IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`
`
`
`Civil Action No.: 6:21-cv-00904
`
`
`TRIAL BY JURY DEMANDED
`
`Plaintiff,
`
`OPTICAL LICENSING LLC,
`
`
`
` v.
`
`HOME DEPOT U.S.A. INC.,
`
` Defendant.
`
`
`COMPLAINT FOR INFRINGEMENT OF PATENT
`
`Now comes, Plaintiff, Optical Licensing LLC (“Plaintiff” or “Optical”), by and through
`
`undersigned counsel, and respectfully alleges, states, and prays as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action for patent infringement under the Patent Laws of the United States,
`
`Title 35 United States Code (“U.S.C.”) to prevent and enjoin Defendant Home Depot U.S.A. Inc.
`
`(hereinafter “Home Depot” or “Defendant”), from infringing and profiting, in an illegal and
`
`unauthorized manner, and without authorization and/or consent from Plaintiff from U.S. Patent No
`
`6,791,898 (“the ‘898 Patent” or the “Patent-in-Suit”), which is attached hereto as Exhibit A and
`
`incorporated herein by reference, and pursuant to 35 U.S.C. §271, and to recover damages,
`
`attorney’s fees, and costs.
`
`THE PARTIES
`
`2.
`
`Plaintiff is Texas limited liability company with its principal place of business at
`
`6009 W. Parker Road, Plano, Texas.
`
`3.
`
`Upon information and belief, Defendant is a corporation organized under the laws
`
`of Delaware, with a principal place of business at 2455 Paces Ferry Road, Atlanta, Georgia, 30339.
`
`Defendant may be served with process c/o Corporation Service Company dba CSC-Lawyers
`
`Incorporating Service Company, 211 East 7th Street – Suite 620, Austin, Texas 78701.
`
`STMicroelectronics, Inc., Ex. 1005
`IPR2021-01593
`Page 1
`
`
`FOR THE WESTERN DISTRICT OF TEXAS
`
`
`
`Civil Action No.: 6:21-cv-00904
`
`
`TRIAL BY JURY DEMANDED
`
`Plaintiff,
`
`OPTICAL LICENSING LLC,
`
`
`
` v.
`
`HOME DEPOT U.S.A. INC.,
`
` Defendant.
`
`
`COMPLAINT FOR INFRINGEMENT OF PATENT
`
`Now comes, Plaintiff, Optical Licensing LLC (“Plaintiff” or “Optical”), by and through
`
`undersigned counsel, and respectfully alleges, states, and prays as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action for patent infringement under the Patent Laws of the United States,
`
`Title 35 United States Code (“U.S.C.”) to prevent and enjoin Defendant Home Depot U.S.A. Inc.
`
`(hereinafter “Home Depot” or “Defendant”), from infringing and profiting, in an illegal and
`
`unauthorized manner, and without authorization and/or consent from Plaintiff from U.S. Patent No
`
`6,791,898 (“the ‘898 Patent” or the “Patent-in-Suit”), which is attached hereto as Exhibit A and
`
`incorporated herein by reference, and pursuant to 35 U.S.C. §271, and to recover damages,
`
`attorney’s fees, and costs.
`
`THE PARTIES
`
`2.
`
`Plaintiff is Texas limited liability company with its principal place of business at
`
`6009 W. Parker Road, Plano, Texas.
`
`3.
`
`Upon information and belief, Defendant is a corporation organized under the laws
`
`of Delaware, with a principal place of business at 2455 Paces Ferry Road, Atlanta, Georgia, 30339.
`
`Defendant may be served with process c/o Corporation Service Company dba CSC-Lawyers
`
`Incorporating Service Company, 211 East 7th Street – Suite 620, Austin, Texas 78701.
`
`STMicroelectronics, Inc., Ex. 1005
`IPR2021-01593
`Page 1
`
`
`
`4.
`
`Upon information and belief, Defendant operates numerous places of business,
`
`referred to as “Home Depot” retail stores, throughout the Western District of Texas, including but
`
`not limited to the retail store located at 5605 W. Waco Dr., Waco, TX 76710 (Waco #6532), among
`
`others.
`
`5.
`
`Upon information and belief, Defendant through numerous retail stores, directly
`
`and/or indirectly distributes, markets, offers to sell, and/or sells products in the United States
`
`and/or imports products into the United States (including this District) that infringe the ‘898 Patent
`
`as alleged herein.
`
`JURISDICTION AND VENUE
`
`6.
`
`This is an action for patent infringement in violation of the Patent Act of the United
`
`States, 35 U.S.C. §§1 et seq.
`
`7.
`
`The Court has subject matter jurisdiction over this action pursuant to 28 U.S.C.
`
`§§1331 and 1338(a).
`
`8.
`
`This Court has personal jurisdiction over Defendant by virtue of its systematic and
`
`continuous contacts with this jurisdiction and its residence in this District, as well as because of
`
`the injury to Plaintiff, and the cause of action Plaintiff has risen in this District, as alleged herein.
`
`9.
`
`Defendant is subject to this Court’s specific and general personal jurisdiction
`
`pursuant to its substantial business in this forum, including: (i) at least a portion of the
`
`infringements alleged herein; (ii) regularly doing or soliciting business, engaging in other
`
`persistent courses of conduct, and/or deriving substantial revenue from goods and services
`
`provided to individuals in this forum state and in this judicial District; and (iii) having a regular
`
`and established place of business in this district.
`
`
`
`2
`
`STMicroelectronics, Inc., Ex. 1005
`IPR2021-01593
`Page 2
`
`
`
`10.
`
`Venue is proper in this judicial district pursuant to 28 U.S.C. §1400(b) because
`
`Defendant resides in this District under the Supreme Court’s opinion in TC Heartland v. Kraft
`
`Foods Group Brands LLC, 137 S. Ct. 1514 (2017) regular and established place of business in this
`
`District.
`
`FACTUAL ALLEGATIONS
`
`11.
`
`On September 14, 2014, the United States Patent and Trademark Office (“USPTO”)
`
`duly and legally issued the ‘898 Patent, entitled “MEMORY DEVICE PROVIDING
`
`ASYNCHRONOUS AND SYNCHRONOUS DATA TRANSFER” after a full and fair
`
`examination. The ‘898 Patent is attached hereto as Exhibit A and incorporated herein as if fully
`
`rewritten.
`
`12.
`
`Plaintiff is presently the owner of the ‘898 Patent, having received all right, title
`
`and interest in and to the ‘898 Patent from the previous assignee of record. Plaintiff possesses all
`
`rights of recovery under the ‘898 Patent, including the exclusive right to recover for past
`
`infringement.
`
`13.
`
`To the extent required, Plaintiff has complied with all marking requirements under
`
`35 U.S.C. § 287.
`
`14.
`
`As detailed by the ‘898 Patent, two types of prior art memory device were shown
`
`in Fig.1 and Fig.2, respectively. The ‘898 Patent detailed the structure and operation of an
`
`asynchronous memory device 100 shown in Fig.1. Ex. A at Col.1:18-52. Additionally, the ‘898
`
`Patent detailed the structure and operation of a synchronous memory device 200 shown in Fig.2.
`
`Ex. A at Col.1:53-2:23.
`
`15.
`
`However, as identified in the ‘898 Patent, the prior art memory device had
`
`technological faults. Namely, these prior art memory devices were disadvantageous in that they
`
`
`
`3
`
`STMicroelectronics, Inc., Ex. 1005
`IPR2021-01593
`Page 3
`
`
`
`provided a single mode of data transfer. Ex. A at Col.2:24-26. That is, prior art memory devices
`
`would either provide for only asynchronous data transfer or only synchronous data transfer. Id. at
`
`Col.2:26-30.
`
`16.
`
`The ‘898 Patent overcame these faults and provide a memory device having
`
`multiple modes of data transfer. Particularly, the ‘898 Patent defines an inventive memory device
`
`for asynchronous and synchronous data transfer.
`
`17.
`
`Claim 7 of the ‘898 Patent states:
`
`“7. A memory device comprising:
`an array of memory cells for storing data;
`an asynchronous/synchronous logic coupled to a plurality of control signals
`and said array of memory cells, wherein asynchronous transfer of data stored in
`said array of memory cells is provided based upon a first state of said control signals
`and wherein synchronous transfer of data stored in said array of memory cells is
`provided based upon a second state of said control signals; and
`a configuration register coupled to said asynchronous/synchronous logic,
`wherein said first state of said control signals or said second state of said control
`signals is latched for access by said asynchronous/synchronous logic.” Ex. A at
`Col.10:32-47.
`
`18. Claim 7 of the ‘898 Patent is directed to an article of manufacture (i.e., a memory
`
`device).
`
`19. Articles of Manufacture are patent eligible under 35 U.S.C. §101.
`
`20. Defendant commercializes, inter alia, a product that includes all of the claim elements
`
`in at least one claim of the ‘898 Patent. More particularly, Defendant commercializes, inter alia, a
`
`product or article of manufacture that includes all of the recited elements of Claim 7 of the ‘898
`
`Patent. Specifically, Defendant makes, uses, sells, offers for sale, or imports a method that
`
`encompasses that which is covered by Claim 7 of the ‘898 Patent.
`
`
`
`4
`
`STMicroelectronics, Inc., Ex. 1005
`IPR2021-01593
`Page 4
`
`
`
`DEFENDANT’S PRODUCT(S)
`
`21.
`
`Defendant offers for sale the “Velux Active Indoor Climate Control Starter Kit”
`
`(the “Accused Product”)1 that is memory device. A non-limiting and exemplary claim chart
`
`comparing the Accused Product of Claim 7 of the ‘898 Patent is attached hereto as Exhibit B and
`
`is incorporated herein as if fully rewritten.
`
`22.
`
`As recited in Claim 7, the Accused Product includes an array of memory cells for
`
`storing data. See Ex. B.
`
`23.
`
`As recited in Claim 7, the Accused Product includes an asynchronous/synchronous
`
`logic coupled to a plurality of control signals and said array of memory cells, wherein
`
`asynchronous transfer of data stored in said array of memory cells is provided based upon a first
`
`state of said control signals and wherein synchronous transfer of data stored in said array of
`
`memory cells is provided based upon a second state of said control signals. See Ex. B.
`
`24.
`
`As recited in Claim 7, the Accused Product includes a configuration register
`
`coupled to said asynchronous/synchronous logic, wherein said first state of said control signals or
`
`said second state of said control signals is latched for access by said asynchronous/synchronous
`
`logic. See Ex. B.
`
`25.
`
`The elements described in the preceding paragraphs are covered by at least Claim
`
`7 of the ‘898 Patent. Thus, Defendant’s sale of the Accused Product is enabled by the ‘898 Patent.
`
`INFRINGEMENT OF THE PATENT-IN-SUIT
`
`26.
`
`Plaintiff realleges and incorporates by reference all of the allegations set forth in
`
`the preceding paragraphs
`
`
`1 The Accused Product is just one of the products provided by Defendant, and Plaintiff’s investigation is on-going to
`additional products to be included as an Accused Product that may be added at a later date.
`5
`
`
`
`STMicroelectronics, Inc., Ex. 1005
`IPR2021-01593
`Page 5
`
`
`
`27.
`
` In violation of 35 U.S.C. § 271, Defendant is now, and has been directly infringing
`
`at least Claim 7, literally or under the doctrine of equivalents, the ‘898 Patent.
`
`28.
`
`Defendant has had knowledge of infringement of the ‘898 Patent at least as of the
`
`service of the present Complaint.
`
`29.
`
` Defendant has directly infringed, literally or under the doctrine of equivalents, and
`
`continues to directly infringe at least one claim of the ‘898 Patent by selling and/or using, at least
`
`through internal testing or otherwise, the Accused Product without authority in the United States,
`
`and will continue to do so unless enjoined by this Court. As a direct and proximate result of
`
`Defendant’s direct infringement of the ‘898 Patent, Plaintiff has been and continues to be damaged.
`
`30.
`
`Defendant has induced others to infringe the ‘898 Patent by encouraging
`
`infringement through their use of the Accused Product, knowing that the acts of Defendant induced
`
`constituted patent infringement, and its encouraging acts actually resulted in direct patent
`
`infringement either literally or under the doctrine of equivalents.
`
`31.
`
`By engaging in the conduct described herein, Defendant has injured Plaintiff and is
`
`thus liable for infringement of the ‘898 Patent, pursuant to 35 U.S.C. § 271.
`
`32.
`
`Defendant has committed these acts of infringement without license or
`
`authorization.
`
`33.
`
`As a result of Defendant’s infringement of the ‘898 Patent, Plaintiff has suffered
`
`monetary damages and is entitled to a monetary judgment in an amount adequate to compensate
`
`for Defendant’s past infringement, together with interests and costs.
`
`34.
`
`Plaintiff will continue to suffer damages in the future unless Defendant’s infringing
`
`activities are enjoined by this Court. As such, Plaintiff is entitled to compensation for any
`
`
`
`6
`
`STMicroelectronics, Inc., Ex. 1005
`IPR2021-01593
`Page 6
`
`
`
`continuing and/or future infringement up until the date that Defendant is finally and permanently
`
`enjoined from further infringement.
`
`35.
`
`Plaintiff reserves the right to modify its infringement theories as discovery
`
`progresses in this case; it shall not be estopped for infringement contention or claim construction
`
`purposes by the claim charts that it provides with this Complaint. The claim chart depicted in
`
`Exhibit B is intended to satisfy the notice requirements of Rule 8(a)(2) of the Federal Rule of Civil
`
`Procedure and does not represent Plaintiff’s preliminary or final infringement contentions or
`
`preliminary or final claim construction positions.
`
`DEMAND FOR JURY TRIAL
`
`36.
`
`Plaintiff demands a trial by jury of any and all causes of action.
`
`PRAYER FOR RELIEF
`
`
`
`WHEREFORE, Plaintiff prays for the following relief:
`
`a. A judgement that the ‘898 Patent is valid and enforceable;
`
`b. That Defendant be adjudged to have directly infringed the ‘898 Patent either literally
`
`or under the doctrine of equivalents;
`
`c. An accounting of all infringing sales and damages including, but not limited to, those
`
`sales and damages not presented at trial;
`
`d. That Defendant, its officers, directors, agents, servants, employees, attorneys, affiliates,
`
`divisions, branches, parents, and those persons in active concert or participation with any of them,
`
`be permanently restrained and enjoined from directly infringing the ‘898 Patent;
`
`e. An award of damages pursuant to 35 U.S.C. §284 sufficient to compensate Plaintiff for
`
`the Defendant’s past infringement and any continuing or future infringement up until the date that
`
`
`
`7
`
`STMicroelectronics, Inc., Ex. 1005
`IPR2021-01593
`Page 7
`
`
`
`Defendant is finally and permanently enjoined from further infringement, including compensatory
`
`damages;
`
`f. An assessment of pre-judgment and post-judgment interest and costs against
`
`Defendant, together with an award of such interest and costs, in accordance with 35 U.S.C. §284;
`
`g. That Defendant be directed to pay enhanced damages, including Plaintiff’s attorneys’
`
`fees incurred in connection with this lawsuit pursuant to 35 U.S.C. §285; and
`
`h. That Plaintiff be granted such other and further relief as this Court may deem just and
`
`proper.
`
`Dated: August 31, 2021
`
`Respectfully submitted,
`
`SAND, SEBOLT & WERNOW CO., LPA
`
`/s/ Howard L. Wernow
`Howard L. Wernow (Bar No. 0089019)
`Aegis Tower – Suite 1100
`4940 Munson Street NW
`Canton, Ohio 44718
`Telephone: (330) 244-1174
`Facsimile: (330) 244-1173
`Howard.Wernow@sswip.com
`
`ATTORNEY FOR PLAINTIFF
`
`
`
`
`
`8
`
`STMicroelectronics, Inc., Ex. 1005
`IPR2021-01593
`Page 8
`
`
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