Case 1:19-cv-01703-UNA Document 1 Filed 09/11/19 Page 1 of 11 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`ANCORA TECHNOLOGIES, INC.,
`
`Plaintiff,
`
`v.
`
`SONY CORPORATION,
`SONY MOBILE COMMUNICATIONS AB,
`SONY MOBILE COMMUNICATIONS, INC.,
`AND SONY MOBILE COMMUNICATIONS
`(USA) INC.,
`
`Defendants.
`
`Civil Action No. ____________
`
` JURY TRIAL DEMANDED
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff, ANCORA TECHNOLOGIES, INC. (“Ancora”), for its Complaint against Sony
`Corporation, Sony Mobile Communications (USA), Inc., Sony Mobile Communications, Inc., and
`Sony Mobile Communications AB (collectively “Sony” or “Defendants”) states the following:
`
`THE PARTIES
`I.
`Plaintiff Ancora Technologies, Inc. is a corporation organized and existing under
`1.
`the laws of the State of Delaware and having a place of business at 23977 S.E. 10th Street,
`Sammamish, Washington 98075.
`2.
`Upon information and belief, Sony Corporation is a corporation organized under
`the laws of Japan with its principal place of business located at 1-7-1 Konan Minato-ku, Tokyo,
`108-0075 Japan.
`3.
`Upon information and belief, Sony Mobile Communications, Inc. is a Japanese
`corporation that is a wholly-owned subsidiary of Sony Corporation with a principal place of
`business located at 4-12-3 Higashi-shinagawa, Shinagawa-ku, Tokyo, 140-0002, Japan. Upon
`information and belief, Sony Mobile Communications, Inc. offers for sale mobile devices, such as
`smartphones, through its website at https://www.sonymobile.com/us/products/phones/. Upon
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`information and belief, Sony Mobile Communications, Inc. offers for sale mobile devices, such as
`smartphones, through an Amazon storefront website at https://tinyurl.com/Sony-Amazon-Store.
`Upon information and belief, Sony Mobile Communications, Inc. directs sales of its mobile
`devices to Delaware residents through at least these websites.
`Upon information and belief, Sony Mobile Communications AB is also a wholly-
`4.
`owned subsidiary of Sony Corporation and is incorporated under the laws of Sweden with its
`principal place of business at Nya Vattentornet SE-221, 88 Lund, Sweden. Upon information and
`belief, Sony Mobile Communications AB offers for sale mobile devices, such as smartphones,
`through its website at https://www.sonymobile.com/us/products/phones/. Upon information and
`belief, Sony Mobile Communications AB offers for sale mobile devices, such as smartphones,
`through an Amazon storefront website at https://tinyurl.com/Sony-Amazon-Store. Upon
`information and belief, Sony Mobile Communications AB directs sales of its mobile devices to
`Delaware residents through at least these websites.
`Upon information and belief, Sony Mobile Communications (USA), Inc. is a
`5.
`wholly-owned subsidiary of Sony Mobile Communications AB and is incorporated under the laws
`of the State of Delaware with its principal place of business located at 2207 Bridgepointe Pkwy,
`San Mateo, CA 94404. Sony Mobile Communications (USA), Inc. may be served via its registered
`agent, Capitol Services, Inc., 1675 S. State St., Ste. B, Dover, DE, 19901.
`Upon information and belief, Sony is in the business of supplying mobile devices,
`6.
`such as smartphones, to its customers in the United States, including within this District.
`
`JURISDICTION
`II.
`This is an action for patent infringement arising under the provisions of the Patent
`7.
`Laws of the United States of America, Title 35, United States Code, namely 35 U.S.C. §§ 271,
`281, and 284-285, among others.
`This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and
`8.
`1338(a).
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`Venue is proper in this District as to Sony Corporation and Sony Mobile
`9.
`Communications AB because they are foreign entities that may be sued in any judicial district
`under 28 U.S.C. § 1391(c).
`Venue is proper in this District as to Sony Mobile Communications (USA) Inc.
`10.
`under 28 U.S.C. § 1400(b) because it was formed under the laws of the State of Delaware and,
`therefore, resides in this District.
`Sony is subject to personal jurisdiction pursuant to due process due at least to its
`11.
`substantial business in this State, including: (A) at least part of its infringing activities alleged
`herein; and (B) regularly doing or soliciting business, engaging in other persistent conduct, and/or
`deriving substantial revenue from goods sold and services provided to Delaware residents. Sony
`has conducted and regularly conducts business within the United States and this District. Sony has
`purposefully availed itself of the privileges of conducting business in the United States, and more
`specifically in Delaware and this District. Sony has sought protection and benefit from the laws of
`the State of Delaware by placing infringing products into the stream of commerce through an
`established distribution channel with the awareness and/or intent that they will be purchased by
`consumers in this District.
`On information and belief, Sony has significant ties to, and presence in, this
`12.
`District, making venue in this District both proper and convenient for this action.
`
`III. BACKGROUND
`On June 25, 2002, U.S. Patent No. 6,411,941 (“the ’941 patent”) entitled “Method
`13.
`Of Restricting Software Operation Within A License Limitation” was duly and legally issued. (See
`Exhibit A, U.S. Patent No. 6,411,941.) A reexamination certificate also issued to the ’941 patent
`on June 1, 2010 where the patentability of all claims was confirmed by the United States Patent
`Office. (Exhibit B, Ex Parte Reexamination Certificate Issued Under 35 U.S.C. § 307.)
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`The ’941 patent has been involved in litigation against Microsoft Corporation, Dell
`14.
`Incorporated, Hewlett Packard Incorporated, and Toshiba America Information Systems. (See
`2009-cv-00270, Western District of Washington.)
`The ’941 patent has also been involved in litigation against Apple Incorporated.
`15.
`(See 2015-cv-03659, Northern District of California.)
`The ’941 patent is currently involved in litigation against HTC America, Inc. and
`16.
`HTC Corporation. (See 2016-cv-01919, Western District of Washington.)
`The ’941 patent is currently involved in litigation against Samsung Electronics
`17.
`America, Inc. and Samsung Electronics Co., Ltd. (See 2019-cv-00385, Western District of Texas.)
`The ’941 patent is currently involved in litigation against LG Electronics USA, Inc.
`18.
`and LG Electronics, Inc. (See 2019-cv-00384, Western District of Texas.)
`The ’941 patent was involved in a Covered Business Method proceeding before the
`19.
`U.S. Patent and Trademark Office (See PTAB-CBM2017-00054). The U.S. Patent and Trademark
`Office denied institution of the petition filed by HTC and found the ’941 patent recites a
`“technological improvement to problems arising in prior art software and hardware methods of
`restricting an unauthorized software program’s operation.” (See PTAB-CBM2017-00054, Paper
`No. 7 at pg. 9.)
`The U.S. Court of Appeals for the Federal Circuit further issued an order on
`20.
`November 16, 2018 regarding the validity of the ‘941 patent. (See CAFC 18-1404, Dkt. # 39.) In
`this appeal, the U.S. Court of Appeals for the Federal Circuit held:
`
`
`[T]he claimed invention moves a software-verification structure to a BIOS location
`not previously used for this computer-security purpose and alters how the function
`is performed (in that the BIOS memory used for verification now interacts with
`distinct computer memory to perform a software-verification function), yielding a
`tangible technological benefit (by making the claimed system less susceptible to
`hacking).
`
`CAFC 18-1404, Dkt. # 39, pg. 13.
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`21.
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`The U.S. Court of Appeals for the Federal Circuit further issued an order on March
`
`3, 2014 regarding claim construction and invalidity of the ’941 patent. (See CAFC 13-1378, Dkt.
`
`# 57.)
`
`22.
`
`Ancora is the owner of all right, title and interest in the ’941 patent.
`
`IV. COUNT I – PATENT INFRINGEMENT
`Ancora realleges the preceding paragraphs as though set forth fully herein.
`23.
`Sony has infringed the ’941 patent in violation of 35 U.S.C. § 271(a) by, prior to
`24.
`the expiration of the ’941 patent, using, selling, and/or offering for sale in the United States, and/or
`importing into the United States, without authorization, products that are capable of performing at
`least Claim 1 of the ’941 patent literally or under the doctrine of equivalents and/or, without
`authorization, causing products to perform each step of at least Claim 1 of the ’941 patent.
`Sony’s products which infringe the ’941 patent include, but are not limited to, the
`25.
`Xperia X, Xperia XZ, Xperia XA, Xperia XA1, Xperia XZ1, Xperia XZ2, Xperia E5, and Xperia
`XA Ultra (“Accused Products”). (See e.g., https://www.androidauthority.com/android-7-0-update-
`679175/.)
`At a minimum, such Accused Products include servers/software utilized by Sony
`26.
`to transmit over-the-air (“OTA”) software updates, as well as those smartphones and other devices
`and technology that received from Sony, or received at Sony’s direction, an OTA update that cause
`the Accused Products to perform the method recited in Claim 1 prior to the expiration of the ’941
`patent. Sony also provides software that enables the Accused Products to connect to
`servers/software utilized by Sony to transmit software updates, as well as those smartphones and
`other devices and technology that received from Sony, or received at Sony’s direction, that cause
`the Accused Products to perform the method recited in Claim 1 prior to the expiration of the ’941
`patent. (See e.g., https://support.sonymobile.com/gb/software/.)
`Such Accused Products are configured by Sony such that they are capable of
`27.
`performing each step of Claim 1 of the ‘941 patent and to which Sony provided one or more OTA
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`updates on or about December 16, 2016, April 25, 2017, and June 15, 2017, that would cause a
`Sony device to perform each step of Claim 1 in order to upgrade its operating system. (See e.g.,
`https://www.androidauthority.com/android-7-0-update-679175/.)
`For example, Claim 1 of the ’941 patent claims “a method of restricting software
`28.
`operation within a license for use with a computer including an erasable, non-volatile memory area
`of a BIOS of the computer, and a volatile memory area; the method comprising the steps of: [1]
`selecting a program residing in the volatile memory, [2] using an agent to set up a verification
`structure in the erasable, non-volatile memory of the BIOS, the verification structure
`accommodating data that includes at least one license record, [3] verifying the program using at
`least the verification structure from the erasable non-volatile memory of the BIOS, and [4] acting
`on the program according to the verification.”
`29. When Sony transmitted an OTA update like those it sent on or about December 16,
`2016, April 25, 2017, and June 15, 2017, Sony performed and/or caused to be performed each of
`these elements as part of what is described as “verified boot”:
`
`
`https://source.android.com/security/verifiedboot
`Each Accused Product contains both erasable, non-volatile memory in the form of
`30.
`ROM and volatile memory in the form of RAM.
`Further, each Accused Product is configured by Sony to perform the below
`31.
`described process (or one substantially like it) in order to install an OTA update:
`
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`https://source.android.com/devices/tech/ota/nonab
`For example, during this process, a program running on one or more OTA servers
`32.
`owned and/or controlled by Sony sets up a verification structure in the erasable, non-volatile
`memory of the BIOS of the Accused Products by transmitting to the device an OTA update, which
`is configured by Sony to thereafter save to a cache or data partition of the erasable, non-volatile
`memory of its BIOS.
`includes data
`that
`This OTA update contains a verification structure
`33.
`accommodating at least one license record. Examples of such a license record include a
`cryptographic signature or key:
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`https://source.android.com/devices/tech/ota/sign_builds
`Such license record also may comprise a cryptographic hash or hash tree:
`34.
`
`
`
`https://source.android.com/security/verifiedboot/verified-boot.
`
`
`
`
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`Once the verification structure has been set up in the BIOS, the Accused Products
`35.
`are configured by Sony to reboot into recovery mode, load the OTA update into its volatile memory
`(e.g., RAM), and use the at least one license record from the BIOS to verify the OTA update.
`If the OTA update is verified, the Accused Products are further configured to load
`36.
`and execute the update.
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`In sum, as described above, once Sony has set up the verification structure by
`37.
`transmitting to a device an OTA update like those Sony provided on or about December 16, 2016,
`April 25, 2017, and June 15, 2017, each Accused Product is configured to automatically perform
`each of the remaining Claim 1 steps.
`Further, on information and belief, when Sony provided an OTA update like those
`38.
`Sony provided on or about December 16, 2016, April 25, 2017, and June 15, 2017, Sony performed
`or caused to be performed each of the Claim 1 steps.
`Further, on information and belief, Sony conditions participation in the OTA update
`39.
`process and the receipt of the benefit of a software update on the performance of each of the above
`steps.
`
`Primarily, on information and belief, and as described above, Sony pre-
`40.
`configures/programs each Accused Product to perform the above described steps upon receiving
`an OTA update from Sony.
`Further, on information and belief, Sony takes steps to ensure that each Accused
`41.
`Product cannot install an OTA update except by performing each of the above described steps.
`Further, on information and belief, Sony emphasizes the benefits associated with
`42.
`updating the software of its Accused Products.
`Further, on information and belief, Sony controlled the manner of the performance
`43.
`of such method. As set forth above, Sony configured each Accused Product such that, upon
`receiving an OTA update, it would automatically perform each remaining step of the claimed
`method.
`On information and belief, Sony also controlled the timing of the performance of
`44.
`such method by determining when to utilize its OTA servers/software to set up a verification
`structure in each Accused Product.
`On information and belief, Sony also had the right and ability to stop or limit
`45.
`infringement simply by not performing the initial step of using its OTA servers/software to set up
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`a verification structure in each Accused Product. Absent this action by Sony, the infringement at
`issue would not have occurred.
`Sony’s infringement of the ’941 patent has caused damage to Ancora, and Ancora
`46.
`is entitled to recover from Sony those damages Ancora has sustained as a result of Sony’s
`infringement.
`
`V.
`
`DEMAND FOR RELIEF
`
`WHEREFORE, Plaintiff respectfully requests that this Court enter judgment against Sony
`
`as follows:
`
`A.
`
`Declaring that Sony has infringed United States Patent No. 6,411,941 in violation
`
`of 35 U.S.C. § 271;
`
`B.
`
`Awarding damages to Ancora arising out of this infringement, including enhanced
`
`damages pursuant to 35 U.S.C. § 284 and prejudgment and post-judgment interest, in an amount
`
`according to proof;
`
`C.
`
`D.
`
`Awarding Ancora its costs and expenses in this action;
`
`Declaring that this case is exceptional, and that Ancora is entitled to its reasonable
`
`attorneys’ fees pursuant to 35 U.S.C. § 285; and
`
`E.
`
`Awarding such other and further relief the Court deems just and proper, including
`
`any relief that the Court may deem appropriate under 35 U.S.C. § 285.
`
`VI. DEMAND FOR JURY TRIAL
`Ancora respectfully demands a trial by jury of any and all issues triable of right by a jury
`in this action.
`
`
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`
`Dated: September 11, 2019
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`
`
`OF COUNSEL:
`
`BROOKS KUSHMAN P.C.
`John P. Rondini
`Mark A Cantor
`John S. LeRoy
`Marc Lorelli
`1000 Town Center, 22nd Floor
`Southfield, Michigan 48075-1238
`(248) 358-4400
`jrondini@brookskushman.com
`mcantor@brookskushman.com
`jleroy@brookskushman.com
`mlorelli@brookskushman.com
`
`
`
`
`
`
`
`SMITH, KATZENSTEIN & JENKINS LLP
`
`
`/s/ Neal C. Belgam
`Neal C. Belgam (No. 2721)
`Eve H. Ormerod (No. 5369)
`Beth A. Swadley (No. 6331)
`The Brandywine Building
`1000 West Street, Suite 1501
`Wilmington, DE 19801
`302.652.8400
`nbelgam@skjlaw.com
`eormerod@skjlaw.com
`bswadley@skjlaw.com
`
`Attorneys for Plaintiff
`Ancora Technologies, Inc.
`
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