Case 1:19-cv-02090-CFC Document 1 Filed 11/04/19 Page 1 of 38 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`
`C.A. No. ________________
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`JURY TRIAL DEMANDED
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`))))))))))
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`MONTEREY RESEARCH, LLC,
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`
`
`NANYA TECHNOLOGY CORPORATION,
`NANYA TECHNOLOGY CORPORATION,
`U.S.A., and NANYA TECHNOLOGY
`CORPORATION DELAWARE,
`
`
`
`
`
`v.
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`
`
`
`
`
`
`Plaintiff,
`
`Defendants.
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`
`
`
`
`COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff Monterey Research, LLC (“Monterey”), for its Complaint for Patent Infringement
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`against Defendants Nanya Technology Corporation (“Nanya Technology Corp.”), Nanya
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`Technology Corporation, U.S.A. (“Nanya USA”), and Nanya Technology Corporation Delaware
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`(“Nanya Delaware”) (collectively, “Nanya” or “Nanya Defendants”) alleges as follows:
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`INTRODUCTION
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`1.
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`Monterey is an intellectual property and technology licensing company.
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`Monterey’s patent portfolio comprises over 2,700 active and pending patents worldwide, including
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`approximately 2,000 active United States patents. Monterey’s patent portfolio stems from
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`technology developed from a number of leading high-technology companies, including Cypress
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`Semiconductor Corporation, Advanced Micro Devices, Fujitsu, NVX Corporation, Ramtron, and
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`Spansion. Those companies developed key innovations that have greatly enhanced the capabilities
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`of computer systems, increased electronic device processing power, and reduced electronic device
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`power consumption. Among other things, those inventions produced significant technological
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`advances, including smaller, faster, and more efficient semiconductors and integrated circuits.
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`2.
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`The Nanya Defendants, jointly and severally, have infringed and continue to
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`infringe Monterey’s patents. Moreover, despite Monterey notifying them of infringement, the
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`Nanya Defendants have thus far refused to license Monterey’s patents and, instead, have continued
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`to make, use, sell, offer to sell, and/or import Monterey’s intellectual property within the United
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`States without Monterey’s permission.
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`NATURE OF THE CASE
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`3.
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`This action arises under 35 U.S.C. § 271 for Nanya’s infringement of Monterey’s
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`United States Patent Nos. 6,363,031 (“the ’031 patent”); 6,651,134 (“the ’134 patent”); 6,680,516
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`(“the ’516 patent”); 6,825,526 (“the ’526 patent”); 6,902,993 (“the ’993 patent”); and 7,158,429
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`(“the ’429 patent”) (collectively, “the Patents-in-Suit”).
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`THE PARTIES
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`4.
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`Plaintiff Monterey is a Delaware limited liability company with offices in New
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`Jersey and California. Monterey maintains a registered agent for service in Delaware: Intertrust
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`Corporate Services Delaware Ltd. located at 200 Bellevue Parkway, Suite 210, Wilmington,
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`Delaware 19808.
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`5.
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`Defendant Nanya Technology Corp. is a corporation organized under the laws of
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`Taiwan, with a corporate office at No. 98 Nanlin Road Dake Vil., Taishan District, New Taipei
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`City, Taiwan. Nanya Technology Corp. is a publicly traded company and is the parent corporation
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`of defendants Nanya U.S.A. and Nanya Delaware.
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`6.
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`Defendant Nanya U.S.A. is a California corporation with a principal place of
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`business at 1735 Technology Drive, Suite 400, San Jose, California, 95110. Nanya U.S.A. is a
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`wholly-owned subsidiary of Nanya Technology Corp. Nanya Technology Corp.’s semiconductor
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`research and engineering business is conducted wholly or in part through the actions of Nanya
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`U.S.A. Furthermore, Nanya U.S.A. is responsible for the sales, offers for sale, importation, and
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`marketing of Nanya’s products throughout the United States. Nanya Technology Corp. controls
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`and directs the actions of Nanya U.S.A., and therefore both directs Nanya U.S.A. to infringe and
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`itself infringes Monterey’s patents.
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`7.
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`Defendant Nanya Delaware is a Delaware corporation with a principal place of
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`business at 20 Winter Sport Lane, Suite 105, Williston, Vermont, 05945. Defendant Nanya
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`Delaware is a wholly-owned subsidiary of Nanya Technology Corp. Nanya Delaware is
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`responsible, among other things, for designing, researching, developing, and testing Nanya
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`products. Nanya Technology Corp. controls and directs the actions of Nanya Delaware, and
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`therefore both directs Nanya Delaware to infringe and itself infringes Monterey’s patents. Nanya
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`Delaware may be served through its registered agent for service, Business Filings Incorporated,
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`108 West 13th Street, New Castle, Delaware, 19801.
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`8.
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`Nanya Technology Corp. exercises control over Nanya U.S.A. and Nanya
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`Delaware, and acts collectively with Nanya U.S.A. and Nanya Delaware to infringe Monterey’s
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`patents by making, using, selling, offering for sale, and/or importing products (including importing
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`products made by a patented process) throughout the United States, including within this District.
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`Nanya’s customers incorporate those products into downstream products that are made, used, sold,
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`offered for sale, and/or imported throughout the United States, including within this District.
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`Those downstream products include, but are not limited to, smartphones, tablets, televisions,
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`smartwatches, and other products that include Nanya semiconductor devices and integrated
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`circuits.
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`JURISDICTION AND VENUE
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`9.
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`This Court has jurisdiction over the subject matter of this action under 28 U.S.C.
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`§§ 1331 and 1338(a) at least because this action arises under the patent laws of the United States,
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`including 35 U.S.C. § 271 et seq.
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`10.
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`11.
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`Personal jurisdiction exists over each Nanya Defendant.
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`Personal jurisdiction exists over Nanya Delaware at least because Nanya Delaware
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`is a Delaware corporation organized under the laws of the State of Delaware. Nanya Delaware
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`also has a registered agent for service of process in Delaware. In addition, Nanya Delaware has
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`committed, aided, abetted, contributed to and/or participated in the commission of acts of
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`infringement giving rise to this action within the State of Delaware by, inter alia, directly and/or
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`indirectly making, using, selling, offering for sale, importing products and/or practicing methods
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`that practice one or more claims of the Patents-in-Suit. Furthermore, Nanya Delaware has
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`transacted and conducted business in the State of Delaware and with Delaware residents by
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`making, using, selling, offering to sell, and/or importing (including importing products made by a
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`patented process) products and instrumentalities that practice one or more claims of the Patents-
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`in-Suit. Among other things, Nanya Delaware, directly and/or through intermediaries, uses, sells,
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`ships, distributes, imports into, offers for sale, and/or advertises or otherwise promotes its products
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`throughout the United States, including in the State of Delaware. See, e.g., www.nanya.com/en.
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`At least for those reasons, Nanya Delaware has the requisite minimum contacts within the forum
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`such that the exercise of jurisdiction over Nanya Delaware would not offend traditional notions of
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`fair play and substantial justice.
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`12.
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`Personal jurisdiction exists over Nanya U.S.A. and Nanya Technology Corp. at
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`least because they have committed, aided, abetted, contributed to, and/or participated in the
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`commission of acts of infringement giving rise to this action within the State of Delaware by, inter
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`alia, directly and/or indirectly making, using, selling, offering for sale, importing products, and/or
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`practicing methods that practice one or more claims of the Patents-in-Suit. Nanya U.S.A., under
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`the control of Nanya Technology Corp., is responsible for sales and marketing in the United States,
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`and transacted and conducted business in the State of Delaware and with Delaware residents with
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`respect to the products and instrumentalities that practice one of more claims of the Patents-in-
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`Suit. Among other things, Nanya U.S.A. and Nanya Technology Corp., directly and/or through
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`intermediaries, use, sell, ship, distribute, import into, offer for sale, and/or advertise or otherwise
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`promote their products throughout the United States, including in the State of Delaware. See, e.g.,
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`www.nanya.com/en. For example, Nanya U.S.A. and Nanya Technology Corp. have committed
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`and continue to commit acts of direct infringement in the State of Delaware by selling their
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`products online, including through sales on Arrow and other online platforms. See, e.g.,
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`https://www.arrow.com/en/products/search?cat=&q=nanya+memory&r=true. At least for those
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`reasons, Nanya U.S.A. and Nanya Technology Corp. have the requisite minimum contacts within
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`the forum such that the exercise of jurisdiction over Nanya U.S.A. and Nanya Technology Corp.
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`would not offend traditional notions of fair play and substantial justice.
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`13.
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`Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391(b) and (c) and 1400(b).
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`Nanya Delaware resides in this district and has committed acts of infringement in this district.
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`Nanya U.S.A. has committed acts of infringement in this district, including in conjunction with
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`Nanya Delaware by, among other things, selling and offering for sale in this district (and
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`elsewhere) infringing products made, used, developed, tested, and otherwise practiced by Nanya
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`Delaware, a resident in this district. Additionally, Nanya U.S.A. has acted in conjunction with and
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`under the control of Nanya Technology Corp. by, among other things, selling and offering for sale
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`in this district (and elsewhere) infringing products made, used, developed, tested, and otherwise
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`practiced by Nanya Technology Corp. Venue is proper with respect to Nanya Technology Corp.
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`at least because Nanya Technology Corp. is a foreign corporation, has committed acts of
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`infringement in this district, and venue is proper in any district in which Nanya Technology Corp.
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`is subject to personal jurisdiction. Venue is further proper based on the facts alleged in the
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`preceding paragraphs, which Monterey incorporates by reference as if fully set forth herein.
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`THE PATENTS-IN-SUIT
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`14. Monterey incorporates by reference the preceding paragraphs as if fully set forth
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`herein.
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`A.
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`U.S. Patent No. 6,363,031
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`15.
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`The ’031 patent, titled “Circuit, Architecture and Method for Reducing Power
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`Consumption in a Synchronous Integrated Circuit,” was duly and properly issued by the USPTO
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`on March 26, 2002. A true and correct copy of the ’031 patent is attached hereto as Exhibit A.
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`16. Monterey is the owner and assignee of the ’031 patent; owns all right, title, and
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`interest in the ’031 patent; and holds the right to sue and recover damages for infringement thereof,
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`including past infringement.
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`B.
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`U.S. Patent No. 6,651,134
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`17.
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`The ’134 patent, titled “Memory Device with Fixed Length Non Interruptible
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`Burst,” was duly and properly issued by the USPTO on November 18, 2003. A true and correct
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`copy of the ’134 patent is attached hereto as Exhibit B.
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`18. Monterey is the owner and assignee of the ’134 patent; owns all right, title, and
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`interest in the ’134 patent; and holds the right to sue and recover damages for infringement thereof,
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`including past infringement.
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`C.
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`U.S. Patent No. 6,680,516
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`19.
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`The ’516 patent, titled “Controlled Thickness Gate Stack,” was duly and properly
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`issued by the United States Patent and Trademark Office (“USPTO”) on January 20, 2004. On
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`December 12, 2006, the USPTO issued a Certificate of Correction for the ’516 patent. A true and
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`correct copy of the ’516 patent and the Certificate of Correction is attached hereto as Exhibit C.
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`20. Monterey is the owner and assignee of the ’516 patent; owns all right, title, and
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`interest in the ’516 patent; and holds the right to sue and recover damages for infringement thereof,
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`including past infringement.
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`D.
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`U.S. Patent No. 6,825,526
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`21.
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`The ’526 patent, titled “Structure for Increasing Drive Current in a Memory Array
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`and Related Method,” was duly and properly issued by the USPTO on November 30, 2004. A true
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`and correct copy of the ’526 patent is attached hereto as Exhibit D.
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`22. Monterey is the owner and assignee of the ’526 patent; owns all right, title, and
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`interest in the ’526 patent; and holds the right to sue and recover damages for infringement thereof,
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`including past infringement.
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`E.
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`U.S. Patent No. 6,902,993
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`23.
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`The ’993 patent, titled “Gate Electrode for MOS Transistors,” was duly and
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`properly issued by the USPTO on June 7, 2005. On June 7, 2005, the USPTO issued a Certificate
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`of Correction for the ’993 patent. A true and correct copy of the ’993 patent and the Certificate of
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`Correction is attached hereto as Exhibit E.
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`24. Monterey is the owner and assignee of the ’993 patent; owns all right, title, and
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`interest in the ’993 patent; and holds the right to sue and recover damages for infringement thereof,
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`including past infringement.
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`F.
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`U.S. Patent No. 7,158,429
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`25.
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`The ’429 patent, titled “System for Read Path Acceleration,” was duly and properly
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`issued by the USPTO on January 2, 2007. A true and correct copy of the ’429 patent is attached
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`hereto as Exhibit F.
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`26. Monterey is the owner and assignee of the ’429 patent; owns all right, title, and
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`interest in the ’429 patent; and holds the right to sue and recover damages for infringement thereof,
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`including past infringement.
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`FACTUAL BACKGROUND
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`27. Monterey incorporates by reference the preceding paragraphs as if fully set forth
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`herein.
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`28.
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`The Patents-in-Suit stem from the research and design of innovative and proprietary
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`technology developed by leading high-technology companies, including Cypress Semiconductor
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`Corporation (“Cypress”).1 Cypress is an American multinational company and pioneer of cutting-
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`edge semiconductor technology. Founded in 1982, Cypress has made substantial investments in
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`researching, developing, and manufacturing high-quality semiconductor devices, integrated
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`circuits, and products containing the same.
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`29.
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`The Patents-in-Suit are directed to inventive technology relating to semiconductor
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`devices, integrated circuits, and/or products containing the same.
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`30.
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`The Nanya Defendants work closely with their customers, OEMs, foundry
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`suppliers, distributors, and/or other third parties to make, use, sell, offer to sell, and/or import
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`semiconductor devices, integrated circuits, and/or products containing the same. Among other
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`things, the Nanya Defendants optimize their manufacturing process for their customers and
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`optimize their products for integration into downstream products. The Nanya Defendants’
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`affirmative acts in furtherance of the manufacture, use, sale, offer to sell, and importation of their
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`products in and/or into the United States include, but are not limited to, any one or combination
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`of: (i) designing specifications for manufacture of their products; (ii) collaborating on,
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`encouraging, and/or funding the development of processes for the manufacture of their products;
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`1 Another leading high-technology company that contributed to inventions disclosed in the Patents-
`in-Suit is Advanced Micro Devices, Inc. (“AMD”).
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`(iii) soliciting and/or sourcing the manufacture of their products; (iv) licensing, developing, and/or
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`transferring technology and know-how to enable the manufacture of their products; (v) enabling
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`and encouraging the use, sale, or importation of their products in the United States; and (vi)
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`advertising their products and/or downstream products incorporating them in the United States.
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`31.
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`The Nanya Defendants also provide marketing and/or technical support services for
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`their products from their facilities in the United States. For example, Nanya maintains a website
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`that advertises their products, including identifying the applications for which they can be used
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`and providing specifications for their products. See, e.g., www.nanya.com/en. Nanya’s publicly-
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`available website also contains user manuals, product documentation, and other materials related
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`to their products. See, e.g., www.nanya.com/en. For example, Nanya’s website contains part
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`numbering guides, reliability reports, and a customer service page. See, e.g., www.nanya.com/en.
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`NANYA’S PRE-SUIT KNOWLEDGE OF MONTEREY’S PATENTS AND CHARGE OF
`INFRINGEMENT
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`32.
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`Before filing this action, Monterey, through its agent IPValue Management, Inc.
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`(“IPValue”), notified Nanya about the Patents-in-Suit and Nanya’s infringement thereof. Among
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`other things, Monterey, through its agent IPValue, identified the Patents-in-Suit to Nanya; alleged
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`that Nanya infringed the Patents-in-Suit, including identifying exemplary infringing products; and
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`offered to license the Patents-in-Suit to Nanya. By way of example and not limitation:
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`a.
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`On December 15, 2016, Monterey sent a letter to Nanya, notifying Nanya
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`of their infringement of certain Monterey patents, including the ’031 and ’134 patents. Among
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`other things, Monterey identified representative Nanya products that utilize those patents,
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`expressly charged that Nanya and their customers infringed those patents, and explained that
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`Nanya required a license from Monterey. Monterey identified IPValue as Monterey’s appointed
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`agent and requested a meeting with Nanya.
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`b.
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`On January 9, 2017, having received no response from Nanya, Monterey
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`sent a follow up letter and attached the December 15, 2016 letter notifying Nanya of their
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`infringement of certain Monterey patents, including the ’031 and ’134 patents.
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`c.
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`On February 1, 2017, still without a response from Nanya, Monterey sent
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`another follow up letter and attached the January 9, 2017 and December 15, 2016 letters notifying
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`Nanya of their infringement of certain Monterey patents, including the ’031 and ’134 patents.
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`d.
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`On February 24, 2017, at Nanya’s request, Monterey sent a letter to Nanya
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`that included detailed claim charts. Among other things, those claim charts identified specific
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`Monterey patents, including the ’031 and ’134 patents, to Nanya; identified representative Nanya
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`products that utilize those patents; and expressly alleged that Nanya infringed those patents.
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`e.
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`On March 1, 2017, Monterey sent another letter to Nanya detailing how
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`despite Nanya’s request for claim charts, delivery of Monterey’s February 24, 2017 letter was
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`refused by Nanya. Among other things, Monterey once again sent Nanya the February 24, 2017
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`letter and a number of claim charts. Among other things, those claim charts identified specific
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`Monterey patents, including the ’031 and ’134 patents, to Nanya; identified representative Nanya
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`products that utilize those patents; and expressly alleged that Nanya infringed those patents.
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`f.
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`On May 12, 2017, Monterey requested a meeting with Nanya to discuss
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`Monterey’s patents.
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`g.
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`On May 15, 2017, Monterey sent another letter to Nanya detailing how
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`Nanya refused to accept delivery of Monterey’s May 12, 2017 letter. Among other things,
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`Monterey attached the rejected May 12, 2017 letter and requested a meeting with Nanya.
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`h.
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`Finally, on July 25, 2017, IPValue met in-person with Nanya in Taiwan and
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`presented Nanya an overview of Monterey’s patent portfolio and with detailed infringement claim
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`charts of certain Monterey patents. Among other things, IPValue identified specific Monterey
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`patents, including the ’031 and ’134 patents, to Nanya; identified representative Nanya products
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`that utilize those patents; expressly alleged that Nanya infringed those patents; and explained that
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`Nanya required a license from Monterey.
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`i.
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`On February 2, 2018, IPValue again met in-person with Nanya in Taiwan
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`and presented Nanya with detailed infringement claim charts of certain Monterey patents. Among
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`other things, IPValue’s presentations identified specific Monterey patents including the ’031, ’134,
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`’516, ’526, ’993, and ’429 patents (as well as exemplary patent claims); identified representative
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`Nanya products that utilize those patents; identified where every element of each of those
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`exemplary patent claims was found in the representative Nanya products; expressly charged that
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`Nanya and their customers infringed those patents; and explained that Nanya required a license
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`from Monterey.
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`j.
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`On February 7, 2018, IPValue, on behalf of Monterey, emailed copies of
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`those infringement claim charts to Nanya.
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`k.
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`On September 12, 2018, IPValue again met in-person with Nanya in Taiwan
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`and presented Nanya with further information on how Nanya’s products infringed certain
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`Monterey patents and why Nanya required a license to those patents. Among other things,
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`IPValue’s presentation confirmed Nanya’s infringement of Monterey patents including the ’031,
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`’134, ’516, ’526, ’993, and ’429 patents and confirmed again that Nanya required a license from
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`Monterey.
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`l.
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`On September 18, 2018, IPValue, on behalf of Monterey, emailed Nanya
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`copies of Monterey’s presentations of the ’031, ’134, and ’429 patents from the September 12,
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`2018 meeting.
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`m.
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`On September 19, 2018, IPValue, on behalf of Monterey, emailed Nanya
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`copies of Monterey’s presentations of the ’516, ’526, and ’993 patents from the September 12,
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`2018 meeting.
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`n.
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`Most recently, Monterey participated in an October 17, 2019 teleconference
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`to discuss the Monterey patents, including the Patents-in-Suit, at Nanya’s behest. Again, despite
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`requesting the teleconference, Nanya refused to engage in meaningful discussions and refused to
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`license the Patents–in-Suit.
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`33.
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`Despite Monterey’s repeated efforts—which have continued for well over two
`
`years—Nanya still has not engaged in any settlement discussions to end their infringement of the
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`Patents-in-Suit and has not taken a license to them. Instead, Nanya continues to knowingly,
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`intentionally, and willfully infringe Monterey’s patents directly, contributorily, and by
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`inducement, to obtain their significant benefits without a license from Monterey. Monterey thus
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`has no other choice but to seek relief through litigation.
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`COUNT ONE
`INFRINGEMENT OF THE ’031 PATENT
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`34. Monterey incorporates by reference the preceding paragraphs as if fully set forth
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`herein.
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`35. Monterey is the assignee and lawful owner of all right, title, and interest in and to
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`the ’031 patent.
`
`36.
`
`37.
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`The ’031 patent is valid and enforceable.
`
`The ’031 patent is generally directed to an architecture and method for reducing
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`power consumption in a synchronous integrated circuit, as described in JEDEC standards JESD79-
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`3F DDR3 SDRAM, JESD79-4A DDR4 SDRAM, JESD209-3 LPDDR3, JESD209-4 LPDDR4,
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`and similar versions of the JEDEC DDRx standards.
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`38.
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`The ’031 patent explains that semiconductor devices can reduce power
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`consumption in “powered down” or “sleep” mode after receiving a power reduction command
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`signal. An example of a power reduction command was the JEDEC-standard “ZZ” signal. The
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`“ZZ” pin was configured to place the device in a “sleep” mode for reducing power consumption.
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`Prior to the ’031 patent, before activating the “ZZ” sleep mode, a synchronous integrated circuit
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`was preferably first deselected by controlling chip enable input signals. Therefore, to effectively
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`use the reduced power “sleep” mode, (i) a relatively complex setup procedure must be followed,
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`(ii) circuitry must be provided for generating the “ZZ” command signal, and (iii) a “ZZ” pin must
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`be provided to receive the “ZZ” command signal.
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`39.
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`The ’031 patent teaches, among other things, an apparatus comprising a circuit
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`configured to automatically generate a sleep signal upon detecting that one or more chip select
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`signals have been in a first state for a predetermined number of clock cycles. When the chip select
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`signal has been in the inactive state for a predetermined number of clock cycles, the electronic
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`device enters the “powered down” or “sleep” mode. The ’031 patent provides a circuit,
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`architecture and method for reducing power consumption in a synchronous integrated circuit that
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`may (i) be implemented without the need for a separate sleep pin, (ii) eliminate the need for
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`circuitry to generate a sleep signal, and/or (iii) automatically power down a chip that is deselected
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`or unused after a predetermined length of time.
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`40.
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`Nanya products use memory devices that are compliant with JEDEC standards
`
`JESD79-3F DDR3 SDRAM, JESD79-4A DDR4 SDRAM, JESD209-3 LPDDR3, JESD209-4
`
`LPDDR4 and similar versions of the JEDEC DDRx standards that incorporate the innovations of
`
`the ʼ031 patent’s automatic generation of a sleep signal in a synchronous integrated circuit.
`
`41.
`
`Nanya has directly infringed one or more claims of the ’031 patent under 35 U.S.C.
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`Case 1:19-cv-02090-CFC Document 1 Filed 11/04/19 Page 14 of 38 PageID #: 14
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`§ 271(a) and/or 35 U.S.C. § 271(g), either literally and/or under the doctrine of equivalents, by,
`
`among other things, making, using, selling, offering to sell, and/or importing in or into the United
`
`States without authorization products covered by one or more claims of the ’031 patent, including,
`
`but not limited to, products that comply with the JEDEC standards JESD79-3F DDR3 SDRAM,
`
`JESD79-4A DDR4 SDRAM, JESD209-3 LPDDR3, JESD209-4 LPDDR4 and similar versions of
`
`the JEDEC DDRx standards that use synchronous integrated circuits with automatically generated
`
`sleep signals, such as the NT6CL128M32AS-H2/H3 integrated circuit and other products in the
`
`6C, 5C, 6A, and 5A product families; other Nanya semiconductor devices, integrated circuits, and
`
`products that are compliant with JESD79-3F DDR3 SDRAM, JESD79-4A DDR4 SDRAM,
`
`JESD209-3 LPDDR3, JESD209-4 LPDDR4 or similar versions; and all other semiconductor
`
`devices, integrated circuits, and products with similar infringing technology (“the Accused ’031
`
`Products”).
`
`42.
`
`As one non-limiting example, Nanya infringed claim 1 of the ’031 patent since the
`
`Nanya NT6CL128M32AS-H2/H3 integrated circuit contains LPDDR3 SDRAM memory
`
`controllers that operate in conformance with JEDEC’s LPDDR3 SDRAM standard. For example,
`
`the Nanya NTC6CL128M32AS-H2/H3 contains an apparatus comprising:
`
`a.
`
`a circuit configured to automatically generate a sleep signal (e.g., power
`
`down signal of the NT6CL128M32AS-H2/H3) upon detecting that one or more chip select signals
`
`(e.g., chip select signal and/or signals of the NT6CL128M32AS-H2/H3) has been in a first state
`
`(e.g., chip select signal and/or signals are at a particular logic level of the NT6CL128M32AS-
`
`H2/H3) for a predetermined number of clock cycles (e.g., timing period of the NT6CL128M32AS-
`
`H2/H3);
`
`b.
`
`wherein said circuit is enabled or disabled in response to an enable signal
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`Case 1:19-cv-02090-CFC Document 1 Filed 11/04/19 Page 15 of 38 PageID #: 15
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`(e.g., enable signal of the NT6CL128M32AS-H2/H3).
`
`43.
`
`Claim 1 of the ’031 patent applies to each Accused ’031 Product at least because
`
`each of those products either complies with the same JEDEC JESD209-3 LPDDR3 SDRAM
`
`standard, or similar versions of the JEDEC standard, including but not limited to JESD79-3F
`
`DDR3, JESD79-4A DDR4, and JESD209-4 LPDDR4, which result in infringing features (e.g.,
`
`reducing power consumption in a synchronous integrated circuit using automatic generation of a
`
`sleep signal of the Accused ’031 Products) found in the JESD209-3 LPDDR3 SDRAM standard.
`
`44.
`
`Nanya has known of the ’031 patent and their infringement of that patent since at
`
`least as early as December 15, 2016.
`
`45.
`
`Nanya has induced infringement of one or more claims of the ’031 patent under 35
`
`U.S.C. § 271(b), either literally and/or under the doctrine of equivalents, by, among other things,
`
`actively inducing others, including their customers, to make, use, sell, offer to sell, and/or import
`
`in or into the United States without authorization the Accused ’031 Products, as well as products
`
`containing the same. Nanya knowingly and intentionally instructs their customers, OEMs, foundry
`
`suppliers, distributors, and/or third parties to infringe at least through user manuals, product
`
`documentation, and other materials, such as
`
`those
`
`located on Nanya’s website at
`
`www.nanya.com/en. Additional non-limiting examples include the materials found on Nanya’s
`
`website at https://www.nanya.com/en/Page/88?q=NT6CL128M32BQ-H2.
`
`46.
`
`Nanya has contributed to the infringement of one or more claims of the ’031 patent
`
`under 35 U.S.C. § 271(c), either literally and/or under the doctrine of equivalents, by, among other
`
`things, selling, offering to sell, and/or importing in or into the United States the Accused ’031
`
`Products, which constitute a material part of the invention of the ’031 patent, knowing the Accused
`
`’031 Products to be especially made or especially adapted for use in an infringement of such patent,
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`Case 1:19-cv-02090-CFC Document 1 Filed 11/04/19 Page 16 of 38 PageID #: 16
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`and not a staple article or commodity of commerce suitable for substantial noninfringing use.
`
`47.
`
`Monterey has sustained and is entitled to recover damages as a result of Nanya’s
`
`past infringement.
`
`48.
`
`Nanya’s infringement of the ’031 patent has been knowing, deliberate, and willful,
`
`since at least as early as December 15, 2016, the date of Monterey’s letter to Nanya and therefore
`
`the date on which Nanya knew of the ’031 patent and that their conduct constituted and resulted
`
`in infringement of the ’031 patent. Monterey continued to put Nanya on notice of the ’031 patent
`
`and Nanya’s infringement thereof, including without limitation through communications on
`
`January 9, 2017; February 1, 2017; February 24, 2017; March 1, 2017; July 25, 2017; February 2,
`
`2018; February 7, 2018; September 12, 2018; September 18, 2018 and yet again through this
`
`complaint. Nanya nonetheless has committed acts of direct and indirect infringement despite
`
`knowing that their actions constituted infringement of the valid and enforceable ’031 patent,
`
`despite a risk of infringement that was known or so obvious that it should have been known to
`
`Nanya, and/or even though Nanya otherwise knew or should have known that their actions
`
`constituted an unjustifiably high risk of infringement of that valid and enforceable patent. Nanya’s
`
`conduct in light of these circumstances is egregious. Nanya’s knowing, deliberate, and willful
`
`infringement of the ’031 patent entitles Monterey to increased damages under 35 U.S.C. § 284 and
`
`to attorney fees and costs incurred in prosecuting this action under 35 U.S.C. § 285.
`
`COUNT TWO
`INFRINGEMENT OF THE ’134 PATENT
`
`49. Monterey incorporates by reference the preceding paragraphs as if fully set forth
`
`herein.
`
`50. Monterey is the assignee and lawful owner of all right, title, and interest in and to
`
`the ’134 patent.
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`51.
`
`52.
`
`The ’134 patent is valid and enforceable.
`
`The ’134 patent generally concerns memory devices, and is more specifically
`
`related to non-interruptible burst read and write access features, as described in JEDEC standards
`
`JESD79-3F DDR3 SDRAM, JESD79-4A DDR4 SDRAM, JESD209-3 LPDDR3, JESD209-4
`
`LPDDR4, and similar versions of the JEDEC DDRx standards.
`
`53.
`
`The ʼ134 patent provides a faster and more efficient way for burst read and write
`
`access over conventional DRAM