Case 2:18-cv-00546-JRG Document 22 Filed 04/25/19 Page 1 of 95 PageID #: 675
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`CIVIL ACTION NO. 2:18-cv-00546
`
`JURY TRIAL DEMANDED
`
`CANON, INC.
`
`Plaintiff,
`
`vs.
`TCL ELECTRONICS HOLDINGS LTD.,
`TCL CORPORATION,
`SHENZEN TCL NEW TECHNOLOGIES CO.
`LTD.,
`TCL KING ELECTRICAL APPLIANCES
`(HUIZHOU) CO., LTD.,
`TCL KING ELECTRONICS (CHENGDU)
`CO., LTD.,
`TCL KING ELECTRICAL APPLIANCES
`(NANCHANG) CO., LTD.,
`TCL TONGLI ELECTRONICS (HUIZHOU)
`CO., LTD.,
`TONLY ELECTRONICS HOLDINGS LTD.
`
`Defendants.
`
`FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff Canon, Inc. (“Canon” or “Plaintiff”) brings this First Amended Complaint for
`
`Patent Infringement (“Amended Complaint”) and for Jury Trial against Defendants TCL
`
`Electronics Holdings Ltd. (formerly known as TCL Multimedia Technology Holdings, Ltd.),
`
`TCL Corporation, Shenzen TCL New Technologies Co. Ltd., TCL King Electrical Appliances
`
`(Huizhou) Co., Ltd., TCL King Electronics (Chengdu) Co., Ltd., TCL King Electrical
`
`Appliances (Nanchang) Co., Ltd., TCL Tongli Electronics (Huizhou) Co., Ltd. and Tonly
`
`Electronics Holdings Ltd. (collectively, “TCL” or “Defendants”). Canon alleges as follows:
`
`1
`
`Roku Exhibit 1042
`Roku, Inc. v. Canon Kabushiki Kaisha
`Page 00001
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`

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`Case 2:18-cv-00546-JRG Document 22 Filed 04/25/19 Page 2 of 95 PageID #: 676
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`THE PARTIES
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`1.
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`Canon is a corporation organized and existing under the laws of Japan. Its
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`principal place of business is located at 30-2, Shimomaruko 3-chome, Ohta-ku, Tokyo 146-8501,
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`Japan.
`
`2.
`
`TCL Electronics Holdings Ltd. is a foreign corporation organized and existing
`
`under the laws of the Cayman Islands. On information and belief, its principal place of business
`
`is located at 7th Floor, Building 22E, 22 Science Park East Avenue, Hong Kong Science Park,
`
`Shatin, New Territories, Hong Kong.
`
`3.
`
`TCL Corporation is a foreign corporation organized and existing under the laws
`
`of China. On information and belief, its principal place of business is located at No. 26, the
`
`Third Road, Zhongkai Avenue, Huizhou City, Guandong, China 516006.
`
`4.
`
`Shenzen TCL New Technologies Co. Ltd. is a foreign corporation organized and
`
`existing under the laws of China. On information and belief, its principal place of business is
`
`located at TCL Base, No. 5 Nanhai Road, Nanshan District, Shenzen, China 508067.
`
`5.
`
`TCL King Electrical Appliances (Huizhou) Co., Ltd. is a foreign corporation
`
`organized and existing under the laws of China. On information and belief, its principal place of
`
`business is located at No. 78 4th Huifeng Road, Zhongkai New & High-Tech Industries
`
`Development Zone, Huizhou, Guandong, China 516006.
`
`6.
`
`TCL King Electronics (Chengdu) Co., Ltd. is a foreign corporation organized and
`
`existing under the laws of China. On information and belief, its principal place of business is
`
`located at No. 18, Kexin Road, West Area, High-Tech Industry Development Zone, Chengdu,
`
`Sichuan, China 611731.
`
`2
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`Roku Exhibit 1042
`Page 00002
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`

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`7.
`
`TCL King Electrical Appliances (Nanchang) Co., Ltd. is a foreign corporation
`
`organized and existing under the laws of China. On information and belief, its principal place of
`
`business is located at No. 198, Huoju No. 3 Road, High-Tech Industry Development Zone,
`
`Nanchang, Jiangxi, China 330096.
`
`8.
`
`TCL Tongli Electronics (Huizhou) Co., Ltd. is a foreign corporation organized
`
`and existing under the laws of China. On information and belief, its principal place of business
`
`is located at 3F, No.1 Building, District D, TCL International E City, No.1001 Zhongshanyuan
`
`Road, Nanshan District, Shenzhen, Guangdong, China 518052.
`
`9.
`
`Tonly Electronics Holdings Ltd. is a foreign corporation organized and existing
`
`under the laws of China. On information and belief, its principal place of business is located at
`
`8th Floor, Bldg 22E, 22 Science Park East Avenue, HK Science Park, Sha Tin, Hong Kong SAR.
`
`JURISDICTION AND VENUE
`
`10.
`
`This is an action for patent infringement arising under the patent laws of the
`
`United States, Title 35 of the United States Code. Accordingly, this Court has subject matter
`
`jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).
`
`11.
`
`This Court has personal jurisdiction over Defendants, which it may exercise using
`
`the Texas Long Arm Statute. Exercise of such personal jurisdiction is allowed under Due
`
`Process because this Court, among other reasons, has specific personal jurisdiction over
`
`Defendants.
`
`12.
`
`In particular, this Court has specific personal jurisdiction over Defendants at least
`
`in part because Defendants conduct business in this judicial District. Canon’s causes of action
`
`arise, at least in part, from Defendants’ contacts with and activities in the State of Texas and this
`
`3
`
`Roku Exhibit 1042
`Page 00003
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`

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`judicial District. Upon information and belief, Defendants have committed acts of infringement
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`within the State of Texas and this judicial District by, inter alia, directly and/or indirectly
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`making, selling, offering for sale, importing, and/or using products that infringe one or more
`
`claims of Canon’s patents asserted herein. Defendants, directly and/or through intermediaries,
`
`use, sell, ship, distribute, offer for sale, and/or advertise or otherwise promote the infringing
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`products in the State of Texas and this judicial District. Defendants also have a number of
`
`subsidiaries that Defendants direct and control that, upon information and belief, are involved in
`
`making, selling, offering for sale, and/or importing into the United States the infringing products.
`
`13.
`
`Furthermore, upon information and belief, Defendants have purposefully and
`
`voluntarily placed one or more infringing products into the stream of commerce with the
`
`expectation that they will be purchased and/or used by residents of this judicial District,
`
`including by directly and indirectly working with distributors, and other entities located in the
`
`State of Texas, to ensure the accused products reach the State of Texas and this judicial District.
`
`14.
`
`Defendants, directly or through intermediaries, including its subsidiaries, maintain
`
`control over websites accessible to residents of the State of Texas and this judicial District,
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`through which Defendants promote and facilitate sales of the infringing products. For example,
`
`website https://www.tclusa.com directs consumers in the United States, including those in the
`
`State of Texas and this judicial District, to purchase Defendants’ infringing television systems
`
`from online stores, such as Amazon, and brick-and-mortar stores located in this judicial District,
`
`including Target, Walmart, Best Buy, and Sam’s Club. See, e.g., Ex. 10.
`
`15.
`
`Defendants, moreover, have availed themselves to this District in separate
`
`lawsuits. For example, in American Patents LLC v. TCL Corp., et al., 4:18-cv-767 (E.D. Tex)
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`4
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`Roku Exhibit 1042
`Page 00004
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`

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`filed on October 26, 2018, TCL King Electrical Appliances (Huizhou) Co. Ltd. filed
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`counterclaims against American Patents LLC. In so doing, Defendants – through TCL King
`
`Electrical Appliances (Huizhou) Co. Ltd. – purposefully availed themselves to the protections,
`
`powers, and resources of this judicial District. Attached hereto as Exhibit 1 is a true and correct
`
`copy of TCL King Electrical Appliances (Huizhou) Co. Ltd.’s Answer to and Counterclaims
`
`against American Patents LLC, filed on March 7, 2019.
`
`16.
`
`Defendants also availed themselves to this District in Nichia Corporation v. TCL
`
`Multimedia Technology Holdings, Ltd., 2:16-cv-1452-JRG (E.D. Tex.) filed on December 27,
`
`2016, where TCL Electronics Holding Ltd. (using its former name, TCL Multimedia Technology
`
`Holdings, Ltd.) was dismissed, with prejudice, through an Order of this Court granting an agreed
`
`stipulation of dismissal. In so filing an agreed stipulation of dismissal and thereafter obtaining
`
`the order of dismissal with prejudice, Defendants – through TCL Electronics Holding Ltd. –
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`purposefully availed themselves to the protections, powers, and resources of this judicial District.
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`Attached hereto as Exhibit 2 is a true and correct copy of an Order Granting Agreed Stipulation
`
`of Dismissal, filed on February 16, 2018.
`
`17.
`
`Defendants also availed themselves to this District in Personalized Media
`
`Communications, LLC, v. TCL Corp. et al., 2:17-cv-433-JRG (E.D. Tex) filed on May 17, 2017,
`
`where TCL Corporation and TCL Electronics Holding Ltd. (using its former name, TCL
`
`Multimedia Technology Holdings, Ltd.) filed counterclaims against Personalized Media
`
`Communications, LLC. In so doing, Defendants – through TCL Corporation and TCL
`
`Electronics Holding Ltd. – purposefully availed themselves to the protections, powers, and
`
`resources of this judicial District. Attached hereto as Exhibit 3 is a true and correct copy of
`
`5
`
`Roku Exhibit 1042
`Page 00005
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`

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`Case 2:18-cv-00546-JRG Document 22 Filed 04/25/19 Page 6 of 95 PageID #: 680
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`Defendants’ Answer to and Counterclaims against Personalized Media Communications, LLC,
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`filed on December 4, 2017.
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`18.
`
`Thus, Defendants have established minimum contacts with the State of Texas and
`
`the exercise of jurisdiction would not offend traditional notions of fair play and substantial
`
`justice.
`
`19.
`
`Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391(b), (c) and
`
`1400(b) because (i) Defendants have done and continue to do business in this district; (ii)
`
`Defendants have committed and continue to commit acts of patent infringement in this district,
`
`including making, using, offering to sell, and/or selling accused products in this district, and/or
`
`importing accused products into this district, including by internet sales and sales via retail and
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`wholesale stores, and/or inducing others to commit acts of patent infringement in this district;
`
`and (iii) Defendants are foreign entities. 28 U.S.C. § 1391(c)(3) provides that “a Defendant not
`
`resident in the United States may be sued in any judicial district.”
`
`THE CANON PATENTS
`
`20.
`
`On June 29, 2010, the United States Patent & Trademark Office (USPTO) issued
`
`United States Patent No. 7,746,413 (“the ’413 Patent”), titled “Operation Screen Controlling
`
`Method, Operation Screen Controlling Program, and Display Device” to Canon as assignee of
`
`the inventors, Keiichi Aoyama, Shigeki Mori, and Shuntaro Aratani. A true and correct copy of
`
`the ’413 Patent is attached as Exhibit 4 to this Amended Complaint and is incorporated by
`
`reference herein.
`
`21.
`
`The ’413 Patent is generally directed to a display controlling method or system
`
`for displaying operation screens that are suitable for various remote controls with various
`
`6
`
`Roku Exhibit 1042
`Page 00006
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`

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`Case 2:18-cv-00546-JRG Document 22 Filed 04/25/19 Page 7 of 95 PageID #: 681
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`attributes. The ’413 Patent discloses and specifically claims inventive and patentable subject
`
`matters that represent significant improvements over conventional display controlling
`
`method/system that was available at the time of filing of the ’413 Patent and are more than just
`
`generic apparatus or software components performing conventional activities.
`
`22.
`
`At the time of filing of the ’413 Patent, “there has been proposed a television
`
`receiver, which is enabled to use a plurality of remote control devices [] by giving priority to the
`
`individual remote control devices to improve the operability of the television received” “[i]n case
`
`a plurality of remote control devices for controlling a television receiver” were available. Ex. 4
`
`at Col. 1, ll. 17-24. Such proposed television receiver, however, had the problem of its
`
`“operation screen of a graphical user interface” being not suited for the attributes and operation
`
`devices associated with the remote control device used to control the graphical user interface.
`
`Id., Col. 1, ll. 28-30. The ’413 Patent’s claimed display controlling method/system solves this
`
`problem of “the operability” being “degraded by the remote control device used” by reciting
`
`specific and significant improvements over the conventional display controlling method/system,
`
`such as, for example, to acquire an attribute of a remote control device, determine the most
`
`suitable operation form corresponding to the remote control device’s attribute by evaluating a
`
`degree of suitability between the remote control device’s attributes and the operation forms
`
`stored by the apparatus as the subject of controlling and display the most suitable operation form.
`
`The claims of the ’413 Patent are directed to these specific improvements in the capabilities of
`
`display controlling technology and devices, not to an abstract process that merely invokes these
`
`devices as tools.
`
`7
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`Roku Exhibit 1042
`Page 00007
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`

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`23.
`
`Given the state of the art at the time of filing of the ’413 Patent, the claim
`
`limitations of the ’413 Patent, both individually and as an ordered combination, were not
`
`conventional, well-understood, or routine. The ’413 Patent discloses, among other things, an
`
`unconventional technological solution to an issue arising specifically in the context of controlling
`
`electronic display and communications between electronic devices. The solution implemented
`
`by the ’413 Patent provides a specific and substantial improvement over prior electronic display
`
`and communications systems in electronic devices, including by introducing novel elements
`
`combined in an unconventional manner directed to improving the function and working of
`
`electronic devices such as, inter alia, the claimed “determining an operation form corresponding
`
`to the remote control device from among a plurality of operation forms previously stored based
`
`on the acquired attribute of the remote control device…wherein, in the step of determining the
`
`operation form, the operation form corresponding to the remote control device is determined by
`
`evaluating a degree of suitability between the remote control device and each of the plurality of
`
`operation forms based on the acquired attribute of the remote control device” (Claim 1). As
`
`discussed above, these claimed elements and their combination were not present in the prior art,
`
`and represent unconventional and concrete improvements over the prior art.
`
`24.
`
`Consistent with the problem addressed being rooted in electronic displays and
`
`communications between electronic devices, the ’413 Patent’s solutions are also rooted in the
`
`same technology that cannot be performed with pen and paper or in the human mind. This
`
`technical context is reflected in the ’413 Patent’s claims, as described above.
`
`25.
`
`A person having ordinary skill in the art at the time of the inventions of the ’413
`
`Patent would not have understood that the inventions could or would be performed solely in the
`
`8
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`Roku Exhibit 1042
`Page 00008
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`Case 2:18-cv-00546-JRG Document 22 Filed 04/25/19 Page 9 of 95 PageID #: 683
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`human mind or using pen and paper. Using pen and paper would ignore the stated purpose of the
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`’413 Patent and the problem the patented technology was specifically designed to address.
`
`Doing so would also run counter to the inventors’ detailed description of the inventions, and the
`
`language of the claims, and be a practical impossibility.
`
`26.
`
`On December 13, 2011, the USPTO issued United States Patent No. 8,078,767
`
`(“the ’767 Patent”), titled “Display Apparatus, Control Method Thereof, and Program” to Canon
`
`as assignee of the inventor, Junji Kotani. A true and correct copy of the ’767 Patent is attached
`
`as Exhibit 5 to this Amended Complaint and is incorporated by reference herein.
`
`27.
`
`The ’767 Patent is generally directed to a display method or system that displays
`
`an image from an external device for some period of time after being disconnected when the
`
`external device is of predetermined class. The ’767 Patent discloses and specifically claims
`
`inventive and patentable subject matters that represent specific and significant improvements
`
`over conventional display method/system that was available at the time of filing of the ’767
`
`Patent and are more than just generic apparatus or software components performing conventional
`
`activities.
`
`28.
`
`At the time of filing of the ’767 Patent, “the conventional display apparatus
`
`[could] be connected to various devices, and [could] display image data stored in a connected
`
`device. However, independently of the device class to be connected, when a communication
`
`[was] disconnected, the display operation of an image transmitted from that device end[ed]. For
`
`this reason, in addition to the image display end operation that the user intended by removing the
`
`flash memory or USB cable, the image display operation often end[ed] without the intention of
`
`the user by the control on the device side that logically disconnects a communication
`
`9
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`Roku Exhibit 1042
`Page 00009
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`

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`Case 2:18-cv-00546-JRG Document 22 Filed 04/25/19 Page 10 of 95 PageID #: 684
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`connection.” Ex. 5 at Col. 5, ll. 15-25. The ’767 Patent’s claimed display method/system solved
`
`this problem by, for example, reciting the specific method of determining to continue or to end
`
`displaying contents retrieved from the external device connected to the display apparatus, at the
`
`time of disconnection of the external device, by recognizing and distinguishing among the
`
`classes / types of external devices as well as how such device is disconnected from the display
`
`apparatus. The claims of the ’767 Patent are directed to these specific improvements in the
`
`capabilities of the aforementioned display technology and devices, not to an abstract process that
`
`merely invokes these devices as tools.
`
`29.
`
`Given the state of the art at the time of filing of the ’767 Patent, the claim
`
`limitations of the ’767 Patent, both individually and as an ordered combination, were not
`
`conventional, well-understood, or routine. The ’767 Patent discloses, among other things, an
`
`unconventional technological solution to an issue arising specifically in the context of controlling
`
`electronic display and communications between electronic devices. The solution implemented
`
`by the ’767 Patent provides a specific and substantial improvement over prior electronic display
`
`and communications systems in electronic devices, including by introducing novel elements
`
`combined in an unconventional manner directed to improving the function and working of
`
`electronic devices such as, inter alia, the claimed “control unit acquir[ing] class information
`
`indicating a class of the external device from the external device via said connection unit,
`
`control[ing] said display unit to continue the display based on the data received from the external
`
`device at the time of disconnection of the communication connection with the external device if
`
`the class of the external device indicated by the class information is a predetermined class, and
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`control[ing] said display unit to end the display based on the data received from the external
`
`10
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`Roku Exhibit 1042
`Page 00010
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`device at the time of disconnection of the communication connection with the external device if
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`the class of the external device indicated by the class information is not the predetermined class.”
`
`(Claim 1). As discussed above, these claimed elements and their combination were not present
`
`in the prior art, and represent unconventional and concrete improvements over the prior art.
`
`30.
`
`Consistent with the problem addressed being rooted in electronic displays and
`
`communications between electronic devices, the ’767 Patent’s solutions are also rooted in the
`
`same technology that cannot be performed with pen and paper or in the human mind. This
`
`technical context is reflected in the ’767 Patent’s claims, as described above.
`
`31.
`
`A person having ordinary skill in the art at the time of the inventions of the ’767
`
`Patent would not have understood that the inventions could or would be performed solely in the
`
`human mind or using pen and paper. Using pen and paper would ignore the stated purpose of the
`
`’767 Patent and the problem the patented technology was specifically designed to address.
`
`Doing so would also run counter to the inventors’ detailed description of the inventions, and the
`
`language of the claims, and be a practical impossibility.
`
`32.
`
`On January 1, 2013, the USPTO issued United States Patent No. 8,346,986 (“the
`
`’986 Patent”), titled “Display Apparatus, Control Method Thereof, and Program” to Canon as
`
`assignee of the inventor, Junji Kotani. A true and correct copy of the ’986 Patent is attached as
`
`Exhibit 6 to this Amended Complaint and is incorporated by reference herein.
`
`33.
`
`The ’986 Patent is generally directed to a display method or system that displays
`
`an image from an external device for some period of time after being disconnected when the type
`
`of external device is of a class and/or when the disconnection was logical or physical. The ’986
`
`Patent discloses and specifically claims inventive and patentable subject matters that represent
`
`11
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`Roku Exhibit 1042
`Page 00011
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`

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`Case 2:18-cv-00546-JRG Document 22 Filed 04/25/19 Page 12 of 95 PageID #: 686
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`specific significant improvements over conventional display method/system that was available at
`
`the time of filing of the ’986 Patent and are more than just generic apparatus or software
`
`components performing conventional activities.
`
`34.
`
`At the time of filing of the ’986 Patent, “the conventional display apparatus
`
`[could] be connected to various devices, and [could] display image data stored in a connected
`
`device. However, independently of the device class to be connected, when a communication
`
`[was] disconnected, the display operation of an image transmitted from that device end[ed]. For
`
`this reason, in addition to the image display end operation that the user intended by removing the
`
`flash memory or USB cable, the image display operation often end[ed] without the intention of
`
`the user by the control on the device side that logically disconnects a communication
`
`connection.” Ex. 6 at Col. 5, ll. 15-25. The ’986 Patent’s claimed display method/system solved
`
`this problem by, for example, reciting the specific method of determining to continue or to end
`
`displaying contents retrieved from the external device connected to the display apparatus, at the
`
`time of disconnection of the external device, by recognizing and distinguishing among the
`
`classes / types of external devices as well as how such device is disconnected from the display
`
`apparatus. The claims of the ’986 Patent are directed to these specific improvements in the
`
`capabilities of the aforementioned display technology and systems, not to an abstract process that
`
`merely invokes these systems as tools.
`
`35.
`
`Given the state of the art at the time of filing of the ’986 Patent, the claim
`
`limitations of the ’986 Patent, both individually and as an ordered combination, were not
`
`conventional, well-understood, or routine. The ’986 Patent discloses, among other things, an
`
`unconventional technological solution to an issue arising specifically in the context of controlling
`
`12
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`Roku Exhibit 1042
`Page 00012
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`

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`Case 2:18-cv-00546-JRG Document 22 Filed 04/25/19 Page 13 of 95 PageID #: 687
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`electronic display and communications between electronic devices. The solution implemented
`
`by the ’986 Patent provides a specific and substantial improvement over prior electronic display
`
`and communications systems in electronic devices, including by introducing novel elements
`
`combined in an unconventional manner directed to improving the function and working of
`
`electronic devices such as, inter alia, the claimed “determination unit configured to determine
`
`whether or not to continue the display of the image received from the external device by
`
`detecting whether the communication is physically disconnected or whether the communication
`
`is logically disconnected when the communication with the external device is disconnected”
`
`(Claim 1). As discussed above, these claimed elements and their combination were not present
`
`in the prior art, and represent unconventional and concrete improvements over the prior art.
`
`36.
`
`Consistent with the problem addressed being rooted in electronic displays and
`
`communications between electronic devices, the ’986 Patent’s solutions are also rooted in the
`
`same technology that cannot be performed with pen and paper or in the human mind. This
`
`technical context is reflected in the ’986 Patent’s claims, as described above.
`
`37.
`
`A person having ordinary skill in the art at the time of the inventions of the ’986
`
`Patent would not have understood that the inventions could or would be performed solely in the
`
`human mind or using pen and paper. Using pen and paper would ignore the stated purpose of the
`
`’986 Patent and the problem the patented technology was specifically designed to address.
`
`Doing so would also run counter to the inventors’ detailed description of the inventions, and the
`
`language of the claims, and be a practical impossibility.
`
`38.
`
`On April 29, 2014, the USPTO issued United States Patent No. 8,713,206 (“the
`
`’206 Patent”), titled “Display Apparatus, Control Method Thereof, and Program” to Canon as the
`
`13
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`Roku Exhibit 1042
`Page 00013
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`Case 2:18-cv-00546-JRG Document 22 Filed 04/25/19 Page 14 of 95 PageID #: 688
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`assignee of the inventor, Junji Kotani. A true and correct copy of the ’206 Patent is attached as
`
`Exhibit 7 to this Amended Complaint and is incorporated by reference herein.
`
`39.
`
`The ’206 Patent is generally directed to a display method or system that displays
`
`an image from an external device for some period of time after being disconnected, the period of
`
`time varying based on the type of external device and/or whether the disconnection was logical
`
`or physical. The ’206 Patent discloses and specifically claims inventive and patentable subject
`
`matters that represent specific and significant improvements over conventional display
`
`method/system that was available at the time of filing of the ’206 Patent and are more than just
`
`generic apparatus or software components performing conventional activities.
`
`40.
`
`At the time of filing of the ’206 Patent, “the conventional display apparatus
`
`[could] be connected to various devices, and [could] display image data stored in a connected
`
`device. However, independently of the device class to be connected, when a communication
`
`[was] disconnected, the display operation of an image transmitted from that device end[ed]. For
`
`this reason, in addition to the image display end operation that the user intended by removing the
`
`flash memory or USB cable, the image display operation often end[ed] without the intention of
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`the user by the control on the device side that logically disconnects a communication
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`connection.” Ex. 7 at Col. 5, ll. 19-29. The ’206 Patent’s claimed display method/system solved
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`this problem by, for example, reciting the specific method of determining to continue or to end
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`displaying contents retrieved from the external device connected to the display apparatus, at the
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`time of disconnection of the external device, by recognizing and distinguishing among the
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`classes / types of external devices as well as how such device is disconnected from the display
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`apparatus. The claims of the ’206 Patent are directed to these specific improvements in the
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`capabilities of the aforementioned display technology and systems, not to an abstract process that
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`merely invokes these systems as tools.
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`41.
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`Given the state of the art at the time of filing of the ’206 Patent, the inventive
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`concepts of the ’206 Patent were not conventional, well-understood, or routine. The ’206 Patent
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`discloses, among other things, an unconventional technological solution to an issue arising
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`specifically in the context of controlling electronic display and communications between
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`electronic devices. The solution implemented by the ’206 Patent provides a specific and
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`substantial improvement over prior electronic display and communications systems in electronic
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`devices, including by introducing novel elements directed to improving the function and working
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`of electronic devices such as, inter alia, the claimed “display control unit [that] varies a period of
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`time from the disconnection to the stopping of the display of the image depending on a
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`determination result as to whether the disconnection of the communication with the external
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`device is a physical disconnection or a logical disconnection.” (Claim 7). As discussed above,
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`these claimed elements and their combination were not present in the prior art, and represent
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`unconventional and concrete improvements over the prior art.
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`42.
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`Consistent with the problem addressed being rooted in electronic displays and
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`communications between electronic devices, the ’206 Patent’s solutions are also rooted in the
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`same technology that cannot be performed with pen and paper or in the human mind. This
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`technical context is reflected in the ’206 Patent’s claims, as described above.
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`43.
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`A person having ordinary skill in the art at the time of the inventions of the ’206
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`Patent would not have understood that the inventions could or would be performed solely in the
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`human mind or using pen and paper. Using pen and paper would ignore the stated purpose of the
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`’206 Patent and the problem the patented technology was specifically designed to address.
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`Doing so would also run counter to the inventors’ detailed description of the inventions, and the
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`language of the claims, and be a practical impossibility.
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`44.
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`On October 5, 2010, the USPTO issued United States Patent No. 7,810,130 (“the
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`’130 Patent”), titled “Method and Apparatus of Power Management for Moving Image-
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`Streaming Content” to Canon as assignee of the inventors Atsushi Mizutome and Masaki
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`Kutsuna. A true and correct copy of the ’130 Patent is attached as Exhibit 8 to this Amended
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`Complaint and is incorporated by reference herein.
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`45.
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`The ’130 Patent is generally directed to a method and system for buffering
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`streaming contents while the contents are not being displayed on a television either while the
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`television’s power is off or while the user is viewing other programs. The ’130 Patent discloses
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`and specifically claims inventive and patentable subject matters that represent specific and
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`significant improvements over conventional method/system for streaming internet contents on a
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`television that was available at the time of filing of the ’130 Patent and are more than just generic
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`apparatus or software components performing conventional activities.
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`46.
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`At the time of filing of the ’130 Patent, the inventor recognized that a
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`“conventional broadcast system is currently being shifted to a digital broadcast system in which
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`television signals are transmitted as digital signals” and the “shift to the digital broadcast system
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`is underway to enhance image quality and to increase the number of channels by utilizing digital
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`transmission and coding technologies.” Ex. 8 at Col. 1, ll. 19-24. The inventor of the ’130
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`Patent further observed that at the time of filing of the ’130 Patent, “it [was] becoming
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`widespread to use the Internet to provide a distribution of moving images comparable in quality
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`to that of the television broadcast, that is, a