`FOR THE SOUTHERN DISTRICT OF FLORIDA
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`
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`Civil Action No.:
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`TRIAL BY JURY DEMANDED
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`Plaintiff,
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`OPTICAL LICENSING LLC,
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`
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` v.
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`HEICO CORPORATION,
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`and
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`3D PLUS U.S.A., INC.,
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` Defendants.
`
`
`COMPLAINT FOR INFRINGEMENT OF PATENT
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`Now comes, Plaintiff, Optical Licensing LLC (“Plaintiff” or “Optical”), by and through
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`undersigned counsel, and respectfully alleges, states, and prays as follows:
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`NATURE OF THE ACTION
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`1.
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`This is an action for patent infringement under the Patent Laws of the United States,
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`Title 35 United States Code (“U.S.C.”) to prevent and enjoin Defendant HEICO Corporation
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`(hereinafter “Heico”) and Defendant 3D Plus U.S.A., Inc. (hereinafter “3D” or collectively
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`“Defendants”), from infringing and profiting, in an illegal and unauthorized manner, and without
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`authorization and/or consent from Plaintiff from U.S. Patent No 6,791,898 (“the ‘898 Patent” or
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`the “Patent-in-Suit”), which is attached hereto as Exhibit A and incorporated herein by reference,
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`and pursuant to 35 U.S.C. §271, and to recover damages, attorney’s fees, and costs.
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`THE PARTIES
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`2.
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`Plaintiff is Texas limited liability Company with its principal place of business at
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`6009 W. Parker Road, Plano, Texas.
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`3.
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`Upon information and belief, Defendant 3D is a corporation organized under the
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`laws of Delaware, with a principal place of business at 151 Callan Ave., San Leandro CA, 94577.
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`STMicroelectronics, Inc., Ex. 1007
`IPR2021-01593
`Page 1
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`Defendant 3D may be served with process c/o Corporation Service Company, 251 Little Falls
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`Drive, Wilmington, DE, 19808.
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`4.
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`Upon information and belief, Defendant Heico is a corporation organized under the
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`laws of Florida, with a principal address of 3000 Taft St., Hollywood, FL 33021. Defendant Heico
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`may be served with process c/o Victor H. Mendelson, its Registered Agent, 825 Brickell Bay Dr.,
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`Suite 1644, Miami, FL 33131.
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`5.
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`Upon information and belief, 3D under the control of Heico, directly and/or
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`indirectly distributes, markets, offers to sell, and/or sells products in the United States and/or
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`imports products into the United States (including this District) that infringe the ‘898 Patent as
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`alleged herein.
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`JURISDICTION AND VENUE
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`6.
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`This is an action for patent infringement in violation of the Patent Act of the United
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`States, 35 U.S.C. §§1 et seq.
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`7.
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`The Court has subject matter jurisdiction over this action pursuant to 28 U.S.C.
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`§§1331 and 1338(a).
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`8.
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`This Court has personal jurisdiction over Defendants by virtue of its systematic and
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`continuous contacts with this jurisdiction and its residence in this District, as well as because of
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`the injury to Plaintiff, and the cause of action Plaintiff has risen in this District, as alleged herein.
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`9.
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`Defendants are subject to this Court’s specific and general personal jurisdiction
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`pursuant to its substantial business in this forum, including: (i) at least a portion of the
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`infringements alleged herein; (ii) regularly doing or soliciting business, engaging in other
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`persistent courses of conduct, and/or deriving substantial revenue from goods and services
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`
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`2
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`STMicroelectronics, Inc., Ex. 1007
`IPR2021-01593
`Page 2
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`provided to individuals in this forum state and in this judicial District; and (iii) Heico’s
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`incorporation and residence in this District.
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`10.
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`Venue is proper in this judicial district pursuant to 28 U.S.C. §1400(b) because
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`Defendants reside in this District under the Supreme Court’s opinion in TC Heartland v. Kraft
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`Foods Group Brands LLC, 137 S. Ct. 1514 (2017) through Heico’s incorporation, and regular and
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`established place of business in this District.
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`FACTUAL ALLEGATIONS
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`11.
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`On September 14, 2014, the United States Patent and Trademark Office (“USPTO”)
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`duly and legally issued the ‘898 Patent, entitled “MEMORY DEVICE PROVIDING
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`ASYNCHRONOUS AND SYNCHRONOUS DATA TRANSFER” after a full and fair
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`examination. The ‘898 Patent is attached hereto as Exhibit A and incorporated herein as if fully
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`rewritten.
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`12.
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`Plaintiff is presently the owner of the ‘898 Patent, having received all right, title
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`and interest in and to the ‘898 Patent from the previous assignee of record. Plaintiff possesses all
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`rights of recovery under the ‘898 Patent, including the exclusive right to recover for past
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`infringement.
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`13.
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`To the extent required, Plaintiff has complied with all marking requirements under
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`35 U.S.C. § 287.
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`14.
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`As detailed by the ‘898 Patent, two types of prior art memory device were shown
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`in Fig.1 and Fig.2, respectively. The ‘898 Patent detailed the structure and operation of an
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`asynchronous memory device 100 shown in Fig.1. Ex. A at Col.1:18-52. Additionally, the ‘898
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`Patent detailed the structure and operation of a synchronous memory device 200 shown in Fig.2.
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`Ex. A at Col.1:53-2:23.
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`3
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`STMicroelectronics, Inc., Ex. 1007
`IPR2021-01593
`Page 3
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`15.
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`However, as identified in the ‘898 Patent, the prior art memory device had
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`technological faults. Namely, these prior art memory devices were disadvantageous in that they
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`provided a single mode of data transfer. Ex. A at Col.2:24-26. That is, prior art memory devices
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`would either provide for only asynchronous data transfer or only synchronous data transfer. Id. at
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`Col.2:26-30.
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`16.
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`The ‘898 Patent overcame these faults and provide a memory device having
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`multiple modes of data transfer. Particularly, the ‘898 Patent defines an inventive memory device
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`for asynchronous and synchronous data transfer.
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`17.
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`Claim 1 of the ‘898 Patent states:
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`“1. A memory device data transfer method comprising:
`determining a transfer mode between synchronous and
`asynchronous, wherein a configuration register speci-
`fies said transfer mode between synchronous and asyn-
`chronous;
`determining whether said transfer mode is write or read;
`and
`transferring data according to said determined mode.” Ex. A at Col.10:9-
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`17.
`
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`Claim 7 of the ‘898 Patent states:
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`18.
`
`“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/
`
`
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`4
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`STMicroelectronics, Inc., Ex. 1007
`IPR2021-01593
`Page 4
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`synchronous logic.” Ex. A at Col.10:32-47.
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`19. Claim 9 of the ‘898 Patent states:
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`9. A plurality of transfer methods comprising:
`transferring data asynchronously;
`transferring data synchronously;
`switching from transferring data synchronously to trans-
`ferring data asynchronously;
`switching from transferring data asynchronously to trans-
`ferring data synchronously; and
`wherein a configuration register provides for selection
`between said transferring data asynchronous and said
`transferring data synchronous.” Ex.A Col.11:9-19
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`20. Claim 7 of the ‘898 Patent is directed to an article of manufacture (i.e., a memory
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`
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`device).
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`21. Articles of Manufacture are patent eligible under 35 U.S.C. §101.
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`22. Defendants commercialize, inter alia, a product that includes all of the claim elements
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`in at least one claim of the ‘898 Patent. More particularly, Defendants commercialize, inter alia, a
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`product or article of manufacture that includes all of the recited elements of Claims 1, 2, 3, 4, 5, 6,
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`7, 9, 10 and 13 of the ‘898 Patent. Specifically, Defendants make, use, sell, offer for sale, or import
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`a product that encompasses that which is covered by Claims 1, 2, 3, 4, 5, 6, 7, 9, 10 and 13 of the
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`‘898 Patent.
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`DEFENDANT’S PRODUCT(S)
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`23. Defendants offer for sale the “3DFN128G08US8761 NAND Flash” (the “Accused
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`Product”)1 that is memory device. A non-limiting and exemplary claim chart comparing the
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`Accused Product of Claims 1, 2, 3, 4, 5, 6, 7, 9, 10 and 13 of the ‘898 Patent is attached hereto as
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`Exhibit B and is incorporated herein as if fully rewritten.
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`
`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
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`STMicroelectronics, Inc., Ex. 1007
`IPR2021-01593
`Page 5
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`24. As recited in Claim 1, the Accused Product practices determining a transfer mode
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`between synchronous and asynchronous, wherein a configuration register specifies said transfer
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`mode between synchronous and asynchronous. See Ex. B.
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`25.
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`As recited in Claim 1, the Accused Product practices determining whether said
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`transfer mode is write or read. See Ex. B.
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`26.
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`As recited in Claim 1, the Accused Product practices transferring data according to
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`said determined mode. See Ex. B.
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`27.
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`As recited in Claim 2, the Accused Product practices a configuration register
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`specifies a plurality of functionalities of said transfer mode. See Ex. B.
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`28.
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`As recited in Claim 3, the Accused Product discloses a first state of a plurality of
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`control signals specifies that said transfer mode is synchronous. See Ex. B.
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`29.
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`As recited in Claim 4, the Accused Product discloses a second state of a plurality
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`of control signals specifies that said transfer mode is asynchronous. See Ex. B.
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`30.
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`As recited in Claim 5, the Accused Product discloses a third state of control signals
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`specifies that said transfer mode is write. See Ex. B.
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`31.
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`As recited in Claim 6, the Accused Product discloses a fourth state of control signals
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`specifies that said transfer mode is read. See Ex. B.
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`32.
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`As recited in Claim 7, the Accused Product includes an array of memory cells for
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`storing data. See Ex. B.
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`33.
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`As recited in Claim 7, the Accused Product includes an asynchronous/synchronous
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`logic coupled to a plurality of control signals and said array of memory cells, wherein
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`asynchronous transfer of data stored in said array of memory cells is provided based upon a first
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`
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`6
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`STMicroelectronics, Inc., Ex. 1007
`IPR2021-01593
`Page 6
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`state of said control signals and wherein synchronous transfer of data stored in said array of
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`memory cells is provided based upon a second state of said control signals. See Ex. B.
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`34.
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`As recited in Claim 7, the Accused Product includes a configuration register
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`coupled to said asynchronous/synchronous logic, wherein said first state of said control signals or
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`said second state of said control signals is latched for access by said asynchronous/synchronous
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`logic. See Ex. B.
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`35.
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`As recited in Claim 9, the Accused Product discloses a plurality of transfer methods
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`comprising: transferring data asynchronously; transferring data synchronously; switching from
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`transferring data synchronously to transferring data asynchronously; switching from transferring
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`data asynchronously to transferring data synchronously; and wherein a configuration register
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`provides for selection between said transferring data asynchronously and said transferring data
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`synchronously. See Ex. B.
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`36.
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`As recited in Claim 10, the Accused Product discloses the method of claim 9,
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`wherein said transferring data asynchronously comprises: reading data and writing data. See Ex.
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`B.
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`37.
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`As recited in Claim 13, the Accused Product discloses the method of claim 9,
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`wherein said transferring data synchronously comprises reading data. See Ex. B.
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`38.
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`The elements described in the preceding paragraphs are covered by at least Claims
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`1, 2, 3, 4, 5, 6, 7, 9, 10 and 13 of the ‘898 Patent. Thus, Defendant’s sale of the Accused Product
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`is enabled by the ‘898 Patent.
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`INFRINGEMENT OF THE PATENT-IN-SUIT
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`39.
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`Plaintiff realleges and incorporates by reference all of the allegations set forth in
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`the preceding paragraphs
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`
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`7
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`STMicroelectronics, Inc., Ex. 1007
`IPR2021-01593
`Page 7
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`40.
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` In violation of 35 U.S.C. § 271, Defendants are now, and have been directly
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`infringing at least Claims 1, 2, 3, 4, 5, 6, 7, 9, 10 and 13, literally or under the doctrine of
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`equivalents, of the ‘898 Patent.
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`41.
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`Defendants have had knowledge of infringement of the ‘898 Patent at least as of
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`the service of the present Complaint.
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`42.
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` Defendants have directly infringed, literally or under the doctrine of equivalents,
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`and continue to directly infringe at least one claim of the ‘898 Patent by selling and/or using, at
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`least through internal testing or otherwise, the Accused Product without authority in the United
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`States, and will continue to do so unless enjoined by this Court. As a direct and proximate result
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`of Defendants’ direct infringement of the ‘898 Patent, Plaintiff has been and continues to be
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`damaged.
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`43.
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`Defendants have induced others to infringe the ‘898 Patent by encouraging
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`infringement through their use of the Accused Product, knowing that the acts of Defendants
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`induced constituted patent infringement, and its encouraging acts actually resulted in direct patent
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`infringement either literally or under the doctrine of equivalents.
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`44.
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`By engaging in the conduct described herein, Defendants have injured Plaintiff and
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`are thus liable for infringement of the ‘898 Patent, pursuant to 35 U.S.C. § 271.
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`45.
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`Defendants have committed these acts of infringement without license or
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`authorization.
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`46.
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`As a result of Defendants’ infringement of the ‘898 Patent, Plaintiff has suffered
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`monetary damages and is entitled to a monetary judgment in an amount adequate to compensate
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`for Defendants’ past infringement, together with interests and costs.
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`8
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`STMicroelectronics, Inc., Ex. 1007
`IPR2021-01593
`Page 8
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`47.
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`Plaintiff will continue to suffer damages in the future unless Defendants’ infringing
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`activities are enjoined by this Court. As such, Plaintiff is entitled to compensation for any
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`continuing and/or future infringement up until the date that Defendants is/are finally and
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`permanently enjoined from further infringement.
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`48.
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`Plaintiff reserves the right to modify its infringement theories as discovery
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`progresses in this case; it shall not be estopped for infringement contention or claim construction
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`purposes by the claim charts that it provides with this Complaint. The claim chart depicted in
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`Exhibit B is intended to satisfy the notice requirements of Rule 8(a)(2) of the Federal Rule of Civil
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`Procedure and does not represent Plaintiff’s preliminary or final infringement contentions or
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`preliminary or final claim construction positions.
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`DEMAND FOR JURY TRIAL
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`49.
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`Plaintiff demands a trial by jury of any and all causes of action.
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`PRAYER FOR RELIEF
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`
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`WHEREFORE, Plaintiff prays for the following relief:
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`a. A judgement that the ‘898 Patent is valid and enforceable;
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`b. That Defendants be adjudged to have directly infringed the ‘898 Patent either literally
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`or under the doctrine of equivalents;
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`c. An accounting of all infringing sales and damages including, but not limited to, those
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`sales and damages not presented at trial;
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`d. That Defendants, its officers, directors, agents, servants, employees, attorneys,
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`affiliates, divisions, branches, parents, and those persons in active concert or participation with
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`any of them, be permanently restrained and enjoined from directly infringing the ‘898 Patent;
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`
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`9
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`STMicroelectronics, Inc., Ex. 1007
`IPR2021-01593
`Page 9
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`e. An award of damages pursuant to 35 U.S.C. §284 sufficient to compensate Plaintiff for
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`the Defendants’ past infringement and any continuing or future infringement up until the date that
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`Defendants is/are finally and permanently enjoined from further infringement, including
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`compensatory damages;
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`f. An assessment of pre-judgment and post-judgment interest and costs against
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`Defendants, together with an award of such interest and costs, in accordance with 35 U.S.C. §284;
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`g. That Defendants be directed to pay enhanced damages, including Plaintiff’s attorneys’
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`fees incurred in connection with this lawsuit pursuant to 35 U.S.C. §285; and
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`h. That Plaintiff be granted such other and further relief as this Court may deem just and
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`proper.
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`Dated: August 31, 2021
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`Respectfully submitted,
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`SAND, SEBOLT & WERNOW CO., LPA
`
`/s/ Howard L. Wernow
`Howard L. Wernow, B.C.S.
`Fla Bar No. 107560
`Aegis Tower – Suite 1100
`4940 Munson Street NW
`Canton, Ohio 44718
`Telephone: (330) 244-1174
`Facsimile: (330) 244-1173
`Email: howard.wernow@sswip.com
`
`Board Certified in Intellectual Property Law
`by the Florida Bar
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`ATTORNEY FOR PLAINTIFF
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`10
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`STMicroelectronics, Inc., Ex. 1007
`IPR2021-01593
`Page 10
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