`KT IMAGING USA, LLC,
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`-against-
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`Plaintiff
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`Civil Action No.: 4:20-cv-333
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`Jury Trial Demanded
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`Case 4:20-cv-00333-ALM Document 1 Filed 04/20/20 Page 1 of 11 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`SHERMAN DIVISION
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`DYNABOOK, INC.
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`Defendant
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`COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff KT Imaging USA, LLC (“KTI” or “Plaintiff”), by way of this Complaint against
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`Defendant Dynabook, Inc. (“Dynabook” or “Defendant”), alleges as follows:
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`PARTIES
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`1.
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`Plaintiff KT Imaging USA, LLC is a limited liability company organized and existing
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`under the laws of the State of Texas, having its principal place of business at 106 E 6th Street, Suite
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`900, Austin, TX 78701.
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`2.
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`On information and belief, Defendant Dynabook, Inc. is a corporation organized and
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`existing under the laws of Japan, with its principal place of business at NBF Toyosu Garden Front
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`Bldg., Toyosu 5-6-15, Koto-ku, Tokyo, Japan.
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`JURISDICTION AND VENUE
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`3.
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`This is an action under the patent laws of the United States, 35 U.S.C. §§ 1, et seq., for
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`infringement by Dynabook of claims of U.S. Patent No. 6,876,544; U.S. Patent No. 7,196,322;
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`U.S. Patent No. 8,004,602; and U.S. Patent No. 8,314,481 (collectively “the Patents-in-Suit”).
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`4.
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`This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).
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`Case 4:20-cv-00333-ALM Document 1 Filed 04/20/20 Page 2 of 11 PageID #: 2
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`5.
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`Dynabook is subject to personal jurisdiction of this Court because, inter alia, on
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`information and belief, (i) Dynabook has committed and continues to commit acts of patent
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`infringement in the State of Texas, including by making, using, offering to sell, selling, and/or
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`importing the accused products into Texas; (ii) Dynabook purposefully supplies and directs the
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`accused products for storage, warehousing, and sales by distributors and resellers in the State of
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`Texas; and (iii) Dynabook delivers its products into the stream of commerce with the expectation
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`that they will be purchased by consumers in the State of Texas. In addition, or in the alternative,
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`this Court has personal jurisdiction over Dynabook pursuant to Fed. R. Civ. P. 4(k)(2).
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`6.
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`Venue is proper as to Dynabook in this District under 28 U.S.C. § 1391(c) because, inter
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`alia, Dynabook is a foreign corporation.
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`BACKGROUND
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`7.
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`On April 5, 2005, the United States Patent and Trademark Office duly and lawfully issued
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`U.S. Patent No. 6,876,544 (“the ’544 Patent”), entitled “Image Sensor Module and Method for
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`Manufacturing the Same.”
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`8.
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`On March 27, 2007, the United States Patent and Trademark Office duly and lawfully
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`issued U.S. Patent No. 7,196,322 (“the ’322 Patent”), entitled “Image Sensor Package.”
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`9.
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`On August 23, 2011, the United States Patent and Trademark Office duly and lawfully
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`issued U.S. Patent No. 8,004,602 (“the ’602 Patent”), entitled “Image Sensor Structure And
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`Integrated Lens Module Thereof.”
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`10.
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`On November 20, 2012, the United States Patent and Trademark Office duly and lawfully
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`issued U.S. Patent No. 8,314,481 (“the ’481 Patent”), entitled “Substrate Structure for an Image
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`Sensor Package and Method for Manufacturing the Same.”
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`11.
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`KTI is the assignee and owner of the right, title, and interest in and to the Patents-in-Suit,
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`Case 4:20-cv-00333-ALM Document 1 Filed 04/20/20 Page 3 of 11 PageID #: 3
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`including the right to assert all causes of action arising under said patents and the right to any
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`remedies for infringement of them.
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`12.
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`By letter dated June 20, 2019, KTI notified Dynabook of the existence of U.S. Patent No.
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`6,876,544; U.S. Patent No. 7,196,322; and U.S. Patent No. 8,004,602, and of infringement thereof
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`by Dynabook. KTI’s June 20, 2019 letter invited Dynabook to hold a licensing discussion with
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`KTI.
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`13.
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`As of the date of this Complaint, KTI has not received any response from Dynabook to its
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`letter.
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`14.
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`Dynabook has had notice of the ’481 Patent at least as of the time of filing of this
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`Complaint.
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`15.
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`Dynabook has infringed and continues to infringe the Patents-in-Suit by making, using,
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`selling, or offering for sale in the United States, or importing into the United States, tablets and
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`laptops with front and/or rear image sensor technology claimed in the Patents-in-suit. Attachment
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`A to this Complaint provides a non-exhaustive listing of Accused Products. Attachment B to this
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`Complaint provides a listing of Exhibits comprising exemplary teardown images for certain
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`Accused Products.
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`COUNT I: INFRINGEMENT OF THE ’544 PATENT BY DYNABOOK
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`Plaintiff incorporates the preceding paragraphs as if fully set forth herein.
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`On information and belief, Dynabook has infringed the ’544 Patent pursuant to 35 U.S.C.
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`16.
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`17.
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`§ 271(a), literally or under the doctrine of equivalents, by making, using, offering to sell, selling
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`in the United States or importing into the United States the Accused Products and all other products
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`with substantially similar imaging sensors.
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`18.
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`For example, on information and belief, Dynabook has infringed and continues to infringe
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`at least claim 1 of the ’544 Patent by including an image sensor module to be mounted to a printed
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`3
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`Case 4:20-cv-00333-ALM Document 1 Filed 04/20/20 Page 4 of 11 PageID #: 4
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`circuit board in the Encore 2 model. See Ex. 1 (Toshiba Encore 2 rear facing image sensor). The
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`front facing image sensor module in the Accused Products comprises a substrate having an upper
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`surface formed with a plurality of first connection points and a lower surface formed with a
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`plurality of second connection points, which is electrically connected to the printed circuit board.
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`See Exs. 2-3 (Toshiba Encore 2 rear facing image sensor). The image sensor module further
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`comprises a photosensitive chip mounted to the upper surface of the substrate. See Ex. 2 (Toshiba
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`Encore 2 rear facing image sensor). The image sensor module further comprises a plurality of
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`wires for electrically connecting the photosensitive chip to the first connection points on the upper
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`surface of the substrate. See Ex. 3 (Toshiba Encore 2 rear facing image sensor). The image sensor
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`module further comprises a frame layer mounted to the upper surface of the substrate to surround
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`the photosensitive chip, an inner edge of the frame layer being formed with an internal thread from
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`top to bottom, and a transparent layer being fixed by the frame layer such that the photosensitive
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`chip may receive optical signals passing through the transparent layer. See Exs. 1 and 4 (Toshiba
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`Encore 2 rear facing image sensor). The image sensor module further comprises a lens barrel
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`formed with a chamber at a center thereof and an external thread at an outer edge thereof, the
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`external thread being screwed to the internal thread of the frame layer, wherein the lens barrel has
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`a through hole and an aspheric lens from top to bottom. See Ex. 1 (Toshiba Encore 2 rear facing
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`image sensor).
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`19.
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`On information and belief, Dynabook has induced infringement of the ’544 Patent pursuant
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`to 35 U.S.C. § 271(b), by actively and knowingly inducing, directing, causing, and encouraging
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`others, including, but not limited to, its partners, resellers, distributers, customers, and end users,
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`to make, use, sell, and/or offer to sell in the United States, and/or import into the United States,
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`the Accused Products by, among other things, providing the accused products and incorporated
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`Case 4:20-cv-00333-ALM Document 1 Filed 04/20/20 Page 5 of 11 PageID #: 5
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`image sensor technology, specifications, instructions, manuals, advertisements, marketing
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`materials, and technical assistance relating to the installation, set up, use, operation, and
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`maintenance of said products.
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`20.
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`On information and belief, Dynabook has committed the foregoing infringing activities
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`without a license.
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`21.
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`On information and belief, Dynabook knew the ’544 Patent existed and knew of exemplary
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`infringing Dynabook products while committing the foregoing infringing acts thereby willfully,
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`wantonly and deliberately infringing the ’544 Patent.
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`COUNT II: INFRINGEMENT OF THE ’322 PATENT BY DYNABOOK
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`Plaintiff incorporates the preceding paragraphs as if fully set forth herein.
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`On information and belief, Dynabook has infringed the ’322 Patent pursuant to 35 U.S.C.
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`22.
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`23.
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`§ 271(a), literally or under the doctrine of equivalents, by making, using, offering to sell, selling
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`in the United States or importing into the United States the Accused Products and all other products
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`with substantially similar imaging sensors.
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`24.
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`For example, on information and belief, Dynabook has infringed and continues to infringe
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`at least claim 1 of the ’322 Patent by including an image sensor module in the Excite 7.7 product.
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`See Ex. 7 (Toshiba Excite 7.7 Android 4.0 image sensor). The image sensor module in the Accused
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`Products comprises a substrate having an upper surface, and a lower surface on which second
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`electrodes are formed, and a frame layer arranged on the upper surface of the substrate, a cavity
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`formed between the frame layer and substrate, and a plurality of first electrodes are formed on the
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`frame layer. See Exs. 8-9 (Toshiba Excite 7.7 Android 4.0 image sensor). The image sensor
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`module in the Accused Products further comprises a photosensitive chip mounted on the upper
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`surface of the substrate and located within the cavity, and electrically connected to the first
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`electrodes of the frame layer. See Exs. 7, 9-10 (Toshiba Excite 7.7 Android 4.0 image sensor).
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`The image sensor module in the Accused Products further comprises a lens holder having an upper
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`end face, a lower end face, and an opening penetrating through the lens holder from the upper end
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`face to the lower end face, the upper end of the opening formed with an internal thread and the
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`lower end of the opening formed with a breach, so that the internal diameter of the upper end of
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`the opening is smaller than the lower end of the opening, the lens holder adhered on the upper
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`surface of the substrate by glue, wherein, the frame layer is located within the breach of the lens
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`holder. See Exs. 7 and 9 (Toshiba Excite 7.7 Android 4.0 image sensor). The image sensor module
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`of the Accused Product further comprises a lens barrel having an upper end face, a lower end face,
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`and an external thread screwed to the internal thread of the lens holder. See Exs. 1 and 11 (Toshiba
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`Excite 7.7 Android 4.0 image sensor).
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`25.
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`On information and belief, Dynabook has induced infringement of the ’322 Patent pursuant
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`to 35 U.S.C. § 271(b), by actively and knowingly inducing, directing, causing, and encouraging
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`others, including, but not limited to, its partners, resellers, distributers, customers, and end users,
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`to make, use, sell, and/or offer to sell in the United States, and/or import into the United States,
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`the Accused Products by, among other things, providing the accused products and incorporated
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`image sensor technology, specifications, instructions, manuals, advertisements, marketing
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`materials, and technical assistance relating to the installation, set up, use, operation, and
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`maintenance of said products.
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`26.
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`On information and belief, Dynabook has committed the foregoing infringing activities
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`without a license.
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`27.
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`On information and belief, Dynabook knew the ’322 Patent existed and knew of exemplary
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`infringing Dynabook products while committing the foregoing infringing acts while committing
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`the foregoing infringing acts, thereby willfully, wantonly and deliberately infringing the ’322
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`6
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`Patent.
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`28.
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`29.
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`COUNT III: INFRINGEMENT OF THE ’602 PATENT BY DYNABOOK
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`Plaintiff incorporates the preceding paragraphs as if fully set forth herein.
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`On information and belief, Dynabook has infringed the ’602 Patent pursuant to 35 U.S.C.
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`§ 271(a), literally or under the doctrine of equivalents, by making, using, offering to sell, selling
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`in the United States, or importing into the United States the Accused Products and all other
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`products with substantially similar imaging sensors.
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`30.
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`For example, on information and belief, Dynabook has infringed and continues to infringe
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`at least claim 1 of the ’602 Patent by including an image sensor structure with an integrated lens
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`module in the Accused Products. See Ex. 13 (Dynabook Tecra C40 image sensor). The image
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`sensor structure in the Accused Products comprises a chip having a plurality of light-sensing
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`elements arranged on a light sensing area of a first surface of the chip, a plurality of first conducting
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`pads arranged around the light-sensing area and electrically connected to the light-sensing
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`elements, and at least one conducting channel passing through the chip and electrically connected
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`to the first conducting pads at one end as well as extending along with a second surface of the chip.
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`See Exs. 13-15 (Dynabook Tecra C40 image sensor). The image sensor structure in the Accused
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`Products comprises a lens module comprising a holder having a through hole and a contact surface
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`on a bottom of the holder, wherein the contact surface is combined with the first surface, and at
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`least one lens completely embedded inside the through hole and integrated with the holder. See
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`Ex. 13 (Dynabook Tecra C40 image sensor).
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`31.
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`On information and belief, Dynabook has induced infringement of the ’602 Patent pursuant
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`to 35 U.S.C. § 271(b), by actively and knowingly inducing, directing, causing, and encouraging
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`others, including, but not limited to, its partners, resellers, distributers, customers, and end users,
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`to make, use, sell, and/or offer to sell in the United States, and/or import into the United States,
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`7
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`Case 4:20-cv-00333-ALM Document 1 Filed 04/20/20 Page 8 of 11 PageID #: 8
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`the Accused Products by, among other things, providing the accused products and incorporated
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`image sensor technology, specifications, instructions, manuals, advertisements, marketing
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`materials, and technical assistance relating to the installation, set up, use, operation, and
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`maintenance of said products.
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`32.
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`On information and belief, Dynabook has committed the foregoing infringing activities
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`without a license.
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`33.
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`On information and belief, Dynabook knew the ’602 Patent existed and knew of exemplary
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`infringing Dynabook products while committing the foregoing infringing acts while committing
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`the foregoing infringing acts, thereby willfully, wantonly and deliberately infringing the ’602
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`Patent.
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`COUNT IV: INFRINGEMENT OF THE ’481 PATENT BY DYNABOOK
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`Plaintiff incorporates the preceding paragraphs as if fully set forth herein.
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`On information and belief, Dynabook has infringed the ’481 Patent pursuant to 35 U.S.C.
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`34.
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`35.
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`§ 271(a), literally or under the doctrine of equivalents, by making, using, offering to sell, selling
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`in the United States, or importing into the United States the Accused Products and all other
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`products with substantially similar imaging sensors.
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`36.
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`For example, on information and belief, Dynabook has infringed and continues to infringe
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`at least claim 1 of the ’481 Patent by including a substrate structure for an image sensor package
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`in the Tecra C40 product. See Ex. 13 (Dynabook Tecra C40 image sensor). The substrate structure
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`in the Accused Products comprises a bottom base having an upper surface formed with a plurality
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`of first electrodes, and a lower surface formed with a plurality of second electrodes, wherein an
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`insulation layer is coated between first electrodes and in direct surface contact with the upper
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`surface of the bottom base. See Ex. 13 (Dynabook Tecra C40 image sensor). The substrate
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`structure in the Accused Products comprises a frame layer arranged on and in direct surface contact
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`8
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`with the first electrodes and the insulation layer to form a cavity together with the bottom base,
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`wherein the insulation layer is interposed between the bottom base and the frame layer. See Ex.
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`13 (Dynabook Tecra C40 image sensor).
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`37.
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`On information and belief, Dynabook has induced infringement of the ’481 Patent pursuant
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`to 35 U.S.C. § 271(b), by actively and knowingly inducing, directing, causing, and encouraging
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`others, including, but not limited to, its partners, resellers, distributers, customers, and end users,
`
`to make, use, sell, and/or offer to sell in the United States, and/or import into the United States,
`
`the Accused Products by, among other things, providing the accused products and incorporated
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`image sensor technology, specifications, instructions, manuals, advertisements, marketing
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`materials, and technical assistance relating to the installation, set up, use, operation, and
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`maintenance of said products.
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`38.
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`On information and belief, Dynabook has committed the foregoing infringing activities
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`without a license.
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`WHEREFORE, KTI prays for judgment in its favor against Dynabook for the following
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`PRAYER FOR RELIEF
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`relief:
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`A.
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`B.
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`C.
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`Entry of judgment in favor of KTI against Dynabook on all counts;
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`Entry of judgment that Dynabook has infringed the Patent-in-Suit;
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`Entry of judgment that Dynabook’s infringement of U.S. Patent No. 6,876,544,
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`U.S. Patent No. 7,196,322, and U.S. Patent No. 8,004,602 has been willful;
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`D.
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`An order permanently enjoining Dynabook from infringing the Patent-in-Suit;
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`9
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`Case 4:20-cv-00333-ALM Document 1 Filed 04/20/20 Page 10 of 11 PageID #: 10
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`E.
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`Award of compensatory damages adequate to compensate KTI for Dynabook’s
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`infringement of the Patent-in-Suit, in no event less than a reasonable royalty trebled as provided
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`by 35 U.S.C. § 284;
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`F.
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`Award of reasonable attorneys’ fees and expenses against Dynabook pursuant to
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`35 U.S.C. § 285;
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`G.
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`H.
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`I.
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`KTI’s costs;
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`Pre-judgment and post-judgment interest on KTI’s award; and
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`All such other and further relief as the Court deems just or equitable.
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`DEMAND FOR JURY TRIAL
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`Pursuant to Rule 38 of the Fed. R. Civ. Proc., Plaintiff hereby demands trial by jury in this
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`action of all claims so triable.
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`Dated: April 20, 2020
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`Respectfully submitted,
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`/s/ Stafford Davis
`Stafford Davis
`State Bar No. 24054605
`sdavis@stafforddavisfirm.com
`Catherine Bartles
`State Bar No. 24104849
`cbartles@stafforddavisfirm.com
`THE STAFFORD DAVIS FIRM, PC
`815 South Broadway
`Tyler, Texas 75702
`Tel: (903) 593-7000
`Fax: (903) 705-7369
`
`Dmitry Kheyfits
`dkheyfits@kblit.com
`KHEYFITS BELENKY LLP
`7500 Rialto Boulevard, Suite 250
`Austin, TX 78735
`Tel: 737-228-1838
`Fax: 737-228-1843
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`10
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`Case 4:20-cv-00333-ALM Document 1 Filed 04/20/20 Page 11 of 11 PageID #: 11
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`Brandon G. Moore
`KHEYFITS BELENKY LLP
`7500 Rialto Boulevard, Bldg. 1
`Suite 250
`Austin, TX 78735
`Tel: 737-228-1838
`Fax: 737-228-1843
`
`Andrey Belenky
`abelenky@kblit.com
`KHEYFITS BELENKY LLP
`1140 Avenue of the Americas, 9th Floor
`New York, NY 10036
`Tel: 212-203-5399
`Fax: 212-203-5399
`
`Attorneys for Plaintiff
`KT Imaging USA, LLC
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`11
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