Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 1 of 21
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`Civil Action No. 1:18-cv-00164-LY
`
`PATENT CASE
`
`§
`§
`§
`§
`
`§ §
`
`
`§
`§
`§
`§
`§
`§
`
`UNILOC USA, INC. and
`UNILOC LUXEMBOURG, S.A.,
`
`Plaintiffs,
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiffs, Uniloc USA, Inc. (“Uniloc USA”) and Uniloc Luxembourg, S.A. (“Uniloc
`
`Luxembourg”) (together, “Uniloc”), for their first amended complaint against defendant, Apple
`
`Inc. (“Apple”), allege as follows:
`
`THE PARTIES
`
`1.
`
`Uniloc USA is a Texas corporation having a principal place of business at Legacy
`
`Town Center I, Suite 380, 7160 Dallas Parkway, Plano, Texas 75024.
`
`2.
`
`Uniloc Luxembourg is a Luxembourg public limited liability company having a
`
`principal place of business at 15, Rue Edward Steichen, 4th Floor, L-2540, Luxembourg (R.C.S.
`
`Luxembourg B159161).
`
`3.
`
`Apple is a California corporation, having a principal place of business in
`
`Cupertino, California and regular and established places of business at 12535 Riata Vista Circle
`
`and 5501 West Parmer Lane, Austin, Texas. Apple offers its products and/or services, including
`
`2961379.v1
`
`1
`
`Exhibit 1022
`Apple, et al. v. Uniloc
`IPR2019-00251
`
`

`

`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 2 of 21
`
`
`
`those accused herein of infringement, to customers and potential customers located in Texas and
`
`in the judicial Western District of Texas.
`
`
`
`JURISDICTION
`
`4.
`
`Uniloc brings this action for patent infringement under the patent laws of the
`
`United States, 35 U.S.C. § 271, et seq. This Court has subject matter jurisdiction under 28
`
`U.S.C. §§ 1331, 1332(a), and 1338(a).
`
`COUNT I
`(INFRINGEMENT OF U.S. PATENT NO. 6,993,049)
`
`Uniloc incorporates paragraphs 1-4 above by reference.
`
`Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 6,993,049
`
`5.
`
`6.
`
`(“the ’049 Patent”), entitled COMMUNICATION SYSTEM, which issued on January 31, 2006.
`
`A copy of the ’049 Patent is attached as Exhibit A.
`
`7.
`
`Uniloc USA is the exclusive licensee of the ’049 Patent, with ownership of all
`
`substantial rights, including the right to grant sublicenses, to exclude others, and to enforce and
`
`recover past damages for infringement.
`
`8.
`
`The ’049 Patent describes in detail and claims in various ways inventions in
`
`systems and devices developed by Koninklijke Philips Electronics N.V. around 2000 for
`
`improved communication of data therebetween using polling of secondary devices by a primary
`
`device.
`
`9.
`
`The ’049 Patent describes problems and shortcomings in the then-existing field of
`
`communications between devices and describes and claims novel and inventive technological
`
`improvements and solutions to such problems and shortcomings. The technological
`
`improvements and solutions described and claimed in the ’049 Patent were not conventional or
`
`
`
`2
`
`

`

`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 3 of 21
`
`
`
`generic at the time of their respective inventions but involved novel and non-obvious approaches
`
`to the problems and shortcomings prevalent in the art at the time.
`
`10.
`
`The inventions claimed in the ’049 Patent involve and cover more than just the
`
`performance of well-understood, routine and/or conventional activities known to the industry
`
`prior to the invention of such novel and non-obvious systems and devices by the ’049 Patent
`
`inventor.
`
`11.
`
`The inventions claimed in the ’049 Patent represent technological solutions to
`
`technological problems. The written description of the ’049 Patent describes in technical detail
`
`each of the limitations of the claims, allowing a person of ordinary skill in the art to understand
`
`what the limitations cover and how the non-conventional and non-generic combination of claim
`
`elements differed markedly from and improved upon what may have been considered
`
`conventional or generic.
`
`12.
`
`Apple imports, uses, offers for sale, and sells in the United States electronic
`
`devices that utilize Bluetooth Low Energy version 4.0 and above. Such devices include: (1)
`
`iPhone 4s, iPhone5, iPhone 5c, iPhone 5s, iPhone 6, iPhone 6 Plus, iPhone 6s, iPhone 6s Plus,
`
`iPhone SE, iPhone 7, iPhone 7 Plus, iPhone 8, iPhone 8 Plus, iPhone X smartphones; (2) iPad
`
`(3rd, 4th and 5th generation), iPad Mini, iPad Mini 2, iPad Mini 3, iPad Mini 4, iPad Pro, iPad
`
`Air, iPad Air 2 tablets; (3) MacBook, MacBook Air (13 inches), MacBook Pro (13 and 15
`
`inches), iMac (21.5 and 27 inches), Mac Mini, Mac Pro laptops; (4) Apple watch Series 1, Apple
`
`watch series 2, Apple watch series 3, Apple watch Hermes (series 1, 2, 3), Apple watch Edition
`
`(series 2 and 3) watches; (5) iPod (generation 5), iPod touch, iPod Nano; (6) Magic Keyboard,
`
`Magic Mouse, Magic Mouse 2, Magic Trackpad, Magic Trackpad 2; (7) Apple TV and Apple
`
`TV 4K, and (8) Airpods (collectively, “Accused Infringing Devices”).
`
`
`
`3
`
`

`

`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 4 of 21
`
`
`
`13.
`
`The Accused Infringing Devices are electronic devices that implement
`
`communications systems wherein a first or primary device broadcasts messages including data to
`
`a second or secondary device to poll the second or secondary device that may respond to the first
`
`or primary device when the second or secondary device has data to transmit to the first or
`
`primary device.
`
`14.
`
`Apple has infringed, and continues to infringe, claims of the ’049 Patent in the
`
`United States, including claims 1-2, 4, 8-9, and 11, by making, using, offering for sale, selling
`
`and/or importing the Accused Infringing Devices in violation of 35 U.S.C. §271(a).
`
`15.
`
`Using claim 1 merely as an illustrative example of Apple’s infringement, the
`
`Accused Infringing Devices include each and every element of claim 1. The Accused Infringing
`
`Devices include implement a communications system comprising a primary station and at least
`
`one secondary station. For example, the Accused Infringing Devices implementing the
`
`Bluetooth Low Energy communications protocol can broadcast advertising message packets to
`
`other Bluetooth LE-capable devices such as, for example, smartphones, tablets, etc., over pre-
`
`defined advertising channels. A Bluetooth LE-capable device may broadcast advertising packets
`
`on advertising channels during advertising events. These messages are received by other
`
`Bluetooth LE-capable devices. See, e.g., Bluetooth Core Specification 5.01 (Page 169-170,
`
`Volume 1).
`
`16.
`
`The Accused Infringing Devices implement a communications system wherein
`
`the primary station has means for broadcasting a series of inquiry messages, each in the form of a
`
`plurality of predetermined data fields arranged according to a first communications protocol. For
`
`example, the Accused Infringing Devices broadcast a series of Bluetooth low energy advertising
`
`
`1 Bluetooth Version 5.0 is used merely as example to illustrate infringement. Low Energy functionality was first
`implementing in Bluetooth Version 4.0.
`
`
`
`4
`
`

`

`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 5 of 21
`
`
`
`message packets on the advertising channels during advertising events. The Bluetooth low
`
`energy advertising message packets contain predetermined fields such as a Preamble, Access
`
`address, and PDU header. See, e.g., Bluetooth Core Specification 5.0 (Page 193, Volume 1).
`
`
`
`Bluetooth Core Specification 5.0 (Page 2717, Volume 6). As shown above, the Link Layer (“LL B”)
`
`of advertiser (“Host B”) broadcasts a series of advertising message packets (“Advert”) to scanner
`
`Link Layer (“LL A”) of “Host A.” The advertising message packets (Adv) are transmitted on
`
`multiple advertising channels, such as “Adv Ch(k)”, “Adv Ch(k+1)” and “Adv Ch(k+2)” during
`
`the first advertising event, and on two advertising channels (“Adv Ch(k)” and “Adv Ch(k+1)”)
`
`during the second advertising event, as illustrated below.
`
`
`
`
`
`
`
`5
`
`

`

`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 6 of 21
`
`
`
`Bluetooth Core Specification 5.0 (Page 170, Volume 1). The Bluetooth low energy advertising
`
`packets contain predetermined fields such as a Preamble, Access address, and PDU header. The
`
`advertising packet PDU header contains the PDU type, length, etc. The PDU type field may be
`
`ADV_IND, in the case of a “connectable undirected” message.
`
`
`
`Bluetooth Core Specification 5.0 (Page 197, Volume 1).
`
`
`
`
`
`6
`
`

`

`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 7 of 21
`
`
`
`Bluetooth Core Specification 5.0 (Page 2567, Volume 6).
`
`
`
`
`
`https://developer.apple.com/hardwaredrivers/BluetoothDesignGuidelines.pdf (Page 6).
`
`
`
`
`7
`
`

`

`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 8 of 21
`
`
`
`
`Bluetooth Core Specification 5.0 (Page 2609, Volume 6).
`
`
`17.
`
`The Accused Infringing Devices implement a communications system comprising
`
`of means for adding to an inquiry message prior to transmission an additional data field for
`
`polling at least one secondary station. For example, the Accused Infringing Devices using
`
`Bluetooth low energy protocol add the variable PDU Payload field to the advertising messages
`
`prior to transmitting the packet. The PDU Payload includes the advertising payload data, which
`
`varies based on the type of advertising message being sent. In the case of a connectable
`
`undirected advertising message (“ADV_IND”), the scanner/initiator may respond back to the
`
`advertiser by sending a scan request (SCAN_REQ) or connect request (CONNECT_IND PDU).
`
`
`
`8
`
`

`

`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 9 of 21
`
`
`
`
`Bluetooth Core Specification 5.0 (Page 1256, Volume 2).
`
`
`
`Bluetooth Core Specification 5.0 (Page 1193, Volume 2).
`
`
`
`
`
`
`
`9
`
`

`

`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 10 of 21
`
`
`
`
`
`
`
`
`Bluetooth Core Specification 5.0 (Page 2717, Volume 6).
`
`
`
`Bluetooth Core Specification 5.0 (Page 197, Volume 1).
`
`
`
`
`10
`
`

`

`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 11 of 21
`
`
`
`Bluetooth Core Specification 5.0 (Page 2567, Volume 6).
`
`
`
`Bluetooth Core Specification 5.0 (Page 2569, Volume 6)
`
`
`
`
`
`
`
`
`
`
`11
`
`

`

`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 12 of 21
`
`
`
`Bluetooth Core Specification 5.0 (Page 2613, Volume 6)
`
`
`
`Bluetooth Core Specification 5.0 (Page 2614, Volume 6).
`
`
`
`
`
`Bluetooth Core Specification 5.0 (Page 2615, Volume 6).
`
`
`
`
`
`
`12
`
`

`

`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 13 of 21
`
`
`
`
`Bluetooth Core Specification 5.0 (Page 2725, Volume 6)
`
`
`
`
`18.
`
`The Accused Products implement a communications system wherein the at least
`
`one polled secondary station has means for determining when an additional data field has been
`
`added to the plurality of data fields, for determining whether it has been polled from the
`
`additional data field and for responding to a poll when it has data for transmission to the primary
`
`station. For example, the PDU header field contains a “Length” field which, when read by an
`
`initiator/scanner, indicates the presence of the PDU payload data. See, e.g., Bluetooth Core
`
`Specification 5.0 (Page 199, Volume 1).
`
`
`
`
`
`13
`
`

`

`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 14 of 21
`
`
`
`Source: Bluetooth Core Specification 5.0 (Page 199, Volume 1)
`
`
`
`
`Source: Bluetooth Core Specification 5.0 (Page 2567, Volume 6)
`
`
`
`
`
`Bluetooth Core Specification 5.0 (Page 2568, Volume 6).In addition, the PDU header includes the PDU
`
`
`
`Type field, which indicates the type of advertising message and PDU payload data and thus, allows the
`
`scanner/initiator to know whether the advertising event can be responded to.
`
`
`
`
`
`
`14
`
`

`

`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 15 of 21
`
`
`
`
`Bluetooth Core Specification 5.0 (Page 2613, Volume 6). When the advertising event is, for
`
`example, a “connectable undirected” (“ADV _IND”) event and the PDU payload is present, the
`
`initiators/scanners can read the PDU payload data and respond by sending a “scan request”
`
`(“SCAN_REQ”) or “connect request” (“CONNECT_IND”) “response PDU” to the advertiser.
`
`
`
`
`Bluetooth Core Specification 5.0 (Page 2608, Volume 6)
`
`
`
`
`
`15
`
`

`

`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 16 of 21
`
`
`
`
`Bluetooth Core Specification 5.0 (Page 2609, Volume 6)
`
`
`
`
`
`Bluetooth Core Specification 5.0 (Page 2614, Volume 6).
`
`
`Bluetooth Core Specification 5.0 (Page 2615, Volume 6).
`
`
`
`
`16
`
`
`
`
`
`

`

`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 17 of 21
`
`
`
`19.
`
`Apple has been on notice of the ’049 patent since, at the latest, the service of the
`
`original Complaint. Apple has also been on notice of Uniloc’s infringement allegations and
`
`theory of infringement since that date, and thus has known that its continued actions would
`
`contribute to the infringement of claims of the ’049 patent.
`
`20.
`
`Apple has actively induced, and continues to actively induce, infringement by
`
`others, including customers using the Accused Infringing Devices, by encouraging them to use,
`
`and instructing them how to use, those devices that Apple has intentionally designed and
`
`programmed to operate such that a first device broadcasts messages including data to a second
`
`device to poll the second device that may respond when the second device has data to transmit to
`
`the first device, whereby the devices infringe the asserted claims of the ’049 Patent.
`
`21.
`
`Apple’s customers who use those devices in accordance with Apple’s design and
`
`intentions infringe claims of the ’049 Patent. Apple intentionally instructs its customers to
`
`infringe through training videos, demonstrations, brochures, specifications and installation and
`
`user guides, such as those located at:
`
` www.apple.com/iphone-x/specs/
`
` www.apple.com/iphone-8/specs/
`
` www.apple.com/iphone-7/specs/
`
` www.apple.com/iphone-6s/specs/
`
` www.apple.com/iphone-se/specs/
`
` www.apple.com/iphone/compare /
`
` www.apple.com/ipad-pro/specs/
`
` www.apple.com/ipad-9.7/specs/
`
` www.apple.com/ipad-mini-4/specs/
`
`
`
`17
`
`

`

`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 18 of 21
`
`
`
` www.apple.com/apple-tv/specs/
`
` www.apple.com/watch/
`
` https://developer.apple.com/library/content/documentation/NetworkingInternetW
`
`eb/Conceptual/CoreBluetooth_concepts/
`
` https://developer.apple.com/hardwaredrivers/BluetoothDesignGuidelines.pdf
`
` https://support.apple.com/en-US/specs/macnotebooks/
`
`22.
`
`In its marketing and instructional materials, including those identified above,
`
`Apple specifically and intentionally instructs its customers to use the Apple Wireless Devices in
`
`an infringing manner:
`
`
`
`Apple has intentionally designed and sells the Accused Infringing Devices to automatically
`
`operate as described above in violation of the ’049 Patent.
`
`
`
`18
`
`
`
`
`
`

`

`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 19 of 21
`
`
`
`23.
`
`Apple intends and knows that its customers use the Accused Infringing Devices to
`
`operate as described above. When the Accused Infringing Devices are used as intended by
`
`Apple, Apple intentionally induces such infringement.
`
`24.
`
`Apple has known and intended, since service of the original Complaint, that its
`
`continuing encouragement and instructions to perform those infringing acts would induce
`
`performance of the infringing acts by others, including customers. Despite that knowledge, and
`
`as evidence of its intent, Apple has refused to discontinue the inducing acts and refused to
`
`remove the infringing functionality from the Accused Infringing Devices.
`
`25.
`
`Apple has also infringed, and continues to infringe, claims 1-2, 4, 8-9, and 11 of
`
`the ’049 patent by offering to commercially distribute, commercially distributing, or importing
`
`the Accused Infringing Devices which devices are used in practicing the processes, or using the
`
`systems, of the ’049 patent, and constitute a material part of the invention. For example, the
`
`Accused Infringing Devices include software for causing operation of the communications
`
`systems wherein a first or primary device broadcasts messages including data to a second or
`
`secondary device to poll the second or secondary device that may respond to the first or primary
`
`device when the second or secondary device has data to transmit to the first or primary device
`
`(“Infringing Software”), which is packaged with other software in the Accused Infringing
`
`Devices. Apple knows that the Infringing Software is especially made or especially adapted for
`
`use in infringement of the ’049 patent, not a staple article, and not a commodity of commerce
`
`suitable for substantial non-infringing use. Apple is thereby liable for infringement of the ’049
`
`Patent under 35 U.S.C. § 271(c).
`
`26.
`
`Apple has been on notice of the ’049 Patent since, at the latest, the service of the
`
`Original Complaint upon it. By the time of trial, Apple will have known and intended (since
`
`
`
`19
`
`

`

`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 20 of 21
`
`
`
`receiving such notice) that its continued actions would actively induce and contribute to the
`
`infringement of claims 1-2, 4, 8-9, and 11 of the ’049 Patent.
`
`27.
`
`Apple may have infringed the ’049 Patent through other software and devices
`
`utilizing the same or reasonably similar functionality, including other versions of the Accused
`
`Infringing Devices.
`
`28.
`
`Uniloc has been damaged by Apple’s infringement of the ’049 Patent.
`
`PRAYER FOR RELIEF
`
`Uniloc requests that the Court enter judgment against Apple:
`
`(A)
`
`declaring that Apple has infringed the ’049 Patent;
`
`(B)
`
`awarding Uniloc its damages suffered as a result of Apple’s infringement of the
`
`’049 Patent;
`
`(C)
`
`awarding Uniloc its costs, attorneys’ fees, expenses, and interest, and
`
`(D)
`
`granting Uniloc such further relief as the Court finds appropriate.
`
`
`
`
`
`
`
`
`20
`
`

`

`Case 1:18-cv-00164-LY Document 31 Filed 05/30/18 Page 21 of 21
`
`
`
`
`
`Date: May 30, 2018
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`/s/ Kevin Gannon
`Kevin Gannon
`Massachusetts State Bar No. 640931
`James J. Foster
`Massachusetts State Bar No. 553285
`Aaron Jacobs
`Massachusetts State Bar No. 677545
`PRINCE LOBEL TYE LLP
`One International Place, Suite 3700
`Boston, MA 02110
`Tel: (617) 456-8000
`Fax: (617) 456-8100
`Email: kgannon@princelobel.com
`Email: jfoster@princelobel.com
`Email: ajacobs@princelobel.com
`
`
`
`
`
`Edward R. Nelson III
`ed@nelbum.com
`Texas State Bar No. 00797142
`Anthony M. Vecchione
`anthony@nelbum.com
`Texas State Bar No. 24061270
`NELSON BUMGARDNER PC
`3131 West 7th Street, Suite 300
`Fort Worth, TX 76107
`Tel: (817) 377-9111
`Fax: (817) 377-3485
`
`ATTORNEYS FOR THE PLAINTIFFS
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that all counsel of record who have consented to electronic service are being
`served with a copy of this document via the Court’s CM/ECF system per Local Rule CV-5(a)(3)
`on May 30, 2018.
`
`/s/ Kevin Gannon
`Kevin Gannon
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`21
`
`