Case 8:21-cv-02308-TPB-AAS Document 1 Filed 09/29/21 Page 1 of 10 PageID 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF FLORIDA
`
`OPTICAL LICENSING LLC,
`
`
`Civil Action No.:
`
`
`
` v.
`
`
`TRIAL BY JURY DEMANDED
`ANALOG DEVICES, INC.,
`
` Defendant.
`
`Plaintiff,
`
`
`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 Analog Devices, Inc. (hereinafter “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.
`
`STMicroelectronics, Inc., Ex. 1012
`IPR2021-01593
`Page 1
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF FLORIDA
`
`OPTICAL LICENSING LLC,
`
`
`Civil Action No.:
`
`
`
` v.
`
`
`TRIAL BY JURY DEMANDED
`ANALOG DEVICES, INC.,
`
` Defendant.
`
`Plaintiff,
`
`
`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 Analog Devices, Inc. (hereinafter “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.
`
`STMicroelectronics, Inc., Ex. 1012
`IPR2021-01593
`Page 1
`
`
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`Case 8:21-cv-02308-TPB-AAS Document 1 Filed 09/29/21 Page 2 of 10 PageID 2
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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
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`business at 6009 W. Parker Road, Plano, Texas.
`
`3.
`
`Upon information and belief, Defendant is a corporation organized
`
`under the laws of Massachusetts, with a physical presence at 13008 Telecom Drive,
`
`Temple Terrace, Florida 33637. According to Florida’s Secretary of State business
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`records and upon information and belief, Defendant may be served with process c/o
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`Corporation Service Company, 1201 Hays Street, Tallahassee, Florida 32301.
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`JURISDICTION AND VENUE
`
`4.
`
`This is an action for patent infringement in violation of the Patent Act
`
`of the United States, 35 U.S.C. §§1 et seq.
`
`5.
`
`The Court has subject matter jurisdiction over this action pursuant to
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`28 U.S.C. §§1331 and 1338(a).
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`6.
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`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.
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`7.
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`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
`
`
`
`2
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`STMicroelectronics, Inc., Ex. 1012
`IPR2021-01593
`Page 2
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`Case 8:21-cv-02308-TPB-AAS Document 1 Filed 09/29/21 Page 3 of 10 PageID 3
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`business, engaging in other persistent courses of conduct, and/or deriving substantial
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`revenue from goods and services provided to individuals in this forum state and in
`
`this judicial District; and (iii) being physically located in this District.
`
`8.
`
`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
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`Heartland v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017) through its
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`physical presence, and regular and established place of business in this District.
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`FACTUAL ALLEGATIONS
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`9.
`
`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”
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`after a full and fair examination. The ‘898 Patent is attached hereto as Exhibit A and
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`incorporated herein as if fully rewritten.
`
`10. 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
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`exclusive right to recover for past infringement.
`
`11. To the extent required, Plaintiff has complied with all marking
`
`requirements under 35 U.S.C. § 287.
`
`
`
`3
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`STMicroelectronics, Inc., Ex. 1012
`IPR2021-01593
`Page 3
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`Case 8:21-cv-02308-TPB-AAS Document 1 Filed 09/29/21 Page 4 of 10 PageID 4
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`12. As detailed by the ‘898 Patent, two types of prior art memory device
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`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
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`synchronous memory device 200 shown in Fig.2. Ex. A at Col.1:53-2:23.
`
`13. 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.
`
`14. 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.
`
`15. 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
`said
`to
`a
`configuration
`register
`coupled
`asynchronous/synchronous logic, wherein said first state of said control
`
`
`
`4
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`STMicroelectronics, Inc., Ex. 1012
`IPR2021-01593
`Page 4
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`Case 8:21-cv-02308-TPB-AAS Document 1 Filed 09/29/21 Page 5 of 10 PageID 5
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`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.
`
`16. Claim 7 of the ‘898 Patent is directed to an article of manufacture (i.e., a
`
`memory device).
`
`17. Articles of Manufacture are patent eligible under 35 U.S.C. §101.
`
`18. 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.
`
`DEFENDANT’S PRODUCT(S)
`
`19. Defendant offers for sale the Analog Devices “ADSP-BF525” (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.
`
`20. As recited in Claim 7, the Accused Product includes an array of
`
`memory cells for storing data. See Ex. B.
`
`
`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
`
`
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`STMicroelectronics, Inc., Ex. 1012
`IPR2021-01593
`Page 5
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`Case 8:21-cv-02308-TPB-AAS Document 1 Filed 09/29/21 Page 6 of 10 PageID 6
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`21. 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.
`
`22. 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.
`
`23. 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
`
`24. Plaintiff realleges and incorporates by reference all of the allegations
`
`set forth in the preceding paragraphs
`
`25.
`
` 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.
`
`
`
`6
`
`STMicroelectronics, Inc., Ex. 1012
`IPR2021-01593
`Page 6
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`Case 8:21-cv-02308-TPB-AAS Document 1 Filed 09/29/21 Page 7 of 10 PageID 7
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`26. Defendant has had knowledge of infringement of the ‘898 Patent at
`
`least as of the service of the present Complaint.
`
`27.
`
` 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.
`
`28. 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.
`
`29. 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.
`
`30. Defendant has committed these acts of infringement without license or
`
`authorization.
`
`31. 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
`
`
`
`7
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`STMicroelectronics, Inc., Ex. 1012
`IPR2021-01593
`Page 7
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`Case 8:21-cv-02308-TPB-AAS Document 1 Filed 09/29/21 Page 8 of 10 PageID 8
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`adequate to compensate for Defendant’s past infringement, together with interests
`
`and costs.
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`32. 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 continuing and/or future infringement up until the
`
`date that Defendant is finally and permanently enjoined from further infringement.
`
`33. 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.
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`DEMAND FOR JURY TRIAL
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`34. Plaintiff demands a trial by jury of any and all causes of action.
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`PRAYER FOR RELIEF
`
`
`
`WHEREFORE, Plaintiff prays for the following relief:
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`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;
`
`
`
`8
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`STMicroelectronics, Inc., Ex. 1012
`IPR2021-01593
`Page 8
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`Case 8:21-cv-02308-TPB-AAS Document 1 Filed 09/29/21 Page 9 of 10 PageID 9
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`c. An accounting of all infringing sales and damages including, but not
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`limited to, those sales and damages not presented at trial;
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`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 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.
`
`
`
`
`
`
`
`
`
`9
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`STMicroelectronics, Inc., Ex. 1012
`IPR2021-01593
`Page 9
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`Case 8:21-cv-02308-TPB-AAS Document 1 Filed 09/29/21 Page 10 of 10 PageID 10
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`Dated: September 29, 2021
`
`Respectfully submitted,
`
`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
`
`ATTORNEY FOR PLAINTIFF
`
`
`
`
`
`10
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`STMicroelectronics, Inc., Ex. 1012
`IPR2021-01593
`Page 10
`
`
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