IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`ANCORA TECHNOLOGIES, INC.
`
`Civil Action No. 6:21-cv-00737
`
`Plaintiff,
`
`Jury Trial Requested
`
`v.
`
`ROKU, INC.,
`
`Defendant.
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`This is an action for patent infringement in which Ancora Technologies, Inc. makes the
`
`following allegations against Roku, Inc. (“Roku”):
`
`RELATED CASE
`
`1.
`
`This case is related to the actions Ancora Technologies, Inc. v. Google, Inc. (W.D.
`
`Tex. Jul. 16, 2021); Ancora Technologies Inc. v. Nintendo Co. Ltd. et al. (W.D. Tex. Jul. 16, 2021);
`
`and Ancora Technologies Inc. v. Vizio, Inc. (W.D. Tex. Jul. 16, 2021)—each of which was filed on
`
`July 16, 2021, in the United States District Court for the Western District of Texas, Waco Division,
`
`asserting infringement of United States Patent No. 6,411,941.
`
`PARTIES
`
`2.
`
`Plaintiff Ancora Technologies, Inc. is a corporation organized and existing under the
`
`laws of the State of Delaware with a place of business at 23977 S.E. 10th Street, Sammamish,
`
`Washington 98075.
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`Nintendo - Ancora Exh. 1077
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`3.
`
`Defendant Roku, Inc., is a corporation organized and existing under the laws of
`
`Delaware with a principal place of business at 9606 N. Mopac Expressway, Suite 400, Austin,
`
`Texas.
`
`JURISDICTION AND VENUE
`
`4.
`
`This action arises under the patent laws of the United States, Title 35 of the United
`
`States Code, such that this Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and
`
`1338(a).
`
`5.
`
`This Court also has personal jurisdiction over Roku, including because Roku also
`
`maintains a regular and established place of business in the Western District of Texas, including at
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`9606 N. Mopac Expressway, Suite 400, Austin, Texas.
`
`6.
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`In addition, directly or through intermediaries, Roku has committed acts within the
`
`Western District of Texas giving rise to this action and/or has established minimum contacts with the
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`Western District of Texas such that the exercise of jurisdiction would not offend traditional notions
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`of fair play and substantial justice.
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`7.
`
`For example, Roku has placed or contributed to placing infringing products like the
`
`Roku Ultra into the stream of commerce via an established distribution channel knowing or
`
`understanding that such products would be sold and used in the United States, including in the
`
`Western District of Texas.
`
`8.
`
`Further, on information and belief, Roku also has derived substantial revenues from
`
`infringing acts in the Western District of Texas, including from the sale and use of infringing
`
`products like the Roku Ultra.
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`9.
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`In addition, venue is proper under 28 U.S.C. § 1391(b)-(c) and 28 U.S.C. § 1400 as
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`Roku maintains a regular and established place of business in the Western District of Texas,
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`including at 9606 N. Mopac Expressway, Suite 400, Austin, Texas.
`
`THE ASSERTED PATENT
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`10.
`
`This lawsuit asserts causes of action for infringement of United States Patent No.
`
`6,411,941 (“the ’941 Patent”), which is entitled “Method of Restricting Software Operation Within a
`
`License Limitation.”
`
`11.
`
`The U.S. Patent and Trademark Office duly and legally issued the ’941 Patent on
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`June 25, 2002.
`
`12.
`
`Subsequent to issue, and at least by December 21, 2004, all right, title, and interest in
`
`the ’941 Patent, including the sole right to sue for any infringement, were assigned to Ancora
`
`Technologies, Inc., which has held, and continues to hold, all right, title, and interest in the ’941
`
`Patent.
`
`13.
`
`The president of Ancora Technologies, Inc.—Mr. Miki Mullor—is one of the
`
`inventors of the ’941 Patent.
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`14.
`
`A reexamination certificate to the ’941 Patent subsequently was issued on June 1,
`
`2010.
`
`15.
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`Since being assigned to Ancora Technologies, Inc., the ’941 Patent has been asserted
`
`in patent infringement actions filed against Microsoft Corporation, Dell Incorporated, Hewlett
`
`Packard Incorporated, Toshiba America Information Systems, Apple Inc., HTC America, Inc., HTC
`
`Corporation, Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., LG Electronics,
`
`Inc., LG Electronics U.S.A., Inc., Sony Mobile Communications AB, Sony Mobile
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`Communications, Inc., Sony Mobile Communications (USA) Inc., Lenovo Group Ltd., Lenovo
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`(United States) Inc., Motorola Mobility, LLC, TCT Mobile (US) Inc., and Huizhou TCL Mobile
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`Communication Co., Ltd.
`
`16.
`
`In the course of these litigations, a number of the ’941 Patent’s claim terms have been
`
`construed, and the validity of the ’941 Patent has been affirmed repeatedly.
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`17.
`
`For example, in December 2012, the United States District Court for the Northern
`
`District of California issued a claim construction order construing the terms (1) “volatile memory”;
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`(2) “non-volatile memory”; (3) “BIOS”; (4) “program”; (5) “license record”; and (6) “verifying the
`
`program using at least the verification structure.” Ancora Techs., Inc. v. Apple Inc., No. 11–CV–
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`06357 YGR, 2012 WL 6738761, at *1 (N.D. Cal. Dec. 31, 2012).
`
`18.
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`Further, the court rejected Apple’s indefiniteness arguments and further held that, at
`
`least with respect to Claims 1-3 and 5-17, “[t]he steps of the Claim do not need to be performed in
`
`the order recited.” Ancora Techs., Inc. v. Apple Inc., No. 11–CV–06357 YGR, 2012 WL 6738761, at
`
`*5, *13 (N.D. Cal. Dec. 31, 2012).
`
`19.
`
`Subsequently, the United States Court of Appeals for the Federal Circuit affirmed the
`
`district court’s rejection of Apple’s indefiniteness argument. Ancora Techs., Inc. v. Apple, Inc., 744
`
`F.3d 732, 739 (Fed. Cir. 2014).
`
`20.
`
`The Federal Circuit also agreed with Ancora Technologies, Inc. that “the district court
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`erred in construing ‘program’ to mean ‘a set of instructions for software applications that can be
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`executed by a computer’”—holding that, as Ancora had argued, the term should be accorded its
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`normal meaning of “‘a set of instructions’ for a computer.” Ancora Techs., Inc. v. Apple, Inc., 744
`
`F.3d 732, 734-35, 737 (Fed. Cir. 2014).
`
`21.
`
`Subsequently, in a more recent decision, the Federal Circuit held that the ’941 Patent
`
`satisfied § 101 as a matter of law—stating: “[W]e conclude that claim 1 of the ’941 patent is not
`
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`directed to an abstract idea.” Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343 (Fed. Cir. 2018),
`
`as amended (Nov. 20, 2018).
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`22.
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`In addition, the Patent Trial and Appeal Board rejected HTC’s request to institute
`
`covered business method review proceedings on the ’941 Patent—explaining that “the ’941
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`[P]atent’s solution to the addressed problem is rooted in technology, and thus, is a ‘technical
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`solution’” and also rejecting HTC’s argument that “the ’941 [P]atent recites a technological solution
`
`that is not novel and nonobvious.”
`
`23.
`
`This Court likewise issued a claim construction order construing or adopting the plain
`
`and ordinary meaning of various claims of the ’941 Patent, including (1) “non-volatile memory”; (2)
`
`“license”; (3) “license record”; (4) “volatile memory”; (5) “BIOS”; (6) “memory of the BIOS”; (7)
`
`“program”; (8) “selecting a program residing in the volatile memory”; (9) “using an agent to set up a
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`verification structure in the erasable, non-volatile memory of the BIOS”; (10) “set up a verification
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`structure”; (11) “verifying the program using at least the verification structure”; (12) “acting on the
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`program according to the verification”; (13) “first non-volatile memory area of the computer”; (14)
`
`the Claim 1 preamble; and (15) the order of Claim 1 steps. Ancora Technologies, Inc. v. LG
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`Electronics, Inc., 1:20-cv-00034-ADA, at Dkt. 69 (W.D Tex. June 2, 2020).
`
`24.
`
`Finally, and most recently, the United States District Court for the Central District of
`
`California issued a claim construction order construing the terms (1) “volatile memory”; (2)
`
`“selecting a program residing in the volatile memory”; (3) “set up a verification structure”; (4)
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`“license record”; (5) “memory of the BIOS”; and (6) the whole of Claim 8. Ancora Techs., Inc v.
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`TCT Mobile (US), Inc., et al., No. 8:19-cv-02192-GW-AS, ECF No. 66 & 69 (C.D. Cal. Nov. 18-19,
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`2020).
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`COUNT 1 – INFRINGEMENT
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`25.
`
`Plaintiff repeats and incorporates by reference each preceding paragraph as if fully set
`
`forth herein and further state:
`
`26.
`
`Roku has infringed the ’941 Patent in violation of 35 U.S.C. § 271(a) by, prior to the
`
`expiration of the ’941 Patent, selling, and/or offering for sale in the United States, and/or importing
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`into the United States, without authorization, products (including operating system software for
`
`products) that are capable of performing at least Claim 1 of the ’941 Patent literally or under the
`
`doctrine of equivalents and, without authorization, then causing such products to perform each step
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`of at least Claim 1 of the ’941 Patent.
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`27.
`
`At a minimum, such Accused Products include those servers/software utilized by
`
`Roku to transmit an over-the-air (“OTA”) software update, as well as those televisions, streaming
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`players, and other devices and technology that included Roku’s operating system software and to
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`which Roku sent or had sent an OTA update that caused such device to perform the method recited
`
`in Claim 1 prior to the expiration of the ’941 Patent.
`
`28.
`
`Such Accused Products include products like the Roku Ultra, which—as detailed
`
`below—Roku configured such that it would be capable of performing each step of Claim 1 of the
`
`’941 Patent and subsequently provided one or more OTA updates that caused the device to perform
`
`each step of Claim 1.1
`
`29.
`
`Such Accused Products also include products like the Roku 2, Roku 3, Roku 4, Roku
`
`Express, Roku Express+, Roku Premiere, Roku Premiere+, Roku Streaming Stick, Roku Streaming
`
`Stick+, and various Roku televisions and Smart TVs (including the TCL S-SERIES LED HD TV,
`
`
`1 This description of infringement is illustrative and not intended to be an exhaustive or limiting
`explanation of every manner in which each Accused Product infringes the ’941 patent. Further, on
`information and belief, the identified functionality of the Roku Ultra is representative of components
`and functionality present in all Accused Products.
`
`
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`TCL 32FS4610R, TCL 40FS4610R, TCL 48FS4610R, TCL 55FS4610R, TCL S3700, TCL
`
`32FS3700, TCL 48FS3700, TCL 50FS3700, TCL 32S3800, TCL 48FS3800, TCL 32S3850, TCL
`
`40FS3850, TCL 50FS3850, TCL 55FS3850, TCL 50UP130, TCL 50FS3800, TCL 40FS3800, TCL
`
`55UP130, TCL 55US5800, TCL 65US5800, TCL 43UP130, TCL UP120, TCL 55UP120, TCL
`
`50UP120, TCL 43UP120, TCL 55P607, TCL 55P605, TCL 75C803, TCL 75C807, TCL 65C807,
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`TCL 55C807, TCL 55C803, TCL 28S305, TCL 32S305, TCL 40S305TCL, TCL 55FS3750, TCL
`
`28S3750, TCL 32S3750, TCL 40FS3750, TCL 48FS3750, TCL 43S305, Element E2AA32R-C,
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`Element E2AA40R-G, Element E2AA40R-T, Element E1AA24R-G, RCA Roku Smart TV, RCA
`
`RTR4261, RCA RTRU5028, RCA RTR4061, RCA RTRU4927, RCA RTRU5027, RCA
`
`RTRU5527, RCA RTRU6527, Hisense 40H4C, Hisense 50H4C, Hisense 40H4C1, Hisense
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`48H4C1, Hisense 50H4C1, Hisense R7 Series ROKU TV, Hisense 65R7E, Hisense 43R7E, Hisense
`
`50R7E, Hisense 55R7E, Hisense 43R7E7020E, Hisense 50R7E7020E, Hisense 55RE7020E,
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`Hisense 65RE7020E, Hisense 43RE7020E, Hisense 50RE7030E, Hisense 55RE7030E, Hisense
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`65RE7030E, Hisense 43RE7060E, Hisense 50RE7060E, Hisense 55RE7060E, Hisense 65RE7060E,
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`Hisense 43RE7070E, Hisense 50RE7070E, Hisense 55RE7070E, Hisense 65RE7070E, Hisense
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`43RE7080E, Hisense 50RE7080E, Hisense 55RE7080E, Hisense 65RE7080E, Hisense R6 Series
`
`ROKU TV, Hisense 43R6E, Hisense 50R6E, Hisense 55R6E, Hisense 60R6E, Hisense 65R6E,
`
`Philips 4000 series LED-LCD TV 40PFL4662/F7, Philips 4000 series LED-LCD TV
`
`50PFL4662/F7, Philips 4000 series LED-LCD TV 24PFL4664/F7, Hitachi 43RC63, Hitachi 55R82,
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`Hitachi 43R80, Hitachi 65R80, Hitachi 55RH1, Hitachi 32RZ2, Hitachi 32RZ2, Hitachi 43R51,
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`Insignia HDTV Roku TV, Insignia NS-39DR510NA17, Insignia NS-24DR220NA18, Insignia NS-
`
`40DR420NA16, Insignia NS-32DR310NA17, Insignia NS-49DR420NA18, Insignia NS-
`
`48DR510NA17, Insignia NS-55DR420NA16, Insignia NS-32DR420NA16, Insignia NS-
`
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`48DR420NA16, Insignia NS-24ER310NA17, Insignia NS-50DR710NA17, Insignia NS-
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`55DR710NA17, Insignia NS-43DR710NA17, Insignia NS-50DR620NA18, Insignia NS-
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`55DR620NA18, Insignia NS-65DR620NA18, and 4K UHD TV with HDR Roku TV), as well as any
`
`predecessor models to such devices, to which Roku sent, or had sent, an OTA update prior to the
`
`expiration of the ’941 Patent.
`
`30.
`
`For example, Claim 1 of the ’941 Patent claims “a method of restricting software
`
`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.”
`
`31. When Roku transmitted an OTA update like its Roku OS 8.0 updates, Roku
`
`performed and/or caused devices like the Roku Ultra to perform each element of Claim 1 as part of
`
`its Roku-specified, pre-configured software update process:
`
`https://support.roku.com/article/208755668.
`
`
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`32.
`
`In particular, each Roku Ultra contains both erasable, non-volatile memory in the
`
`form of flash memory and volatile memory in the form of RAM memory. Such non-volatile memory
`
`includes a partition titled “Registry,” which—on information and belief—is an example of BIOS
`
`memory:
`
`https://developer.roku.com/docs/references/brightscript/components/roregistry.md.
`
`33.
`
`Further, as detailed above, each Roku Ultra was configured by Roku to repeatedly
`
`check to see if a new software update as available, including through the following method:
`
`
`
`https://support.roku.com/article/223372368.
`
`34.
`
`During this process, one or more OTA servers owned or controlled by Roku set up a
`
`verification structure in the erasable, non-volatile memory of the BIOS of the Roku Ultra by
`
`
`
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`transmitting to the device an OTA update, which the Roku Ultra is configured by Roku to save to the
`
`erasable, non-volatile memory of its BIOS:
`
`
`
`https://roku.app.box.com/v/RokuOpenSourceSoftware/folder/51885036304.
`
`35.
`
` As noted previously, on information and belief, such BIOS areas include what Roku
`
`refers to as the “Registry” memory area partition.
`
`36.
`
`This OTA update contains a verification structure that includes data accommodating
`
`at least one license record.
`
`37.
`
`Examples of such a license record include what is known as a Private Key and/or a
`
`Public Key, which may be encrypted with an SHA-1 checksum and/or RSA signature:
`
`
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`https://developer.roku.com/docs/references/brightscript/interfaces/ifrsa.md.
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`
`
`38.
`
`Other
`
`examples
`
`include
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`x509
`
`and/or
`
`root
`
`certificate
`
`authority.
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`https://developer.roku.com/docs/references/brightscript/interfaces/ifhttpagent.md.
`
`39.
`
`Once the verification structure has been set up in the BIOS, the Roku Ultra is
`
`configured by Roku to reboot, load the OTA update into its volatile memory (e.g., RAM), and then
`
`use the at least one license record from the BIOS to verify the OTA update as part of its secure boot
`
`process:
`
`
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`https://developer.roku.com/docs/features/security.md.
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`40.
`
`Examples of such verification functions include the following:
`
`
`
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`https://roku.app.box.com/v/RokuOpenSourceSoftware/folder/51885036304.
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`41.
`
`Examples of the use of such functions to verify an OTA Update include the
`
`following:
`
`42.
`
`If the OTA update is verified, the Roku Ultra is further configured to load and
`
`execute the update.
`
`43.
`
`Further, during the infringing time period, Roku performed or caused to be performed
`
`each of the Claim 1 steps identified above by providing an OTA update to each Accused Product.
`
`44.
`
`Further, Roku expressly conditions participation in the OTA update process and the
`
`receipt of the benefit of a software update on the performance of each of the above steps.
`
`45.
`
`Primarily, as described above, Roku pre-configures/programs each Accused Product
`
`to perform the above described steps upon receiving an OTA update from Roku.
`
`46.
`
`Further, Roku not only set the time and conditions under which a user could receive
`
`and install an OTA update, but Roku required all users to accept and install such updates.
`
`47.
`
`For example, Roku stated the following in its 2015 End User License Agreement:
`
`
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`https://docs.roku.com/api/v1/published/deviceplayereula/en/IE/text.
`
`48.
`
`Similarly, Roku stated the following in its 2017 Terms of Service:
`
`
`
`
`
`https://docs.roku.com/published/usertermsandconditions/en/ie.
`
`49.
`
`Further, Roku emphasizes the benefits associated with updating the software of its
`
`Accused Products, including to “maintain compatibility” with Roku’s products and services.
`
`50.
`
`Roku also identified the specific benefits associated with each OTA update it
`
`provided: https://support.roku.com/article/228844467.
`
`51.
`
`Further, Roku controlled the manner in which each OTA update could be performed,
`
`including by pre-configuring each Accused Product such that, upon receiving an OTA update from
`
`Roku, the device would automatically perform each remaining step of the claimed method.
`
`52.
`
`Roku also controlled the timing of the performance of such method by determining
`
`when to utilize its OTA servers/software to set up a verification structure in each Accused Product.
`
`53.
`
`Roku also had the right and ability to stop or limit infringement simply by not
`
`performing the initial step of using its OTA servers/software to set up a verification structure in each
`
`Accused Product. Absent this action by Roku, the infringement at issue in this lawsuit would not
`
`have occurred.
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`54.
`
`Roku’s infringement has caused damage to Ancora, and Ancora is entitled to recover
`
`from Roku those damages that Ancora has sustained as a result of Roku’s infringement.
`
`DEMAND FOR JURY TRIAL
`
`55.
`
`Ancora hereby demands a jury trial for all issues so triable.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiff prays for judgment as follows:
`
`A.
`
`Declaring that Roku, Inc. 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.
`
`Awarding such other costs and relief the Court deems just and proper, including any
`
`relief that the Court may deem appropriate under 35 U.S.C. § 285.
`
`Date: July 16, 2021
`
`
`
`
`
`
`
`
`
`/s/ Andres Healy
`
`Andres Healy (WA 45578)
`SUSMAN GODFREY LLP
`1201 Third Avenue, Suite 3800
`Seattle, Washington 98101
`Tel: (206) 516-3880
`Fax: 206-516-3883
`ahealy@susmangodfrey.com
`
`Lexie G. White (TX 24048876)
`SUSMAN GODFREY LLP
`1000 Louisiana Street, Suite 5100
`Houston, Texas 77002
`Tel: (713) 651-9366
`Fax: (713) 654-6666
`lwhite@susmangodfrey.com
`
`
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`Charles Ainsworth
`State Bar No. 00783521
`Robert Christopher Bunt
`State Bar No. 00787165
`PARKER, BUNT & AINSWORTH, P.C.
`100 E. Ferguson, Suite 418
`Tyler, TX 75702
`903/531-3535
`E-mail: charley@pbatyler.com
`E-mail: rcbunt@pbatyler.com
`
`
`COUNSEL FOR PLAINTIFF ANCORA
`TECHNOLOGIES, INC.
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