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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Plaintiff,
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`NANOCO TECHNOLOGIES LTD.,
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`v.
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`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG DISPLAY CO., LTD.,
`SAMSUNG ADVANCED INSTITUTE OF
`TECHNOLOGY,
`SAMSUNG ELECTRONICS CO., LTD.,
`VISUAL DISPLAY, and
`SAMSUNG ELECTRONICS AMERICA,
`INC.
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`Civil Action No. 2:20-cv-38
`
`
`JURY TRIAL DEMANDED
`
`
`
`NANOCO TECHNOLOGIES LTD’S
`COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff Nanoco Technologies Ltd. (“Nanoco” or “Plaintiff”) brings this Complaint for
`
`Patent Infringement (“Complaint”) and for Jury Trial against Samsung Electronics Co., Ltd.,
`
`Samsung Display Co., Ltd., Samsung Advanced Institute of Technology, Samsung Electronics
`
`Co., Ltd. Visual Display Division, and Samsung Electronics America, Inc. (collectively,
`
`“Samsung” or “Defendant”). Nanoco alleges as follows:
`
`THE PARTIES
`
`1.
`
`Plaintiff Nanoco Technologies Ltd. is a corporation organized and existing under
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`the laws of the United Kingdom with a place of business at 46 Grafton Street, Manchester, M13
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`9NT, United Kingdom.
`
`2.
`
`Nanoco is the sole owner of, and possesses all rights, interests, and title of, U.S.
`
`Patent No. 7,588,828 (“the ’828 patent”) (attached as Exhibit 1), U.S. Patent No. 7,803,423 (“the
`
`
`
`
`
`Case 2:20-cv-00038-JRG Document 1 Filed 02/14/20 Page 2 of 18 PageID #: 2
`
`
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`’423 patent”) (attached as Exhibit 2), U.S. Patent No. 7,867,557 (“the ’557 patent”) (attached as
`
`Exhibit 3), U.S. Patent No. 8,524,365 (“the ’365 patent”) (attached as Exhibit 4) and U.S. Patent
`
`No. 9,680,068 (“the ’068 patent”) (attached as Exhibit 5).
`
`3.
`
`On information and belief Defendant Samsung Electronics Co., Ltd. is a
`
`corporation organized and existing under the laws of the Republic of Korea with a principal
`
`place of business at 129 Samsung-Ro, Yeongtong-Gu, Suwon, Gyeonggi, 16677, Korea.
`
`4.
`
`On information and belief Defendant Samsung Display Co., Ltd. is a wholly
`
`owned subsidiary company of Samsung Electronics Co., Ltd. organized and existing under the
`
`laws of the Republic of Korea with a principal place of business at 1 Samsung-Ro, Giheung-Gu,
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`Yongin-City, Gyeonggi-Do 17113, Korea.
`
`5.
`
`On information and belief Defendant Samsung Advanced Institute of Technology
`
`is Samsung Electronics Co., Ltd.’s research and development hub, established as an incubator for
`
`technology innovation with a principal location at 130, Samsung-ro, Yeongtong-gu, Suwon-si,
`
`Gyeonggi-do, 16678, Korea.
`
`6.
`
`On information and belief Defendant Samsung Electronics Co., Ltd. Visual
`
`Display Division is a wholly owned subsidiary company of Samsung Electronics Co., Ltd.,
`
`organized and existing under the laws of the Republic of Korea with a principal place of business
`
`at 416 Metan 3-Dong, Paldal-Gu Suwon, Gyeonggi, 31454, Republic of Korea.
`
`7.
`
`On information and belief Defendant Samsung Electronics America, Inc. is a
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`wholly owned subsidiary corporation of Samsung Electronics Co. Ltd. organized and existing
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`under the laws of New York with a principal place of business at 85 Challenger Road, Ridgefield
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`Park, New Jersey 07660. Samsung Electronics America, Inc. is registered to do business in
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`Texas and has maintained regular and established places of business with offices and/or other
`
`2
`
`
`
`Case 2:20-cv-00038-JRG Document 1 Filed 02/14/20 Page 3 of 18 PageID #: 3
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`
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`facilities in this Judicial District of Texas at least at 6625 Excellence Way Plano, Texas 75023
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`and 1301 E. Lookout Drive, Richardson, Texas 75082.
`
`8.
`
`Samsung Electronics America, Inc. may be served through its registered agent for
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`service of process, CT Corporation System, 1999 Bryan St., Suite. 900, Dallas, Texas 75201.
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`9.
`
`On information and belief, Samsung Electronics Co., Ltd is liable for any act for
`
`which Samsung Display Co., Ltd., Samsung Advanced Institute of Technology, Samsung
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`Electronics Co., Ltd. Visual Display Division, or Samsung Electronics America, Inc. and its
`
`subsidiaries would be or would have been liable, including for any infringement alleged in this
`
`matter, and references herein to Samsung Display Co., Ltd. or Samsung Electronics America,
`
`Inc. should be understood to encompass such acts by Samsung Electronics Co. Ltd.
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`JURISDICTION AND VENUE
`
`10.
`
`This is an action for patent infringement arising under the patent laws of the
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`United States, Title 35 of the United States Code § 1, et seq. Accordingly, this Court has subject
`
`matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).
`
`11.
`
`This Court has specific personal jurisdiction over Defendants at least in part
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`because Defendants conduct business in this Judicial District. Nanoco’s causes of action arise, at
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`least in part, from Defendant’s contacts with and activities in the State of Texas and this Judicial
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`District. Upon information and belief, the 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
`
`making, using, selling, offering to sell, or importing products that infringe one or more claims of
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`Nanoco’s U.S. Patent Nos. 7,588,828; 7,803,423; 7,867,557; 8,524,365; and 9,680,068.
`
`Defendants’ infringing acts within this Judicial District give rise to this action and have
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`established minimum contacts with the forum state of Texas.
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`3
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`
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`Case 2:20-cv-00038-JRG Document 1 Filed 02/14/20 Page 4 of 18 PageID #: 4
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`
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`12.
`
`Defendants conduct business in this District and maintain regular and established
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`places of business within this District. For example, Samsung has maintained regular and
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`established places of business with offices and/or other facilities in this Judicial District of Texas
`
`at least at 6625 Excellence Way Plano, Texas 75023 and 1301 E. Lookout Drive, Richardson,
`
`Texas 75082. See e.g., Samsung, Samsung Electronics America to Open Flagship North Texas
`
`Campus (2018), available at https://news.samsung.com/us/samsung-electronics-america-open-
`
`flagship-north-texas-campus/. On information and belief, Defendants have placed or contributed
`
`to placing infringing products including, but not limited to, Samsung’s QLED TVs into the
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`stream of commerce knowing or understanding that such products would be sold and used in the
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`United States, including in this Judicial District. On information and belief, Samsung also has
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`derived substantial revenues from infringing acts in this Judicial District, including from the sale
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`and use of infringing products including, but not limited to, Samsung’s QLED TVs.
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`13.
`
`Defendants have established minimum contacts with this forum such that the
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`exercise of jurisdiction over Defendants would not offend traditional notions of fair play and
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`substantial justice.
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`14.
`
`Venue in this Judicial District is proper as to Samsung Electronics Co., Ltd.,
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`Samsung Display Co., Ltd., Samsung Electronics Co., Ltd. Visual Display Division, and
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`Samsung Advanced Institute of Technology under 28 U.S.C. § 1391(c)(3) because they are
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`foreign corporations. In re HTC Corp., 889 F.3d 1349, 1354 (Fed. Cir. 2018).
`
`15.
`
`Venue in this Judicial District is also proper as to Samsung Electronics America,
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`Inc. under 28 U.S.C. §§ 1391(b), (c) and 1400(b) because it has (1) committed and continues to
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`commit acts of patent infringement in this Judicial District by, inter alia, directly and/or
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`indirectly using, selling, offering to sell, or importing products that infringe one or more claims
`
`4
`
`
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`Case 2:20-cv-00038-JRG Document 1 Filed 02/14/20 Page 5 of 18 PageID #: 5
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`
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`of U.S. Patent Nos. 7,588,828; 7,803,423; 7,867,557; 8,524,365; and 9,680,068 and (2) has done
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`and continue to do business in this Judicial District by maintaining regular and established places
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`of business at least at 6625 Excellence Way Plano, Texas 75023 and 1301 E. Lookout Drive,
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`Richardson, Texas 75082. In re Cray Inc., 871 F.3d 1355, 1362-63 (Fed. Cir. 2017).
`
`FACTUAL BACKGROUND
`
`Nanoco established its research and manufacturing headquarters in 2001, and
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`16.
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`since then has been a leading innovator in nanoparticle and quantum dot technology.
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`17.
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`Originally born from a university research group, Nanoco has since transformed
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`into a pioneer in the quantum dot industry as a result of innovating in the areas of heavy metal
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`free quantum dots and “molecular seeding” processes for the large-scale synthesis of quantum
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`dots.
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`18.
`
`Nanoco’s heavy metal-free quantum dots mitigate health risks presented by the
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`use of quantum dots containing cadmium, mercury, lead and chromium in commercial
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`applications.
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`19.
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`Nanoco also solved a key problem related to quantum dots: the unique capability
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`to scale-up from lab to volume production.
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`20.
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`Quantum dots created using Nanoco’s patented innovations have improved the
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`visual aspects of consumer electronic display devices and made their large-scale synthesis and
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`implementation commercially viable. Accordingly, quantum dots created by Nanoco’s patented
`
`innovations have become fundamental components of many premium LED TV models.
`
`21.
`
`In recognition of its innovations, Nanoco has been awarded hundreds of patents,
`
`and, to date, has amassed one of the largest intellectual property portfolios in quantum dot
`
`technology.
`
`5
`
`
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`Case 2:20-cv-00038-JRG Document 1 Filed 02/14/20 Page 6 of 18 PageID #: 6
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`
`
`22.
`
`Numerous companies have taken a license to Nanoco’s quantum dot patents, and
`
`Nanoco has also entered joint development agreements with major electronics companies in
`
`connection with the use of Nanoco’s cadmium-free quantum dots.
`
`23.
`
`Further, Nanoco has entered supply agreements with manufacturing companies
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`for the production and distribution of optical films containing quantum dots.
`
`24.
`
`Samsung also engaged with Nanoco as early as 2010 in order to evaluate
`
`Nanoco’s quantum dot technology for use in the emission material of Samsung’s LCD modules.
`
`25.
`
`As part of its engagement with Samsung, Nanoco provided samples of its
`
`quantum dots to Samsung.
`
`26.
`
`Interaction between Nanoco and Samsung did not result in a license for Samsung
`
`to use Nanoco’s patented innovations or an agreement for Nanoco to provide Samsung with its
`
`patented quantum dots.
`
`27.
`
`Nevertheless, after Nanoco disclosed its technology to Samsung, Samsung
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`debuted a TV comprising quantum dots for the first time at Consumer Electronics Show in
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`20151. See e.g., Consumer Reports, Samsung joins the quantum dot crowd at CES 2015 with
`
`super SUHD TVs (January, 2015), available at
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`https://www.consumerreports.org/cro/news/2015/01/samsung-joins-the-quantum-dot-crowd-at-
`
`ces-2015-with-super-suhd-tvs/index.htm.
`
`28.
`
`Samsung began incorporating cadmium-free quantum dot technology in its TV
`
`displays when it launched its newly-branded, premium QLED TV in 2017, starting in North
`
`America. See e.g., Samsung, Quantum Dot Artisan: Dr. Eunjoo Jang, Samsung Fellow (2017),
`
`
`1
`See also e.g., What’s the Difference Between OLED and Samsung’s QLED TVs (2017), available at
`https://www.howtogeek.com/327047/whats-the-difference-between-oled-and-samsungs-qled-tvs/ (explaining that,
`starting in 2015, and continuing until 2017, Samsung branded its QLED TVs as “Quantum Dot SUHD” or “SUHD”
`TVs).
`
`6
`
`
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`Case 2:20-cv-00038-JRG Document 1 Filed 02/14/20 Page 7 of 18 PageID #: 7
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`
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`available at https://news.samsung.com/global/quantum-dot-artisan-dr-eunjoo-jang-samsung-
`
`fellow; see also e.g., Samsung, This is QLED TV, Part 7: QLED TV – How Samsung Achieved
`
`Market Dominance in the Premium TV Market (2017), available at
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`https://www.samsung.com/global/tv/news/this-is-qled-tv-part-7-qled-tv-how-samsung-achieved-
`
`dominance-in-the-premium-tv-market/.
`
`29.
`
`Samsung’s share in North America’s high-end TV market, including QLED TVs,
`
`has increased sharply following its launch of QLED TVs in 2017. Id.
`
`30.
`
`Since its launch, Samsung claims that its QLED TV has led the performance of
`
`Samsung premium TV all over the world. Id. In particular, Samsung claims to have “achieved
`
`dominance in the premium TV market” as a result of its QLED TVs. Id.
`
`31.
`
`As Samsung explains, its premium TV sales have a “large[] business impact,
`
`accounting for 20 percent of sales revenue and 40 percent of profits.” Id.
`
`32.
`
`The technologies disclosed and claimed in the asserted patents generally relate to
`
`heavy metal-free quantum dots, synthesis of quantum dots, and use of quantum dot film resins in
`
`electronic display devices.
`
`33.
`
`United States Patent No. 7,588,828 (“the ’828 patent”), titled “preparation of
`
`nanoparticle materials,” generally relates to the synthesis of nanoparticles using molecular
`
`compounds comprising groups 12 and 16 ions as well as groups 13 and 15 ions.
`
`34.
`
`United States Patent No. 8,524,365 (“the ’365 patent”), tilted “preparation of
`
`nanoparticle materials,” generally relates to the synthesis of nanoparticles by effecting the
`
`conversion of nanoparticle precursor compositions into the material of the nanoparticle.
`
`7
`
`
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`Case 2:20-cv-00038-JRG Document 1 Filed 02/14/20 Page 8 of 18 PageID #: 8
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`
`
`35.
`
`United States Patent No. 7,803,423 (“the ’423 patent”), titled “preparation of
`
`nanoparticle materials,” generally relates to the synthesis of nanoparticles by effecting the
`
`conversion of nanoparticle precursor compositions into the material of the nanoparticle.
`
`36.
`
`United States Patent No. 7,867,557 (“the ’557 patent”), titled “nanoparticles,”
`
`generally relates to the synthesis of a nanoparticle comprised of a core, first outer shell, and
`
`second outer shell.
`
`37.
`
`United States Patent No. 9,680,068 (“the ’068 patent”), titled “quantum dot films
`
`utilizing multi-phase resins,” relates to materials comprising light emitting semiconductor
`
`quantum dots, and more specifically, multi-phase polymer films incorporating quantum dots.
`
`38.
`
`Generally, quantum dots are small, semiconductor particles that have unique
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`optical and electronic properties, including the ability to produce pure monochromatic red, green,
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`and/or blue light.
`
`39.
`
`A widespread commercial application is using a quantum dot enhancement film
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`(QDEF) layer to improve the LED backlighting in LCD TVs. In this application, light from a
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`blue LED backlight is converted by quantum dots to relatively pure red and green. This
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`combination of blue, green and red light incurs less blue-green crosstalk and light absorption in
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`the color filters after the LCD screen, thereby increasing useful light throughput and providing a
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`better color gamut.
`
`40.
`
`The QDEF layer is able to replace a diffuser used in traditional LCD backlight
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`units.
`
`41.
`
`The use of quantum dots to produce monochromatic red, green and blue light is
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`an improvement over traditional LCD backlight units which fed a blue LED through a yellow
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`filter to create white light which was then passed through red, green and blue color filters.
`
`8
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`
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`Case 2:20-cv-00038-JRG Document 1 Filed 02/14/20 Page 9 of 18 PageID #: 9
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`
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`42.
`
`Each of the Defendants has been aware of U.S. Patent Nos. 7,588,828; 8,524,365;
`
`7,803,423; 7,867,557; and 9,680,068 since, at least, March 31, 2019 when Nanoco presented to
`
`the Defendants detailed claim charts related to each of these asserted patents.
`
`43.
`
`Defendants have been aware of U.S. Patent Nos. 7,588,828; 8,524,365;
`
`7,803,423; 7,867,557; and 9,680,068 no later than February 14, 2020 when Nanoco filed this
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`lawsuit detailing Defendants’ infringing acts based on each of these asserted patents.
`
`COUNT I
`
`DEFENDANTS’ INFRINGEMENT OF U.S. PATENT NO. 7,588,828
`
`Nanoco restates and incorporates by reference all of the allegations made in the
`
`44.
`
`preceding paragraphs as though fully set forth herein.
`
`45.
`
`Nanoco is the owner, by assignment, of U.S. Patent No. 7,588,828. A true copy of
`
`U.S. Patent No. 7,588,828 granted by the U.S. Patent & Trademark Office is attached as Exhibit
`
`1.
`
`46.
`
`Defendants have directly infringed, and are continuing to directly infringe,
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`literally or under the doctrine of equivalents, at least independent claim 1 of Nanoco’s ’828
`
`patent by making, using, selling, and/or offering for sale, at least, its QLED TV products in the
`
`United States, in violation of 35 U.S.C. § 271(a).
`
`47.
`
`On information and belief, Defendants have violated 35 U.S.C. § 271(g) by
`
`unlawfully importing into the United States or offering to sell, selling, or using within the United
`
`States, at least, QLED TV products incorporating quantum dots made by a process that infringes
`
`independent claim 14 of Nanoco’s ’828 patent.
`
`48.
`
`An exemplary list of Defendants’ products that infringe Nanoco’s ’828 patent are
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`identified in Exhibit 6.
`
`9
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`
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`Case 2:20-cv-00038-JRG Document 1 Filed 02/14/20 Page 10 of 18 PageID #: 10
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`
`
`49.
`
`An exemplary claim chart comparing the asserted independent claims of the ’828
`
`patent to an exemplary accused QLED TV product (model number Q60R) is attached as Exhibit
`
`7.
`
`50.
`
`Nanoco has made a reasonable effort to determine the process used by Defendants
`
`to produce, at least, QLED TVs containing Quantum Dots. Exhibit 7 demonstrates a substantial
`
`likelihood that, at least, Defendants’ QLED TVs were made using Nanoco’s patented process.
`
`Pursuant to 35 U.S.C. § 295, at least, Defendants’ QLED TVs should be presumed to have been
`
`so made, and the burden of establishing that the product was not made by the process shall be on
`
`Defendants, to the extent they assert that it was not so made.
`
`51.
`
`Defendants had knowledge of the ’828 patent, at least, as of March 31, 2019 when
`
`Nanoco presented to the Defendants detailed claim charts related to each of these asserted
`
`patents.
`
`52.
`
`Defendants had knowledge of the ’828 patent, at least, as of the filing of this
`
`complaint.
`
`53.
`
`Defendants’ acts of direct infringement of the ’828 patent are willful, and have
`
`caused and will continue to cause substantial damage and irreparable harm to Nanoco, and
`
`Nanoco has no adequate remedy at law.
`
`54.
`
`As a result of Defendants’ direct and willful infringement of at least claim 1 and
`
`14 of Nanoco’s ’828 patent, Nanoco has suffered and is continuing to suffer monetary damages
`
`and is entitled to a monetary judgment in an amount adequate to compensate for Defendants’
`
`past infringement, together with enhanced damages, attorneys’ fees, interest, and costs.
`
`10
`
`
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`Case 2:20-cv-00038-JRG Document 1 Filed 02/14/20 Page 11 of 18 PageID #: 11
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`
`
`COUNT II
`
`DEFENDANTS’ INFRINGEMENT OF U.S. PATENT NO. 7,803,423
`
`Nanoco restates and incorporates by reference all of the allegations made in the
`
`55.
`
`preceding paragraphs as though fully set forth herein.
`
`56.
`
`Nanoco is the owner, by assignment, of U.S. Patent No. 7,803,423. A true copy of
`
`U.S. Patent No. 7,803,423 granted by the U.S. Patent & Trademark Office is attached as Exhibit
`
`2.
`
`57.
`
`Defendants have violated 35 U.S.C. § 271(g) by unlawfully importing into
`
`the United States or offering to sell, selling, or using within the United States, at least, QLED TV
`
`products incorporating quantum dots made by a process that infringes at least independent claim
`
`1 of Nanoco’s ’423 patent.
`
`58.
`
`An exemplary list of Defendants’ products that infringe at least independent claim
`
`1 of Nanoco’s ’423 patent are identified in Exhibit 8.
`
`59.
`
`An exemplary claim chart comparing the asserted independent claims of the ’423
`
`patent to an exemplary accused QLED TV product (model number Q60R) is attached as Exhibit
`
`6.
`
`60.
`
`Nanoco has made a reasonable effort to determine the process used by Defendants
`
`to produce QLED TVs containing Quantum Dots. Exhibit 8 demonstrates a substantial
`
`likelihood that, at least, Defendants’ QLED TVs were made using Nanoco’s patented process.
`
`Pursuant to 35 U.S.C. § 295, at least, Defendants’ QLED TVs should be presumed to have been
`
`so made, and the burden of establishing that the product was not made by the process shall be on
`
`Defendants, to the extent they assert that it was not so made.
`
`11
`
`
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`Case 2:20-cv-00038-JRG Document 1 Filed 02/14/20 Page 12 of 18 PageID #: 12
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`
`
`61.
`
`Defendants had knowledge of the ’423 patent, at least, as of March 31, 2019 when
`
`Nanoco presented to the Defendants detailed claim charts related to each of these asserted
`
`patents.
`
`62.
`
`Defendants had knowledge of the ’423 patent, at least, as of the filing of this
`
`complaint.
`
`63.
`
`Defendants’ acts of direct infringement of the ’423 patent are willful, and have
`
`caused and will continue to cause substantial damage and irreparable harm to Nanoco, and
`
`Nanoco has no adequate remedy at law.
`
`64.
`
`As a result of Defendants’ direct and willful infringement of at least claim 1 of
`
`Nanoco’s ’423 patent, Nanoco has suffered and is continuing to suffer monetary damages and is
`
`entitled to a monetary judgment in an amount adequate to compensate for Defendants’ past
`
`infringement, together with enhanced damages, attorneys’ fees, interest, and costs.
`
`COUNT III
`
`DEFENDANTS’ INFRINGEMENT OF U.S. PATENT NO. 7,867,557
`
`Nanoco restates and incorporates by reference all of the allegations made in the
`
`65.
`
`preceding paragraphs as though fully set forth herein.
`
`66.
`
`Nanoco is the owner, by assignment, of U.S. Patent No. 7,867,557. A true copy of
`
`U.S. Patent No. 7,867,557 granted by the U.S. Patent & Trademark Office is attached as Exhibit
`
`3.
`
`67.
`
`Defendants have violated 35 U.S.C. § 271(g) by unlawfully importing into
`
`the United States or offering to sell, selling, or using within the United States, at least, QLED TV
`
`products incorporating quantum dots made by a process that infringes at least independent claim
`
`1 of Nanoco’s ’557 patent.
`
`12
`
`
`
`Case 2:20-cv-00038-JRG Document 1 Filed 02/14/20 Page 13 of 18 PageID #: 13
`
`
`
`68.
`
`An exemplary list of Defendants’ products that infringe at least independent claim
`
`1 of Nanoco’s ’557 patent, in violation of 35 U.S.C. § 271(g), are identified in Exhibit 6.
`
`69.
`
`An exemplary claim chart comparing the asserted independent claims of the ’557
`
`patent to an exemplary accused QLED TV product (model number Q60R) is attached as Exhibit
`
`9.
`
`70.
`
`Nanoco has made a reasonable effort to determine the process used by Defendants
`
`to produce QLED TVs containing Quantum Dots. Exhibit 9 demonstrates a substantial
`
`likelihood that, at least, Defendants’ QLED TVs were made using Nanoco’s patented process.
`
`Pursuant to 35 U.S.C. § 295, at least, Defendants’ QLED TVs should be presumed to have been
`
`so made, and the burden of establishing that the product was not made by the process shall be on
`
`Defendants, to the extent they assert that it was not so made.
`
`71.
`
`Defendants had knowledge of the ’557 patent, at least, as of March 31, 2019 when
`
`Nanoco presented to the Defendants detailed claim charts related to each of these asserted
`
`patents.
`
`72.
`
`Defendants had knowledge of the ’557 patent, at least, as of the filing of this
`
`complaint.
`
`73.
`
`Defendants’ acts of direct infringement of the ’557 patent are willful, and have
`
`caused and will continue to cause substantial damage and irreparable harm to Nanoco, and
`
`Nanoco has no adequate remedy at law.
`
`74.
`
`As a result of Defendants’ direct and willful infringement of at least claim 1 of
`
`Nanoco’s ’557 patent, Nanoco has suffered and is continuing to suffer monetary damages and is
`
`entitled to a monetary judgment in an amount adequate to compensate for Defendants’ past
`
`infringement, together with enhanced damages, attorneys’ fees, interest, and costs.
`
`13
`
`
`
`Case 2:20-cv-00038-JRG Document 1 Filed 02/14/20 Page 14 of 18 PageID #: 14
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`COUNT IV
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`DEFENDANTS’ INFRINGEMENT OF U.S. PATENT NO. 8,524,365
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`Nanoco restates and incorporates by reference all of the allegations made in the
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`75.
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`preceding paragraphs as though fully set forth herein.
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`76.
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`Nanoco is the owner, by assignment, of U.S. Patent No. 8,524,365. A true copy of
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`U.S. Patent No. 8,524,365 granted by the U.S. Patent & Trademark Office is attached as Exhibit
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`4.
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`77.
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`Defendants have directly infringed, and are continuing to directly infringe,
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`literally or under the doctrine of equivalents, at least independent claim 1 of Nanoco’s ’365
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`patent by making, using, selling, and/or offering for sale, at least, its QLED TV products in the
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`United States, in violation of 35 U.S.C. § 271(a).
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`78.
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`An exemplary list of Defendants’ products that infringe Nanoco’s ’365 patent are
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`identified in Exhibit 6.
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`79.
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`An exemplary claim chart comparing the asserted independent claims of the ’365
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`patent to an exemplary accused QLED TV product (model number Q60R) is attached as Exhibit
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`10.
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`80.
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`Defendants had knowledge of the ’365 patent, at least, as of March 31, 2019 when
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`Nanoco presented to the Defendants detailed claim charts related to each of these asserted
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`patents.
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`81.
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`Defendants had knowledge of the ’365 patent, at least, as of the filing of this
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`complaint.
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`Case 2:20-cv-00038-JRG Document 1 Filed 02/14/20 Page 15 of 18 PageID #: 15
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`82.
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`Defendants’ acts of direct infringement of the ’365 patent are willful, and have
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`caused and will continue to cause substantial damage and irreparable harm to Nanoco, and
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`Nanoco has no adequate remedy at law.
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`83.
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`As a result of Defendants’ direct and willful infringement of at least claim 1 of
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`Nanoco’s ’365 patent, Nanoco has suffered and is continuing to suffer monetary damages and is
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`entitled to a monetary judgment in an amount adequate to compensate for Defendants’ past
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`infringement, together with enhanced damages, attorneys’ fees, interest, and costs.
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`COUNT V
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`DEFENDANTS’ INFRINGEMENT OF U.S. PATENT NO. 9,680,068
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`Nanoco restates and incorporates by reference all of the allegations made in the
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`84.
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`preceding paragraphs as though fully set forth herein.
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`85.
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`Nanoco is the owner, by assignment, of U.S. Patent No. 9,680,068. A true copy of
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`U.S. Patent No. 9,680,068 granted by the U.S. Patent & Trademark Office is attached as Exhibit
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`5.
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`86.
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`Defendants have violated 35 U.S.C. § 271(g) by unlawfully importing into
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`the United States or offering to sell, selling, or using within the United States, at least, QLED TV
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`products incorporating quantum dot films made by a process that infringes at least independent
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`claim 1 of Nanoco’s ’068 patent.
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`87.
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`An exemplary list of Defendants’ products that infringe at least independent claim
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`1 of Nanoco’s ’068 patent, in violation of 35 U.S.C. § 271(g), are identified in Exhibit 6.
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`88.
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`An exemplary claim chart comparing the asserted independent claims of the ’068
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`patent to an exemplary accused QLED TV product (model number Q60R) is attached as Exhibit
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`11.
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`15
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`Case 2:20-cv-00038-JRG Document 1 Filed 02/14/20 Page 16 of 18 PageID #: 16
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`89.
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`Nanoco has made a reasonable effort to determine the process used by Defendants
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`to produce QLED TVs containing Quantum Dots. Exhibit 11 demonstrates a substantial
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`likelihood that, at least, Defendants’ QLED TVs were made using Nanoco’s patented process.
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`Pursuant to 35 U.S.C. § 295, at least, Defendants’ QLED TVs should be presumed to have been
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`so made, and the burden of establishing that the product was not made by the process shall be on
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`Defendants, to the extent they assert that it was not so made.
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`90.
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`Defendants had knowledge of the ’068 patent, at least, as of March 31, 2019 when
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`Nanoco presented to the Defendants detailed claim charts related to each of these asserted
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`patents.
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`91.
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`Defendants had knowledge of the ’068 patent, at least, as of the filing of this
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`complaint.
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`92.
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`Defendants’ acts of direct infringement of the ’068 patent are willful, and have
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`caused and will continue to cause substantial damage and irreparable harm to Nanoco, and
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`Nanoco has no adequate remedy at law.
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`93.
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`As a result of Defendants’ direct and willful infringement of at least claim 1 of
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`Nanoco’s ’068 patent, Nanoco has suffered and is continuing to suffer monetary damages and is
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`entitled to a monetary judgment in an amount adequate to compensate for Defendants’ past
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`infringement, together with enhanced damages, attorneys’ fees, interest, and costs.
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`PRAYER FOR RELIEF
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`WHEREFORE, Nanoco requests the Court grant the relief set forth below:
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`A.
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`Enter judgment that Defendant has directly infringed, and continues to directly
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`infringe, one or more claims of U.S. Patent Nos. 7,588,828; 7,803,423; 7,867,557; 8,524,365;
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`and 9,680,068;
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`B.
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`Enter judgment that Defendant’s acts of patent infringement are willful;
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`Case 2:20-cv-00038-JRG Document 1 Filed 02/14/20 Page 17 of 18 PageID #: 17
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`C.
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`Order Defendant to account for and pay damages caused to Nanoco by
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`Defendant’s unlawful acts of patent infringement;
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`D.
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`Award Nanoco increased damages and attorney fees pursuant to 35 U.S.C. §§ 284
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`and 285;
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`E.
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`F.
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`Award Nanoco the interest and costs incurred in this action;
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`Temporarily, preliminarily, or permanently enjoin Defendants, its parents,
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`subsidiaries, affiliates, divisions, officers, agents, servants, employees, directors, partners,
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`representatives, all individuals and entities in active concert and/or participation with it, and all
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`individuals and/or entities within its control from engaging in the aforesaid unlawful acts of
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`patent infringement; and
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`G.
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`Grant Nanoco such other and further relief, including equitable relief, as the Court
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`deems just and proper.
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`DEMAND FOR JURY TRIAL
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`Plaintiff demands a jury trial for all issues deemed to be triable by a jury.
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`Dated: February 14, 2020
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`Respectfully submitted,
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`/s/ Michael C. Newman by permission Claire
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`Henry
`Michael Newman
`Massachusetts BBO No. 667520
`MCNewman@mintz.com
`James Wodarski
`Massachusetts BBO No. 627036
`JWodarski@mintz.com
`Michael T. Renaud
`Massachusetts BBO No. 629783
`MTRenaud@mintz.com
`Matthew Galica
`Massachusetts BBO No. 696916
`MSGalica@mintz.com
`MINTZ LEVIN COHN FERRIS
` GLOVSKY AND POPEO PC
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`Case 2:20-cv-00038-JRG Document 1 Filed 02/14/20 Page 18 of 18 PageID #: 18
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`One Financial Center
`Boston, MA 02111
`Tel: (617) 542-6000
`Fax: (617) 542-2241
`www.mintz.com
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`T. John Ward, Jr.
`Texas State Bar No. 00794818
`E-mail: jw@wsfirm.com
`Claire Abernathy Henry
`Texas State Bar No. 24053063
`E-mail: claire@wsfirm.com
`WARD, SMITH & HILL, PLLC
`PO Box 1231
`Longview, Texas 75606-1231
`(903) 757-6400 (telephone)
`(903) 757-2323 (facsimile)
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`Counsel for Plaintiff Nanoco Technologies Ltd.
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