Case 6:21-cv-00158 Document 1 Filed 02/19/21 Page 1 of 97
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`Plaintiff,
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`Defendant.
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`Civil Action No. 6:21-cv-00158
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`COMPLAINT AND DEMAND
`FOR JURY TRIAL
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`COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff Maxell, Ltd. (“Maxell”), by and through its undersigned counsel, files this
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`complaint under 35 U.S.C. § 271 for Patent Infringement against Defendant Apple Inc. (“Apple”)
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`and further alleges as follows, upon actual knowledge with respect to itself and its own acts, and
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`upon information and belief as to all other matters.
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`OVERVIEW
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`1.
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`This is an action for patent infringement by Maxell. Founded in 1961 as Maxell
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`Electric Industrial Co., Ltd., Maxell is a leading global manufacturer of information storage media
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`products, including magnetic tapes, optical discs, and battery products such as lithium ion
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`rechargeable micro batteries and alkaline dry batteries, and the company has over 50 years of
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`experience producing industry-leading recordable media and energy products for both the
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`consumer and the professional markets. Maxell is also a leading manufacturer of projectors and
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`lenses and additionally sells various other devices, such as Bluetooth headsets, wireless charging
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`solutions, etc.
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`2.
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`Maxell has built up an international reputation for excellence and reliability, for
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`pioneering the power supplies and digital recording for today’s mobile and multi-media devices,
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`and leading the electronics industry in the fields of storage media and batteries.
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`3.
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`Since being one of the first companies to develop alkaline batteries and Blu Ray
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`camcorder discs, Maxell has always assured its customers of industry leading product innovation
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`and is one of the world’s foremost suppliers of memory, power, audio, and visual goods. Maxell’s
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`well-recognized logo and iconic “blown away” image exemplify the reputation Maxell carefully
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`developed in these markets.
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`4.
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`As more fully described below, in 2009 Hitachi, Ltd. assigned much of its consumer
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`product-facing intellectual property to Hitachi Consumer Electronics Co., Ltd. Then, in 2013,
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`Hitachi Consumer Electronics Co., Ltd. assigned the intellectual property, including the patents in
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`this case, to Hitachi Maxell, Ltd., which later assigned the patents to Maxell as a result of a
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`reorganization and name change. This reorganization was an effort to align its intellectual property
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`with the licensing, business development, and research and development efforts of Maxell,
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`including in the mobile and mobile-media device market (Hitachi, Ltd. and Hitachi Consumer
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`Electronics Co., Ltd. are referred to herein collectively as “Hitachi”). Maxell continues to sell
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`products in the mobile device market including wireless charging solutions, wireless flash drives,
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`multimedia players, storage devices, and headphones. Maxell also maintains intellectual property
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`related to televisions, computer products, tablets, digital cameras, and mobile phones. As a mobile
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`technology developer and industry leader, and due to its historical and continuous investment in
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`research and development, including in the state of Texas, Maxell owns a portfolio of patents
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`related to such technologies and actively enforces its patents through licensing and/or litigation.
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`Maxell is forced to bring this action against Apple as a result of Apple’s knowing and ongoing
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`infringement of Maxell’s patents as further described herein.
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`5.
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`Since at least June 2013, Apple has been aware of Maxell’s patents and has had
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`numerous meetings and interactions regarding its infringement of these patents. These meetings
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`included Apple’s representatives being provided with detailed information regarding Maxell’s
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`patents, the developed technology, and Apple’s ongoing use of this patented technology, including
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`the identification of specific products that are infringing. Through this process, Apple’s
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`representatives requested and received detailed explanations regarding Maxell’s patents and
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`allegations. In 2018, for example, Maxell provided written correspondence to Apple that identified
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`specific products and claims of Maxell patents (including claims of six of the patents asserted
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`herein) that Apple was, and continues to infringe. A resident of Marshall, Texas, Alan Loudermilk,
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`was involved in these extensive licensing negotiations with Apple on Maxell’s behalf.
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`6.
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`Maxell believed that the parties could reach a mutually beneficial solution and to
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`that end considered a potential business transaction and continued to answer multiple inquiries
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`from Apple over the course of several years. Apple elected, however, not to enter into an agreement
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`and did not license Maxell’s patents. Accordingly, in 2019, Maxell brought litigation against Apple
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`asserting infringement of ten other patents from the same portfolio of which the currently asserted
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`patents are a part. Case No. 5:19-cv-00036-RWS (E.D. Tex.). Maxell also brought litigation
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`against Apple asserting infringement of five other patents in 2020 in this Court. Case No. 6:20-cv-
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`00646 (W.D. Tex.). Apple has moved for that case to be stayed pending a parallel ITC Action.
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`Yet, Apple has still elected not to license Maxell’s patents and these prior litigations remain
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`pending. The result is that Apple has continued, and continues today, to make, use, sell and offer
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`for sale Maxell’s patented technology without license.
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`7.
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`Since 2014, Maxell has had regular and continuous business in Texas. As a result
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`of such business dealings and hopes to expand those and other business dealings, a Maxell affiliate,
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`Maxell Research and Development America, LLC (“MRDA”), was founded in Marshall, Texas.
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`MRDA is part of a joint venture with another business in Marshall, and the entities work together
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`on research and development related to IoT, mobile, media and battery technologies. MRDA’s
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`ongoing projects include, for example, the research and development of lensless camera
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`technology, which Maxell hopes will be utilized for sensor and camera technology in smartphones.
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`Prior to the pandemic, Maxell engineers and executives would regularly travel to Marshall to meet
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`and work to expand the research and development activities, business, and investments being made
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`by Maxell, MRDA, and their business partners in Texas to further the goals of these companies.
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`While these efforts continue remotely for the time being, they will continue in-person once travel
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`restrictions are eased.
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`8.
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`In addition to the litigations filed against Apple, noted above, Maxell has filed five
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`other lawsuits in Texas in order to enforce the patent portfolio of which the currently asserted
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`patents are a part against various smartphone manufacturers including ASUSTeK Computer Inc.,
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`Huawei Technologies Co. Ltd., and ZTE (USA) Inc. Three of the patents accused of infringement
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`herein, including U.S. Patent Nos. 8,736,729, 6,816,491, and 8,098,695 were previously asserted
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`in the Eastern District of Texas against ZTE (USA), Inc., ZTE Corporation, and/or ASUSTeK
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`Computer Inc. The prior case against and ZTE (USA) Inc., Maxell Ltd. v. ZTE (USA) Inc., Case
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`No. 5:16-cv-00179-RWS, culminated in a ten day jury trial resulting in a verdict in favor of Maxell.
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`At this point, all of Maxell’s cases, except those against Apple, have been resolved and dismissed.
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`PARTIES
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`9.
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`Plaintiff Maxell, Ltd. is a Japanese corporation with a registered place of business
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`at 1 Koizumi, Oyamazaki, Oyamazaki-cho, Otokuni-gun, Kyoto, Japan.
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`10.
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`On information and belief, Defendant Apple Inc. is a California corporation having
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`a principal place of business located at One Apple Park Way Cupertino, California 95014 and
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`regular and established places of business at 12545 Riata Vista Cir, Austin, Texas and 5501 W.
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`Parmer Lane, Austin, Texas, as well as other locations in Texas (e.g., 3121 Palm Way, Austin,
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`Texas). Apple offers and sells its products and/or services, including those accused herein of
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`infringement, to customers and potential customers located in Texas, including in the judicial
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`Western District of Texas. Apple may be served with process through its registered agent for
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`service in Texas: CT Corporation System, 1999 Bryan Street, Suite 900, Dallas, Texas 75201.
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`NATURE OF THE ACTION, JURISDICTION, AND VENUE
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`11. Maxell brings this action for patent infringement under the patent laws of the United
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`States, 35 U.S.C. § 271 et seq.
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`12.
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`This Court has subject matter jurisdiction over the subject matter of this action
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`pursuant to 28 U.S.C. §§ 1331 and 1338(a) because the action arises under the patent laws of the
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`United States.
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`13.
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`This Court has personal jurisdiction over Apple. Apple conducts business and has
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`committed acts of direct and indirect patent infringement in this District, the State of Texas, and
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`elsewhere in the United States. Moreover, Apple is registered to do business in the State of Texas,
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`has offices and facilities in the State of Texas and this District, and actively directs its activities to
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`customers located in the State of Texas and this District.
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`14.
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`Venue is proper in this District pursuant to 28 U.S.C. § 1400(b). Apple has regular
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`and established places of business in this District, including at 12545 Riata Vista Cir, Austin, Texas
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`and 5501 W. Parmer Lane, Austin, Texas, as well as Apple Stores located at, at least, 3121 Palm
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`Way, Austin, Texas. Thus, Apple is deemed to reside in this District, has committed acts of
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`infringement described herein in this District, and has purposely transacted business involving the
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`accused devices in this District. Further, there is significant local interest in view of Apple being
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`one of the largest private employers in this District, and Apple has received a significant amount
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`of tax subsidies in this District.
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`15.
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`Given Mr. Loudermilk’s role in prior licensing negotiations between Maxell and
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`Apple, MRDA’s presence in Marshall, Texas, Apple’s operations throughout Texas, and the
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`ongoing litigation concerning Maxell’s patents, Texas is the most convenient venue for the parties
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`to litigate.
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`COUNT 1 - INFRINGEMENT OF U.S. PATENT NO. 10,911,719
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`16. Maxell incorporates paragraphs 1-15 above by reference.
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`17.
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`U.S. Patent No. 10,911,719 (the “’719 Patent,” attached hereto at Exhibit 1) duly
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`issued on February 2, 2021 and is entitled Communication Apparatus for Transmitting and
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`Receiving Digital Information To and From Another Communication Apparatus.
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`18. Maxell is the owner by assignment of the ’719 Patent and possesses all rights under
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`the ’719 Patent, including the exclusive right to recover for past and future infringement.
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`19.
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`Apple has directly infringed one or more claims of the ’719 Patent in this District
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`and elsewhere in Texas, including at least claim 1 literally and/or under the doctrine of equivalents,
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`by or through making, using, importing, offering for sale and/or selling its telecommunications
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`technology, including at least Apple products having FaceTime communication functionality
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`running materially similar software to iOS 12/13/14, including, without limitation, the Apple
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`iPhones (e.g., iPhone 12 (model nos. A2172 and A2403), iPhone 12 mini (model nos. A2176 and
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`A2399), iPhone 12 Pro (model nos. A2341 and A2407), iPhone 12 Pro Max (model nos. A2342
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`and A2411), iPhone 11 (model nos. A2111 and A2221), iPhone 11 Pro (model nos. A2160 and
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`A2215), iPhone 11 Pro Max (model nos. A2161 and A2218), iPhone SE 2nd Generation (model
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`nos. A2275 and A2296), iPhone XS (model no. A1920), iPhone XS Max (model no. A1921),
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`iPhone XR (model no. A1984), iPhone X (model nos. A1865 and A1901), iPhone 8 Plus (model
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`nos. A1864 and A1897), iPhone 8 (model nos. A1863 and A1905), iPhone 7 Plus (model nos.
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`A1661 and A1784), iPhone 7 (model nos. A1660 and A1778), iPhone 6s Plus (model nos. A1634
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`and A1687), iPhone 6s (model nos. A1633 and A1688)); Apple iPads (e.g., iPad mini 4 (model
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`nos. A1538 and A1550), iPad mini 5 (model nos. A2133, A2124, and A2126), iPad Pro (12.9” 2nd
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`generation) (model nos. A1670 and A1671), iPad Pro 12.9” (3rd generation) (model nos. A1876,
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`A1895, A2014), iPad Pro 12.9” (4th generation) (model nos. A2229, A2069, A2232), iPad Pro
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`11” (1st generation) (model nos. A1980, A2013, and A1934), iPad Pro 11” (2nd generation)
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`(model nos. A2068, A2228, and A2230), iPad (5th generation) (model nos. A1822 and A1823),
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`iPad (6th generation) (model nos. A1893 and A1954), iPad (7th gen.) (model nos. A2197, A2200,
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`and A2198), iPad (8th gen) (model nos. A2270, A2428, A2429, and A2430), iPad Air (3rd
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`generation) (model nos. A2152, A2123, and A2153) iPad Air (4th generation) (model nos. A2316,
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`A2324, A2325, and A2072)); Apple iPod Touches (e.g., iPod Touch 6th generation (model no.
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`A1574) and iPod Touch 7th generation (model no. A2178)); and MacBook products with FaceTime
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`functionality (e.g., MacBook (model nos. 9,1 and 10,1), MacBook Air (model nos. 9,1 and 10,1),
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`and MacBook Pro (model nos. 17,1; 16,4; 16,3; 16,2; 16,1; 15,4; 15,3; and 15,2)) (collectively,
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`“the ’719 Accused Products”). For example, each of these products also includes hardware (e.g.,
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`Wi-Fi chipset, cellular chipset, A12/A13 processor, Intel CPU, camera, and decoder) and software
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`(e.g., FaceTime application) as advertised on Apple’s website. Maxell reserves the right to
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`discover and pursue any additional infringing devices that incorporate infringing functionalities.
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`For the avoidance of doubt, the ’719 Accused Products are identified to describe Apple’s
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`infringement and in no way limit the discovery and infringement allegations against Apple
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`concerning other devices that incorporate the same or reasonably similar functionalities.
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`20.
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`Each of the ’719 Accused Products is a communication apparatus for transmitting
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`and receiving digital information to and from another device. Further, each of the ’719 Accused
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`Products includes a network interface (e.g., Wi-Fi chipset or cellular chipset) to receive digital
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`information from a server (e.g., contents from iCloud or Apple TV) and additional information
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`from another device. Further, each of the ’719 Accused Products includes a decoder, and a camera
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`to generate video information and a display to display the video information and the information
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`received from the server and the other device. Each of the ’719 Accused Products includes a
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`processor (e.g., A12/A13 processor, Intel CPU or cellular chipset) that receives an inbound
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`videophone call notice (e.g., FaceTime call) while displaying the digital information on the
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`display, the processor pauses the displaying of the digital information and renders the camera
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`operative. Further, each of the ’719 Accused Products stops display of information received from
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`the server to display video from the other device generated based on the videophone call. For
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`example, the following excerpts from Apple’s websites provide non-limiting examples of the ’719
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`Accused Products infringing at least claim 1 of the ’719 Patent:
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`See https://support.apple.com/en-us/HT204380
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`See https://support.apple.com/en-us/HT203375#stream
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`21.
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`The foregoing features and capabilities of each of the ’719 Accused Products and
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`Apple’s description and/or demonstration thereof, including in user manuals and advertising,
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`reflect Apple’s direct infringement by satisfying every element of at least claim 1 of the ’719
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`Patent, under 35 U.S.C. § 271(a).
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`22.
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`Apple has indirectly infringed at least claim 1 of the ’719 Patent in this District and
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`elsewhere in the United States by, among other things, actively inducing the use, offering for sale,
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`selling, or importation of at least the ’719 Accused Products. Apple’s customers who purchase
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`devices and components thereof and operate such devices and components in accordance with
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`Apple’s instructions directly infringe one or more claims of the ’719 Patent in violation of 35
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`U.S.C. § 271. Apple instructs its customers through at least user guides or websites, such as those
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`located at: https://support.apple.com/guide/iphone/welcome/ios, or https://support.apple.com/en-
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`us/HT204380 or https://support.apple.com/en-us/HT203375#stream. For example, in the “iPhone
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`User Guide” Apple instructs its customers to “Set up FaceTime,” “Make and receive calls,” “Set
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`up the Apple TV app,” “Watch shows and movies:”
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`
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`See https://support.apple.com/guide/iphone/welcome/ios (excerpts from iPhone User Guide)
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`23.
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`Further, on its customer support webpages, Apple instructs its customers to “Use
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`FaceTime” to make video and audio calls:
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`
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`See https://support.apple.com/en-us/HT204380. Apple is thereby liable for infringement of the
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`’719 Patent pursuant to 35 U.S.C. § 271(b).
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`24.
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`Apple has indirectly infringed at least claim 1 of the ’719 Patent, by, among other
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`things, contributing to the direct infringement of others, including customers of the ’719 Accused
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`Products by making, offering to sell, or selling, in the United States, or importing a component of
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`a patented machine, manufacture, or combination, or an apparatus for use in practicing a patented
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`process, constituting a material part of the invention, knowing the same to be especially made or
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`especially adapted for use in infringement of the ’719 Patent, and not a staple article or commodity
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`of commerce suitable for substantial non-infringing use.
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`25.
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`For example, the ’719 Accused Products include hardware (Wi-Fi chipset, cellular
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`chipset, transceivers, A12/A13 processor, Intel CPU, and decoder) and software (FaceTime and
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`Apple TV). These are components of a patented machine, manufacture, or combination, or an
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`apparatus for use in practicing a patented process. Furthermore, such components are a material
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`part of the invention and upon information and belief are not a staple article or commodity of
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`commerce suitable for substantial non-infringing use. Thus, Apple is liable for infringement of the
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`’719 Patent pursuant to 35 U.S.C. § 271(c).
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`26.
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`The ’719 Patent is a continuation of U.S. Patent No. 10,084,991, which has been
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`asserted against Apple since at least the March 15, 2019 filing of Maxell’s Complaint in Case No.
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`5:19-cv-00036 (E.D. Tex.). On information and belief, Apple is aware of the patents related to
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`U.S. Patent No. 10,084,991, including the ’719 Patent, and has thus been on notice of the ’719
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`Patent since its issuance on February 2, 2021. Maxell’s prior, pending case against Apple sets forth
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`Maxell’s belief that Apple makes, uses, sells, offers to sell, or imports products that infringe U.S.
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`Patent No. 10,084,991 and thus has also placed Apple on notice of its infringement of the ’719
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`Patent. By the time of trial, Apple will thus have known and intended (since receiving such notice),
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`that its continued actions would actively induce and contribute to actual infringement of at least
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`claim 1 of the ’719 Patent.
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`27.
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`Apple undertook and continued its infringing actions despite an objectively high
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`likelihood that such activities infringed the ’719 Patent, which has been duly issued by the USPTO,
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`and is presumed valid. On information and belief, Apple could not reasonably, subjectively believe
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`that its actions do not constitute infringement of the ’719 Patent, nor could it reasonably,
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`subjectively believe that the patent is invalid. Despite that knowledge and subjective belief, and
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`the objectively high likelihood that its actions constitute infringement, Apple has continued its
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`infringing activities. As such, Apple willfully infringes the ’719 Patent.
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`28. Maxell has been damaged by Apple’s infringement of the ’719 Patent.
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`COUNT 2 - INFRINGEMENT OF U.S. PATENT NO. 10,389,978
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`29. Maxell incorporates paragraphs 1-28 above by reference.
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`30.
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`U.S. Patent No. 10,389,978 (the “’978 Patent,” attached hereto at Exhibit 2) duly
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`issued on August 20, 2019 and is entitled Communication apparatus for transmitting and receiving
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`digital information to and from another communication apparatus.
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`31. Maxell is the owner by assignment of the ’978 Patent and possesses all rights under
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`the ’978 Patent, including the exclusive right to recover for past and future infringement.
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`32.
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`Apple has directly infringed one or more claims of the ’978 Patent in this District
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`and elsewhere in Texas, including at least claim 2 literally and/or under the doctrine of equivalents,
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`by or through making, using, importing, offering for sale and/or selling its telecommunications
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`technology, including at least Apple products having FaceTime communication functionality
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`running materially similar software to iOS 12/13/14, including, without limitation, the Apple
`
`iPhones (e.g., iPhone 12 (model nos. A2172 and A2403), iPhone 12 mini (model nos. A2176 and
`
`A2399), iPhone 12 Pro (model nos. A2341 and A2407), iPhone 12 Pro Max (model nos. A2342
`
`and A2411), iPhone 11 (model nos. A2111 and A2221), iPhone 11 Pro (model nos. A2160 and
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`A2215), iPhone 11 Pro Max (model nos. A2161 and A2218), iPhone SE 2nd Generation (model
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`nos. A2275 and A2296), iPhone XS (model no. A1920), iPhone XS Max (model no. A1921),
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`iPhone XR (model no. A1984), iPhone X (model nos. A1865 and A1901), iPhone 8 Plus (model
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`nos. A1864 and A1897), iPhone 8 (model nos. A1863 and A1905), iPhone 7 Plus (model nos.
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`A1661 and A1784), iPhone 7 (model nos. A1660 and A1778), iPhone 6s Plus (model nos. A1634
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`and A1687), iPhone 6s (model nos. A1633 and A1688)); Apple iPads (e.g., iPad mini 4 (model
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`nos. A1538 and A1550), iPad mini 5 (model nos. A2133, A2124, and A2126), iPad Pro (12.9” 2nd
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`generation) (model nos. A1670 and A1671), iPad Pro 12.9” (3rd generation) (model nos. A1876,
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`A1895, A2014), iPad Pro 12.9” (4th generation) (model nos. A2229, A2069, and A2232), iPad
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`Pro 11” (1st generation) (model nos. A1980, A2013, and A1934), iPad Pro 11” (2nd generation)
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`(model nos. A2068, A2228, and A2230), iPad (5th generation) (model nos. A1822 and A1823),
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`iPad (6th generation) (model nos. A1893 and A1954), iPad (7th gen.) (model nos. A2197, A2200,
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`and A2198), iPad (8th gen) (model nos. A2270, A2428, A2429, and A2430), iPad Air (3rd
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`generation) (model nos. A2152, A2123, and A2153), iPad Air (4th generation) (model nos. A2316,
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`A2324, A2325, and A2072)); Apple iPod Touches (e.g., iPod Touch 6th generation (model no.
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`A1574) and iPod Touch 7th generation (model no. A2178)); and MacBook products with FaceTime
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`functionality (e.g., MacBook (model nos. 9,1 and 10,1), MacBook Air (model nos. 9,1 and 10,1),
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`and MacBook Pro (model nos. 17,1; 16,4; 16,3; 16,2; 16,1; 15,4; 15,3; and 15,2)) (collectively,
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`“the ’978 Accused Products”). For example, each of these products also includes hardware (e.g.,
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`Wi-Fi chipset, cellular chipset, A12/A13 processor, Intel CPU, camera, and microphone) and
`
`software (e.g., FaceTime application, Camera application) as advertised on Apple’s website.
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`Maxell reserves the right to discover and pursue any additional infringing devices that incorporate
`
`infringing functionalities. For the avoidance of doubt, the ’978 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.
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`33.
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`Each of the ’978 Accused Products is a communication apparatus for transmitting
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`and receiving digital information to and from another device. Further, each of the ’978 Accused
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`Products includes a network interface (e.g., Wi-Fi chipset or cellular chipset) to receive digital
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`information from a server (e.g., contents from iCloud or iTunes) and additional information from
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`another device. Further, each of the ’978 Accused Products includes a camera to generate video
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`information, a microphone to generate audio information, and a display to display the video
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`information and the information received from the server and the other device. Further, each of the
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`’978 Accused Products includes a processor (e.g., A12/A13 processor, Intel CPU, or cellular
`
`chipset) that receives an inbound videophone call notice (e.g., FaceTime call) while storing the
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`video signal and the audio signal, the processor deactivates the storing of the video signal and
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`audio signal. Further, each of the ’978 Accused Products outputs the video information and audio
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`information to another device and displays the digital information from the other communication
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`apparatus. For example, the following excerpts from Apple’s websites provide non-limiting
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`examples of the ’978 Accused Products infringing at least claim 2 of the ’978 Patent:
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`See https://support.apple.com/en-us/HT204380
`
`
`
`16
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`

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`Case 6:21-cv-00158 Document 1 Filed 02/19/21 Page 17 of 97
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`
`
`See https://support.apple.com/guide/iphone/take-videos-iph61f49e4bb/ios
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`34.
`
`The foregoing features and capabilities of each of the ’978 Accused Products and
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`Apple’s description and/or demonstration thereof, including in user manuals and advertising,
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`reflect Apple’s direct infringement by satisfying every element of at least claim 2 of the ’978
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`Patent, under 35 U.S.C. § 271(a).
`
`35.
`
`Apple has indirectly infringed at least claim 2 of the ’978 Patent in this District and
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`elsewhere in the United States by, among other things, actively inducing the use, offering for sale,
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`selling, or importation of at least the ’978 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 ’978 Patent in violation of 35
`
`U.S.C. § 271. Apple instructs its customers through at least user guides or websites, such as those
`
`17
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`

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`Case 6:21-cv-00158 Document 1 Filed 02/19/21 Page 18 of 97
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`located at: https://support.apple.com/guide/iphone/welcome/ios, https://support.apple.com/en-
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`us/HT204380, or https://support.apple.com/guide/iphone/take-videos-iph61f49e4bb/ios. For
`
`example, in the “iPhone User Guide” Apple instructs its customers to “Set up FaceTime,” “Make
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`and receive calls.”
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`See https://support.apple.com/guide/iphone/welcome/ios (excerpt from iPhone User Guide).
`
`36.
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`Further, on its customer support webpages, Apple instructs its customers to “Use
`
`FaceTime” to make video and audio calls and also instructs customers to “Record a video”:
`
`
`
`18
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`

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`Case 6:21-cv-00158 Document 1 Filed 02/19/21 Page 19 of 97
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`
`
`See https://support.apple.com/en-us/HT204380; see also
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`https://support.apple.com/guide/iphone/take-videos-iph61f49e4bb/ios. Apple is thereby liable for
`
`infringement of the ’978 Patent pursuant to 35 U.S.C. § 271(b).
`
`37.
`
`Apple has indirectly infringed at least claim 2 of the ’978 Patent, by, among other
`
`things, contributing to the direct infringement of others, including customers of the ’978 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 ’978 Patent, and not a staple article or commodity
`
`of commerce suitable for substantial non-infringing use.
`
`38.
`
`For example, the ’978 Accused Products include hardware (Wi-Fi chipset, cellular
`
`chipset, transceivers, A12/A13 processor, Intel CPU, camera, and microphone) and software
`
`19
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`

`

`Case 6:21-cv-00158 Document 1 Filed 02/19/21 Page 20 of 97
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`(FaceTime, Camera application, and iMovie). These are components of a patented machine,
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`manufacture, or combination, or an apparatus for use in practicing a patented process. Furthermore,
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`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 ’978 Patent pursuant to 35 U.S.C. § 271(c).
`
`39.
`
`The ’978 Patent is a continuation of U.S. Patent No. 10,084,991, which has been
`
`asserted against Apple since at least the March 15, 2019 filing of Maxell’s Complaint in Case No.
`
`5:19-cv-00036 (E.D. Tex.). On information and belief, Apple is aware of the patents related to
`
`U.S. Patent No. 10,084,991, including the ’978 Patent, and has thus been on notice of the ’978
`
`Patent since its issuance on August 20, 2019. Maxell’s prior, pending case against Apple sets forth
`
`Maxell’s belief that Apple makes, uses, sells, offers to sell, or imports products that infringe U.S.
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`Patent No. 10,084,991 and thus has also placed Apple on notice of its infringement of the ’978
`
`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
`
`claim 2 of the ’978 Patent.
`
`40.
`
`Apple undertook and continued its infringing actions despite an objectively high
`
`likelihood that such activities infringed the ’978 Patent, which has been duly issued by the USPTO,
`
`and is presumed valid. On information and belief, Apple could not reasonably, subjectively believe
`
`that its actions do not constitute infringement of the ’978 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 ’978 Patent.
`
`41. Maxell has been damaged by Apple’s infringement of the ’978 Patent.
`
`20
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`

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`Case 6:21-cv-00158 Document 1 Filed 02/19/21 Page 21 of 97
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`COUNT 3 - INFRINGEMENT OF U.S. PATENT NO. 8,736,729
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`42. Maxell incorporates paragraphs 1-41 above by reference.
`
`43.
`
`U.S. Patent No. 8,736,729 (the “’729 Patent,” attached hereto at Exhibit 3) duly
`
`issued on May 27, 2014 and is entitled Electric Camera.
`
`44. Maxell is the owner by assignment of the ’729 Patent and possesses all rights under
`
`the ’729 Patent, including the exclusive right to recover for past and future infringement.
`
`45.
`
`The patentability of the ’729 Patent was challenged in IPR2018-00238, wherein the
`
`Patent Trial and Appeal Board was asked to consider the teachings of prior art (e.g., U.S. Patent
`
`Nos. 5,828,406, 5,440,343, 5,497,192, 6,512,541 and 5,493,335) in a challenge to the validity of
`
`claims 1-4. In response, the Patent Trial and Appeal Board denied the petition, finding that
`
`“Petitioner has not demonstrated a reasonable likelihood that at least one of the challenged claims
`
`is unpatentable based on the asserted grounds.”
`
`46.
`
`Apple has directly infringed one or more claims of the ’729 Patent in this District
`
`and elsewhere in Texas, including at least claim 1 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, including, without limitation, the Apple iPhones (e.g., iPhone 11 (model
`
`nos. A21