Case 4:20-cv-00180-ALM Document 44-7 Filed 05/01/20 Page 1 of 16 PageID #: 1723
`
`Exhibit G
`
`
`
`Exhibit G
`
`
`
`Case 4:20-cv-00180-ALM Document 44-7 Filed 05/01/20 Page 2 of 16 PageID #: 1724
`Case 4:20-cv-00180-ALM Document 44-7 Filed 05/01/20 Page 2 of 16 PageID #: 1724
`
`
`
`
`EXHIBIT 5
`
`
`EXHIBIT 5
`
`
`
`Case 4:20-cv-00180-ALM Document 44-7 Filed 05/01/20 Page 3 of 16 PageID #: 1725
`
`UNITED STATES INTERNATIONAL TRADE COMMINNOVATIONSION
`Washington D.C. 20436
`
`In the Matter of
`
`CERTAIN WIRELESS
`COMMUNICATION DEVICES, AND
`RELATED COMPONENTS THEREOF
`
`Investigation No. 3 3 7-TA-__
`
`DECLARATION OF DR. ANNE WONG
`
`I, Dr. Anne (Tiehong) Wong, declare as follows:
`
`1. I am the President and CEO of Innovation Sciences, LLC of Plano, Texas (hereafter
`
`"Innovation" used collectively for several United States companies as identified below),
`
`successor of Virginia Innovation Sciences, Inc. of Alexandria, VA. I have held this
`
`position since Innovation's formation in 2005.
`
`2. The facts stated in this declaration are true and based on my personal knowledge and my·
`
`experience as CEO of Innovation.
`
`3. I received a Bachelor's degree in 1994 at Beijing University of Aeronautics and
`
`Astronautics in Beijing China. In 1998 I came to the United State with a full tuition
`
`scholarship for a dual master's degree program from the George Washington University,
`
`in Washington, DC.
`
`4. From 1998 to 2001, I was a full-time student at George Washington University and
`
`received my dual degrees in 2001 - a Master's Degree in Business Administration and a
`
`Master's in Arts majoring .in International Economics and Trade Policy. I continued at
`
`PUBLIC VERSION
`
`
`
`Case 4:20-cv-00180-ALM Document 44-7 Filed 05/01/20 Page 4 of 16 PageID #: 1726
`
`George Washington University as a student and research assistant, and in 2007, received
`
`a Ph.D. in Innovation Technology Management and Information Systems.
`
`5. From 2002-2003, I was an Adjunct Professor at The Graduate School of the U.S.
`
`Department of Agriculture, and from 2005-2006 was an Assistant Professor at
`
`Marymount University teaching in the field of financial management and technology
`
`innovation management.
`
`6. From 2004-2013, I was an Associate Professor at the University of the District of
`
`Columbia teaching MBA students corporate finance, international finance,
`
`entrepreneurship, technology Innovation management, microeconomics, statistics, global
`
`economic competiveness, and quantitative business techniques.
`
`7. I became a citizen of the United States in 2013, and previously received permanent
`
`residency of the United States around 2007. At the same time I became a citizen, I
`
`changed my name from Tiehong Wang to Anne Wong.
`
`8. My brother, Dr. Teijun (Ronald) Wang, received a B.S. degree in electrical engineering
`
`from Northeastern University, China, a M.S. degree in Electric Engineering in 2002 from
`
`Columbia University, New York, and in 2006, a Ph.D. in Wireless Communications from
`
`the University of California, San Diego (UCSD).
`
`Plant and Capital
`
`9. Over the course of its history, Innovation has maintained a number of facilities to support
`
`its research & development, its patenting activities, and its licensing program. For
`
`example, Innovation currently maintains a headquarters facility at 5800 Legacy Circle in
`
`Plano, Texas, 75024, which supports Innovation's research and development, patent
`
`2
`
`PUBLIC VERSION
`
`
`
`Case 4:20-cv-00180-ALM Document 44-7 Filed 05/01/20 Page 5 of 16 PageID #: 1727
`
`procurement activities, and licensing program. The cost for Innovation's office includes a
`
`monthly rent of approximately
`
`
`
`.
`
`10. In August of 2005, my brother and I founded our first U.S. company called SellerBid,
`
`Inc., ("SellerBid") in Virginia. Prior to the formation of SellerBid, and during its
`
`existence, we continued our work researching and developing various communications
`
`systems and methods, for example, the transmission of multimedia information using
`
`smart phones and smart home technology including integration of multiple wireless
`
`communication networks and conversion of wireless signals, data storage and cloud
`
`management, sensor and transmitter technology, and secure systems for payment
`
`information transmission and processing.
`
`11. In 2006, my brother and I founded our second U.S. company, Virginia E-Commerce
`
`Solutions, LLC. The business of Virginia E-Commerce Solutions, LLC was to undertake
`
`research and development activities, particularly in the areas of e-commerce, secure
`
`payment systems, wireless communications, and smart home technology systems.
`
`I
`
`12. In 2010, Virginia E-Commerce Solutions, LLC sought commercialization of its
`
`intellectual property resulting from its USA based research and development. It was also
`
`during this time that Virginia E-Commerce Solutions, LLC became involved in litigation
`
`withe-Bay and Pay-Pal regarding the Virginia E-Commerce Solutions, LLC's U.S.
`
`Patent No. RE40,753 directed to secure payment systems. This litigation was settled,
`
`with both eBay and Pay-Pal ultimately taking licenses of all Innovation patent portfolios
`
`on July 11, 2011, which was the first license our company negotiated.
`
`3
`
`PUBLIC VERSION
`
`
`
`Case 4:20-cv-00180-ALM Document 44-7 Filed 05/01/20 Page 6 of 16 PageID #: 1728
`
`13. In 2011, SellerBid began substantial licensing activities for its patent portfolio including
`
`licensing discussions with companies such as
`
`
`
`
`
`. In connection with its licensing effort, SellerBid
`
`initiated patent litigation in the U.S. District Court for the Eastern District of Virginia
`
`against Groupon, Living Social, Open Table, Gilt City, Inc., Gilt City Limited, Gilt
`
`Groupe, Inc., and MWB Wind Down Inc. (F/K/A BUYWITHME, Inc.). The patent
`
`litigation was settled and each of the defendants negotiated a separate license under all
`
`Innovation's patents between October and December of 2011.
`
`14. In 2012, our company's name of Seller Bid, Inc. was changed to Virginia Innovation
`
`Sciences, Inc. to reflect the nature of its business operation and market position.
`
`Meanwhile, ownership of the intellectual property was transferred from Virginia E(cid:173)
`
`Commerce Solutions, LLC to Virginia Innovation Sciences, Inc. in order to promote our
`
`licensing program in the U.S. market. Almost at the same time, I quit my job as an
`
`associate professor to work full-time as a researcher and co-inventor of Innovation's
`
`patents and as a full-time manager ofinnovation's licensing program.
`
`15. In 2013, we bought a facility at 6301 Edsall Road, Suite 517, Alexandria, VA to support
`
`Innovation's research and development, patent procurement, and licensing of
`
`Innovation's patented technology. The investment for the facility was approximately
`
` in 2013, and this amount is not brought in any of the present calculations.
`
`4
`
`PUBLIC VERSION
`
`
`
`Case 4:20-cv-00180-ALM Document 44-7 Filed 05/01/20 Page 7 of 16 PageID #: 1729
`
`16. Prior 2013, Virginia E-Commerce Solutions, LLC maintained a facility at 1600 S. Joyce
`
`St., Suite 1406, Arlington, VA with a monthly rent around
`
` dollar per month beginning in 1998 for about a decade.
`
`17. In 2018, Virginia Innovation Sciences was merged into Innovation, organized and
`
`existing under the laws of the State of Texas, with its office located at 5800 Legacy
`
`Circle, Suite 311, Plano, Texas 75024. The cost for running this office includes
`
`
`
`
`
`
`
`and technology innovation at the frontier of smart home, smart city, and IOT technology
`
` based technology company, for R&D
`
`· development.
`
`18. Since 2005, Innovation has spent as least
`
` on
`
`research equipment and products including computers, scanners, printers, telephones,
`
`server and disks, databases, smart phones, smart TV, Amazon Echo products, Apple TV,
`
`smart home products.
`
`19. The total cost of equipment and facilities including rent and utilities since 1998 through
`
`present related to Innovation's R&D operations has accumulated to
`
`
`
`U.S. dollars. To estimate conservatively and simplify our illustration, the costs for
`
`equipment, rent, facilities, utilities, were all not used in the calculations set forth
`
`hereinafter.
`
`Domestic Industry - R&D and Licensing
`
`20. Innovation's smart home technology patents, comprising U.S. Pat. No 10,136,170
`
`(hereafter the"' 179 patent") and U.S. Pat No. 10,104,425 (hereafter the"' 425 patent"),
`
`5
`
`PUBLIC VERSION
`
`
`
`Case 4:20-cv-00180-ALM Document 44-7 Filed 05/01/20 Page 8 of 16 PageID #: 1730
`
`the patents herein asserted in this ITC Investigation, cover smart phone and smart home
`
`products including the alleged infringing_ articles that are the subject of this ITC
`
`Investigation. Innovation has made a substantial investment in the exploitation and
`
`commercialization of its intellectual property to satisfy the domestic industry requirement
`
`of the statute, in particular with respect to the significant cost spent for licensing smart
`
`phone and smart home technology and its own R&D costs that Innovation estimated as
`
`being attributable to the asserted '179 and '425 patents.
`
`21. The total investment by Innovation, from 1998 through the present, and its parent
`
`companies, can be broken down as follows:
`
` has been spent
`
`since 1998 through present for research and development, patent procurement, market
`
`and technological research, and related activities for the patented smart phone and smart
`
`home technology; at least
`
` has been spent in its patent licensing program in
`
`order to further commercialize Innovation's intellectual property of smart home
`
`technology. These costs include substantial investments on legal professionals for patent
`
`portfolio evaluation, infringement analysis, market product and technology research,
`
`license drafting, and negotiations with prospective licensees.
`
`Innovation's Research and Development
`
`22. Since Innovation's founding in 2005, it has made substantial investments on researching,
`
`developing, and patenting its technologies in the United States. In addition to the specific
`
`examples listed above, since Innovation's formation, Innovation has prepared and filed
`
`nearly one hundred patent applications based on its R&D in the United States and
`
`6
`
`PUBLIC VERSION
`
`
`
`Case 4:20-cv-00180-ALM Document 44-7 Filed 05/01/20 Page 9 of 16 PageID #: 1731
`
`received more than fifty patents. To date, Innovation has developed strong patent
`
`portfolios as detailed in Exhibit A to this Declaration.
`
`23. Innovation paid
`
`
`
`
`
`
`
`
`
`
`
`.
`
`24. Since 1998, my brother and I have undertaken research and development in the United
`
`States on a variety of communication technologies including, but not limited to, e(cid:173)
`
`commerce systems and methods for online and mobile secure payment, real time reverse
`
`bidding and group transaction, smart home technology systems for monitoring and
`
`control of wireless devices such as smart phone, smart TV, and smart home appliance,
`
`conversion and transmission of high definition multimedia content for user terminals,
`
`integration of different communication networks in connection with the advancement of
`
`cloud technology, etc. Over time, based on our own research and development efforts we
`
`have sought and obtained several patent portfolios, including the following five (5) core
`
`patents on smart home technology: US Patent Nos. 9,942,798; 9,729,918; 9,912,983;
`
`10,104,425 and 10,136,179.
`
`25. Since 2005, Innovation has invested at least
`
` within the United States in labor,
`
`facilities, and equipment to support its research and development activities, to develop
`
`7
`
`PUBLIC VERSION
`
`
`
`Case 4:20-cv-00180-ALM Document 44-7 Filed 05/01/20 Page 10 of 16 PageID #: 1732
`
`software and prototypes, to patent its innovations and inventions, including significantly
`
`smart home technology, and to support its licensing program and to protect against the
`
`unauthorized use of those patented smart home technologies. For example, my brother
`
`and I have worked on software and prototypes to explore and integrate advantages of
`
`different wireless communications in our patented smart home solutions including
`
`Zigbee, Z-wave, NFC, WP AN, WLAN, and cellular network communications. Our
`
`smart home solutions are patented in both of the '179 and '425 patents asserted in this
`
`ITC Investigation.
`
`26. Innovation's R&D cost is conservatively estimated based on the payments to Dr. Tiejun
`
`Wang, myself,
`
`. Dr. Tiejun Wang, has received
`
` from
`
`Innovation for his work in the U.S. related to Innovation's patent portfolios. At least 80%
`
`of Dr. Wang's work is directly involving R&D for Innovation's patent portfolios.
`
`Innovation currently owns eight patent portfolios including six on smart home
`
`technology. As a result, 75% (6/8) of the 80% of Dr. Wang's total income, or
`
`
`
`is attributable to Innovation's R&D for smart home technology.
`
`27. Further, I received
`
` from Innovation for my work on both R&D and its
`
`licensing program. 50% of my work time is spent on R&D as an inventor for
`
`Innovation's patent portfolios, and 75% (6/8) of that work relates to Innovation's smart
`
`home technology patents. As a result,
`
` is estimated as the cost of my R&D
`
`work on smart home technology.
`
`28.
`
` for support of Innovation's smart home
`
`technology innovation and patent development.
`
`8
`
`PUBLIC VERSION
`
`
`
`Case 4:20-cv-00180-ALM Document 44-7 Filed 05/01/20 Page 11 of 16 PageID #: 1733
`
`29. In summary, a total of
`
` is conservatively estimated as the R&D cost for
`
`Innovation's smart home technology innovation and patent development since 1998
`
`through present.
`
`30. Since there are five (5) smart home technology patents in Innovation's smart home
`
`technology patent portfolio, the two smart home technology patents being asserted at the
`
`ITC, the '179 and '425 patents, amount to 40% of the smart home patents Innovation
`
`, owns. From thatbasis 40% of the above total, or
`
`, is attributable to the two
`
`asserted' 179 and '425 patents for smart home technology R&D.
`
`Innovation's Licensing Program
`
`31. In addition to Innovation's internal investments, Innovation has also hired outside
`
`professionals to assist in Innovation's licensing program for its patents. Innovation has
`
`made significant and substantial investments for the services of licensing professionals
`
`including licensing experts, technological experts, damage experts, patent attorneys, and
`
`technical support staffs. In total, Innovation has incurred approximately
`
` in
`
`fees for its patent licensing program on smart home technology for professional work
`
`including evaluation of the patented smart home technology, infringement analyses,
`
`evaluation of the damages caused by unauthorized use of the patented inventions,
`
`negotiations related to licensing agreements, and related services for Innovation's smart
`
`phone and smart home patents.
`
`32. During 2005 through 2011, Innovation retained multiple law firms including Sughrue
`
`Mion, HDP, and Simon Law to develop and assist in its licensing program. HDP and
`
`Simon Law also represented Innovation in the eBay/Pay-Pal litigation. Mr. Kelly
`
`9
`
`PUBLIC VERSION
`
`
`
`Case 4:20-cv-00180-ALM Document 44-7 Filed 05/01/20 Page 12 of 16 PageID #: 1734
`
`Hyndman from Sughrue worked closely with inventors for more than five years on
`
`development of our patent portfolio and licensing program. Sughrue was paid
`
`
`
`.
`
`33. During 2011, HDP and Simon Law litigated against eBay, accusing its Pay-Pal's online
`
`payment technology of patent infringement oflnnovation's RE40753 patent. HDP and
`
`Simon Law spent several months studying, analyzing, evaluating the Company's patent
`
`portfolio, and along with my own licensing efforts, Innovation negotiated a license
`
`agreement with eBay and Pay-Pal. Our leading counsel at HDP was Terry Clark and at
`
`Simon the principle attorney, Mr. Tony Simon. Collectively HDP/Simon were paid
`
` of which at least 20% or
`
` was specifically directed to their licensing
`
`work for evaluation of Innovation's patent portfolio, review of the competitive landscape
`
`in secure payment, smart home, smart phone, and smart TV technology, negotiating and
`
`preparation of license agreements.
`
`34. During 2011-2015, Innovation retained the law firm ofNelson Bumgardner of Fort
`
`Worth, Texas for its licensing program in connection with litigation with Samsung
`
`asserting Innovation's patents related with smart phone and smart home technology. The
`
`lead counsel, Ed Nelson, and his team, spent years reviewing Innovation's patent
`
`portfolios and the competitive landscape of smart phone and smart home technology,
`
`conducting meetings with Samsung and potential customers that might benefit from
`
`Innovation's patented technology, and negotiating the terms oflicense with Samsung.
`
`The Samsung litigation spanned from 2013 to 2015, and after a number oflower court
`
`decisions and appeals a settlement was negotiated by myself and Ed Nelson culminating
`
`10
`
`PUBLIC VERSION
`
`
`
`Case 4:20-cv-00180-ALM Document 44-7 Filed 05/01/20 Page 13 of 16 PageID #: 1735
`
`in Samsung taking a license of all Innovation patents on October 2, 2015. Ed Nelson,
`
`and the Nelson Bumgardner firm, was paid
`
` of which at least 30%, i.e.
`
`, directly related to licensing Innovation's patented smart phone and smart home
`
`technology to Samsung.
`
`35. Further, in 2016-2017, Innovation initiated litigation against LG Electronics, Inc.
`
`("LG") of the Republic of South Korea based on the belief that its smart phones infringed
`
`Innovation's smart phone and smart home patents. Innovation retained the law firm of
`
`DiNovo, Price, Ellwanger & Hardy LLP of Austin, Texas. The LG litigation team
`
`included Andrew DiNovo, Nicky Glauser, Chris Goodpastor, etc. The Dinovo Price firm
`
`reviewed Innovation's patent portfolios and the competitive landscape of smart phone
`
`and smart home technology, conducted licensing meetings, and negotiated the terms of
`
`licenses with LG. The LG litigation began in early 2016. Based on market application
`
`and valuation ofinnovation's patents a settlement was achieved in a few months. On
`
`June 21, 2016, under the licensing efforts of Mr. DiNovo and his team and myself, LG
`
`became another licensee ofinnovation's patent portfolios. The DiNovo Price firm, which
`
`assisted Innovation with its efforts to license LG Innovation's patent portfolios, was paid
`
` of which at least 90%
`
` was for its licensing efforts with
`
`Innovation's smart phone and smart home patents.
`
`36. For the purpose of a conservative estimation of the cost for Innovation's licensing
`
`program for smart phone/home technology patents, all the payments to licensing
`
`professionals that did not directly involve patent litigations of smart phone/home
`
`technology have been excluded. For the payments paid to the licensing professionals
`
`11
`
`PUBLIC VERSION
`
`
`
`Case 4:20-cv-00180-ALM Document 44-7 Filed 05/01/20 Page 14 of 16 PageID #: 1736
`
`directly involving both smart phone/home patent litigation and licensing, only 30% of the
`
`payment to Nelson law firm and 90% of the payment to Dinovo law firm are included in
`
`the calculation.
`
`37. Innovation paid Nelson law firm
`
` for its litigation effort and work on
`
`Innovation's licensing program during 2012-2015 in connection with litigation ·against
`
`Samsung. At least 30% of Nelson team's effort directly involved infringement analysis,
`
`evaluation of the smart home patents, and negotiation with Samsung for licensing
`
`Innovation's smart home patents. As a result, only 30% of the
`
`
`
` is included in the calculation of the cost ofinnovation's licensing program.
`
`38. Innovation paid Dinovo law firm
`
` in 2016 for its effort and work on licensing
`
`Innovation's smart home patents to LG in connection with litigation against LG asserting
`
`Innovation's smart home patents. At least 90% of Dinovo team's effort and work directly
`
`involved infringement analysis, patent evaluation, and negotiation with LG for licensing
`
`Innovation's smart home patents. Therefore, 90% of the total payment to LG
`
`
`
` is included in the calculation of the cost of the licensing program.
`
`39. Mr. Greg Bosch and Dr. Jose Melendez worked for Innovation providing technical
`
`support and expert services including claim charts, infringement analysis, and valuation
`
`of the Innovation's smart home patents in connection with Innovation's patent litigations.
`
`At least 70% of Mr. Bosch's work is about Samsung/LG's products infringement
`
`analysis. At least 20% of Dr. Melendez's work is about Innovation's smart home patent
`
`infringement analysis and licensing. Therefore, 7 0% of Mr. Bosch's payment of
`
`
`
`12
`
`PUBLIC VERSION
`
`
`
`Case 4:20-cv-00180-ALM Document 44-7 Filed 05/01/20 Page 15 of 16 PageID #: 1737
`
`and 20% of Dr. Melendez' payment of
`
` are included in the calculation of the
`
`cost of Innovation's licensing program.
`
`40. Lastly, I spent half of my work time on Innovation's licensing program regarding smart
`
`home patents. Therefore, 50% of my total income of
`
` from Innovation, i.e.
`
`, is included in the calculation of Innovation's cost of its licensing program on
`
`smart home patents.
`
`41. In summary, the total cost for Innovation's licensing program regarding smart home
`
`patents is conservatively estimated to be
`
`. Since there are five (5) smart home
`
`technology patents Innovation currently owns, the two smart home technology patents
`
`being asserted at the ITC, the '179 and '425 patents, amount to 40% of the Innovation's
`
`smart home patent portfolio. Therefore, 40% of the total estimated cost ofinnovation's
`
`licensing program regarding smart home technology, or
`
`, is the amount that is
`
`attributable to the '179 and '425 patents asserted in this ITC Investigation.
`
`42. Of the total investment of Innovation's R&D and licensing program directly related with
`
`smart phone and smart home technology is
`
`. 40% of the total is attributable to
`
`the '179 and '425 patents asserted in current ITC Investigation which is calculated as
`
` .
`
`. 43. The foregoing costs have been incurred in the normal course of Innovation's business.
`
`Innovation does not account for costs on a patent-by-patent basis. However, the listed
`
`costs and the estimated amounts spent on licensing Innovation's smart phone and smart
`
`home technology patents, and on R&D, as are set forth herein, have been proportioned
`
`13
`
`PUBLIC VERSION
`
`
`
`Case 4:20-cv-00180-ALM Document 44-7 Filed 05/01/20 Page 16 of 16 PageID #: 1738
`
`for the amounts estimated as being attributable to the '179 and '425 patents asserted in
`
`this ITC Investigation.
`
`I declare under penalty of perjury under the Laws of the United States of America that the
`
`foregoing is true and correct.
`
`Dr. Anne (Tiehong) Wong
`
`14
`
`PUBLIC VERSION
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
