05-26-2017 – Uniloc is suing Apple over a battery discharging system allegedly implicating iPads, iPhones, iPods, Apple Watches and Apple laptops.

Case 2:17-cv-00454 Document 1 Filed 05/26/17 Page 1 of 6 PageID #: 1

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT

    Plaintiffs, Uniloc USA, Inc. (“Uniloc USA”) and Uniloc Luxembourg, S.A. (“Uniloc

Luxembourg”) (together, “Uniloc”), as and for their 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. Uniloc USA also maintains a place of business at 102 N. College, Suite 603, Tyler, Texas 75702.
2. Uniloc Luxembourg is a Luxembourg public limited liability company having a principal place of business at 15, Rue Edward Steichen, 4^th Floor, L-2540, Luxembourg (R.C.S. Luxembourg B159161).
3. Upon information and belief, Apple is a California corporation having a principal place of business in Cupertino, California and regular and established places of business at 2601 Case 2:17-cv-00454 Document 1 Filed 05/26/17 Page 2 of 6 PageID #: 2

Preston Road, Frisco, Texas and 6121 West Park Boulevard, Plano, Texas. Apple offers its products and/or services, including those accused herein of infringement, to customers and potential customers located in Texas and in the judicial Eastern District of Texas. Apple may be served with process through its registered agent for service in Texas: CT Corporation System, 1999 Bryant Street, Suite 900, Dallas, Texas 75201.

JURISDICTION AND VENUE

1. 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 pursuant to 28 U.S.C. §§ 1331, 1338(a) and 1367.

1. Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391(c) and 1400(b). Upon information and belief, Apple is deemed to reside in this judicial district, has committed acts of infringement in this judicial district, and/or has purposely transacted business involving the accused products in Texas and this judicial district.
2. Apple is subject to this Court’s jurisdiction pursuant to due process and/or the Texas Long Arm Statute due at least to its substantial presence and business in this State and judicial district, including: (A) at least part of its past infringing activities, (B) regularly doing and soliciting business in Frisco and Plano, Texas and/or (C) engaging in persistent conduct and deriving substantial revenue from goods and services provided to customers in Texas.

   COUNT I
   
   

   (INFRINGEMENT OF U.S. PATENT NO. 6,661,203)

    

   1. Uniloc incorporates paragraphs 1-6 above by reference.
   2. Uniloc Luxembourg is the owner, by assignment, of U.S. Patent No. 6,661,203

   (“the ‘203 Patent”), entitled BATTERY CHARGING AND DISCHARGING SYSTEM Case 2:17-cv-00454 Document 1 Filed 05/26/17 Page 3 of 6 PageID #: 3

OPTIMIZED FOR HIGH TEMPERATURE ENVIRONMENTS that issued on December 9, 2003.

A true and correct copy of the ‘203 Patent is attached as Exhibit A hereto.

1. Uniloc USA is the exclusive licensee of the ‘203 Patent with ownership of all substantial rights therein, including the right to grant sublicenses, to exclude others, and to enforce, sue and recover past damages for the infringement thereof.
2. iPhones, iPads, iPods, Apple Watches and Apple laptops incorporate rechargeable batteries having a temperature sensor that, inter alia, causes the device to cease charging when the

battery     temperature     exceeds     a     threshold     level.          For     example,     according     to

https://support.apple.com/en-us/HT201678, “the devices will protect [their] internal components by attempting to regulate [their] temperature” and, if overheating is likely, the device “stops charging.”

1. Apple has directly infringed, and continues to directly infringe one or more claims of the ‘203 Patent in the United States during the pendency of the ‘203 Patent, including at least claims 1, 8 and 16 literally and/or under the doctrine of equivalents, by or through making, using, offering for sale and/or selling, inter alia, software and devices such as iPhones, iPads, iPods, Apple Watches and Apple laptops that operate as described above.
2. In addition, should use of the accused devices be found to not literally infringe the asserted claims of the ‘203 Patent, use of the iPads, iPhones, iPods, Apple Watches and Apple laptops as described in this Count would nevertheless infringe the asserted claims of the ‘203 Patent. More specifically, iPads, iPhones, iPods, Apple Watches and Apple laptops perform substantially the same function (charging the battery), in substantially the same way (using a sensor to monitor the temperature of the battery), to yield substantially the same result (a battery that is Case 2:17-cv-00454 Document 1 Filed 05/26/17 Page 4 of 6 PageID #: 4

charged and undamaged by excessive heat). Apple would thus be liable for direct infringement under the doctrine of equivalents.

1. Apple has indirectly infringed and continues to indirectly infringe at least claims 1, 8 and 16 of the ‘203 Patent in the United States by, among other things, actively inducing the using, offering for sale and/or selling iPads, iPhones, iPods, Apple Watches and Apple laptops having the functionality described in this Count. Apple’s customers who use such devices in accordance with Apple’s instructions directly infringe claims 1, 8 and 16 of the ‘203 Patent in violation of 35 U.S.C. § 271. Apple directly and/or indirectly intentionally instructs its customers to infringe through training videos, demonstrations, brochures, installation and/or user guides such as those located at one or more of the following:

• http://www.apple.com
• https://support.apple.com
• https://appleid.apple.com
• https://itunes.apple.com
• http://www.youtube.com

Apple is thereby liable for infringement of the ‘203 Patent under 35 U.S.C. § 271(b).

1. Apple will have been on notice of the ‘203 Patent since, at the latest, the service of this complaint upon Apple. By the time of trial, Apple will have known and intended (since receiving such notice) that its continued actions would actively induce the infringement of claims 1, 8 and 16 of the ‘203 Patent.
2. Apple may have infringed the ‘203 Patent through other software and devices utilizing the same or reasonably similar functionality, including other versions of the accused Case 2:17-cv-00454 Document 1 Filed 05/26/17 Page 5 of 6 PageID #: 5

software and devices. Uniloc reserves the right to discover and pursue all such additional infringing software and devices.

1. Uniloc has been damaged by Apple’s infringement of the ‘203 Patent.

   PRAYER FOR RELIEF
   
   

    Uniloc requests that the Court enter judgment against Apple as follows:

1. declaring that Apple has infringed the ‘203 Patent;
2. awarding Uniloc its damages suffered as a result of Apple’s infringement of the ‘203 Patent;
3. awarding Uniloc its costs, attorneys’ fees, expenses and interest, and
4. granting Uniloc such further relief as the Court may deem just and proper.

DEMAND FOR JURY TRIAL

    Uniloc hereby demands trial by jury on all issues so triable pursuant to Fed. R. Civ. P. 38.

Date: May 26, 2017               Respectfully submitted,

    /s/ Edward R. Nelson III          

Paul J. Hayes (Lead Attorney)

Massachusetts State Bar No. 227000

James J. Foster

Massachusetts State Bar No. 553285

Kevin Gannon

Massachusetts State Bar No. 640931

Dean Bostock

Massachusetts State Bar No. 549747

Robert R. Gilman

Massachusetts State Bar No. 645224

Michael Ercolini

New York State Bar No. 5029905

Aaron Jacobs

Massachusetts State Bar No. 677545

Daniel McGonagle

Massachusetts State Bar No. 690084

PRINCE LOBEL TYE LLP

One International Place, Suite 3700

Boston, MA 02110

Tel: (617) 456-8000

Case 2:17-cv-00454 Document 1 Filed 05/26/17 Page 6 of 6 PageID #: 6

Fax: (617) 456-8100

Email: pjhayes@princelobel.com

Email: jjfoster@princelobel.com

Email: kgannon@princelobel.com

Email: dbostock@princelobel.com

Email: rgilman@princelobel.com

Email: mercolini@princelobel.com

Email: ajacobs@princelobel.com

Email: dmcgonagle@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 7^th Street, Suite 300

Fort Worth, TX 76107

Tel: (817) 377-9111

Fax: (817) 377-3485

ATTORNEYS FOR THE PLAINTIFFS