Case 4:20-cv-00337-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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`Civil Action No.: 4:20-cv-337
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`Jury Trial Demanded
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`KT IMAGING USA, LLC,
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`Plaintiff
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`-against-
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`HP 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 HP Inc. (“HP” 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 HP Inc. (“HP”) is a Delaware corporation with its
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`principal place of business located at 1501 Page Mill Road, Palo Alto, CA 94304.
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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 HP of claims of U.S. Patent No. 6,876,544; U.S. Patent No. 7,196,322; U.S. Patent
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`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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`5.
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`This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).
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`HP Inc. is subject to personal jurisdiction of this Court because, inter alia, HP Inc. on
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`information and belief (i) has committed acts of patent infringement in the State of Texas, (ii) has
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`continuous business contact in the State of Texas , (iii) owns, manages, and operates facilities in
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`the State of Texas, and (iv) actively employees and seeks the services of Texas residents in this
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`judicial district. For example, HP Inc. operates a location at 2800 North Dallas Parkway, Suite
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`200, Plano, TX 75093.
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`6.
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`Venue is proper in this judicial district under 35 U.S.C. § 1400(b) because HP Inc. has a
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`regular and established place of business at 2800 North Dallas Parkway, Suite 200, Plano, TX
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`75093 and commits acts of infringement in this judicial district.
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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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`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 21, 2019, KTI notified HP of the existence of the ’544, ’322, and ’602
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`Patents, and of infringement thereof by HP. KTI’s letter identified exemplary infringing HP
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`products and an exemplary infringed claim for each of these patents.
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`13.
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`14.
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`HP has had notice of the ’481 Patent at least as of the time of filing of this Complaint.
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`HP has infringed and continues to infringe the Patents-in-Suit by making, using, selling, or
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`offering for sale in the United States, or importing into the United States tablets and laptop
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`computers with front and/or rear image sensors. Attachment A to this Complaint provides a non-
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`exhaustive listing of Accused Products. Attachment B to this Complaint provides a listing of
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`Exhibits comprising exemplary teardown images for certain Accused Products.
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`COUNT I: INFRINGEMENT OF THE ’544 PATENT BY HP
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`Plaintiff incorporates the preceding paragraphs as if fully set forth herein.
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`On information and belief, HP has infringed the ’544 Patent pursuant to 35 U.S.C. § 271(a),
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`15.
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`16.
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`literally or under the doctrine of equivalents, by making, using, offering to sell, selling in the
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`United States or importing into the United States the Accused Products and all other products with
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`substantially similar imaging sensors.
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`17.
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`For example, on information and belief, HP has infringed and continues to infringe at least
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`claim 1 of the ’544 Patent by including an image sensor module to be mounted to a printed circuit
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`board in the Elitebook 2530p product. See Ex. 1 (HP Elitebook 2530p Front Facing Image Sensor
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`Module). The front facing image sensor module in the Accused Products comprises a substrate
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`having an upper surface formed with a plurality of first connection points and a lower surface
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`formed with a plurality of second connection points, which is electrically connected to the printed
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`circuit board. See Exs. 2-3 (both HP Elitebook 2530p Front Facing Image Sensor Module). The
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`image sensor module further comprises a photosensitive chip mounted to the upper surface of the
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`substrate. See Ex. 4 (HP Elitebook 2530p Front Facing Image Sensor Module). The image sensor
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`module further comprises a plurality of wires for electrically connecting the photosensitive chip to
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`the first connection points on the upper surface of the substrate. See Ex. 5 (HP Elitebook 2530p
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`Front Facing Image Sensor Module). The image sensor module further comprises a frame layer
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`mounted to the upper surface of the substrate to surround the photosensitive chip, an inner edge of
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`the frame layer being formed with an internal thread from top to bottom, and a transparent layer
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`being fixed by the frame layer such that the photosensitive chip may receive optical signals passing
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`through the transparent layer. See Exs. 1, 4, 6 (HP Elitebook 2530p Front Facing Image Sensor
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`Module). The image sensor module further comprises a lens barrel formed with a chamber at a
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`center thereof and an external thread at an outer edge thereof, the external thread being screwed to
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`the internal thread of the frame layer, wherein the lens barrel has a through hole and an aspheric
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`lens from top to bottom. See Exs. 1, 7 (HP Elitebook 2530p Front Facing Image Sensor Module).
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`18.
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`On information and belief, HP has induced infringement of the ’544 Patent pursuant to 35
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`U.S.C. § 271(b), by actively and knowingly inducing, directing, causing, and encouraging others,
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`including, but not limited to, its partners, resellers, distributers, customers, and end users, to make,
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`use, sell, and/or offer to sell in the United States, and/or import into the United States, the Accused
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`Products by, among other things, providing the accused products and incorporated image sensor
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`technology, specifications, instructions, manuals, advertisements, marketing materials, and
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`technical assistance relating to the installation, set up, use, operation, and maintenance of said
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`products.
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`19.
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`On information and belief, HP has committed the foregoing infringing activities without a
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`license.
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`20.
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`On information and belief, HP knew the ’544 Patent existed, knew of an exemplary
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`infringed claim of the ’544 Patent, and knew of exemplary infringing HP products while
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`committing the foregoing infringing acts thereby willfully, wantonly and deliberately infringing
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`the ’544 Patent.
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`COUNT II: INFRINGEMENT OF THE ’322 PATENT BY HP
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`Plaintiff incorporates the preceding paragraphs as if fully set forth herein.
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`On information and belief, HP has infringed the ’322 Patent pursuant to 35 U.S.C. § 271(a),
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`21.
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`22.
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`literally or under the doctrine of equivalents, by making, using, offering to sell, selling in the
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`United States or importing into the United States the Accused Products and all other products with
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`substantially similar imaging sensors.
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`23.
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`For example, on information and belief, HP has infringed and continues to infringe at least
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`claim 1 of the ’322 Patent by including an image sensor module in the Elitebook 2530p product.
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`See Ex. 1 (HP Elitebook 2530p Front Facing Image Sensor Module). The image sensor module
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`in the Accused Products comprises a substrate having an upper surface, and a lower surface on
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`which second electrodes are formed, and a frame layer arranged on the upper surface of the
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`substrate, a cavity formed between the frame layer and substrate, and a plurality of first electrodes
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`are formed on the frame layer. See Ex. 1-4, 8 (HP Elitebook 2530p Front Facing Image Sensor
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`Module). The image sensor module in the Accused Products further comprises a photosensitive
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`chip mounted on the upper surface of the substrate and located within the cavity, and electrically
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`connected to the first electrodes of the frame layer. See Exs. 3-4, 8. The image sensor module in
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`the Accused Products further comprises a lens holder having an upper end face, a lower end face,
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`and an opening penetrating through the lens holder from the upper end face to the lower end face,
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`the upper end of the opening formed with an internal thread and the lower end of the opening
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`formed with a breach, so that the internal diameter of the upper end of the opening is smaller than
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`the lower end of the opening, the lens holder adhered on the upper surface of the substrate by glue,
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`wherein, the frame layer is located within the breach of the lens holder. See Ex. 1, 9 (HP Elitebook
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`2530p Front Facing Image Sensor Module). The image sensor module of the Accused Product
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`further comprises a lens barrel having an upper end face, a lower end face, and an external thread
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`screwed to the internal thread of the lens holder. See Ex. 1, 7.
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`24.
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`On information and belief, HP has induced infringement of the ’322 Patent pursuant to 35
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`U.S.C. § 271(b), by actively and knowingly inducing, directing, causing, and encouraging others,
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`including, but not limited to, its partners, resellers, distributers, customers, and end users, to make,
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`use, sell, and/or offer to sell in the United States, and/or import into the United States, the Accused
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`Products by, among other things, providing the accused products and incorporated image sensor
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`technology, specifications, instructions, manuals, advertisements, marketing materials, and
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`technical assistance relating to the installation, set up, use, operation, and maintenance of said
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`products.
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`25.
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`On information and belief, HP has committed the foregoing infringing activities without a
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`license.
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`26.
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`On information and belief, HP knew the ’322 Patent existed, knew of an exemplary
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`infringed claim of the ’322 Patent, and knew of exemplary infringing HP products while
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`committing the foregoing infringing acts while committing the foregoing infringing acts, thereby
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`willfully, wantonly and deliberately infringing the ’322 Patent.
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`COUNT III: INFRINGEMENT OF THE ’602 PATENT BY HP
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`Plaintiff incorporates the preceding paragraphs as if fully set forth herein.
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`On information and belief, HP has infringed the ’602 Patent pursuant to 35 U.S.C. § 271(a),
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`27.
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`28.
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`literally or under the doctrine of equivalents, by making, using, offering to sell, selling in the
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`United States, or importing into the United States the Accused Products and all other products with
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`substantially similar imaging sensors.
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`29.
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`For example, on information and belief, HP has infringed and continues to infringe at least
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`claim 1 of the ’602 Patent by including an image sensor structure with an integrated lens module
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`in the Elitebook 810 G2 product. See Ex. 10 (Elitebook 810 G2 Front Facing Image Sensor
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`Module). The image sensor structure in the Accused Products comprises a chip having a plurality
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`of light-sensing elements arranged on a light sensing area of a first surface of the chip, a plurality
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`of first conducting pads arranged around the light-sensing area and electrically connected to the
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`light-sensing elements, and at least one conducting channel passing through the chip and
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`electrically connected to the first conducting pads at one end as well as extending along with a
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`second surface of the chip. See Exs. 10-14 (all Elitebook 810 G2 Front Facing Image Sensor
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`Module). The image sensor structure in the Accused Products comprises a lens module comprising
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`a holder having a through hole and a contact surface on a bottom of the holder, wherein the contact
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`surface is combined with the first surface, and at least one lens completely embedded inside the
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`through hole and integrated with the holder. See Ex. 10, 15 (Elitebook 810 G2 Front Facing Image
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`Sensor Module).
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`30.
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`On information and belief, HP has induced infringement of the ’602 Patent pursuant to 35
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`U.S.C. § 271(b), by actively and knowingly inducing, directing, causing, and encouraging others,
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`including, but not limited to, its partners, resellers, distributers, customers, and end users, to make,
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`use, sell, and/or offer to sell in the United States, and/or import into the United States, the Accused
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`Products by, among other things, providing the accused products and incorporated image sensor
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`technology, specifications, instructions, manuals, advertisements, marketing materials, and
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`technical assistance relating to the installation, set up, use, operation, and maintenance of said
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`products.
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`31.
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`On information and belief, HP has committed the foregoing infringing activities without a
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`license.
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`32.
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`On information and belief, HP knew the ’602 Patent existed, knew of an exemplary
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`infringed claim of the ’602 Patent, and knew of exemplary infringing HP products while
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`committing the foregoing infringing acts while committing the foregoing infringing acts, thereby
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`willfully, wantonly and deliberately infringing the ’602 Patent.
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`COUNT IV: INFRINGEMENT OF THE ’481 PATENT BY HP
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`Plaintiff incorporates the preceding paragraphs as if fully set forth herein.
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`On information and belief, HP has infringed the ’481 Patent pursuant to 35 U.S.C. § 271(a),
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`33.
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`34.
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`literally or under the doctrine of equivalents, by making, using, offering to sell, selling in the
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`United States, or importing into the United States the Accused Products and all other products with
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`substantially similar imaging sensors.
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`35.
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`For example, on information and belief, HP has infringed and continues to infringe at least
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`claim 1 of the ’481 Patent by including a substrate structure for an image sensor package in the
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`Elitebook 8740W product. See Ex. 16 (Elitebook 8740W Front Facing Image Sensor Module).
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`The substrate structure in the Accused Products comprises a bottom base having an upper surface
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`formed with a plurality of first electrodes, and a lower surface formed with a plurality of second
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`electrodes, wherein an insulation layer is coated between first electrodes and in direct surface
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`contact with the upper surface of the bottom base. See Exs. 17-19 (all Elitebook 8740W Front
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`Facing Image Sensor Module). The substrate structure in the Accused Products comprises a frame
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`layer arranged on and in direct surface contact with the first electrodes and the insulation layer to
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`form a cavity together with the bottom base, wherein the insulation layer is interposed between the
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`bottom base and the frame layer. See Exs. 20-21 (both Elitebook 8740W Front Facing Image
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`Sensor Module).
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`36.
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`On information and belief, HP has induced infringement of the ’481 Patent pursuant to 35
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`U.S.C. § 271(b), by actively and knowingly inducing, directing, causing, and encouraging others,
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`including, but not limited to, its partners, resellers, distributers, customers, and end users, to make,
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`use, sell, and/or offer to sell in the United States, and/or import into the United States, the Accused
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`Products by, among other things, providing the accused products and incorporated image sensor
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`technology, specifications, instructions, manuals, advertisements, marketing materials, and
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`technical assistance relating to the installation, set up, use, operation, and maintenance of said
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`products.
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`37.
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`On information and belief, HP has committed the foregoing infringing activities without a
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`license.
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`WHEREFORE, KTI prays for judgment in its favor against the HP 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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`been willful;
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`D.
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`E.
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`Entry of judgment in favor of KTI against HP on all counts;
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`Entry of judgment that HP has infringed the Patent-in-Suit;
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`Entry of judgment that HP’s infringement of the ’544, ’322, and ’602 Patents has
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`An order permanently enjoining HP from infringing the Patent-in-Suit;
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`Award of compensatory damages adequate to compensate KTI for HP’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 HP pursuant to 35
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`U.S.C. § 285;
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`G.
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`H.
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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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`I.
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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
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`this 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
`4 Embarcadero Center, Suite 1400
`San Francisco, CA 94111
`Tel: 415-429-1739
`Fax: 415-429-6347
`
`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
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`10
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`Case 4:20-cv-00337-ALM Document 1 Filed 04/20/20 Page 11 of 11 PageID #: 11
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`Tel: 212-203-5399
`Fax: 212-203-5399
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`Attorneys for Plaintiff
`KT Imaging USA, LLC
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