`States Patent Examiner allowed all of the claims of the ’029 Patent to issue. In so doing, it is
`
`presumed that Examiner Trieu used his or her knowledge of the art when examining the
`
`claims. K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1369 (Fed. Cir. 2014). It is
`
`further presumed that Examiner Trieu has experience in the field of the invention, and that
`
`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`PAGE | 11
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`Case 6:21-cv-00040-ADA Document 1 Filed 01/15/21 Page 12 of 58
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`the Examiner properly acted in accordance with a person of ordinary skill. In re Sang Su
`
`Lee, 277 F.3d 1338, 1345 (Fed. Cir. 2002).
`
`35. The ’029 Patent is a pioneering patent, and has been cited as relevant prior art in over 130
`
`subsequent United States Patent Applications, including Applications assigned to technology
`
`and business leaders such as Google, Inc., AT&T, FedEx, Qualcomm, Inc., Fujitsu, Ltd.,
`
`United Parcel Services of America, American Airlines and NEC Corp.
`
`36. The ’109 Patent was examined by Primary United States Patent Examiner Van T. Trieu.
`
`During the examination of the ’109 Patent, the United States Patent Examiner searched for
`
`prior art in the following US Classifications: G06Q 10/08, G06Q 10/083, G06Q 10/087,
`
`H04W 4/02, and H04W 4/021.
`
`37. After conducting searches for prior art during the examination of the ’109 Patent, the United
`
`States Patent Examiner identified and cited the following as the most relevant prior art
`
`references found during the searches: (i) US 5,959,568, 09/1999, Woolley; (ii) US 7,035,856,
`
`04/2006, Morimoto; (iii) US 7,212,829, 05/2007, Lau et al.; (iv) US 7,253,731, 08/2007,
`
`Joao; (v) US 9,847,029, 12/2017, Joao; and (vi) US 2002/0120475, 08/2002, Morimoto.
`
`38. After giving full proper credit to the prior art and having conducted a thorough search for all
`
`relevant art and having fully considered the most relevant art known at the time, the United
`
`States Patent Examiner allowed all of the claims of the ’109 Patent to issue. In so doing, it is
`
`presumed that Examiner Trieu used his or her knowledge of the art when examining the
`
`claims. K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1369 (Fed. Cir. 2014). It is
`
`further presumed that Examiner Trieu has experience in the field of the invention, and that
`
`the Examiner properly acted in accordance with a person of ordinary skill. In re Sang Su
`
`Lee, 277 F.3d 1338, 1345 (Fed. Cir. 2002).
`
`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`PAGE | 12
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`Case 6:21-cv-00040-ADA Document 1 Filed 01/15/21 Page 13 of 58
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`39. The ’109 Patent is a pioneering patent, and has been cited as relevant prior art in over 130
`
`subsequent United States Patent Applications, including Applications assigned to technology
`
`and business leaders such as Google, Inc., AT&T, FedEx, Qualcomm, Inc., Fujitsu, Ltd.,
`
`United Parcel Services of America, American Airlines and NEC Corp.
`
`40. The ’268 Patent was examined by Primary United States Patent Examiner Van T. Trieu.
`
`During the examination of the ’268 Patent, the United States Patent Examiner searched for
`
`prior art in the following US Classifications: G06Q 10/08 and G06Q 10/083.
`
`41. After conducting searches for prior art during the examination of the ’268 Patent, the United
`
`States Patent Examiner identified and cited the following as the most relevant prior art
`
`references found during the searches: (i) US 5,959,568, 09/1999, Woolley; (ii) US 6,148,291,
`
`1/2000, Radican; (iii) US 6,492,904, 12/2002, Richards; (iv) US 7,035,856, 04/2006,
`
`Morimoto; (v) US 10,181,109, 01/2019, Joao; and (vi) US 2002/0111819, 08/2002, Li.
`
`42. After giving full proper credit to the prior art and having conducted a thorough search for all
`
`relevant art and having fully considered the most relevant art known at the time, the United
`
`States Patent Examiner allowed all of the claims of the ’268 Patent to issue. In so doing, it is
`
`presumed that Examiner Trieu used his or her knowledge of the art when examining the
`
`claims. K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1369 (Fed. Cir. 2014). It is
`
`further presumed that Examiner Trieu has experience in the field of the invention, and that
`
`the Examiner properly acted in accordance with a person of ordinary skill. In re Sang Su
`
`Lee, 277 F.3d 1338, 1345 (Fed. Cir. 2002).
`
`43. The ’268 Patent is a pioneering patent, and has been cited as relevant prior art in over 130
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`subsequent United States Patent Applications, including Applications assigned to technology
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`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`PAGE | 13
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`Case 6:21-cv-00040-ADA Document 1 Filed 01/15/21 Page 14 of 58
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`and business leaders such as Google, Inc., AT&T, FedEx, Qualcomm, Inc., Fujitsu, Ltd.,
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`United Parcel Services of America, American Airlines and NEC Corp.
`
`44. The claims of the Transcend Patents were all properly issued, and are valid and enforceable
`
`for the respective terms of their statutory life through expiration, and are enforceable for
`
`purposes of seeking damages for past infringement even post-expiration. See, e.g., Genetics
`
`Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., 655 F.3d 1291, 1299 (Fed. Cir.
`
`2011) (“[A]n expired patent is not viewed as having ‘never existed.’ Much to the contrary, a
`
`patent does have value beyond its expiration date. For example, an expired patent may form
`
`the basis of an action for past damages subject to the six-year limitation under 35 U.S.C. §
`
`286”) (internal citations omitted).
`
`45. The expiration dates of the Transcend Patents are at least the following: the ’731 Patent
`
`expired on August 7, 2019 due to nonpayment of maintenance fees; the ’920 Patent expires
`
`no earlier than April 27, 2022; the ’029 Patent expires no earlier than November 1, 2023; the
`
`’109 Patent expires no earlier than January 22, 2022; and the ’268 Patent expires no earlier
`
`than January 22, 2022.
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`
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`ACCUSED INSTRUMENTALITIES
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`46. Upon information and belief, MSC sells, advertises, offers for sale, uses, or otherwise
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`provides smart containers (“shipment conveyance device”) for shipping and/or delivering
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`goods, products,
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`items, and/or other objects which are
`
`installed with Traxens
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`devices (“Accused Instrumentalities”) that infringe the Transcend Patents.
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`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`Case 6:21-cv-00040-ADA Document 1 Filed 01/15/21 Page 15 of 58
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`COUNT I
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`(Infringement of U.S. Patent No. 10,181,109)
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`47.
`
`Plaintiff incorporates the above paragraphs by reference.
`
`48. MSC has been on actual notice of the ’109 Patent at least as early as the date it received
`
`service of this Original Complaint.
`
`49. On information and belief, MSC owns and controls the operation of the Accused
`
`Instrumentalities and generates substantial financial revenues therefrom.
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`50. Upon information and belief, MSC has directly infringed and continues to directly infringe at
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`least claims 1, 8, 10, 13 and 14 of the ’109 Patent by making, using, importing, selling,
`
`and/or, offering for sale the Accused Instrumentalities.
`
`51. MSC, with knowledge of the ’109 Patent, also infringes at least claims 1, 8, 10, 13 and 14 of
`
`the ’109 Patent by inducing others to infringe the ’109 Patent. In particular, MSC intends to
`
`induce its customers to infringe the ’109 Patent by encouraging its customers to use the
`
`Accused Instrumentalities in a manner that results in infringement.
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`52. MSC also induces others, including its customers, to infringe at least claims 1, 8, 10, 13 and
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`14 of the ’109 Patent by providing technical support for the use of the Accused
`
`Instrumentalities.
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`53. Upon information and belief, MSC makes, uses, sells and offers for sale an apparatus,
`
`comprising, a shipment conveyance device, wherein the shipment conveyance device is a
`
`shipping container, a pallet, or a piece of luggage. For example, MSC provides smart
`
`containers (“shipment conveyance device”) for shipping and/or delivering goods, products,
`
`items, and/or other objects which are installed with Traxens devices. See Figures 2-4 below,
`
`which are screenshots of webpages associated with MSC.
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`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`Case 6:21-cv-00040-ADA Document 1 Filed 01/15/21 Page 16 of 58
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`Figure 23
`
`
`Figure 34
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`
`
`
`
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`3 Source, as visited on January 15, 2020: https://www.msc.com/smart-containers
`
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`Case 6:21-cv-00040-ADA Document 1 Filed 01/15/21 Page 17 of 58
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`
`
`
`Figure 45
`54. Upon information and belief, MSC provides a global positioning device, wherein the global
`
`
`
`positioning device is located in, on, or at, the shipment conveyance device, and further
`
`wherein the global positioning device determines a position or location of the shipment
`
`conveyance device. For example, MSC’s Smart Containers are fitted with Traxens devices
`
`which comprise a global positioning device to determine a position/location of the shipping
`
`container. Further, MSC provides a mobile application “myMSC” available on iOS and
`
`Android which is used by customers to track and trace their cargo. See Figures 5-10 below,
`
`which are screenshots of webpages associated with MSC.
`
`
`
`
`4 Source, as visited on January 13, 2021: https://www.msc.com/getattachment/abc95690-b6c4-
`47b9-84f7-47c23a4ab918/636911838905860651 , Page 3
`5 Source, as visited on January 15, 2020: https://www.traxens.com/
`
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`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`Case 6:21-cv-00040-ADA Document 1 Filed 01/15/21 Page 18 of 58
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`
`
`Figure 56
`
`
`
`Figure 67
`
`
`
`
`6 Source, as visited on January 13, 2021: https://www.msc.com/getattachment/abc95690-b6c4-
`47b9-84f7-47c23a4ab918/636911838905860651 , Page 3
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`Case 6:21-cv-00040-ADA Document 1 Filed 01/15/21 Page 19 of 58
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`
`
`Figure 78
`
`
`
`Figure 89
`
`
`
`
`
`
`7 Source, as visited on January 13, 2021: https://www.msc.com/getattachment/abc95690-b6c4-
`47b9-84f7-47c23a4ab918/636911838905860651 , Page 3
`8 Source, as visited on January 15, 2020: https://www.traxens.com/
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`
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`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`Case 6:21-cv-00040-ADA Document 1 Filed 01/15/21 Page 20 of 58
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`
`
`Figure 910
`
`
`9 Source, as visited on January 15, 2020: https://www.traxens.com/en/services/data-that-suits-
`your-needs
`
`10 Source, as visited on January 13, 2021: https://www.msc.com/gbr/news/2019-october/mymsc-
`app-now-available
`
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`Case 6:21-cv-00040-ADA Document 1 Filed 01/15/21 Page 21 of 58
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`
`
`Figure 1011
`
`
`
`55. Upon information and belief, MSC provides a processor, wherein the processor generates a
`
`message in response to an occurrence of the event or in response to a request for information
`
`regarding the shipment conveyance device, wherein the request for information is
`
`automatically received by the receiver, wherein the message contains information regarding a
`
`position or location of the shipment conveyance device. For example, MSC’s Smart
`
`Containers are fitted with the Traxens devices (“processing device”) which measure
`
`information related to shipping container including one or more of, but not limited to, door,
`
`humidity, temperature and shock experienced by the shipping container and therefore, MSC
`
`provides a processor which processes information regarding the shipment conveyance
`
`11 Source, as visited on January 15, 2020:
`https://play.google.com/store/apps/details?id=com.MSC.myMSCApp&hl=en_IN
`
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`Case 6:21-cv-00040-ADA Document 1 Filed 01/15/21 Page 22 of 58
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`device. As a further example, MSC’s Smart Containers equipped with Traxens devices detect
`
`an event including one or more of, but not limited to, deviation in temperature, theft,
`
`unauthorised use, delay, deviation in planned route, cargo impact, shock and damage and in
`
`response to the detected event, send alerts (“message”) containing information about the
`
`event to the customers of MSC. These alerts are viewed in a dashboard provided by MSC
`
`using Traxens-Hub. Therefore, MSC provides a processor which generates a message in
`
`response to occurrence of an event and the message contains information regarding the
`
`position and location of the shipment conveyance device. As a further example, MSC’s
`
`Smart Containers, fitted with Traxens device