Case 1:20-cv-03452-MEH Document 1 Filed 11/22/20 USDC Colorado Page 1 of 15
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
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`Plaintiff,
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`v.
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`Civil Action No. 1:20-cv-3452
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`JURY TRIAL DEMANDED
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`REMOTE CONCEPTS LLC,
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`SLACK TECHNOLOGIES, INC.,
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`Defendant.
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`COMPLAINT
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`This is an action for patent infringement in which Remote Concepts LLC (“Remote
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`Concepts” or “Plaintiff”) makes the following allegations against Slack Technologies, Inc.
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`(“Slack” or “Defendant”):
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`NATURE OF THE ACTION
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`1.
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`This is an action for patent infringement arising under the Patent Laws of the United
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`States, Title 35 United States Code (“U.S.C.”) to prevent and enjoin Defendant from infringing
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`and profiting, in an illegal and unauthorized manner, and without authorization and/or consent
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`from Plaintiff from U.S. Patent No. 7,016,942 (“the ‘942 Patent”).
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`PARTIES
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`Remote Concepts LLC is a limited liability company organized and existing under
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`2.
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`the laws of the state of Texas.
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`3.
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`Defendant Slack Technologies, Inc. is a corporation organized and existing under
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`the laws of Delaware that maintains an established place of business at 1681 Chestnut Pl, Denver,
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`1
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`CO 80202. Defendant may be served at Corporation Service Company, 251 Little Falls Drive,
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`Wilmington, DE 19808.
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`JURISDICTION AND VENUE
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`4.
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`This is an action for infringement of a United States patent arising under 35 U.S.C.
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`§§ 271(a)-(b), 281, and 284 - 85. This Court has subject matter jurisdiction over this action under
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`28 U.S.C. §1331 and §1338(a).
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`5.
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`Venue is proper in this district pursuant to 28 U.S.C. § 1400(b). Defendant has a
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`regular place of business in this district at 1681 Chestnut Pl, Denver, CO 80202 and has committed
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`acts of patent infringement in this district.
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`6.
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`Defendant is subject to this Court’s specific and general personal jurisdiction
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`pursuant to due process and/or the Colorado Long Arm Statute, due at least to Defendant’s
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`substantial business in this forum, including: (i) at least a portion of the infringements alleged
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`herein; (ii) having a regular established place of business within the forum state; and (iii) regularly
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`doing or soliciting business, engaging in other persistent courses of conduct, and/or deriving
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`substantial revenue from goods and services provided to individuals in Colorado and in this
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`district.
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`herein.
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`7.
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`8.
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`U.S. PATENT NO. 7,016,942
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`Remote Concepts incorporates paragraphs 1 through 7 as though fully set forth
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`On March 21, 2006, United States Patent No. 7,016,942 (the “’942 Patent”) was
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`duly and legally issued by the United States Patent and Trademark Office for an invention entitled
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`“Dynamic Hosting.” A true and correct copy of the ’942 Patent is attached hereto as Exhibit A.
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`9.
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`Gary Odom is the listed inventor of the ’942 Patent.
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`2
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`10.
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`Plaintiff is the owner by assignment of the ’942 Patent, with all rights in and to that
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`patent.
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`11.
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`The ’942 Patent is valid and enforceable, and was duly issued in full compliance
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`with Title 35 of the United States Code.
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`12.
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`The ’942 Patent recognized problems with the existing client-server environment,
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`wherein a client computer’s performance potential was largely untapped. Exhibit A at 1:12-14.
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`As broadband-based connectivity increased, client computers were then able to sustain network
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`connectivity indefinitely, in contrast to previously short-lived dial-up connections. Exhibit A at
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`15-18.
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`13.
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`In a traditional client-server setup, one or more clients connect directly to a server
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`through a network. Id. 2:26-28. The clients receive data from the server and the server acts as a
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`conduit for data transfer between clients ― in other words, the server is a hub for data
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`communication between the clients. Id. at 2:28-33. In the prior art, a server acts as the host, and
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`may also have a backup server, but at no point does a client dynamically become the server for the
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`other clients. Id. at 34-41. The inventions disclosed in the ’942 Patent perform a method for
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`dynamic hosting, which is where a computer connects to a server in a network as a client and one
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`of the clients begins to act as the host or server for the other clients, thereby no longer using the
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`server to function as the host or server for the other clients. Id. at 2:59-65. This allows for a novel
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`solution to a technological problem, i.e., “offloading server tasks to specific clients” and “creating
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`self-sustaining dynamic client-server configurations independent of the server to which the clients
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`originally connected.” Id. at 1:33-36.
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`3
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`COUNT I
`INFRINGEMENT OF U.S. PATENT NO. 7,016,942
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`14.
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`Defendant, directly or through its intermediaries, makes, uses, imports, sells, and/or
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`offers for sale products and/or systems that infringes the claims of the ’942 patent when placed
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`into operation by Defendant or its end users, i.e., Slack Voice and Video calls which utilize
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`WebRTC and substantially similar products (the “Accused Instrumentalities”).
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`15.
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`Upon information and belief, Defendant has been and is now infringing claim 13
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`of the ’942 Patent in the State of Colorado, in this Judicial District, and elsewhere in the United
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`States, by, among other things, directly or through intermediaries, making, using, selling and/or
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`offering for sale the Accused Instrumentalities, covered by one or more claims of the ’942 Patent
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`to the injury of Plaintiff. Defendant is directly infringing, literally infringing, and/or infringing
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`the ’942 Patent under the doctrine of equivalents. Defendant is thus liable for infringement of the
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`’942 Patent pursuant to 35 U.S.C. § 271(a).
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`16. When placed into operation by Defendant or its end users, the Accused
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`Instrumentalities infringe claim 13 of the ’942 Patent as they perform a computer implemented
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`method for channeling data through a network from an initial client/server connectivity to direct
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`client-to-client communication comprising the following steps: at least a first and second client
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`computers connecting through a network to a static server at a pre-designated address, thereby
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`respectively establishing a communications session with said static server, wherein said first client
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`computer and said second client computer not communicating with each other prior to respectively
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`establishing said communications session with said static server; said first computer transmitting
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`a first data to said second computer via said static server; while said first computer maintaining
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`network connectivity to said static server, said first computer directly transmitting a second data
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`to said second computer without said static server intervening.
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`4
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`17.
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`For example, regarding Claim 13, Slack Voice and Video calls is used to set up
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`video calls between users.
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`5
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`https://slack.com/help/articles/115003560786-Slack-voice-and-video-call-security-
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`https://slack.engineering/calls-is-it-you-or-is-it-me/
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`https://webrtc.org/
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`https://webrtc.org/getting-started/peer-connections
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`6
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`https://www.html5rocks.com/en/tutorials/webrtc/infrastructure/
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`https://webrtc.org/getting-started/peer-connections
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`18.
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`Prior to establishing a voice or video conference, the Accused Instrumentalities
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`connects users to a signaling server to coordinate communication with each other. In general, each
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`server almost have a static address such as a pre-designated name address (URL) that can be
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`translated to an actual IP address (the same is also supported by the patent specification) thus, the
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`signaling server can be asserted as “a static server” with pre-designated address.
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`https://www.html5rocks.com/en/tutorials/webrtc/infrastructure
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`7
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`https://www.html5rocks.com/en/tutorials/webrtc/infrastructure/
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`https://webrtc.org/getting-started/peer-connections
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`19.
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`Before the Accused Instrumentalities establishes peer-peer communication
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`between users, each client shares its connectivity information such as IP address, port number etc.
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`with the signaling server, this process is called signaling in WebRTC.
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`https://webrtc.org/getting-started/peer-connections
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`8
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`https://www.html5rocks.com/en/tutorials/webrtc/infrastructure/
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`https://www.html5rocks.com/en/tutorials/webrtc/basics/
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`20.
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`During the signaling process, the Accused Instrumentalities share the connectivity
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`information of one user via the signaling server with the other user (called as receiving peer) to
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`establish the peer-to-peer connection.
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`https://webrtc.org/getting-started/peer-connections
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`9
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`https://www.html5rocks.com/en/tutorials/webrtc/infrastructure/
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`https://webrtc.org/getting-started/peer-connections
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`21.
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`In the Accused Instrumentalities, one user maintains the connection with
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`signaling server while communicating directly with the other user.
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`https://www.html5rocks.com/en/tutorials/webrtc/infrastructure/
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`10
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`https://www.html5rocks.com/en/tutorials/webrtc/infrastructure/
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`https://webrtc.org/
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`22.
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`As a further example regarding Claim 13 of the ’942 Patent, ContactPad requires
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`adding the WebRTC for Vonage Contact Center
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`23. When placed into operation by Defendant or its end users, the Accused
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`Instrumentality infringes claim 14 of the ’942 Patent as it performs the method of claim 13, and
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`further, wherein a third client computer connecting to said static server after said first and second
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`computers, wherein said third client computer and said first client computer not communicating
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`with each other prior to said third computer connecting to said static server; said first client directly
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`11
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`transmitting at least a portion of said second data to said third client computer without said static
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`server receiving said transmission.
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`24.
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`As a result of Defendant’s infringement of the ’942 Patent, Plaintiff has suffered
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`monetary damages and is entitled to a money judgment in an amount adequate to compensate for
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`Defendant’s infringement, but in no event less than a reasonable royalty for the use made of the
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`invention by Defendant, together with interest and costs as fixed by the court.
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`COUNT II
`INDUCED INFRINGEMENT
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`Upon information and belief, Defendant has been and is now inducing the
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`25.
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`infringement by its end users of the Claim 13 of the ’942 Patent in the State of Delaware, in this
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`Judicial District, and elsewhere in the United States by, among other things, making, using, selling,
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`and/or offering for sale the Accused Instrumentalities to the injury of Plaintiff. Defendant’s end
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`users are directly infringing, literally infringing, and/or infringing claim 13 of the ’942 Patent
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`under the doctrine of equivalents. Defendant is thus liable for infringement of claim 13 pursuant
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`to 35 U.S.C. § 271(b).
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`26.
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`Defendant has had knowledge of the ’942 Patent since at least the filing of this
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`complaint.
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`27.
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`By advertising, selling, instruction and providing the Accused Instrumentalities to
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`end users wherein the Accused Instrumentalities infringes upon ordinary use by an end user,
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`Defendant specifically intended to induce infringement. Furthermore, Defendant remains aware
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`that these normal and customary activities would infringe claim 13 of the ’942 Patent. Defendant
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`has had knowledge of the ’942 Patent since the filing of this complaint, and actually induces others,
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`such as end-use customers, to directly infringe by using, selling, supplying, and or distributing the
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`12
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`Accused Instrumentalities within the United States. Defendant is aware since the filing of this
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`Complaint, that such actions would induce actual infringement
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`28.
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`As shown above, Defendant has and continues to directly infringe claim 13 of the
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`’942 Patent by its end users in accordance with 35 U.S.C. § 271(b).
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`29.
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`As shown above, Defendant and its end users have engaged in and currently engage
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`in activities that constitute direct infringement of claim 13 of the ’942 Patent.
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`30.
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`As shown above, the operation and use by Defendant or its end users of the Accused
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`Instrumentalities constitutes direct infringement of claim 13 of the ’942 Patent.
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`31.
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`Defendant’s affirmative act of selling and/or offering for sale the Accused
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`Instrumentalities and providing instruction, advertisement of the infringing features, and support
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`for the Accused Instrumentalities have induced and continues to induce Defendant’s end users to
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`use the Accused Instrumentalities in its normal and customary way to infringe claim 13 of the ’942
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`Patent.
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`32.
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`Additionally, for example, in connection with the sale and/or offering for sale of
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`the Accused Instrumentalities, Defendant provides instructions and support to resellers and end-
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`use customers regarding the user and operation of the Accused Instrumentalities. Specifically,
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`Defendant provides instructions on its website which leads to infringement by end-users. See e.g.
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`https://slack.com/help/articles/115003560786-Slack-voice-and-video-call-security- When end-
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`users follow such instructions and support, they directly infringe claim 13 of the ’942 Patent.
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`Defendant knows or should have known that by providing such instructions and support, resellers
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`and end-use customers follow these instructions and support and directly infringe claim 13 of the
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`’942 Patent.
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`13
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`33.
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`Accordingly, Defendant has performed and continues to perform acts that
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`constitute indirect infringement, and would induce actual infringement, with the knowledge of
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`claim 13 of the ’942 Patent and with the knowledge or willful blindness to the fact that the induced
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`acts would constitute infringement.
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`PRAYER FOR RELIEF
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`Plaintiff requests that the Court find in its favor and against Defendant, and that the Court
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`grant Plaintiff the following relief:
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`a. Judgment that one or more claims of the ’942 Patent have been infringed, either
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`literally and/or under the doctrine of equivalents, by Defendant;
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`b. Judgment that Defendant accounts for and pay to Plaintiff all damages and costs
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`incurred by Plaintiff, caused by Defendant’s infringing activities and other conduct complained of
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`herein;
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`c. That Plaintiff be granted pre-judgment and post-judgment interest on the damages
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`caused by Defendant’s infringing activities and other conduct complained of herein;
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`d. That this Court declare this an exceptional case and award Plaintiff reasonable
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`attorneys’ fees and costs in accordance with 35 U.S.C. § 285; and
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`e. That Plaintiff be granted such other and further relief as the Court may deem just
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`and proper under the circumstances.
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`DEMAND FOR JURY TRIAL
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`Plaintiff, under Rule 38 of the Federal Rules of Civil Procedure, requests a trial by jury or any
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`issues so triable by right.
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`DATED November 22, 2020.
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`Respectfully submitted,
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`Case 1:20-cv-03452-MEH Document 1 Filed 11/22/20 USDC Colorado Page 15 of 15
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`By: /s/ Hao Ni
`Hao Ni
`Texas Bar No. 24047205
`hni@nilawfirm.com
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`Ni, Wang & Massand, PLLC
`8140 Walnut Hill Ln., Ste. 500
`Dallas, TX 75251
`Tel: (972) 331-4600
`Fax: (972) 314-0900
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`ATTORNEY FOR PLAINTIFF
`REMOTE CONCEPTS LLC
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`15
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