IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`
`
`
`Civil Action No.: 6:21-cv-00905
`
`
`TRIAL BY JURY DEMANDED
`
`Plaintiff,
`
`OPTICAL LICENSING LLC,
`
`
`
` v.
`
`LOWE’S COMPANIES, INC.,
`
`and
`
`LOWE’S HOME CENTERS, LLC,
`
` Defendants.
`
`
`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 Lowe’s Companies Inc.
`
`(hereinafter “LCI”) and Defendant Lowe’s Home Centers, LLC. (hereinafter “LHC” or
`
`collectively “Defendants”), 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 LCI is a corporation organized under the
`
`laws of North Carolina, with a principal place of business at 1000 Lowe’s Boulevard, Moorseville,
`
`STMicroelectronics, Inc., Ex. 1006
`IPR2021-01593
`Page 1
`
`
`FOR THE WESTERN DISTRICT OF TEXAS
`
`
`
`Civil Action No.: 6:21-cv-00905
`
`
`TRIAL BY JURY DEMANDED
`
`Plaintiff,
`
`OPTICAL LICENSING LLC,
`
`
`
` v.
`
`LOWE’S COMPANIES, INC.,
`
`and
`
`LOWE’S HOME CENTERS, LLC,
`
` Defendants.
`
`
`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 Lowe’s Companies Inc.
`
`(hereinafter “LCI”) and Defendant Lowe’s Home Centers, LLC. (hereinafter “LHC” or
`
`collectively “Defendants”), 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 LCI is a corporation organized under the
`
`laws of North Carolina, with a principal place of business at 1000 Lowe’s Boulevard, Moorseville,
`
`STMicroelectronics, Inc., Ex. 1006
`IPR2021-01593
`Page 1
`
`
`
`North Carolina. Defendant LCI may be served with process c/o Corporation Service Company dba
`
`CSC-Lawyers Incorporating Service Company, 211 E. Seventh St., Suite 620, Austin, TX, 78701.
`
`4.
`
`Upon information and belief, Defendant LHC, is a company organized under the
`
`laws of North Carolina, with a principal address at 1000 Lowe’s Boulevard, Moorseville, North
`
`Carolina, 28117. Defendant LHC may be served with process c/o Corporation Service Company
`
`dba CSC-Lawyers Incorporating Service Company, 211 E. Seventh St., Suite 620, Austin, TX,
`
`78701.
`
`5.
`
`Upon information and belief, Defendants operates numerous places of business,
`
`referred to as “Lowe’s Home Improvement” retail stores, throughout the Western District of Texas,
`
`including but not limited to Store #0129 located at 201 N New Rd., Waco, Texas 76710.
`
`6.
`
`Upon information and belief, LHC, under the control of LCI, and 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
`
`7.
`
`This is an action for patent infringement in violation of the Patent Act of the United
`
`States, 35 U.S.C. §§1 et seq.
`
`8.
`
`The Court has subject matter jurisdiction over this action pursuant to 28 U.S.C.
`
`§§1331 and 1338(a).
`
`9.
`
`This Court has personal jurisdiction over Defendants 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.
`
`
`
`2
`
`STMicroelectronics, Inc., Ex. 1006
`IPR2021-01593
`Page 2
`
`
`
`10.
`
`Defendants are 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.
`
`11.
`
`Venue is proper in this judicial district pursuant to 28 U.S.C. §1400(b) because
`
`Defendants reside 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
`
`12.
`
`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.
`
`13.
`
`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.
`
`14.
`
`To the extent required, Plaintiff has complied with all marking requirements under
`
`35 U.S.C. § 287.
`
`
`
`3
`
`STMicroelectronics, Inc., Ex. 1006
`IPR2021-01593
`Page 3
`
`
`
`15.
`
`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.
`
`16.
`
`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
`
`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.
`
`17.
`
`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.
`
`18.
`
`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.
`
`19. Claim 7 of the ‘898 Patent is directed to an article of manufacture (i.e., a memory
`
`device).
`
`20. Articles of Manufacture are patent eligible under 35 U.S.C. §101.
`4
`
`
`
`STMicroelectronics, Inc., Ex. 1006
`IPR2021-01593
`Page 4
`
`
`
`21. Defendants commercialize, inter alia, a product that includes all of the claim elements
`
`in at least one claim of the ‘898 Patent. More particularly, Defendants commercialize, inter alia, a
`
`product or article of manufacture that includes all of the recited elements of Claim 7 of the ‘898
`
`Patent. Specifically, Defendants make, use, sells, offer for sale, or import a product that
`
`encompasses that which is covered by Claim 7 of the ‘898 Patent.
`
`DEFENDANT’S PRODUCT(S)
`
`22.
`
`Defendants offer for sale the “Velux Active 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.
`
`23.
`
`As recited in Claim 7, the Accused Product includes an array of memory cells for
`
`storing data. See Ex. B.
`
`24.
`
`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.
`
`25.
`
`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.
`
`
`1 The Accused Product is just one of the products provided by Defendants, 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. 1006
`IPR2021-01593
`Page 5
`
`
`
`26.
`
`The elements described in the preceding paragraphs are covered by at least Claim
`
`7 of the ‘898 Patent. Thus, Defendants’ sale of the Accused Product is enabled by the ‘898 Patent.
`
`INFRINGEMENT OF THE PATENT-IN-SUIT
`
`27.
`
`Plaintiff realleges and incorporates by reference all of the allegations set forth in
`
`the preceding paragraphs
`
`28.
`
` In violation of 35 U.S.C. § 271, Defendants are now, and have been directly
`
`infringing at least Claim 7, literally or under the doctrine of equivalents, the ‘898 Patent.
`
`29.
`
`Defendants have had knowledge of infringement of the ‘898 Patent at least as of
`
`the service of the present Complaint.
`
`30.
`
` Defendants have directly infringed, literally or under the doctrine of equivalents,
`
`and continue 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 Defendants’ direct infringement of the ‘898 Patent, Plaintiff has been and continues to be
`
`damaged.
`
`31.
`
`Defendants have induced others to infringe the ‘898 Patent by encouraging
`
`infringement through their use of the Accused Product, knowing that the acts of Defendants
`
`induced constituted patent infringement, and its encouraging acts actually resulted in direct patent
`
`infringement either literally or under the doctrine of equivalents.
`
`32.
`
`By engaging in the conduct described herein, Defendants have injured Plaintiff and
`
`are thus liable for infringement of the ‘898 Patent, pursuant to 35 U.S.C. § 271.
`
`33.
`
`Defendants have committed these acts of infringement without license or
`
`authorization.
`
`
`
`6
`
`STMicroelectronics, Inc., Ex. 1006
`IPR2021-01593
`Page 6
`
`
`
`34.
`
`As a result of Defendants’ infringement of the ‘898 Patent, Plaintiff has suffered
`
`monetary damages and is entitled to a monetary judgment in an amount adequate to compensate
`
`for Defendants’ past infringement, together with interests and costs.
`
`35.
`
`Plaintiff will continue to suffer damages in the future unless Defendants’ infringing
`
`activities are enjoined by this Court. As such, Plaintiff is entitled to compensation for any
`
`continuing and/or future infringement up until the date that Defendants are finally and permanently
`
`enjoined from further infringement.
`
`36.
`
`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
`
`37.
`
`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 Defendants 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;
`
`
`
`7
`
`STMicroelectronics, Inc., Ex. 1006
`IPR2021-01593
`Page 7
`
`
`
`d. That Defendants, 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 Defendants’ past infringement and any continuing or future infringement up until the date that
`
`Defendants is/are finally and permanently enjoined from further infringement, including
`
`compensatory damages;
`
`f. An assessment of pre-judgment and post-judgment interest and costs against
`
`Defendants, together with an award of such interest and costs, in accordance with 35 U.S.C. §284;
`
`g. That Defendants 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. 1006
`IPR2021-01593
`Page 8
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
