Case 1:19-cv-01247-LPS Document 24 Filed 03/25/20 Page 1 of 33 PageID #: 621
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`SISVEL INTERNATIONAL S.A.,
`
`3G LICENSING S.A.,
`
`Plaintiffs,
`
`Civil Action No. 1:19-cv-01247-LPS
`
`v.
`
`DELL, INC.,
`
`Defendant.
`
`JURY TRIAL DEMANDED
`
`SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiffs Sisvel International S.A. and 3G Licensing S.A. (collectively, “Plaintiffs”), for
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`their Second Amended Complaint against Defendant Dell, Inc. (“Defendant”), allege the
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`following:
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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, 35 U.S.C. § 1 et seq.
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`THE PARTIES
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`2.
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`Sisvel International S.A. (“Sisvel”) is an entity organized under the laws of
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`Luxembourg with a place of business at 6, Avenue Marie Thérèse, 2132 Luxembourg, Grand
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`Duchy of Luxembourg.
`
`3.
`
`3G Licensing S.A. (“3G Licensing”) is also an entity organized under the laws of
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`Luxembourg with a place of business at 6, Avenue Marie Thérèse, 2132 Luxembourg, Grand
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`Duchy of Luxembourg.
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`4.
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`Founded in Italy in 1982, Sisvel is a world leader in fostering innovation and
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`managing intellectual property. Sisvel works with its partners offering a comprehensive approach
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`to patent licensing: from issuing initial calls for essential patents; facilitating discussions among
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`stakeholders; developing multiparty license agreements; executing and administering licenses; to
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`collecting and distributing royalties. At the same time, Sisvel actively promotes a culture of
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`respect and understanding of the intellectual property and innovation ecosystem through, for
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`example, its regular presence at the key consumer electronics trade fairs and intellectual property
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`events, participation in policy discussions and conferences, as well as open dialogues with a
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`number of government bodies, standard-setting organizations and industry associations.
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`5.
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`In early 2016, Sisvel initiated licensing activities in North America via its U.S.
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`subsidiary, Sisvel US Inc.
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`6.
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`A subsidiary of the Sisvel Group founded in 2015, 3G Licensing, is an intellectual
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`property company operating in the consumer electronics and telecommunications industry. The
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`company is composed of specialists with an extensive experience in administering licensing
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`programs on behalf on behalf of third-party companies and organizations.
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`7.
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`Upon information and belief, Defendant is a corporation organized and existing
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`under the laws of Delaware, with its principal place of business at 1 Dell Way, Round Rock, Texas
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`78682.
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`8.
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`Defendant maintains a registered agent for service of process in Delaware at
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`Corporation Service Company, 251 Little Falls Drive, Wilmington, Delaware 19808. Upon
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`information and belief, Defendant sells and offers to sell products and services throughout the
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`United States, including in this judicial district, and introduces products and services that enter
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`Case 1:19-cv-01247-LPS Document 24 Filed 03/25/20 Page 3 of 33 PageID #: 623
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`into the stream of commerce and that incorporate infringing technology knowing that they would
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`be sold in this judicial district and elsewhere in the United States.
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`JURISDICTION AND VENUE
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`9.
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`This Court has jurisdiction over the subject matter jurisdiction of this case under
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`28 U.S.C. §§ 1331 (federal question) and 1338(a) (patent law – 35 U.S.C. § 101, et seq.).
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`10.
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`This Court has personal jurisdiction over Defendant, because Defendant has
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`sufficient minimum contacts within the State of Delaware and this District, pursuant to due process
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`and/or the Del. Code. Ann. Tit. 3, § 3104, as Defendant has purposefully availed itself of the
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`privileges of conducting business in the State of Delaware by regularly conducting and soliciting
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`business within the State of Delaware and within this District, and because Plaintiffs’ causes of
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`action arise directly from Defendant’s business contacts and other activities in the State of
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`Delaware and this District. Further, this Court has personal jurisdiction over Defendant, because
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`it is incorporated in the State of Delaware and has purposely availed itself of the privileges and
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`benefits of the laws of the State of Delaware.
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`11.
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`Venue is proper in this judicial district under 28 U.S.C. § 1400(b) because
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`Defendant has committed acts of infringement in this District as Defendant is incorporated in the
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`State of Delaware.
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`ACCUSED INSTRUMENTALITIES
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`12.
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`Defendant makes, uses, sells and offers for sale, provides, and causes to be used,
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`now and within the past six years at least the 5510 Mobile Broadband Wireless Cellular Modem,
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`the Latitude 5000 Series computers, the Latitude 7000 Series computers, the Precision 3520
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`Workstation laptop, and the Precision 7000 Series computers (“Accused Instrumentalities”),
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`among other such devices.
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`13.
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`Upon information and belief, and as widely reported, Defendant claims that the
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`5510 Mobile Broadband Wireless Cellular Modem product is compliant with the 2G and 3G
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`cellular network standards. (See product datasheet for the 5510 Mobile Broadband Wireless
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`Cellular Modem, attached hereto as Exhibit 1).
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`14.
`
`Defendant advertises that the Latitude 5000 Series computer products are compliant
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`with the 4G/LTE cellular network standard. (See product datasheet for the Latitude 5290 Business
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`Laptop, attached hereto as Exhibit 2).
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`15.
`
`Defendant advertises that the Latitude 7000 Series computer products are capable
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`of being compliant with the 4G/LTE cellular network standard. (See product datasheet for the
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`Latitude 7390 2-in-1 computer, attached hereto as Exhibit 3).
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`16.
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`Defendant advertises that the Precision 3520 Workstation laptop is capable of being
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`compliant with the 4G/LTE cellular network standard. (See product datasheet for the Precision
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`3520 Workstation laptop, attached hereto as Exhibit 4).
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`17.
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`Defendant advertises that the Precision 7000 Series computer products are capable
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`of being compliant with the 4G/LTE cellular network standard. (See product datasheet for the
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`Precision 7730 laptop, attached hereto as Exhibit 5).
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`BACKGROUND
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`18.
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`Plaintiffs are the owners by assignment of a portfolio of patents, including the
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`twelve patents described in detail in the counts below (collectively, the “Asserted Patents”), that
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`relate to technology for cellular communications networks, including variations or generations of
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`cellular communication network technology such as, but not limited to 2G, 3G, and 4G/LTE.
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`19.
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`Cellular communication network technology is used to provide data transmission
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`across mobile cellular networks.
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`Case 1:19-cv-01247-LPS Document 24 Filed 03/25/20 Page 5 of 33 PageID #: 625
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`20.
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`U.S. Patent Nos. 6,529,561 (“the ’561 patent”), 7,433,698 (“the ’698 patent”),
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`8,364,196 (“the ’196 patent”), 7,751,803 (“the ’803 patent”), and 7,894,443 (“the ’443 patent”)
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`were assigned to Nokia Corporation either directly from the inventors or through mergers. In 2011
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`the ’561, ’698, ’196, ’803, and the ’443 patents were assigned to a trust by Nokia Corporation.
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`On April 10, 2012, Sisvel obtained ownership of the ’561, ’698, ’196, ’803, and the ’443 patents.
`
`21.
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`U.S. Patent Nos. 7,274,933 (“the ’933 patent”), 7,460,868 (“the ’868 patent”),
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`7,596,375 (“the ’375 patent”), 8,273,374 (“the ’374 patent”), 8,472,955 (“the ’955 patent”),
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`8,948,756 (“the ’756 patent”), and 8,897,503 (“the ’503 patent”) were assigned to Research in
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`Motion Ltd. from the inventors. Research in Motion Ltd. changed its name to Blackberry, Ltd. in
`
`2013. On November 16, 2018, the ’933, ’868, ’375, ’374, ’955, ’756, and ’503 patents were
`
`assigned to Provenance Asset Group LLC from Blackberry, Ltd. On April 5, 2019, Sisvel obtained
`
`ownership of the ’933, ’868, ’375, ’374, ’955, ’756, and ’503 patents from Provenance Asset
`
`Group LLC. On July 11, 2019, Sisvel assigned the ’933, ’868, ’375, ’374, ’955, ’756, and ’503
`
`patents to 3G Licensing.
`
`22.
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`Sisvel and 3G Licensing are the rightful owners of the Asserted Patents and hold
`
`the entire right, title and interest in the Asserted Patents.
`
`23.
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`Sisvel sent a letter to Dell on October 15, 2013 offering to license Sisvel’s patents
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`essential to cellular standards including 2G, 3G, and 4G/LTE. The correspondence identified
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`certain Dell products that made use of cellular standards that infringe Sisvel’s patents and offered
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`licenses to 47 patent families consisting of over 450 patents. This letter identified the ’561
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`and ’803 patents in an attachment listing available patent licenses.
`
`24.
`
`Sisvel sent another notice letter to Dell on June 1, 2015, informing Dell of
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`additional products that infringed Sisvel’s patents essential to the 4G/LTE cellular standard.
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`Sisvel’s June 1, 2015 letter provided royalty rates, preliminary figures, and licensing procedure
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`information. Having received no response from Dell, Sisvel sent further correspondence to Dell
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`expressing its concern that Dell continued to commercialize products making use of the patents
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`essential to the 4G/LTE cellular standard without a license.
`
`25.
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`Between late January and early February of 2016, Sisvel wrote numerous letters to
`
`Dell informing the company of its continued infringement of the patents essential to the 2G, 3G,
`
`and 4G/LTE standards. These letters included identification of the ’196 patent.
`
`26.
`
`Sisvel sent further letters to Dell on May 7, 2018, informing Dell of its continued
`
`infringement and attaching lists of products which Dell purports are compliant with the relevant
`
`standards. These letters provided further examples of Dell’s of infringing products and contained
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`links to attachments that identified the ’698, and ’443, patents.
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`27.
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`Despite Sisvel’s efforts over nearly five years and numerous demonstrations of
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`infringement, Dell refused to take a license to Sisvel’s patents.
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`COUNT I – INFRINGEMENT OF U.S. PATENT NO. 6,529,561
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`28.
`
`The allegations set forth in the foregoing paragraphs 1 through 27 are incorporated
`
`into this First Claim for Relief.
`
`29.
`
`On March 4, 2003, the ’561 patent, entitled “Data Transmission In Radio System”
`
`was duly and legally issued by the United States Patent and Trademark Office from a patent
`
`application filed on May 10, 2001, which claims priority to a PCT application filed on September
`
`7, 2000, and further claims priority to a foreign patent application filed on September 10, 1999.
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`A true and correct copy of the ’561 patent is attached as Exhibit 6.
`
`30.
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`Plaintiff Sisvel is the assignee and owner of the right, title and interest in and to the
`
`ʼ561 patent, including the right to assert all causes of action arising under said patents and the right
`
`to any remedies for infringement of them.
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`31.
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`The ’561 patent discloses a system and method that Plaintiff believes is essential
`
`under the 2G cellular standard as explained in attached Exhibit 7. The 2G cellular standard is
`
`incorporated in the 3G and 4G LTE standards. Thus, Defendant’s Accused Instrumentalities that
`
`are compliant with 2G, 3G, and 4G LTE standards are necessarily infringing the ’561 patent.
`
`32.
`
`Defendant was made aware of the ʼ561 patent and its infringement thereof on by
`
`correspondence from Plaintiff on October 15, 2013.
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`33.
`
`Defendant was further made aware of the ʼ561 patent and its infringement thereof
`
`at least as early as the date of filing of this Complaint.
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`34.
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`Upon information and belief, Defendant has and continues to directly infringe at
`
`least claim 10 of the ʼ561 patent by making, using, selling, importing, offering for sale, providing,
`
`practicing, and causing the Accused Instrumentality that infringe the patented methods.
`
`35.
`
`Upon information and belief, these Accused Instrumentality are used, marketed,
`
`provided to, and/or used by or for the Defendant’s partners, clients, customers/subscribers and end
`
`users across the country and in this District.
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`36.
`
`Upon information and belief, Defendant has induced and continues to induce others
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`to infringe at least claim 10 of the ’561 patent under 35 U.S.C. § 271(b) by, among other things,
`
`and with specific intent or willful blindness, actively aiding and abetting others to infringe,
`
`including, but not limited to Defendant’s partners, clients, customers/subscribers, and end users,
`
`whose use of the Accused Instrumentality constitutes direct infringement of at least one claim of
`
`the ’561 patent.
`
`37.
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`In particular, the Defendant’s actions that aid and abet others such as its partners,
`
`customers/subscribers, clients, and end users to infringe include advertising and distributing the
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`Accused Instrumentality and providing instruction materials, training, and services regarding the
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`Accused Instrumentality.
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`38.
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`Any party, including Defendant’s partners, clients, customers/subscribers, and end
`
`users, using the Accused Instrumentalities necessarily infringes the ʼ561 patent because the
`
`invention of the ʼ561 patent is required to comply with the relevant cellular standard. Defendant
`
`advertises its Accused Instrumentalities as compliant with the relevant cellular standard, which
`
`induces others to infringe the ʼ561 patent. Defendant has knowingly induced infringement since
`
`at least October 15, 2013 when Defendant was first made aware of the ʼ561 patent during extensive
`
`correspondence with Plaintiffs as discussed in paragraphs 23-27 above.
`
`39.
`
`Upon information and belief, the Defendant is liable as a contributory infringer of
`
`the ʼ561 patent under 35 U.S.C. § 271(c) by offering to sell, selling and importing into the United
`
`States the Accused Instrumentality that infringe the patented methods, to be especially made or
`
`adapted for use in an infringement of the ʼ561 patent. Each of the Accused Instrumentality is a
`
`material component for use in practicing the ʼ561 patent and is specifically made and are not a
`
`staple article of commerce suitable for substantial non-infringing use. In particular, each Accused
`
`Instrumentality is advertised to be compliant with the relevant standard and primarily used in
`
`compliance with that standard.
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`40.
`
`Plaintiffs have been harmed by Defendant’s infringing activities.
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`COUNT II – INFRINGEMENT OF U.S. PATENT NO. 7,433,698
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`41.
`
`The allegations set forth in the foregoing paragraphs 1 through 40 are incorporated
`
`into this Second Claim for Relief.
`
`42.
`
`On October 7, 2008, the ’698 patent, entitled “Cell Reselection Signaling Method”
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`was duly and legally issued by the United States Patent and Trademark Office from Patent
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`Application No. 10/181,078, which is the U.S. National Stage Application of PCT application No.
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`PCT/FI01/00038, filed on January 17, 2001, which claims priority to a foreign patent application
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`filed on January 17, 2000. A true and correct copy of the ’698 patent is attached as Exhibit 8.
`
`43.
`
`Plaintiff Sisvel is the assignee and owner of the right, title and interest in and to the
`
`ʼ698 patent, including the right to assert all causes of action arising under said patents and the right
`
`to any remedies for infringement of them.
`
`44.
`
`The ’698 patent discloses a system and method that plaintiff believes is essential
`
`under the 3G cellular standard as explained in attached Exhibit 9. The 3G cellular standard is
`
`incorporated in the 4G LTE standard. Thus, Defendant’s Accused Instrumentalities that are
`
`compliant with the 3G and 4G LTE standards are necessarily infringing the ’698 patent.
`
`45.
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`Defendant was made aware of the ʼ698 patent and its infringement thereof on by
`
`correspondence from Plaintiff on May 7, 2018.
`
`46.
`
`Defendant was further made aware of the ʼ698 patent and its infringement thereof
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`at least as early as the date of filing of this Complaint.
`
`47.
`
`Upon information and belief, Defendant has and continues to directly infringe at
`
`least claims 10 and/or 11 of the ʼ698 patent by making, using, selling, importing, offering for sale,
`
`providing, practicing, and causing the Accused Instrumentality that infringe the patented methods.
`
`48.
`
`Upon information and belief, these Accused Instrumentality are used, marketed,
`
`provided to, and/or used by or for the Defendant’s partners, clients, customers/subscribers and end
`
`users across the country and in this District.
`
`49.
`
`Upon information and belief, Defendant has induced and continues to induce others
`
`to infringe at least claims 10 and/or 11 of the ’698 patent under 35 U.S.C. § 271(b) by, among
`
`other things, and with specific intent or willful blindness, actively aiding and abetting others to
`
`infringe, including, but not limited to Defendant’s partners, clients, customers/subscribers, and end
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`users, whose use of the Accused Instrumentality constitutes direct infringement of at least one
`
`claim of the ’698 patent.
`
`50.
`
`In particular, the Defendant’s actions that aid and abet others such as its partners,
`
`customers/subscribers, clients, and end users to infringe include advertising and distributing the
`
`Accused Instrumentality and providing instruction materials, training, and services regarding the
`
`Accused Instrumentality.
`
`51.
`
`Any party, including Defendant’s partners, clients, customers/subscribers, and end
`
`users, using the Accused Instrumentalities necessarily infringes the ʼ698 patent because the
`
`invention of the ʼ698 patent is required to comply with the relevant cellular standard. Defendant
`
`advertises its Accused Instrumentalities as compliant with the relevant cellular standard, which
`
`induces others to infringe the ʼ698 patent. Defendant has knowingly induced infringement since
`
`at least May 7, 2018 when Defendant was first made aware of the ʼ698 patent during extensive
`
`correspondence with Plaintiffs as discussed in paragraphs 23-27 above.
`
`52.
`
`Upon information and belief, the Defendant is liable as a contributory infringer of
`
`the ʼ698 patent under 35 U.S.C. § 271(c) by offering to sell, selling and importing into the United
`
`States the Accused Instrumentality that infringe the patented methods, to be especially made or
`
`adapted for use in an infringement of the ʼ698 patent. Each of the Accused Instrumentality is a
`
`material component for use in practicing the ʼ698 patent and is specifically made and are not a
`
`staple article of commerce suitable for substantial non-infringing use. In particular, each Accused
`
`Instrumentality is advertised to be compliant with the relevant standard and primarily used in
`
`compliance with that standard.
`
`53.
`
`Plaintiffs have been harmed by Defendant’s infringing activities.
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`COUNT III – INFRINGEMENT OF U.S. PATENT NO. 8,364,196
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`54.
`
`The allegations set forth in the foregoing paragraphs 1 through 53 are incorporated
`
`into this Third Claim for Relief.
`
`55.
`
`On January 29, 2013, the ’196 patent, entitled “Cell Reselection Signaling Method”
`
`was duly and legally issued by the United States Patent and Trademark Office from a patent
`
`application filed on August 19, 2008 and claims priority a foreign patent application filed on
`
`January 17, 2000. A true and correct copy of the ’196 patent is attached as Exhibit 10.
`
`56.
`
`Plaintiff Sisvel is the assignee and owner of the right, title and interest in and to the
`
`ʼ196 patent, including the right to assert all causes of action arising under said patents and the right
`
`to any remedies for infringement of them.
`
`57.
`
`The ’196 patent discloses a system and method that Plaintiff believes is essential
`
`under the 3G cellular standard as explained in attached Exhibit 11. The 3G cellular standard is
`
`incorporated in the 4G LTE standard. Thus, Defendant’s Accused Instrumentalities that are
`
`compliant with the 3G and 4G LTE standards are necessarily infringing the ’196 patent.
`
`58.
`
`Defendant was made aware of the ʼ196 patent and its infringement thereof on by
`
`correspondence from Plaintiff on February 2, 2016.
`
`59.
`
`Defendant was made further aware of the ʼ196 patent and its infringement thereof
`
`at least as early as the date of filing of this Complaint.
`
`60.
`
`Upon information and belief, Defendant has and continues to directly infringe at
`
`least claims 1, 2, 14, 17 and/or 18 of the ʼ196 patent by making, using, selling, importing, offering
`
`for sale, providing, practicing, and causing the Accused Instrumentality that infringe the patented
`
`methods.
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`61.
`
`Upon information and belief, these Accused Instrumentality are used, marketed,
`
`provided to, and/or used by or for the Defendant’s partners, clients, customers/subscribers and end
`
`users across the country and in this District.
`
`62.
`
`Upon information and belief, Defendant has induced and continues to induce others
`
`to infringe at least claims 1, 2, 14, 17 and/or 18 of the ’196 patent under 35 U.S.C. § 271(b) by,
`
`among other things, and with specific intent or willful blindness, actively aiding and abetting
`
`others
`
`to
`
`infringe,
`
`including, but not
`
`limited
`
`to Defendant’s partners, clients,
`
`customers/subscribers, and end users, whose use of the Accused Instrumentality constitutes direct
`
`infringement of at least one claim of the ’196 patent.
`
`63.
`
`In particular, the Defendant’s actions that aid and abet others such as its partners,
`
`customers/subscribers, clients, and end users to infringe include advertising and distributing the
`
`Accused Instrumentality and providing instruction materials, training, and services regarding the
`
`Accused Instrumentality.
`
`64.
`
`Any party, including Defendant’s partners, clients, customers/subscribers, and end
`
`users, using the Accused Instrumentalities necessarily infringes the ʼ196 patent because the
`
`invention of the ʼ196 patent is required to comply with the relevant cellular standard. Defendant
`
`advertises its Accused Instrumentalities as compliant with the relevant cellular standard, which
`
`induces others to infringe the ʼ196 patent. Defendant has knowingly induced infringement since
`
`at least February 2, 2016 when Defendant was first made aware of the ʼ196 patent during extensive
`
`correspondence with Plaintiffs as discussed in paragraphs 23-27 above.
`
`65.
`
`Upon information and belief, the Defendant is liable as a contributory infringer of
`
`the ʼ196 patent under 35 U.S.C. § 271(c) by offering to sell, selling and importing into the United
`
`States the Accused Instrumentality that infringe the patented methods, to be especially made or
`
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`adapted for use in an infringement of the ʼ196 patent. Each of the Accused Instrumentality is a
`
`material component for use in practicing the ʼ196 patent and is specifically made and are not a
`
`staple article of commerce suitable for substantial non-infringing use. In particular, each Accused
`
`Instrumentality is advertised to be compliant with the relevant standard and primarily used in
`
`compliance with that standard.
`
`66.
`
`Plaintiffs have been harmed by Defendant’s infringing activities.
`
`COUNT IV – INFRINGEMENT OF U.S. PATENT NO. 7,751,803
`
`67.
`
`The allegations set forth in the foregoing paragraphs 1 through 66 are incorporated
`
`into this Fourth Claim for Relief.
`
`68.
`
`On July 6, 2010, the ’803 patent, entitled “Method and Arrangement For
`
`Optimizing the Re-Establishment of Connections In a Cellular Radio System Supporting Real
`
`Time and Non-Real Time Communications” was duly and legally issued by the United States
`
`Patent and Trademark Office from a patent application filed on February 22, 2001 and claims
`
`priority to foreign patent applications filed on February 24, 2000 and March 24, 2000. A true and
`
`correct copy of the ’803 patent is attached as Exhibit 12.
`
`69.
`
`Plaintiff Sisvel is the assignee and owner of the right, title and interest in and to the
`
`ʼ803 patent, including the right to assert all causes of action arising under said patents and the right
`
`to any remedies for infringement of them.
`
`70.
`
`Defendant was made aware of the ʼ803 patent and its infringement thereof on by
`
`correspondence from Plaintiff on October 15, 2013.
`
`71.
`
`Defendant was made further aware of the ʼ803 patent and its infringement thereof
`
`at least as early as the date of filing of this Complaint.
`
`72.
`
`The ’803 patent discloses a system and method that Plaintiff believes is essential
`
`under the 3G cellular standard as explained in attached Exhibit 13. The 3G cellular standard is
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`incorporated in the 4G LTE standard. Thus, Defendant’s Accused Instrumentalities that are
`
`compliant with the 3G and 4G LTE standards are necessarily infringing the ’803 patent.
`
`73.
`
`Upon information and belief, Defendant has and continues to directly infringe at
`
`least claim 17 of the ʼ803 patent by making, using, selling, importing, offering for sale, providing,
`
`practicing, and causing the Accused Instrumentality that infringe the patented methods.
`
`74.
`
`Upon information and belief, these Accused Instrumentality are used, marketed,
`
`provided to, and/or used by or for the Defendant’s partners, clients, customers/subscribers and end
`
`users across the country and in this District.
`
`75.
`
`Upon information and belief, Defendant has induced and continue to induce others
`
`to infringe at least claim 17 of the ’803 patent under 35 U.S.C. § 271(b) by, among other things,
`
`and with specific intent or willful blindness, actively aiding and abetting others to infringe,
`
`including, but not limited to Defendant’s partners, clients, customers/subscribers, and end users,
`
`whose use of the Accused Instrumentality constitutes direct infringement of at least one claim of
`
`the ’803 patent.
`
`76.
`
`In particular, the Defendant’s actions that aid and abet others such as its partners,
`
`customers/subscribers, clients, and end users to infringe include advertising and distributing the
`
`Accused Instrumentality and providing instruction materials, training, and services regarding the
`
`Accused Instrumentality.
`
`77.
`
`Any party, including Defendant’s partners, clients, customers/subscribers, and end
`
`users, using the Accused Instrumentalities necessarily infringes the ʼ803 patent because the
`
`invention of the ʼ803 patent is required to comply with the relevant cellular standard. Defendant
`
`advertises its Accused Instrumentalities as compliant with the relevant cellular standard, which
`
`induces others to infringe the ʼ803 patent. Defendant has knowingly induced infringement since
`
`Page 14 of 33
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`Case 1:19-cv-01247-LPS Document 24 Filed 03/25/20 Page 15 of 33 PageID #: 635
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`at least October 15, 2013 when Defendant was first made aware of the ʼ803 patent during extensive
`
`correspondence with Plaintiffs as discussed in paragraphs 23-27 above.
`
`78.
`
`Upon information and belief, the Defendant is liable as a contributory infringer of
`
`the ʼ803 patent under 35 U.S.C. § 271(c) by offering to sell, selling and importing into the United
`
`States the Accused Instrumentality that infringe the patented methods, to be especially made or
`
`adapted for use in an infringement of the ʼ803 patent. Each of the Accused Instrumentality is a
`
`material component for use in practicing the ʼ803 patent and is specifically made and are not a
`
`staple article of commerce suitable for substantial non-infringing use. In particular, each Accused
`
`Instrumentality is advertised to be compliant with the relevant standard and primarily used in
`
`compliance with that standard.
`
`79.
`
`Plaintiffs have been harmed by Defendant’s infringing activities.
`
`COUNT V – INFRINGEMENT OF U.S. PATENT NO. 7,894,443
`
`80.
`
`The allegations set forth in the foregoing paragraphs 1 through 79 are incorporated
`
`into this Fifth Claim for Relief.
`
`81.
`
`On February 22, 2011,
`
`the ’443 patent, entitled “Radio Link Control
`
`Unacknowledged Mode Header Optimization” was duly and legally issued by the United States
`
`Patent and Trademark Office from a patent application filed on August 23, 2006, and claims
`
`priority to provisional patent application No. 60/710,193 filed on August 23, 2005. A true and
`
`correct copy of the ’443 patent is attached as Exhibit 14.
`
`82.
`
`Plaintiff Sisvel is the assignee and owner of the right, title and interest in and to the
`
`ʼ443 patent, including the right to assert all causes of action arising under said patents and the right
`
`to any remedies for infringement of them.
`
`83.
`
`The ’443 patent discloses a system and method that Plaintiff believes is essential
`
`under the 3G cellular standard as explained in attached Exhibit 15. The 3G cellular standard is
`
`Page 15 of 33
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`Case 1:19-cv-01247-LPS Document 24 Filed 03/25/20 Page 16 of 33 PageID #: 636
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`incorporated in the 4G LTE standard. Thus, Defendant’s Accused Instrumentalities that are
`
`compliant with the 3G and 4G LTE standards are necessarily infringing the ’443 patent.
`
`84.
`
`Defendant was made aware of the ʼ443 patent and its infringement thereof on by
`
`correspondence from Plaintiff on May 7, 2018.
`
`85.
`
`Defendant was made further aware of the ʼ443 patent and its infringement thereof
`
`at least as early as the date of filing of this Complaint.
`
`86.
`
`Upon information and belief, Defendant has and continues to directly infringe at
`
`least claim 16 of the ʼ443 patent by making, using, selling, importing, offering for sale, providing,
`
`practicing, and causing the Accused Instrumentality that infringe the patented methods.
`
`87.
`
`Upon information and belief, these Accused Instrumentality are used, marketed,
`
`provided to, and/or used by or for the Defendant’s partners, clients, customers/subscribers and end
`
`users across the country and in this District.
`
`88.
`
`Upon information and belief, Defendant has induced and continues to induce others
`
`to infringe at least claim 16 of the ’443 patent under 35 U.S.C. § 271(b) by, among other things,
`
`and with specific intent or willful blindness, actively aiding and abetting others to infringe,
`
`including, but not limited to Defendant’s partners, clients, customers/subscribers, and end users,
`
`whose use of the Accused Instrumentality constitutes direct infringement of at least one claim of
`
`the ’443 patent.
`
`89.
`
`In particular, the Defendant’s actions that aid and abet others such as its partners,
`
`customers/subscribers, clients, and end users to infringe include advertising and distributing the
`
`Accused Instrumentality and providing instruction materials, training, and services regarding the
`
`Accused Instrumentality.
`
`Page 16 of 33
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`

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`Case 1:19-cv-01247-LPS Document 24 Filed 03/25/20 Page 17 of 33 PageID #: 637
`
`90.
`
`Any party, including Defendant’s partners, clients, customers/subscribers, and end
`
`users, using the Accused Instrumentalities necessarily infringes the ʼ443 patent because the
`
`invention of the ʼ443 patent is required to comply with the relevant cellular standard. Defendant
`
`advertises its Accused Instrumentalities as compliant with the relevant cellular standard, which
`
`induces others to infringe the ʼ443 patent. Defendant has knowingly induced infringement since
`
`at least May 7, 2018 when Defendant was first made aware of the ʼ443 patent during extensive
`
`correspondence with Plaintiffs as discussed in paragraphs 23-27 above.
`
`91.
`
`Upon information and belief, the Defendant is liable as a contributory infringer of
`
`the ʼ443 patent under 35 U.S.C. § 271(c) by offering to sell, selling and importing into the United
`
`States the Accused Instrumentality