`KT IMAGING USA, LLC,
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`
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`Plaintiff
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`-against-
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`LG ELECTRONICS, INC. and
`LG ELECTRONICS U.S.A., INC.,
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`
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`Case 4:20-cv-00338-ALM Document 1 Filed 04/20/20 Page 1 of 12 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-338
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`Jury Trial Demanded
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`
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`Defendants
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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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`Defendants LG Electronics, Inc. (“LG-Korea”) and LG Electronics U.S.A., Inc. (“LG-USA”)
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`(collectively “LG” or “Defendants”), 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 LG-Korea is a corporation organized and existing
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`under the laws of the Republic of Korea with its principal place of business at LG Twin Towers
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`20, Yeouido-Dong, Yeongdeungpo-Gu, Seoul, South Korea, 150-721.
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`3.
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`On information and belief, Defendant LG-USA is a wholly-owned subsidiary of LG-Korea,
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`with a principal place of business at 1000 Sylvan Avenue, Englewood Cliffs, New Jersey 07632.
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`LG-USA has a regular and established place of business in the Eastern District of Texas at 2151-
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`2155 Eagle Parkway, Fort Worth, Texas 76177. LG-USA is registered to do business in the state
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`of Texas and may be served with process at its registered agent for process at the United States
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`Corporation Company, 211 E. 7th Street, Suite 620, Austin, Texas 78701.
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`JURISDICTION AND VENUE
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`4.
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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 LG of claims of U.S. Patent No. 6,590,269 and its Ex Parte Reexamination
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`Certificate; U.S. Patent No. 6,876,544; U.S. Patent No. 7,196,322; U.S. Patent No. 7,511261; U.S.
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`Patent No. 8,004,602; and U.S. Patent No. 8,314,481 (collectively “the Patents-in-Suit”).
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`5.
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`6.
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`This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).
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`LG-Korea is subject to personal jurisdiction of this Court because, inter alia, on
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`information and belief, (i) LG-Korea 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) LG-Korea 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) LG-Korea 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 LG-Korea pursuant to Fed. R. Civ. P. 4(k)(2).
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`7.
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`LG-USA is subject to personal jurisdiction of this Court because, inter alia, on information
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`and belief, (i) LG-USA has committed and continues to commit acts of patent infringement in the
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`State of Texas, including by making, using, offering to sell, selling, and/or importing the accused
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`products into Texas; (ii) LG-USA purposefully supplies and directs the accused products for
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`storage, warehousing, and sales by distributors and resellers in the State of Texas; (iii) LG-USA
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`delivers its products into the stream of commerce with the expectation that they will be purchased
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`by consumers in the State of Texas; (iv) LG-USA derives substantial revenue from its activities in
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`this District; and (v) LG-USA has purposefully established substantial, systematic and continuous
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`contacts with this District such that it should reasonably expect to be haled into court in this
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`District. LG-USA has also registered with the Texas Secretary of State Office to do business in
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`the State of Texas and has appointed a registered agent for service of process in the State of Texas.
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`8.
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`Venue is proper as to LG-Korea in this District under 28 U.S.C. § 1391(c) because, inter
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`alia, LG-Korea is a foreign corporation.
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`9.
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`Venue is proper as to LG-USA in this District under 28 U.S.C. § 1400(b) because, inter
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`alia, on information and belief, LG-USA has committed acts of infringement in the District and/or
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`has contributed to or induced acts of patent infringement by others in this District, and has a regular
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`and established place of business within the District. For example, on information and belief, LG-
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`USA has offices at 2151-2155 Eagle Parkway, Fort Worth, Texas 76177.
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`BACKGROUND
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`10.
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`On July 8, 2003, the United States Patent and Trademark Office duly and lawfully issued
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`U.S. Patent No. 6,590,269 (“the ’269 Patent”), entitled “Package Structure for a Photosensitive
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`Chip.”
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`11.
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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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`12.
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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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`13.
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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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`14.
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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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`15.
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`On March 10, 2019, KTI notified LG of the existence of the ’544, ’322, ’261, and ’602
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`Patents. KTI also notified LG that LG infringes the ’544 and ’322 Patents.
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`16.
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`LG has infringed and continues to infringe the Patents-in-Suit by making, using, selling,
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`or offering for sale in the United States, or importing into the United States smartphones, tablets,
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`and laptops with front and/or rear image sensor technology claimed in the Patents-in-Suit.
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`Attachment A to this Complaint provides a non-exhaustive listing of Accused Products.
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`Attachment B to this Complaint provides a listing of Exhibits comprising exemplary teardown
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`images for certain Accused Products.
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`COUNT I: INFRINGEMENT OF THE ’269 PATENT BY LG
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`Plaintiff incorporates the preceding paragraphs as if fully set forth herein.
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`On information and belief, LG has infringed the ’269 Patent pursuant to 35 U.S.C. § 271(a),
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`17.
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`18.
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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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`19.
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`For example, on information and belief, LG has infringed and continues to infringe at least
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`claim 2 of the ’269 Patent by including a front facing package structure including a photosensitive
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`chip in the LG G5 product. See Ex. 1 (LG G5 front facing package structure). The front facing
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`package structure in the Accused Products comprises a substrate having an upper surface and a
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`lower surface opposite to the upper surface. See Ex. 2. The front facing package structure further
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`comprises a frame layer having a first surface and a second surface opposite to the first surface,
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`the frame layer being formed on the substrate with the first surface contacting the upper surface of
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`the substrate, so as to form a cavity with the substrate. See Ex. 1. The front facing package
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`structure further comprises a photosensitive chip placed on the upper surface of the substrate and
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`within the cavity. See Ex. 2. The front facing package structure further comprises a plurality of
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`wires for electrically connecting the substrate to the photosensitive chip. See Ex. 3. The front
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`facing package structure further comprises a transparent layer arranged on the frame layer to cover
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`the photosensitive chip, wherein the second surface of the frame layer is formed with a depression
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`in which the transparent layer is placed to cover the photosensitive chip. See Ex. 1. The front
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`facing package further comprises a plurality of projections each having a suitable height and
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`formed within depression layer of the frame layer. See Ex. 4.
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`20.
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`On information and belief, LG has induced infringement of the ’269 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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`21.
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`On information and belief, LG has committed the foregoing infringing activities without a
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`license.
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`22.
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`On information and belief, LG knew the ’269 Patent existed and knew of exemplary
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`infringing LG products while committing the foregoing infringing acts thereby willfully, wantonly
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`and deliberately infringing the ’269 Patent.
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`COUNT II: INFRINGEMENT OF THE ’544 PATENT BY LG
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`23.
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`Plaintiff incorporates the preceding paragraphs as if fully set forth herein.
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`24.
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`On information and belief, LG has infringed the ’544 Patent pursuant to 35 U.S.C. § 271(a),
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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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`25.
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`For example, on information and belief, LG 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 LG G6 product. See Ex. 6 (LG G6 front facing image sensor). The front facing image
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`sensor module in the Accused Products comprises a substrate having an upper surface formed with
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`a plurality of first connection points and a lower surface formed with a plurality of second
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`connection points, which is electrically connected to the printed circuit board. See Exs. 7-9 (LG
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`G6 front facing image sensor). The image sensor module further comprises a photosensitive chip
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`mounted to the upper surface of the substrate. See Ex. 9 (LG G6 front facing image sensor). The
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`image sensor module further comprises a plurality of wires for electrically connecting the
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`photosensitive chip to the first connection points on the upper surface of the substrate. See Ex. 8
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`(LG G6 front facing image sensor). 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. 6, 9-10 (LG G6 front facing image sensor). The image
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`sensor module further comprises a lens barrel formed with a chamber at a center thereof and an
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`external thread at an outer edge thereof, the external thread being screwed to the internal thread of
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`the frame layer, wherein the lens barrel has a through hole and an aspheric lens from top to bottom.
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`See Exs. 6, 9, 11-12 (LG G6 front facing image sensor).
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`6
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`26.
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`On information and belief, LG 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,
`
`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 image sensor
`
`technology, specifications, instructions, manuals, advertisements, marketing materials, and
`
`technical assistance relating to the installation, set up, use, operation, and maintenance of said
`
`products.
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`27.
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`On information and belief, LG has committed the foregoing infringing activities without a
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`license.
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`28.
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`On information and belief, LG knew the ’544 Patent existed and knew of exemplary
`
`infringing LG products while committing the foregoing infringing acts thereby willfully, wantonly
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`and deliberately infringing the ’544 Patent.
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`COUNT III: INFRINGEMENT OF THE ’322 PATENT BY LG
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`Plaintiff incorporates the preceding paragraphs as if fully set forth herein.
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`On information and belief, LG has infringed the ’322 Patent pursuant to 35 U.S.C. § 271(a),
`
`29.
`
`30.
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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.
`
`31.
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`For example, on information and belief, LG 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 LG G Pad F product. See
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`Ex. 14 (LG G Pad F rear facing image sensor). The image sensor module in the Accused Products
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`comprises a substrate having an upper surface, and a lower surface on which second electrodes are
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`formed, and a frame layer arranged on the upper surface of the substrate, a cavity formed between
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`7
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`the frame layer and substrate, and a plurality of first electrodes are formed on the frame layer. See
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`Exs. 15-16 (LG G Pad F rear facing image sensor). The image sensor module in the Accused
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`Products further comprises a photosensitive chip mounted on the upper surface of the substrate
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`and located within the cavity, and electrically connected to the first electrodes of the frame layer.
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`See Exs. 14, 16-17 (LG G Pad F rear facing image sensor). The image sensor module in the
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`Accused Products further comprises a lens holder having an upper end face, a lower end face, and
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`an opening penetrating through the lens holder from the upper end face to the lower end face, the
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`upper end of the opening formed with an internal thread and the lower end of the opening formed
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`with a breach, so that the internal diameter of the upper end of the opening is smaller than the
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`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 Exs. 14 and 17 (LG
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`G Pad F rear facing image sensor). The image sensor module of the Accused Product further
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`comprises a lens barrel having an upper end face, a lower end face, and an external thread screwed
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`to the internal thread of the lens holder. See Exs. 14 and 18 (LG G Pad F rear facing image sensor).
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`32.
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`On information and belief, LG has induced infringement of the ’322 Patent pursuant to 35
`
`U.S.C. § 271(b), by actively and knowingly inducing, directing, causing, and encouraging 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 image sensor
`
`technology, specifications, instructions, manuals, advertisements, marketing materials, and
`
`technical assistance relating to the installation, set up, use, operation, and maintenance of said
`
`products.
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`33.
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`On information and belief, LG has committed the foregoing infringing activities without a
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`8
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`license.
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`34.
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`On information and belief, LG knew the ’322 Patent existed and knew of exemplary
`
`infringing LG products while committing the foregoing infringing acts while committing the
`
`foregoing infringing acts, thereby willfully, wantonly and deliberately infringing the ’322 Patent.
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`COUNT IV: INFRINGEMENT OF THE ’481 PATENT BY LG
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`Plaintiff incorporates the preceding paragraphs as if fully set forth herein.
`
`On information and belief, LG has infringed the ’481 Patent pursuant to 35 U.S.C. § 271(a),
`
`35.
`
`36.
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`literally or under the doctrine of equivalents, by making, using, offering to sell, selling in the
`
`United States, or importing into the United States the Accused Products and all other products with
`
`substantially similar imaging sensors.
`
`37.
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`For example, on information and belief, LG has infringed and continues to infringe at least
`
`claim 1 of the ’481 Patent by including a substrate structure for an image sensor package in the
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`LG G Pad X 8.0. See Ex. 21 (LG G Pad X 8.0 front facing 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 Exs. 22-23 (LG G Pad X 8.0 front facing image sensor). The
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`substrate structure in the Accused Products comprises a frame layer arranged on and in direct
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`surface contact with the first electrodes and the insulation layer to form a cavity together with the
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`bottom base, wherein the insulation layer is interposed between the bottom base and the frame
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`layer. See Exs. 21-22 (LG G Pad X 8.0 front facing image sensor).
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`38.
`
`On information and belief, LG has induced infringement of the ’481 Patent pursuant to 35
`
`U.S.C. § 271(b), by actively and knowingly inducing, directing, causing, and encouraging others,
`
`including, but not limited to, its partners, resellers, distributers, customers, and end users, to make,
`
`9
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`Case 4:20-cv-00338-ALM Document 1 Filed 04/20/20 Page 10 of 12 PageID #: 10
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`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 image sensor
`
`technology, specifications, instructions, manuals, advertisements, marketing materials, and
`
`technical assistance relating to the installation, set up, use, operation, and maintenance of said
`
`products.
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`39.
`
`On information and belief, LG has committed the foregoing infringing activities without a
`
`license.
`
`40.
`
`On information and belief, LG knew the ’481 Patent existed and knew of exemplary
`
`infringing LG products while committing the foregoing infringing acts while committing the
`
`foregoing infringing acts, thereby willfully, wantonly and deliberately infringing the ’481 Patent.
`
`
`
`WHEREFORE, KTI prays for judgment in its favor against LG for the following relief:
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`PRAYER FOR RELIEF
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
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`Entry of judgment in favor of KTI against LG on all counts;
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`Entry of judgment that LG has infringed the Patent-in-Suit;
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`Entry of judgment that LG’s infringement of the Patents-in-Suit has been willful;
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`An order permanently enjoining LG from infringing the Patent-in-Suit;
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`Award of compensatory damages adequate to compensate KTI for LG’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 LG pursuant to 35 U.S.C.
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`§ 285;
`
`G.
`
`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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`10
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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 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,
`
`
`
`
`
`
`
`/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
`
`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
`Hanna G. Cohen
`hgcohen@kblit.com
`KHEYFITS BELENKY LLP
`
`11
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`Case 4:20-cv-00338-ALM Document 1 Filed 04/20/20 Page 12 of 12 PageID #: 12
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`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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`12
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