Case 6:21-cv-00731-ADA Document 1 Filed 07/15/21 Page 1 of 25
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`ALMONDNET, INC., and INTENT IQ, LLC,
`
`Plaintiffs,
`
`Case No. 6:21-cv-00731
`
`v.
`
`JURY TRIAL DEMANDED
`
`ROKU, INC.,
`
`Defendant.
`
`COMPLAINT FOR PATENT INFRINGEMENT AGAINST
`ROKU, INC.
`
`This is an action for patent infringement arising under the Patent Laws of the United States
`
`of America, 35 U.S.C. § 1 et seq., in which Plaintiffs AlmondNet, Inc. and Intent IQ, LLC
`
`(collectively, “Plaintiff” or “AlmondNet”) makes the following allegations against Defendant
`
`Roku, Inc. (“Defendant” or “Roku”):
`
`INTRODUCTION AND PARTIES
`
`1.
`
`This complaint arises from Defendant’s unlawful infringement of the following
`
`United States patents owned by AlmondNet, each of which generally relate to novel internet /
`
`network based advertising systems and methods: United States Patent Nos. 8,244,586; 10,026,100;
`
`8,677,398; 10,715,878; 8,566,164; 10,321,198; 10,628,857; 7,822,639; 8,595,069 (collectively,
`
`the “Asserted Patents”). AlmondNet owns all right, title, and interest in each of the Asserted
`
`Patents to file this case.
`
`2.
`
`AlmondNet, Inc. is a is a corporation organized and existing under the laws of the
`
`state of Delaware, having its place of business at 37-18 Northern Blvd Suite 404, Long Island City,
`
`NY, 11101. Intent IQ, LLC is a Delaware limited liability company, having its place of business
`
`1
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`

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`Case 6:21-cv-00731-ADA Document 1 Filed 07/15/21 Page 2 of 25
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`
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`at 37-18 Northern Blvd Suite 404, Long Island City, NY, 11101. AlmondNet, Inc. and Intent IQ,
`
`LLC are collectively referred herein as “AlmondNet.” Established in 1998, AlmondNet is an
`
`industry leader and pioneer in privacy-friendly, targeted advertising. AlmondNet has developed
`
`an extensive suite of industry-leading targeted advertising solutions and products, is focused on
`
`R&D and the licensing of its extensive portfolio of enabling technology and Intellectual Property
`
`covering numerous areas of the targeting landscape and ecosystem, including profile based
`
`bidding, behavioral targeting, online and offline data monetization, addressable advertising, and
`
`multi-platform advertising.
`
`3.
`
`On information and belief, Defendant Roku, Inc. (“Roku”) is a Delaware
`
`corporation with a regular and established place of business located at 9606 N. Mopac Expressway,
`
`Suite 400, Austin, Texas 78759. Roku may be served with process through its registered agent,
`
`Corporation Service Company d/b/a CSC – Lawyers Incorporating Service Company, located at
`
`211 7th Street, Suite 620, Austin, Texas 78701. Defendant designs and manufactures and/or has
`
`manufactured on its behalf abroad the Accused Products that are then sold for importation into the
`
`United States, imported into the United States, and/or sold, offered for sale, and/or used within the
`
`United States after importation.
`
`JURISDICTION AND VENUE
`
`4.
`
`This action arises under the patent laws of the United States, Title 35 of the United
`
`States Code. This Court has original subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and
`
`1338(a).
`
`5.
`
`This Court has personal jurisdiction over Defendant in this action because
`
`Defendant has committed acts within this District giving rise to this action, and has established
`
`minimum contacts with this forum such that the exercise of jurisdiction over Defendant would not
`
`
`
`2
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`

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`Case 6:21-cv-00731-ADA Document 1 Filed 07/15/21 Page 3 of 25
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`
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`offend traditional notions of fair play and substantial justice. Defendant, directly and through
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`subsidiaries or intermediaries, has committed and continue to commit acts of infringement in this
`
`District by, among other things, importing, offering to sell, and selling products that infringe the
`
`asserted patents.
`
`6.
`
`Venue is proper in this District. For example, Roku has a regular and established
`
`place of business located at 9606 N. Mopac Expressway, Suite 400, Austin, Texas 78759. See
`
`https://www.roku.com/jobs/locations
`
`COUNT I
`
`INFRINGEMENT OF U.S. PATENT NO. 8,244,586
`
`7.
`
`AlmondNet realleges and incorporates by reference the foregoing paragraphs as if
`
`fully set forth herein.
`
`8.
`
`AlmondNet owns all rights, title, and interest in U.S. Patent No. 8,244,586, titled
`
`“computerized systems for added-revenue off-site targeted internet advertising,” issued on August
`
`14, 2012. (’586 patent). A true and correct copy of the ’586 Patent is attached as Exhibit ..
`
`9.
`
`On information and belief, Defendant makes, uses, offers for sale, sells, and/or
`
`imports certain products (“Accused Products”), such as, e.g., Roku’s advertising platform, that
`
`directly infringe, literally and/or under the doctrine of equivalents, claims of the ’586 patent.
`
`10.
`
`The infringement of the Asserted Patents is also attributable to Defendant.
`
`Defendant and/or users of the Accused Products directs and controls use of the Accused Products
`
`to perform acts that result in infringement the Asserted Patents, conditioning benefits on
`
`participation in the infringement and establishing the timing and manner of the infringement.
`
`11.
`
`Defendant’s infringement has been and is willful. Defendant knew of the ‘586
`
`patent long before this suit was filed. For example, AlmondNet and Defendant communicated, e.g.,
`
`
`
`3
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`

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`Case 6:21-cv-00731-ADA Document 1 Filed 07/15/21 Page 4 of 25
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`
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`in the 2015 time frame and after 2015, regarding AlmondNet’s patent portfolio, including the
`
`Asserted Patents. In these discussions, AlmondNet notified Defendant of the asserted patents,
`
`including the ‘586 patent. Despite Defendant’s knowledge of the ‘586 patent, Defendant continued
`
`to infringe. In doing so, Defendant knew, or should have known, that its conduct amounted to
`
`infringement of the ‘586 patent. Accordingly, Defendant is liable for willful infringement.
`
`12.
`
`Defendant also knowingly and intentionally induces infringement of claims of the
`
`‘586 patent in violation of 35 U.S.C. § 271(b). Defendant has had knowledge of the ‘586 patent
`
`and the infringing nature of the Accused Products at least as early as when this Complaint was
`
`filed and/or earlier, as set forth above. Despite this knowledge of the ‘586 patent, Defendant
`
`continues to actively encourage and instruct its customers and end users (for example, through
`
`user manuals and online instruction materials on its website) to use the Accused Products in ways
`
`that directly infringe the ‘586 patent. Defendant does so knowing and intending that its customers
`
`and end users will commit these infringing acts. Defendant also continues to make, use, offer for
`
`sale, sell, and/or import the Accused Products, despite its knowledge of the ‘586 patent, thereby
`
`specifically intending for and inducing its customers to infringe the ‘586 patent through the
`
`customers’ normal and customary use of the Accused Products.
`
`13.
`
`Defendant has also infringed, and continue to infringe, claims of the ‘586 patent by
`
`offering to commercially distribute, commercially distributing, making, and/or importing the
`
`Accused Products, which are used in practicing the process, or using the systems, of the patent,
`
`and constitute a material part of the invention. Defendant knows the components in the Accused
`
`Products to be especially made or especially adapted for use in infringement of the patent, not a
`
`staple article, and not a commodity of commerce suitable for substantial noninfringing use.
`
`Accordingly, Defendant has been, and currently are, contributorily infringing the ‘586 patent, in
`
`
`
`4
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`Case 6:21-cv-00731-ADA Document 1 Filed 07/15/21 Page 5 of 25
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`
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`violation of 35 U.S.C. § 271(c).
`
`14.
`
`The Accused Products satisfy all claim limitations of claims of the ‘586 patent. A
`
`claim charts comparing independent claims of the ‘586 patent to representative Accused Product,
`
`is attached as Exhibit ..
`
`15.
`
`By making, using, offering for sale, selling and/or importing into the United States
`
`the Accused Products, Defendant has injured AlmondNet and are liable for infringement of the
`
`‘586 patent pursuant to 35 U.S.C. § 271.
`
`16.
`
`As a result of Defendant’s infringement of the ‘586 patent, AlmondNet is entitled
`
`to monetary damages in an amount adequate to compensate for Defendant’s infringement, but in
`
`no event less than a reasonable royalty for the use made of the invention by Defendant, together
`
`with interest and costs as fixed by the Court.
`
`17.
`
`Defendant’s infringing activities have injured and will continue to injure
`
`AlmondNet, unless and until this Court enters an injunction prohibiting further infringement of the
`
`‘586 patent, and, specifically, enjoining further manufacture, use, sale, importation, and/or offers
`
`for sale that come within the scope of the patent claims.
`
`COUNT II
`
`INFRINGEMENT OF U.S. PATENT NO. 10,026,100
`
`18.
`
`AlmondNet realleges and incorporates by reference the foregoing paragraphs as if
`
`fully set forth herein.
`
`19.
`
`AlmondNet owns all rights, title, and interest in U.S. Patent No. 10,026,100, titled
`
`“methods and apparatus for facilitated off-site targeted internet advertising,” issued on July 17,
`
`2018. (’100 patent). A true and correct copy of the ’100 Patent is attached as Exhibit ..
`
`20.
`
`On information and belief, Defendant makes, uses, offers for sale, sells, and/or
`
`
`
`5
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`Case 6:21-cv-00731-ADA Document 1 Filed 07/15/21 Page 6 of 25
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`
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`imports certain products (“Accused Products”), such as, e.g., Roku’s advertising platform, that
`
`directly infringe, literally and/or under the doctrine of equivalents, claims of the ‘100 patent.
`
`21.
`
`The infringement of the Asserted Patents is also attributable to Defendant.
`
`Defendant and/or users of the Accused Products directs and controls use of the Accused Products
`
`to perform acts that result in infringement the Asserted Patents, conditioning benefits on
`
`participation in the infringement and establishing the timing and manner of the infringement.
`
`22.
`
`Defendant’s infringement has been and is willful. Defendant knew of the ‘100
`
`patent long before this suit was filed. For example, AlmondNet and Defendant communicated, e.g.,
`
`in the 2015 time frame and after 2015, regarding AlmondNet’s patent portfolio, including the
`
`Asserted Patents. In these discussions, AlmondNet notified Defendant of the asserted patents,
`
`including the ‘100 patent. Despite Defendant’s knowledge of the ‘100 patent, Defendant continued
`
`to infringe. In doing so, Defendant knew, or should have known, that its conduct amounted to
`
`infringement of the ‘100 patent. Accordingly, Defendant is liable for willful infringement.
`
`23.
`
`Defendant also knowingly and intentionally induces infringement of claims of the
`
`‘100 patent in violation of 35 U.S.C. § 271(b). Defendant has had knowledge of the ‘100 patent
`
`and the infringing nature of the Accused Products at least as early as when this Complaint was
`
`filed and/or earlier, as set forth above. Despite this knowledge of the ‘100 patent, Defendant
`
`continues to actively encourage and instruct its customers and end users (for example, through
`
`user manuals and online instruction materials on its website) to use the Accused Products in ways
`
`that directly infringe the ‘100 patent. Defendant does so knowing and intending that its customers
`
`and end users will commit these infringing acts. Defendant also continues to make, use, offer for
`
`sale, sell, and/or import the Accused Products, despite its knowledge of the ‘100 patent, thereby
`
`specifically intending for and inducing its customers to infringe the ‘100 patent through the
`
`
`
`6
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`

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`Case 6:21-cv-00731-ADA Document 1 Filed 07/15/21 Page 7 of 25
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`
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`customers’ normal and customary use of the Accused Products.
`
`24.
`
`Defendant has also infringed, and continue to infringe, claims of the ‘100 patent by
`
`offering to commercially distribute, commercially distributing, making, and/or importing the
`
`Accused Products, which are used in practicing the process, or using the systems, of the patent,
`
`and constitute a material part of the invention. Defendant knows the components in the Accused
`
`Products to be especially made or especially adapted for use in infringement of the patent, not a
`
`staple article, and not a commodity of commerce suitable for substantial noninfringing use.
`
`Accordingly, Defendant has been, and currently are, contributorily infringing the ‘100 patent, in
`
`violation of 35 U.S.C. § 271(c).
`
`25.
`
`The Accused Products satisfy all claim limitations of claims of the ‘100 patent. A
`
`claim charts comparing independent claims of the ‘100 patent to representative Accused Product,
`
`is attached as Exhibit ..
`
`26.
`
`By making, using, offering for sale, selling and/or importing into the United States
`
`the Accused Products, Defendant has injured AlmondNet and are liable for infringement of the
`
`‘100 patent pursuant to 35 U.S.C. § 271.
`
`27.
`
`As a result of Defendant’s infringement of the ‘100 patent, AlmondNet is entitled
`
`to monetary damages in an amount adequate to compensate for Defendant’s infringement, but in
`
`no event less than a reasonable royalty for the use made of the invention by Defendant, together
`
`with interest and costs as fixed by the Court.
`
`28.
`
`Defendant’s infringing activities have injured and will continue to injure
`
`AlmondNet, unless and until this Court enters an injunction prohibiting further infringement of the
`
`‘100 patent, and, specifically, enjoining further manufacture, use, sale, importation, and/or offers
`
`for sale that come within the scope of the patent claims.
`
`
`
`7
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`Case 6:21-cv-00731-ADA Document 1 Filed 07/15/21 Page 8 of 25
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`
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`COUNT III
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`INFRINGEMENT OF U.S. PATENT NO. 8,677,398
`
`29.
`
`AlmondNet realleges and incorporates by reference the foregoing paragraphs as if
`
`fully set forth herein.
`
`30.
`
`AlmondNet owns all rights, title, and interest in U.S. Patent No. 8,677,398, titled
`
`“system and methods for taking action with respect to one network-connected device based on
`
`activity on another device connected to the same network,” issued on March 18, 2014. (’398
`
`patent). A true and correct copy of the ’398 Patent is attached as Exhibit ..
`
`31.
`
`On information and belief, Defendant makes, uses, offers for sale, sells, and/or
`
`imports certain products (“Accused Products”), such as, e.g., Roku’s advertising platform, that
`
`directly infringe, literally and/or under the doctrine of equivalents, claims of the ‘398 patent.
`
`32.
`
`The infringement of the Asserted Patents is also attributable to Defendant.
`
`Defendant and/or users of the Accused Products directs and controls use of the Accused Products
`
`to perform acts that result in infringement the Asserted Patents, conditioning benefits on
`
`participation in the infringement and establishing the timing and manner of the infringement.
`
`33.
`
`Defendant’s infringement has been and is willful. Defendant knew of the ‘398
`
`patent long before this suit was filed. For example, AlmondNet and Defendant communicated, e.g.,
`
`in the 2015 time frame and after 2015, regarding AlmondNet’s patent portfolio, including the
`
`Asserted Patents. In these discussions, AlmondNet notified Defendant of the asserted patents,
`
`including the ‘398 patent. Despite Defendant’s knowledge of the ‘398 patent, Defendant continued
`
`to infringe. In doing so, Defendant knew, or should have known, that its conduct amounted to
`
`infringement of the ‘398 patent. Accordingly, Defendant is liable for willful infringement.
`
`34.
`
`Defendant also knowingly and intentionally induces infringement of claims of the
`
`
`
`8
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`Case 6:21-cv-00731-ADA Document 1 Filed 07/15/21 Page 9 of 25
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`
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`‘398 patent in violation of 35 U.S.C. § 271(b). Defendant has had knowledge of the ‘398 patent
`
`and the infringing nature of the Accused Products at least as early as when this Complaint was
`
`filed and/or earlier, as set forth above. Despite this knowledge of the ‘398 patent, Defendant
`
`continues to actively encourage and instruct its customers and end users (for example, through
`
`user manuals and online instruction materials on its website) to use the Accused Products in ways
`
`that directly infringe the ‘398 patent. Defendant does so knowing and intending that its customers
`
`and end users will commit these infringing acts. Defendant also continues to make, use, offer for
`
`sale, sell, and/or import the Accused Products, despite its knowledge of the ‘398 patent, thereby
`
`specifically intending for and inducing its customers to infringe the ‘398 patent through the
`
`customers’ normal and customary use of the Accused Products.
`
`35.
`
`Defendant has also infringed, and continue to infringe, claims of the ‘398 patent by
`
`offering to commercially distribute, commercially distributing, making, and/or importing the
`
`Accused Products, which are used in practicing the process, or using the systems, of the patent,
`
`and constitute a material part of the invention. Defendant knows the components in the Accused
`
`Products to be especially made or especially adapted for use in infringement of the patent, not a
`
`staple article, and not a commodity of commerce suitable for substantial noninfringing use.
`
`Accordingly, Defendant has been, and currently are, contributorily infringing the ‘398 patent, in
`
`violation of 35 U.S.C. § 271(c).
`
`36.
`
`The Accused Products satisfy all claim limitations of claims of the ‘398 patent. A
`
`claim charts comparing independent claims of the ‘398 patent to representative Accused Product,
`
`is attached as Exhibit ..
`
`37.
`
`By making, using, offering for sale, selling and/or importing into the United States
`
`the Accused Products, Defendant has injured AlmondNet and are liable for infringement of the
`
`
`
`9
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`Case 6:21-cv-00731-ADA Document 1 Filed 07/15/21 Page 10 of 25
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`
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`‘398 patent pursuant to 35 U.S.C. § 271.
`
`38.
`
`As a result of Defendant’s infringement of the ‘398 patent, AlmondNet is entitled
`
`to monetary damages in an amount adequate to compensate for Defendant’s infringement, but in
`
`no event less than a reasonable royalty for the use made of the invention by Defendant, together
`
`with interest and costs as fixed by the Court.
`
`39.
`
`Defendant’s infringing activities have injured and will continue to injure
`
`AlmondNet, unless and until this Court enters an injunction prohibiting further infringement of the
`
`‘398 patent, and, specifically, enjoining further manufacture, use, sale, importation, and/or offers
`
`for sale that come within the scope of the patent claims.
`
`COUNT IV
`
`INFRINGEMENT OF U.S. PATENT NO. 10,715,878
`
`40.
`
`AlmondNet realleges and incorporates by reference the foregoing paragraphs as if
`
`fully set forth herein.
`
`41.
`
`AlmondNet owns all rights, title, and interest in U.S. Patent No. 10,715,878, titled
`
`“targeted television advertisements based on online behavior,” issued on July 14, 2020. (’878
`
`patent). A true and correct copy of the ’878 Patent is attached as Exhibit ..
`
`42.
`
`On information and belief, Defendant makes, uses, offers for sale, sells, and/or
`
`imports certain products (“Accused Products”), such as, e.g., Roku’s advertising platform, that
`
`directly infringe, literally and/or under the doctrine of equivalents, claims of the ‘878 patent.
`
`43.
`
`The infringement of the Asserted Patents is also attributable to Defendant.
`
`Defendant and/or users of the Accused Products directs and controls use of the Accused Products
`
`to perform acts that result in infringement the Asserted Patents, conditioning benefits on
`
`participation in the infringement and establishing the timing and manner of the infringement.
`
`
`
`10
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`Case 6:21-cv-00731-ADA Document 1 Filed 07/15/21 Page 11 of 25
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`44.
`
`Defendant’s infringement has been and is willful. Defendant knew of the ‘878
`
`patent long before this suit was filed. For example, AlmondNet and Defendant communicated, e.g.,
`
`in the 2015 time frame and after 2015, regarding AlmondNet’s patent portfolio, including the
`
`Asserted Patents. In these discussions, AlmondNet notified Defendant of the asserted patents,
`
`including the ‘878 patent. Despite Defendant’s knowledge of the ‘878 patent, Defendant continued
`
`to infringe. In doing so, Defendant knew, or should have known, that its conduct amounted to
`
`infringement of the ‘878 patent. Accordingly, Defendant is liable for willful infringement.
`
`45.
`
`Defendant also knowingly and intentionally induces infringement of claims of the
`
`‘878 patent in violation of 35 U.S.C. § 271(b). Defendant has had knowledge of the ‘878 patent
`
`and the infringing nature of the Accused Products at least as early as when this Complaint was
`
`filed and/or earlier, as set forth above. Despite this knowledge of the ‘878 patent, Defendant
`
`continues to actively encourage and instruct its customers and end users (for example, through
`
`user manuals and online instruction materials on its website) to use the Accused Products in ways
`
`that directly infringe the ‘878 patent. Defendant does so knowing and intending that its customers
`
`and end users will commit these infringing acts. Defendant also continues to make, use, offer for
`
`sale, sell, and/or import the Accused Products, despite its knowledge of the ‘878 patent, thereby
`
`specifically intending for and inducing its customers to infringe the ‘878 patent through the
`
`customers’ normal and customary use of the Accused Products.
`
`46.
`
`Defendant has also infringed, and continue to infringe, claims of the ‘878 patent by
`
`offering to commercially distribute, commercially distributing, making, and/or importing the
`
`Accused Products, which are used in practicing the process, or using the systems, of the patent,
`
`and constitute a material part of the invention. Defendant knows the components in the Accused
`
`Products to be especially made or especially adapted for use in infringement of the patent, not a
`
`
`
`11
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`Case 6:21-cv-00731-ADA Document 1 Filed 07/15/21 Page 12 of 25
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`
`
`staple article, and not a commodity of commerce suitable for substantial noninfringing use.
`
`Accordingly, Defendant has been, and currently are, contributorily infringing the ‘878 patent, in
`
`violation of 35 U.S.C. § 271(c).
`
`47.
`
`The Accused Products satisfy all claim limitations of claims of the ‘878 patent. A
`
`claim charts comparing independent claims of the ‘878 patent to representative Accused Product,
`
`is attached as Exhibit ..
`
`48.
`
`By making, using, offering for sale, selling and/or importing into the United States
`
`the Accused Products, Defendant has injured AlmondNet and are liable for infringement of the
`
`‘878 patent pursuant to 35 U.S.C. § 271.
`
`49.
`
`As a result of Defendant’s infringement of the ‘878 patent, AlmondNet is entitled
`
`to monetary damages in an amount adequate to compensate for Defendant’s infringement, but in
`
`no event less than a reasonable royalty for the use made of the invention by Defendant, together
`
`with interest and costs as fixed by the Court.
`
`50.
`
`Defendant’s infringing activities have injured and will continue to injure
`
`AlmondNet, unless and until this Court enters an injunction prohibiting further infringement of the
`
`‘878 patent, and, specifically, enjoining further manufacture, use, sale, importation, and/or offers
`
`for sale that come within the scope of the patent claims.
`
`COUNT V
`
`INFRINGEMENT OF U.S. PATENT NO. 8,566,164
`
`51.
`
`AlmondNet realleges and incorporates by reference the foregoing paragraphs as if
`
`fully set forth herein.
`
`52.
`
`AlmondNet owns all rights, title, and interest in U.S. Patent No. 8,566,164, titled
`
`“targeted online advertisements based on viewing or interacting with television advertisements,”
`
`
`
`12
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`Case 6:21-cv-00731-ADA Document 1 Filed 07/15/21 Page 13 of 25
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`
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`issued on October 22, 2013 (’164 patent). A true and correct copy of the ’164 Patent is attached as
`
`Exhibit ..
`
`53.
`
`On information and belief, Defendant makes, uses, offers for sale, sells, and/or
`
`imports certain products (“Accused Products”), such as, e.g., Roku’s advertising platform, that
`
`directly infringe, literally and/or under the doctrine of equivalents, claims of the ‘164 patent.
`
`54.
`
`The infringement of the Asserted Patents is also attributable to Defendant.
`
`Defendant and/or users of the Accused Products directs and controls use of the Accused Products
`
`to perform acts that result in infringement the Asserted Patents, conditioning benefits on
`
`participation in the infringement and establishing the timing and manner of the infringement.
`
`55.
`
`Defendant’s infringement has been and is willful. Defendant knew of the ‘164
`
`patent long before this suit was filed. For example, AlmondNet and Defendant communicated, e.g.,
`
`in the 2015 time frame and after 2015, regarding AlmondNet’s patent portfolio, including the
`
`Asserted Patents. In these discussions, AlmondNet notified Defendant of the asserted patents,
`
`including the ‘164 patent. Despite Defendant’s knowledge of the ‘164 patent, Defendant continued
`
`to infringe. In doing so, Defendant knew, or should have known, that its conduct amounted to
`
`infringement of the ‘164 patent. Accordingly, Defendant is liable for willful infringement.
`
`56.
`
`Defendant also knowingly and intentionally induces infringement of claims of the
`
`‘164 patent in violation of 35 U.S.C. § 271(b). Defendant has had knowledge of the ‘164 patent
`
`and the infringing nature of the Accused Products at least as early as when this Complaint was
`
`filed and/or earlier, as set forth above. Despite this knowledge of the ‘164 patent, Defendant
`
`continues to actively encourage and instruct its customers and end users (for example, through
`
`user manuals and online instruction materials on its website) to use the Accused Products in ways
`
`that directly infringe the ‘164 patent. Defendant does so knowing and intending that its customers
`
`
`
`13
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`Case 6:21-cv-00731-ADA Document 1 Filed 07/15/21 Page 14 of 25
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`
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`and end users will commit these infringing acts. Defendant also continues to make, use, offer for
`
`sale, sell, and/or import the Accused Products, despite its knowledge of the ‘164 patent, thereby
`
`specifically intending for and inducing its customers to infringe the ‘164 patent through the
`
`customers’ normal and customary use of the Accused Products.
`
`57.
`
`Defendant has also infringed, and continue to infringe, claims of the ‘164 patent by
`
`offering to commercially distribute, commercially distributing, making, and/or importing the
`
`Accused Products, which are used in practicing the process, or using the systems, of the patent,
`
`and constitute a material part of the invention. Defendant knows the components in the Accused
`
`Products to be especially made or especially adapted for use in infringement of the patent, not a
`
`staple article, and not a commodity of commerce suitable for substantial noninfringing use.
`
`Accordingly, Defendant has been, and currently are, contributorily infringing the ‘164 patent, in
`
`violation of 35 U.S.C. § 271(c).
`
`58.
`
`The Accused Products satisfy all claim limitations of claims of the ‘164 patent. A
`
`claim charts comparing independent claims of the ‘164 patent to representative Accused Product,
`
`is attached as Exhibit ..
`
`59.
`
`By making, using, offering for sale, selling and/or importing into the United States
`
`the Accused Products, Defendant has injured AlmondNet and are liable for infringement of the
`
`‘164 patent pursuant to 35 U.S.C. § 271.
`
`60.
`
`As a result of Defendant’s infringement of the ‘164 patent, AlmondNet is entitled
`
`to monetary damages in an amount adequate to compensate for Defendant’s infringement, but in
`
`no event less than a reasonable royalty for the use made of the invention by Defendant, together
`
`with interest and costs as fixed by the Court.
`
`61.
`
`Defendant’s infringing activities have injured and will continue to injure
`
`
`
`14
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`Case 6:21-cv-00731-ADA Document 1 Filed 07/15/21 Page 15 of 25
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`AlmondNet, unless and until this Court enters an injunction prohibiting further infringement of the
`
`‘164 patent, and, specifically, enjoining further manufacture, use, sale, importation, and/or offers
`
`for sale that come within the scope of the patent claims.
`
`COUNT VI
`
`INFRINGEMENT OF U.S. PATENT NO. 10,321,198
`
`62.
`
`AlmondNet realleges and incorporates by reference the foregoing paragraphs as if
`
`fully set forth herein.
`
`63.
`
`AlmondNet owns all rights, title, and interest in U.S. Patent No. 10,321,198, titled
`
`“system and methods for dealing with online activity based on delivery of a television
`
`advertisement,” issued on June 11, 2019 (’198 patent). A true and correct copy of the ’198 Patent
`
`is attached as Exhibit ..
`
`64.
`
`On information and belief, Defendant makes, uses, offers for sale, sells, and/or
`
`imports certain products (“Accused Products”), such as, e.g., Roku’s advertising platform, that
`
`directly infringe, literally and/or under the doctrine of equivalents, claims of the ‘198 patent.
`
`65.
`
`The infringement of the Asserted Patents is also attributable to Defendant.
`
`Defendant and/or users of the Accused Products directs and controls use of the Accused Products
`
`to perform acts that result in infringement the Asserted Patents, conditioning benefits on
`
`participation in the infringement and establishing the timing and manner of the infringement.
`
`66.
`
`Defendant’s infringement has been and is willful. Defendant knew of the ‘198
`
`patent long before this suit was filed. For example, AlmondNet and Defendant communicated, e.g.,
`
`in the 2015 time frame and after 2015, regarding AlmondNet’s patent portfolio, including the
`
`Asserted Patents. In these discussions, AlmondNet notified Defendant of the asserted patents,
`
`including the ‘198 patent. Despite Defendant’s knowledge of the ‘198 patent, Defendant continued
`
`
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`15
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`Case 6:21-cv-00731-ADA Document 1 Filed 07/15/21 Page 16 of 25
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`
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`to infringe. In doing so, Defendant knew, or should have known, that its conduct amounted to
`
`infringement of the ‘198 patent. Accordingly, Defendant is liable for willful infringement.
`
`67.
`
`Defendant also knowingly and intentionally induces infringement of claims of the
`
`‘198 patent in violation of 35 U.S.C. § 271(b). Defendant has had knowledge of the ‘198 patent
`
`and the infringing nature of the Accused Products at least as early as when this Complaint was
`
`filed and/or earlier, as set forth above. Despite this knowledge of the ‘198 patent, Defendant
`
`continues to actively encourage and instruct its customers and end users (for example, through
`
`user manuals and online instruction materials on its website) to use the Accused Products in ways
`
`that directly infringe the ‘198 patent. Defendant does so knowing and intending that its customers
`
`and end users will commit these infringing acts. Defendant also continues to make, use, offer for
`
`sale, sell, and/or import the Accused Products, despite its knowledge of the ‘198 patent, thereby
`
`specifically intending for and inducing its customers to infringe the ‘198 patent through the
`
`customers’ normal and customary use of the Accused Products.
`
`68.
`
`Defendant has also infringed, and continue to infringe, claims of the ‘198 patent by
`
`offering to commercially distribute, commercially distributing, making, and/or importing the
`
`Accused Products, which are used in practicing the process, or using the systems, of the patent,
`
`and constitute a material part of the invention. Defendant knows the components in the Accused
`
`Products to be especially made or especially adapted for use in infringement of the patent, not a
`
`staple article, and not a commodity of commerce suitable for substantial noninfringing use.
`
`Accordingly, Defendant has been, and currently are, contributorily infringing the ‘198 patent, in
`
`violation of 35 U.S.C. § 271(c).
`
`69.
`
`The Accused Products satisfy all claim limitations of claims of the ‘198 patent. A
`
`claim charts comparing independent claims of the ‘198 patent to representative Accused Product,
`
`
`
`16
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`Case 6:21-cv-00731-ADA Document 1 Filed 07/15/21 Page 17 of 25
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`
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`is attached as Exhibit ..
`
`70.
`
`By making, using, offering for sale, selling and/or importing into the United States
`
`the Accused Products, Defendant has injured AlmondNet and are liable for infringement of the
`
`‘198 patent pursuant to 35 U.S.C. § 271.
`
`71.
`
`As a result of Defendant’s infringement of the ‘198 patent, AlmondNet is entitled
`
`to monetary damages in