Case 2:20-cv-00310-JRG Document 1 Filed 09/20/20 Page 1 of 32 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`OPTIS WIRELESS TECHNOLOGY, LLC,
`OPTIS CELLULAR TECHNOLOGY, LLC,
`UNWIRED PLANET, LLC, UNWIRED
`PLANET INTERNATIONAL LIMITED,
`AND PANOPTIS PATENT MANAGEMENT,
`LLC
`
`
`
`Plaintiffs,
`
`v.
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`TESLA INC.,
`
`Defendant.
`
`Civil Action No. 2:20-cv-310
`
`JURY TRIAL REQUESTED
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`
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`COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiffs Optis Wireless Technology, LLC, Optis Cellular Technology, LLC, Unwired
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`Planet, LLC, Unwired Planet International Limited, and PanOptis Patent Management, LLC
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`(collectively and/or individually referred to as the “Plaintiff(s)” herein) file this Complaint
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`against Tesla Inc. (“Tesla”), and allege as follows:
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`NATURE OF THE ACTION
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`1.
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`This is a claim for patent infringement arising under the patent laws of the United
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`States, Title 35 of the United States Code. For example, Tesla has infringed and continues to
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`infringe, contribute to the infringement of, and/or actively induce others to infringe U.S. Patent
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`Nos. 8,149,727 (“the ’727 patent”), 8, 199,792 (“the ’792 patent”), 8,223,863 (“the ’863
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`patent”), 8,254,335 (“the ’335 patent), and 8,320,319 (“the ’319 patent”) (collectively, the
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`“Patents-in-Suit”). The Patents-in-Suit are valid and enforceable, and Plaintiffs believe that they
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`Case 2:20-cv-00310-JRG Document 1 Filed 09/20/20 Page 2 of 32 PageID #: 2
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`are necessary to practice the 3GPP LTE cellular technical specifications. Tesla is not currently
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`licensed to practice the Patents-in-Suit.
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`2.
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`The Plaintiffs have attempted to negotiate with Tesla to reach an agreement for a
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`FRAND license to the Plaintiffs’ cellular patent portfolios. For example, Plaintiffs first
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`contacted Tesla in March 2017, and sent six letters over the course of nearly a year before
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`receiving any response from Tesla. When Tesla finally responded, Tesla told Plaintiffs that
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`Tesla preferred to deal with Avanci LLC. On information and belief, Tesla declined to take a
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`license to Plaintiffs’ SEPs through Avanci despite Avanci’s multiple license proposals. In fact,
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`Tesla has yet to provide any counter-offer (FRAND or otherwise) for a license to Plaintiffs’
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`SEPs to either Plaintiffs or Avanci.
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`3.
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`The negotiations have been unsuccessful because Tesla is not acting in good faith,
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`is holding out and is frustrating performance of Plaintiffs’ FRAND commitment. Therefore, the
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`Plaintiffs file this Complaint seeking a judgment of and relief for Tesla’s conduct.
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`PARTIES
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`4.
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`Plaintiff Optis Wireless Technology, LLC (“Optis Wireless”) is a limited liability
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`company organized and existing under the laws of the State of Delaware, and maintains its
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`principal place of business at 7160 Dallas Parkway, Suite 250, Plano, TX 75024.
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`5.
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`Plaintiff Optis Cellular Technology, LLC (“Optis Cellular”) is a limited liability
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`company organized and existing under the laws of the State of Delaware, and maintains its
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`principal place of business at 7160 Dallas Parkway, Suite 250, Plano, TX 75024.
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`6.
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`Plaintiff Unwired Planet, LLC (“Unwired Planet”) is a limited liability company
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`organized and existing under the laws of the State of Nevada, and maintains its principal place of
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`business at 7160 Dallas Parkway, Suite 250, Plano, TX 75024.
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`7.
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`Plaintiff Unwired Planet International Limited (“UPIL”) is a limited liability
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`company organized and existing under the laws of Ireland, and maintains its principal place of
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`business at Unit 32, Hyde Bldg., The Park, Carrickmines, Dublin 18, Ireland.
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`8.
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`Plaintiff PanOptis Patent Management, LLC (“PPM”) is a limited liability
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`company organized and existing under the laws of the State of Delaware, and maintains its
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`principal place of business at 7160 Dallas Parkway, Suite 250, Plano, TX 75024.
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`9.
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`On information and belief, Defendant Tesla Inc. is a corporation organized under
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`the laws of the State of Delaware, having a principal place of business at 3500 Deer Creek Road,
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`Palo Alto, CA 94304. Tesla may do business with the fictitious name Tesla Motors, Inc.
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`10.
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`Optis Wireless is the assignee of numerous patents, many originally assigned to
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`Panasonic Corporation (“Panasonic”), that are, and remain, essential (as that term is defined by
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`ETSI) to practicing the LTE Standard.
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`11.
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`Optis Wireless is also the assignee of numerous patents, many originally assigned
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`to Telefonaktiebolaget LM Ericsson (“Ericsson”), that are, and remain, essential (as that term is
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`defined by ETSI) to practicing the LTE Standard.
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`12.
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`Optis Cellular is the assignee of numerous patents, many originally assigned to
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`LG Electronics Inc. (“LG”), that are, and remain, essential (as that term is defined by ETSI) to
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`practicing the LTE Standard.
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`13.
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`Optis Cellular is also the assignee of numerous patents, many originally assigned
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`to Ericsson that are, and remain, essential (as that term is defined by ETSI) to practicing the LTE
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`Standard.
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`14.
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`Unwired Planet is the assignee of numerous patents, many originally assigned to
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`Ericsson that are, and remain, essential (as that term is defined by ETSI) to practicing the LTE
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`Standard.
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`15.
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`UPIL the assignee of numerous patents, many originally assigned to Samsung
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`Electronics Co., Ltd. (“Samsung”) that are, and remain, essential (as that term is defined by
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`ETSI) to practicing the LTE Standard.
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`16.
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`Each of the Patents-in-Suit has been declared to ETSI, by its original assignee, as
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`well as by Plaintiffs, as essential to practicing the 3GPP LTE technical specifications.
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`17.
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`Ericsson, Panasonic, Samsung and LG were and continue to be active participants
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`in 3GPP. They have each made numerous contributions to the 3GPP technical specifications,
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`including in the radio access technology. The Patents-in-suit are examples of the significant
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`investment these companies made in research and development for cellular technology.
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`18.
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`Ericsson, Panasonic, Samsung, and LG have each had a history of making
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`FRAND commitments to ETSI and other telecommunication standards organizations, including
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`through both general declarations and/or specific declarations.
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`JURISDICTION AND VENUE
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`19. Within the United States, this Court has subject matter jurisdiction over this case
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`under 28 U.S.C. §§ 1331, 1332, 1338, and 1367.
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`20.
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`21.
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`The amount in controversy exceeds $75,000.
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`Tesla designs, manufactures, uses, imports into/exports out of the United States,
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`sells, and/or offers for sale in the United States vehicles with 4G (LTE) cellular communication
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`capability. Tesla’s vehicles are marketed, offered for sale, and/or sold throughout the United
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`States, including within this District.
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`22.
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`23.
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`Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391 and 1400(b).
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`This Court has personal jurisdiction over Tesla. Tesla has continuous and
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`systematic business contacts with the State of Texas. Tesla, directly or through subsidiaries or
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`intermediaries (including distributors, retailers, and others), conducts its business extensively
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`throughout Texas, by shipping, distributing, offering for sale, selling, and advertising (including
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`the provision of interactive web pages) its vehicles and services in the State of Texas and the
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`Eastern District of Texas.
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`24.
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`Tesla, directly and through subsidiaries or intermediaries (including distributors,
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`retailers, and others), has purposefully and voluntarily placed its infringing vehicles and services
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`into this District and into the stream of commerce with the intention and expectation that they
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`will be purchased and used as designed by consumers in this District. Tesla has offered and sold
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`and continues to offer and sell these infringing vehicles and services in this District, including at
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`physical Tesla stores located within this District.
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`25.
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`Tesla has also directed communications in connection with negotiations with the
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`Plaintiffs into the Eastern District of Texas.
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`26.
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`Tesla has committed acts of infringement in this judicial district and has a regular
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`and established place of business in this judicial district.
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`27.
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`Tesla occupies several permanent, physical places within this District from which
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`Tesla carries out its business. For example, Tesla has physical gallery/stores in the following
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`locations in this District: (1) 5800 Democracy Drive, Plano, TX 75024 (“Plano-Democracy
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`Drive”); (2) 7500 Windrose Avenue Space B185, Plano TX 75024 (“Plano-Legacy West”); and
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`(3) 3408 S SW Loop 323, Tyler, TX 75701 (“Tyler Site”). Tesla conducts business from these
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`locations and has employees who work at these Tesla locations in this District. For example, on
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`information and belief, Tesla’s Plano-Democracy Drive site provides both sales and services.
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`On further information and belief, Tesla operates a sales gallery at the Plano-Legacy West site
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`and a service center at the Tyler Site.
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`28.
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`As another example of permanent, physical places within this District from which
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`Tesla carries out its business, Tesla has a number of Supercharger stations in this District,
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`including at least: (1) Texarkana Supercharger, 3101 Mall Drive Texarkana, TX; (2) Sulpher
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`Springs Supercharger, 300 W Tomlinson Street Sulpher Springs, TX; (3) Lindale Supercharger,
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`17044 I-20 Lindale, TX; and (4) Nacogdoches Supercharger, 2615 NW Stallings Dr
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`Nacogdoches, TX. These Supercharger stations have commercial signage identifying the location
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`as a regular and established place of Tesla’s business, and are closely monitored and serviced by
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`Tesla Service Technicians.
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`29.
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`As a further example of permanent physical places within this District from which
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`Tesla carries out its business, Tesla maintains at least seven destination charger stations in this
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`District. Upon information and belief, these destination charger stations have commercial
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`signage identifying the location as a regular and established place of Tesla’s business, and Tesla
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`provides assistance with installation and charging hardware for these destination charger stations.
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`30.
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`On information and belief, Tesla monitors and controls supercharging or
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`destination charging and sends notifications when charging is complete with the Tesla app. On
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`information and belief, the monitoring and controlling of charging and the transmission of
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`notification messages are conducted over cellular networks.
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`DEVELOPMENT OF CELLULAR TECHNICAL SPECIFICATIONS BY 3GPP
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`31.
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`Cellular technologies developed and approved by 3rd Generation Partnership
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`Project (“3GPP”) has enabled companies, including Tesla with no history in the wireless
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`communication development, to sell products such as electrical vehicles equipped with
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`integrated cellular connectivity.
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`32.
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`Originally established in 1998 to produce technical specifications and technical
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`reports for a 3G mobile system, the scope of 3GPP has since expanded. For example, it has
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`since taken on the responsibility of developing LTE (including LTE-Advanced and LTE-
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`Advanced Pro) and 5G cellular technologies. That is, “3GPP has become the focal point for the
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`vast majority of mobile systems beyond 3G.” (https://www.3gpp.org/about-3gpp).
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`33.
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`3GPP produces technical specifications that define cellular technologies. 3GPP
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`has three technical specification groups: Radio Access Networks (“RAN”), Services & Systems
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`Aspects (“SA”), and Core Networks & Terminals (“CT”). Each technical specification group
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`has several working groups. The working groups meet regularly to discuss technical
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`contributions by member companies, and come together for their quarterly technical
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`specification group plenary meetings where agreements reached at the working group level are
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`presented for information, discussion and approval at the technical specification group level.
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`3GPP technical specifications are contribution-driven by member companies in working groups
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`and technical specification groups.
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`RELATIONSHIP BETWEEN ETSI AND 3GPP
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`34.
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`3GPP currently has seven telecommunication standard development organizations
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`as organizational partners, one of which is The European Telecommunications Standards
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`Institute or ETSI. Not all 3GPP members are ETSI members.
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`35.
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`ETSI is an independent, non-profit standard setting organization (SSO). In
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`addition to being an organizational partner of 3GPP, ETSI has many of its own standard setting
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`activities directed to the European region. ETSI needs to approve the technical specifications
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`made by 3GPP to convert these technical specifications into a corresponding ETSI technical
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`specification or standard.
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`36.
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`ETSI has developed and promulgated an IPR Policy. ETSI IPR Policy is to
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`further “ETSI’s objective to create STANDARDS and TECHNICAL SPECIFICATIONS that
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`are based on solutions best meet the technical objectives of the European telecommunication
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`sector, as defined by the General Assembly.” ETSI IPR Policy, § 3.1. To do so, ETSI IPR
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`Policy “seeks to reduce the risk to ETSI, MEMBERS, and others applying ETSI STANDARDS
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`and TECHNICAL SPECIFICATIONS, that investment in the preparation, adoption and
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`application of STANDARDS could be wasted as a result of an ESSENTIAL IPR for a
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`STANDARD or TECHNICAL SPECIFICATION being unavailable” and “seeks a balance
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`between the needs of standardization for public use in the field of telecommunications and the
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`rights of the owners of IPRs.” Id. One important objective of ETSI IPR Policy is to ensure that
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`“IPR holders[,] whether members of ETSI and their AFFILIATES or third parties, [] be
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`adequately and fairly rewarded for the use of their IPRs in the implementation of STANDARDS
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`and TECHNICAL SPECIFICATIONS.” Id., § 3.2.
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`37.
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`FRAND licensing declaration is a means by which ETSI IPR holders assure
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`others that IPRs needed to implement ETSI standards and technical specifications are available
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`and available on FRAND terms. ETSI has both a general IPR license declaration form and a
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`more specific “IPR Information Statement and Licensing Declaration” form. Id., § 6bis and
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`Appendix.
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`TESLA’S USE OF THE PATENTED TECHNOLOGY
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`38.
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`As discussed above and further below, Tesla has directly and indirectly infringed
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`and continues
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`to directly and
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`indirectly
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`infringe each of
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`the Patents-in-Suit by
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`importing/exporting into/from the United States, manufacturing, using, marketing, offering for
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`sale, and/or selling in the United States, connected vehicles that communicate over the 4G/LTE
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`cellular network standard that practices the technology covered by one or more claims of the
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`Patents-in-Suit. The infringing products include all Tesla automobiles without limitation Tesla’s
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`Model S, Model 3, Model X, Model Y, that are configured to communicate over the 4G/LTE
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`cellular network (“the Tesla 4G/LTE Accused Products”). On information and belief, these
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`models include 3GPP LTE-practicing baseband processor. On information and belief, these
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`models include RF transceivers, antennas, CPU, RF power amplifiers, user graphical interfaces,
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`and other software and hardware. All of these components combine together to enable the Tesla
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`vehicles, Tesla, and the users of those vehicles to conduct LTE communications by practicing the
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`3GPP LTE standards.
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`39.
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`Tesla advertises, and it is widely publicized, that the Tesla 4G/LTE Accused
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`Products are capable of communicating via cellular network in a manner that practices the
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`4G/LTE cellular network standards. For example, the user manuals for Tesla’s Model S, Model
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`X, Model 3, and Model Y state that the vehicle touchscreens include a “cellular icon” indicating
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`the vehicle’s connectivity to cellular data networks, which is “usually LTE.”
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`40.
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`As another example, it was widely publicized that starting around May 2015, and
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`moving forward thereafter, all Tesla 4G/LTE Accused Products would include 4G/LTE
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`connectivity. See, e.g., https://tesladriver.net/should-you-lte-4g-upgrade-an-older-tesla/; https://
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`electrek.co/2015/06/05/first-lte-enabled-model-s-delivered/. On information and belief, for older
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`Model S cars, Tesla offers an upgrade from 3G to 4G that costs $500.
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`41.
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`As a further example, Tesla has touted “premium connectivity” features for the
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`Tesla 4G/LTE Accused Products that include “LTE connections.” See https://electrek.co/
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`2018/06/23/tesla-new-paid-premium-connectivity-package-in-car-internet-features/.
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`42.
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`Tesla states on its website that “[c]onnectivity is an important part of all Tesla
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`cars, further enhancing the driving experience by providing access to features that require data
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`usage – including streaming music and media, live traffic visualization and more.” See
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`https://www.tesla.com/support/connectivity. Tesla further notes that “Premium Connectivity
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`provides the ability to access all connectivity features over cellular, in addition to Wi-Fi, for the
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`most
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`intuitive
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`and
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`engaging
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`ownership
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`experience.”
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`See
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`https://www.tesla.com/support/connectivity.
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`43.
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`On information and belief, Tesla owners who purchased their car on or before
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`June 30, 2018, have been “grandfathered” into having Premium Connectivity for the lifetime of
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`the vehicle. See, e.g., https://onlyusedtesla.com/complete-guide-to-teslas-premium-connectivity-
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`2020-edition/. For customers who purchased their car after June 2018, Tesla’s Premium
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`Connectivity is available as a $9.99 monthly subscription for all of the Tesla 4G/LTE Accused
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`Products. In addition, Model S, Model X, Model Y and Model 3 vehicles with Premium Interior
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`receive a Premium Connectivity
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`trial
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`for one year.
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` See https://www.tesla.com
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`/support/connectivity.
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`44.
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`According to Tesla, customers who have Premium Connectivity have access to
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`the following enhanced features:
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`45.
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`On information and belief, the Tesla 4G/LTE Accused Products also use 4G/LTE
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`cellular communication to implement core safety and service features. For example, Tesla’s
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`2019 10-K Statement explains that “[o]ur vehicles are also designed with the capability to
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`wirelessly upload data to us via an on-board system with cellular connectivity, allowing us to
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`diagnose and remedy many problems before ever looking at the vehicle.” Tesla further explains
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`that “[i]mportant safety updates will continue to be available over the car’s cellular connection”
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`regardless of whether a customer purchases a “Premium Connectivity” plan. See, e.g.,
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`https://www.tesla.com/support/connectivity.
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`46.
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`In addition to initiating automatic safety updates, Tesla provides instruction
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`manuals that instruct the users of the Tesla 4G/LTE Accused Products to use the Tesla 4G/LTE
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`Accused Products in a manner that infringes the Patents-in-Suit. For example, Tesla instructs
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`users how to use the cellular features on its website and in the manuals for the Tesla 4G/LTE
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`Accused Products, as detailed above. As another example, Tesla advertises its Tesla mobile
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`applications on
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`its web
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`site and
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`instructs
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`its customers on
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`its usage.
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` See
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`https://www.tesla.com/support/tesla-app.
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`47.
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`On information and belief, Tesla tests the cellular functionality of each of the
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`Tesla 4G/LTE Accused Products in the United States and thereby directly performs the claimed
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`method and/or uses the claimed apparatus, thus infringing the Patents-in-Suit.
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`48.
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`Tesla has further directly and indirectly infringed and continues to directly and
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`indirectly infringe each of the Patents-in-Suit through its provisioning and using of its services
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`and mobile applications (“the Accused Services”). Such services include, but are not limited to,
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`provisioning of cellular connectivity, remote diagnosis, provisioning of important updates over
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`cellular networks, provisioning of Tesla Application, enabling customers’ monitoring and
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`controlling of vehicles over cellular networks, sending notifications for selected events (such as
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`vehicle charging status) and enabling customers to receive notifications, which can be and are
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`often transmitted over cellular networks.
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`49.
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`Tesla’s acts of infringement have caused damage to the Plaintiffs. The Plaintiffs
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`are entitled to recover from Tesla the damages sustained by the Plaintiffs as a result of Tesla’s
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`wrongful acts in an amount subject to proof at trial.
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`50.
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`Tesla’s infringement of the Patents-in-Suit is willful. Tesla continues to commit
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`acts of infringement despite a high likelihood that its actions constitute infringement, and Tesla
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`knew or should have known that its actions constituted an unjustifiably high risk of infringement.
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`PLAINTIFFS’ ATTEMPTS TO LICENSE TESLA ON FRAND TERMS
`AND TESLA’S KNOWLEDGE OF THE PATENTS-IN-SUIT
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`51.
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`Tesla requires a license to cellular essential patents owned by Plaintiffs. The
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`Plaintiffs, in conformance with ETSI’s IPR Policy, have informed Tesla that they are prepared to
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`grant Tesla an irrevocable license to their standard essential patents, including the Patents-in-
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`Suit, on terms that are Fair, Reasonable, and Non-Discriminatory (“FRAND”).
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`52.
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`In addition, upon information and belief, Avanci also made Tesla a FRAND offer
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`to Plaintiffs’ SEP patent portfolio, among other patents.
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`53.
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`On information and belief, Avanci first reached out to Tesla regarding a license
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`for patents that are essential to the 4G/LTE standard in 2016, but Avanci and Tesla were unable
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`to reach an agreement concerning a license at that time.
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`54.
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`On or about March 22, 2017, the Plaintiffs sent Tesla a notice letter. In particular,
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`Plaintiffs notified Tesla that Plaintiffs own patents “which are necessary (or essential) to the
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`manufacture and use of cellular technology for 2G, 3G and 4G communication standards.”
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`Plaintiffs also notified Tesla that “[a]s a global company, which makes and sells electric cars
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`with integrated cellular connectivity, including, e.g. Model S and Model X, we believe that the
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`Optis patent portfolios should be of particular interest to Tesla Motors” and that Plaintiffs were
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`“reaching out again to initiate good faith licensing discussions.” Plaintiffs further confirmed that
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`“any license of essential patents in the Optis portfolios would be offered to Tesla, on terms and
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`conditions that are fair, reasonable, and non-discriminatory (FRAND).”
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`55.
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`56.
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`57.
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`58.
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`Tesla did not respond to Plaintiffs’ March 2017 letter.
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`Plaintiffs sent a follow up letter to Tesla on or about May 1, 2017.
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`Tesla did not respond to Plaintiffs’ May 1, 2017 letter.
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`On or about May 31, 2017, Plaintiffs sent another letter to Tesla. This time,
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`Plaintiffs attached a specific list of patents and explained that the list “shows the patent numbers
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`and issuing countries of the patents declared essential in the Optis patent portfolios.” The list
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`attached to the May 31, 2017 letter included each of the Patents-in-suit. In the May 31, 2017
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`Case 2:20-cv-00310-JRG Document 1 Filed 09/20/20 Page 14 of 32 PageID #: 14
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`letter, Plaintiffs once again confirmed that they were “committed to negotiating licenses for
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`[their] SEPs on terms and conditions that are fair, reasonable, and non-discriminatory (FRAND)”
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`and invited Tesla “to open a dialogue regarding terms of a license to the Optis patent portfolios.”
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`Plaintiffs requested that Tesla reach out before June 14, 2017 to discuss a license.
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`59.
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`60.
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`Tesla did not respond to Plaintiffs’ May 31 letter.
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`On or about June 29, 2017, Plaintiffs sent Tesla another letter. In addition to
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`reiterating the points made in their prior letters, Plaintiffs directed Tesla’s attention to various
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`court cases involving some of Plaintiffs’ patents where Plaintiffs had received favorable rulings
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`and results.
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`61.
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`62.
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`Tesla did not respond to Plaintiffs’ June 29 letter.
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`On August 10, 2017, Plaintiffs sent Tesla another letter that reiterated many of the
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`points in Plaintiffs’ prior letters. Plaintiffs also attached an article from Bloomberg that
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`discusses Plaintiffs’ litigation against Huawei. Plaintiffs further noted that “[w]e would like to
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`reach a license arrangement with Tesla but your refusal to respond to our prior letters leads me to
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`believe that Tesla is an unwilling licensee.”
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`63.
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`64.
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`Tesla did not respond to Plaintiffs August 10, 2017 letter.
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`On or about September 27, 2017, Plaintiffs sent a sixth letter to Tesla. Tesla did
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`not respond to Plaintiffs letters until on or about February 5, 2018. In that letter, Tesla stated that
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`it had been “in ongoing discussions since the summer of 2016 . . . with Avanci concerning the
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`licensing of patent portfolios” and that it understood that “Avanci has rights to license various
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`declared standard-essential patent (“SEP”) portfolios, including the Optis Portfolios.”
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`65.
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`On information and belief, Avanci has made specific offers to Tesla for a license
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`on FRAND terms. For example, in or about February 2020, Avanci sent Tesla a draft license
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`Case 2:20-cv-00310-JRG Document 1 Filed 09/20/20 Page 15 of 32 PageID #: 15
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`agreement that covered all 2G, 3G and 4G/LTE SEPs included within the Avanci patent pool. In
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`that same correspondence, Avanci sent Tesla a list of the patents that would be included in the
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`license. Each of the Patents-in-Suit was included in that list. Avanci also provided Tesla with a
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`detailed explanation regarding why the proposed license rates were FRAND.
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`66.
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`Despite Avanci’s attempts to discuss a FRAND license with Tesla, on information
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`and belief, Tesla was unwilling to agree to the FRAND terms proposed by Avanci. On
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`information and belief, Tesla has never made a counter-offer (FRAND or otherwise) to Avanci’s
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`license proposal. For example, it took Tesla nearly 4 months to respond to Avanci’s license offer
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`and instead of providing a counter-offer, it attempted to impose unreasonable rules on license
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`negotiation. Tesla claims that it did not require a license to any patent that Avanci was
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`responsible for licensing.
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`67.
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`Tesla has been operating and continues to operate without a license to the
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`Plaintiffs’ essential patents, including the Patents-in-Suit. Given Tesla’s unwillingness to license
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`the Plaintiffs’ essential patents, or to cease its infringement, the Plaintiffs have filed this lawsuit
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`for the purpose of protecting their patent rights in the United States.
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`68.
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`In addition to having actual notice of the Patents-in-Suit as a result of the pre-suit
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`negotiations described above, Tesla has had actual notice and knowledge of all of the Patents-in-
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`Suit no later than the filing of this Complaint and/or the date this Complaint was served upon
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`Tesla. On information and belief, Tesla continues without license to make, use, import/export
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`into/from, market, offer for sale, and/or sell in the United States products and services that
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`infringe the Patents-in-Suit. On information and belief, despite knowledge of the patents, Tesla
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`continues without license to contribute to the infringement of other and to actively induce others
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`to infringe the Patents-in-Suit. For example, Tesla controls mobile applications that allows its
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`Case 2:20-cv-00310-JRG Document 1 Filed 09/20/20 Page 16 of 32 PageID #: 16
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`customers to request that Tesla send information on the customer’s Tesla vehicle and/or cause
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`the Tesla vehicle to take certain acts. As another example, Tesla provides and/or markets
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`premium connectivity packages to its customers that allow data access via cellular network. As
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`yet another example, Tesla continues to allow critical safety updates via cellular networks.
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`COUNT I: PATENT INFRINGEMENT OF THE ’727_PATENT1
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`69.
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`Plaintiffs incorporate by reference the preceding paragraphs 1-68 as though fully
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`set forth herein.
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`70.
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`The ’727 patent is entitled “Radio Transmission Apparatus, and Radio
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`Transmission Method.” The ’727 patent was duly and legally issued on April 3, 2012. Plaintiff
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`OWT owns all rights, title and interest in the ’727 patent necessary to bring this action, including
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`the right to recover past and future damages. A true and correct copy of the ’727 patent is
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`attached hereto as Exhibit 1.
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`71.
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`The ’727 patent is essential under the 3GPP LTE standards as explained by way
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`of exemplary claims in attached Exhibit 2. Thus, the Tesla 4G/LTE Accused Products and
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`Services that comply with the 3GPP LTE standards practice the ’727 patent.
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`72.
`
`Tesla infringes, contributes to the infringement of, and/or induces infringement of
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`the ’727 patent by making, using, selling, offering for sale, exporting from, and/or importing into
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`the United States products, services and/or methods covered by one or more claims of the ’727
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`patent including, but not limited to, at least the Tesla 4G/LTE Accused Products and Accused
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`Services.
`
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`1 In the interest of providing detailed averments of infringement, Plaintiffs have identified at least one claim per
`patent to demonstrate infringement. However, the selection of claims should not be considered limiting, and
`additional claims of the Patents-in-Suit that are infringed by Tesla will be disclosed in compliance with the Court’s
`rules related to infringement contentions.
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`73.
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`Thus, as just illustrated in Exhibit 2, the Tesla 4G/LTE Accused Products and
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`Services directly infringe one or more claims of the ’727 patent. Tesla makes, uses, sells, offers
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`for sale, exports, and/or imports, in this District and/or elsewhere in the United States, these
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`vehicles that are compatible with the 4G/LTE standard and thus directly infringes the ’727
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`patent. Tesla also uses, distributes, sells, offers for sale in this District and/or elsewhere in the
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`United States, services that utilize the 4G/LTE standard and thus directly and/or indirectly
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`infringes the ’727 patent.
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`74.
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`Tesla was made aware of the ’727 patent and its infringement no later than May
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`31, 2017 when Plaintiffs provided Tesla with a list of standards essential patents in the OWT
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`portfolio, as discussed in paragraph 58 above.
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`75.
`
`Tesla was also made aware of the ’727 patent and its infringement as of February
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`2020 when Avanci provided Tesla with a list of standards essential patents that it is authorized to
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`license, as discussed in paragraph 65 above.
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`76.
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`Tesla has had knowledge and notice of the ’727 patent and its infringement also
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`by way of the filing of the Complaint.
`
`77.
`
`Tesla indirectly infringes the ’727 patent, as provided in 35 U.S.C. § 271(b), by
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`inter alia, and with specific intent or willful blindness, actively aiding and abetting infringement
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`by others, such as Tesla’s partners, customers and end-users, in this District and elsewhere in the
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`United States. For example, Tesla’s partners, customers and end-users directly infringe through
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`their use of the inventions claimed in the ’