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`Case 3:20-cv-01157-M Document 1 Filed 05/07/20 Page 1 of 21 PageID 1Case 3:20-cv-01157-M Document 1 Filed 05/07/20 Page 1 of 21 PageID 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF TEXAS
`DALLAS DIVISION
`
`PIXMARX IP LLC,
`
` Plaintiff,
`v.
`
`SNAP INC.,
`
` Defendant.
`
`
`Case No. 3:20-cv-1157
`
`PATENT CASE
`
`JURY TRIAL DEMANDED
`
`
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff Pixmarx IP LLC (“Pixmarx” or “Plaintiff”) files this Complaint against Snap
`
`
`
`
`
`
`
`
`Inc. (“Snap” or “Defendant”) for infringement of U.S. Patent No. 9,477,689 (the “’689 patent”),
`
`U.S. Patent No. 9,792,662 (the “’662 patent”), U.S. Patent No. 10,102,601 (the “’601 patent”),
`
`and U.S. Patent No. 10,489,873 (the “’873 patent”). The ’689 patent, ’662 patent, ’601 patent,
`
`and ’873 patent are collectively referred to as the “Pixmarx patents,” “asserted patents,” or
`
`“patents-in-suit”.
`
`THE PARTIES
`
`1.
`
`Plaintiff is a Texas limited liability company with its principal place of business
`
`located at 312 W 8th Street, Dallas, Texas 75208.
`
`2.
`
`Snap is a Delaware corporation with its principal place of business located at
`
`2772 Donald Douglas Loop North, Santa Monica, California 90405.
`
`JURISDICTION AND VENUE
`
`3.
`
`Plaintiff brings this action for patent infringement under the patent laws of the
`
`United States, namely 35 U.S.C. §§ 271, 281, and 284-285, among others. This Court has
`
`subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331, 1338(a), and 1367.
`
`1
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`4.
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`Defendant is subject to this Court’s specific and general personal jurisdiction
`
`pursuant to due process, due at least to its substantial business in this State and judicial district,
`
`including: committing acts of infringement in this judicial district as described herein; and
`
`regularly conducting or soliciting business, engaging in other persistent conduct, and/or deriving
`
`substantial revenue from goods and products sold and services provided to Texas residents.
`
`5.
`
`Venue is proper in this judicial district pursuant to 28 U.S.C. § 1400(b).
`
`Defendant has a regular and established place of business in this judicial district. For example,
`
`Defendant has a regular and established place of business at 3102 Oak Lawn Avenue, Dallas,
`
`Texas 75219. In addition, Defendant has committed acts of infringement in this judicial district.
`
`THE PATENTS-IN-SUIT
`
`6.
`
`The ’689 patent is entitled “Embedding Digital Content Within a Digital
`
`Photograph During Capture of the Digital Photograph.” The ’689 patent lawfully issued on
`
`October 25, 2016 and stems from U.S. Patent Application No. 14/251,707, which was filed on
`
`April 14, 2014. A copy of the ’689 patent is attached hereto as Exhibit 1.
`
`7.
`
`The ’662 patent is entitled “Embedding Digital Content Within a Digital
`
`Photograph During Capture of the Digital Photograph.” The ’662 patent lawfully issued on
`
`October 17, 2017 and stems from U.S. Patent Application No. 15/275,166, which is a
`
`continuation of U.S. Patent Application No. 14/251,707 and was filed on September 23, 2016. A
`
`copy of the ’662 patent is attached hereto as Exhibit 2.
`
`8.
`
`The ’601 patent is entitled “Embedding Digital Content Within a Digital
`
`Photograph During Capture of the Digital Photograph.” The ’601 patent lawfully issued on
`
`October 16, 2018 and stems from U.S. Patent Application No. 15/705,703, which is a
`
`2
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`continuation of U.S. Patent Application No. 15/275,166 and was filed on September 15, 2017. A
`
`copy of the ’601 patent is attached hereto as Exhibit 3.
`
`9.
`
`The ’873 patent is entitled “Embedding Digital Content Within a Digital
`
`Photograph During Capture of the Digital Photograph.” The ’873 patent lawfully issued on
`
`November 26, 2019 and stems from U.S. Patent Application No. 16/118,108, which is a
`
`continuation of U.S. Patent Application No. 15/705,703 and was filed on August 30, 2018. A
`
`copy of the ’873 patent is attached hereto as Exhibit 4.
`
`10.
`
`Plaintiff is the owner of the patents-in-suit with all substantial rights to the
`
`patents-in-suit including the exclusive right to enforce, sue, and recover damages for past and
`
`future infringement.
`
`11.
`
`12.
`
`The named inventors on the patents-in-suit are Barry Crutchfield and Gary Lipps.
`
`The patents-in-suit arose from Mr. Crutchfield’s and Mr. Lipp’s development of
`
`the Pixmarx application, an application that was first released on the Apple App Store in
`
`November 2013.
`
`13.
`
`The patents-in-suit share a specification and claim priority to U.S. Provisional
`
`Patent Application Serial No. 61/966,161, which was filed on February 15, 2014.
`
`14.
`
`15.
`
`The claims of the patents-in-suit are presumed valid.
`
`The claims of the patents-in-suit are directed to patent eligible subject matter
`
`under 35 U.S.C. § 101. The claims of the patents-in-suit are not directed to an abstract idea, and
`
`the technologies claimed by the claims of the patents-in-suit consist of ordered combinations of
`
`features and functions that were not, alone or in combination, well-understood, routine, or
`
`conventional activities.
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`3
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`16.
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`The specifications of the patents-in-suit disclose shortcomings in the prior art and
`
`then explain, in detail, the technical way the inventions claimed in the patents-in-suit resolve or
`
`overcome those shortcomings. See, e.g., Ex. 4 (’873 patent), 7:7-50. For example, the patents-
`
`in-suit explain that a drawback to prior art approaches to enhancing digital photographs was that
`
`they required application of separate processes after taking a photograph (e.g., editing a label,
`
`border, or special effect into a photograph after the photograph is taken). See Ex. 4 (’873
`
`patent), 2:9-16. The patents-in-suit provide the following solution to the address drawbacks
`
`arising from prior art systems and methods for enhancing digital photographs:
`
` [E]mbodiments of the present invention are directed to displaying an embedded
`
`digital image (e.g., an electronic digital icon (e.g., watermark), picture, text, or the
`
`like) within an image viewing structure (e.g., eyepiece, visual display, or the like)
`
`of a digital imaging device prior to and during a photograph being taken using the
`
`digital imaging device. Accordingly, when a user of such a digital imaging
`
`device takes the photograph, as-viewed visual content seen within the image
`
`viewing structure (i.e., the embedded digital image overlaid on to-be-
`
`photographed visual content) is the same as what would be a corresponding
`
`outputted digital file of the imaging device. In this regard, the corresponding
`
`outputted digital file is a ‘What You See Is What You Get (WYSIWYG)’
`
`representation of the as-viewed visual content within the image viewing structure
`
`of the imaging device when the to-be-photographed visual content is captured by
`
`the digital imaging device.
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`4
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`Ex. 4 (’873 patent), 2:28-45; see also id at 4:7-25. These solutions are reflected in the
`
`independent claims of the patents-in-suit. For example, claim 1 of the ’873 patent requires (in
`
`part):
`
`maintaining said embeddable content image in a static position in said
`
`image viewing structure when taking a captured image by the digital imaging
`
`device;
`
`displaying in combination in said image viewing structure a combined
`
`visual image comprising:
`
`said embeddable content image in said static position displayed as
`
`a mask over said captured image;
`
`said captured image provided from said digital imaging device in
`
`real time when taken by the digital imaging device, the captured image
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`selectively positioned relative to said embeddable content image . . . .
`
` Claim 9 of the ’601 patent requires (in part):
`
`displaying in combination in said image viewing structure a combined
`
`visual image comprising:
`
`a captured image provided from said digital imaging device in real
`
`time at a location of taking a photograph;
`
`an embeddable content image provided by said wireless
`
`communication device, said embeddable content image displayed as a
`
`mask over said captured image, said embeddable content image
`
`maintained in a static position in said image viewing structure during the
`
`taking of the photograph . . . .
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`5
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`Claim 1 of the ’662 patent requires (in part):
`
`in conjunction with displaying the user-selected embeddable content
`
`image on the image viewing structure, causing visual content captured in real-
`
`time by a digital imaging device of the digital imaging device at a current location
`
`thereof to be displayed on the image viewing structure in combination with the
`
`user-selected embeddable content image, wherein displaying the user-selected
`
`embeddable content image includes maintaining the user-selected embeddable
`
`content image at a static position within an area of the image viewing structure
`
`independent of the visual content that is within a field of view of the digital
`
`imaging device at the current location and wherein causing the visual content
`
`captured in real-time to be displayed on the image viewing structure in
`
`combination with the user-selected embeddable content image includes causing
`
`the user-selected embeddable content image to be displayed as a mask applied to
`
`the visual content that is being captured in real-time . . . .
`
`And claim 1 of the ’689 patent requires (in part):
`
`after displaying the user-selected embeddable content image on the image
`
`viewing structure, causing visual content captured in real-time by the digital
`
`imaging device at the current location to be displayed on the image viewing
`
`structure in combination with the user-selected embeddable content image,
`
`wherein displaying the user-selected embeddable content image includes
`
`maintaining the user-selected embeddable content image at a static position within
`
`an area of the image viewing structure independent of the visual content that is
`
`being captured in real-time by the digital imaging device such that the user-
`
`6
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`selected embeddable content image remains displayed on the image viewing
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`structure in the static position irrespective of the visual content being captured by
`
`the digital imaging device and wherein causing the visual content captured in real-
`
`time by the digital imaging device at the current location to be displayed on the
`
`image viewing structure in combination with the user-selected embeddable
`
`content image includes causing the user-selected embeddable content image to be
`
`displayed as a mask over the visual content that is being captured in real-time by
`
`the digital imaging device . . . .
`
`17.
`
`The patents-in-suit also introduce the concept of providing embeddable content
`
`(e.g., an electronic digital icon, picture, text, or the like) based on a digital imaging device’s
`
`location. For example, the specification discloses “the embedded digital content is
`
`advantageously selected based on an actual location of the digital imaging device at the time
`
`when the to-be-photographed visual content is captured using the digital imaging device.” See,
`
`e.g., Ex. 4 (’873 patent), 4:21-25. This concept, which is reflected (for example) in claim 1 of
`
`the ’689 patent, claim 2 of the ’662 patent, claim 13 of the ’601 patent, and claim 6 of the ’873
`
`patent, was not well-understood, routine, or conventional in the field of digital photography
`
`when Mr. Crutchfield and Mr. Lipps filed U.S. Provisional Application Serial No. 61/966,161 or
`
`U.S. Patent Application No. 14/251,707. That the concept was not well-understood, routine, or
`
`conventional is evidenced by the fact that Defendant did not introduce geofilters (design overlays
`
`that are added on top of a photograph and that are specific to a particular location) into its
`
`Snapchat product until July 2014. See https://www.snap.com/en-US/news/post/introducing-
`
`geofilters.
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`7
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`COUNT I
`
`INFRINGEMENT OF U.S. PATENT NO. 10,489,873
`
`Plaintiff incorporates paragraphs 1 through 17 herein by reference.
`
`This cause of action arises under the patent laws of the United States, and in
`
`18.
`
`19.
`
`particular, 35 U.S.C. §§ 271, et seq.
`
`20.
`
`Plaintiff is the owner of the ’873 patent with all substantial rights to the ’873
`
`patent, including the exclusive right to enforce, sue, and recover damages for past and future
`
`infringement.
`
`21.
`
`The ’873 patent is valid and enforceable and was duly issued in full compliance
`
`with Title 35 of the United States Code.
`
`DIRECT INFRINGEMENT (35 U.S.C. § 271(a))
`
`22.
`
`Defendant has infringed and continues to infringe one or more claims of the ’873
`
`patent in this judicial district and elsewhere in Texas and the United States.
`
`23.
`
`Defendant has infringed and continues to infringe, either by itself or via an agent,
`
`at least claims 1-3 and 5-24 of the ’873 patent by, among other things, testing and using
`
`Snapchat, including (but not limited to) the lens features of Snapchat.
`
`24.
`
`Attached hereto as Exhibit 5, and incorporated herein by reference, is a claim
`
`chart detailing how Snapchat infringes the ʼ873 patent.
`
`25.
`
`Defendant is liable for its infringements of the ’873 patent pursuant to 35 U.S.C.
`
`§ 271.
`
`INDIRECT INFRINGEMENT (INDUCEMENT – 35 U.S.C. § 271(b))
`
`Based on the information presently available to Plaintiff, absent discovery, and in
`
`26.
`
`the alternative and in addition to direct infringement, Plaintiff contends that Defendant has
`
`8
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`indirectly infringed and continues to indirectly infringe one or more claims of the ’873 patent by
`
`inducing direct infringement by end users of Snapchat.
`
`27.
`
`Defendant has knowledge of its infringements and those of Snapchat users based
`
`at least on filing and receipt of this complaint. Upon information and belief, Defendant has also
`
`known about the ’873 patent since before this complaint was filed.
`
`28.
`
`Upon information and belief, Defendant first learned of one or more of the
`
`Pixmarx patents during discussions with Pixmarx, LLC concerning the use of the mark
`
`GEOFILTER between October 2016 and February 2017. At that time Defendant, or its
`
`representative, was aware of www.pixmarx.com, which by October 31, 2016, advertised the
`
`Pixmarx app as allowing users to “ADD GEOFRAMES TO YOUR PHOTOS” and identified the
`
`’689 patent. Over time www.pixmarx.com was updated to identify the other Pixmarx patents.
`
`29.
`
`Defendant also has pre-suit knowledge of the ’873 patent based on information
`
`sent to Defendant in August 2019. On August 22, 2019, Defendant received a marketing
`
`package describing the Pixmarx patent portfolio. The marketing package provided to Defendant
`
`identified U.S. Patent Publication 20090026854, for which a notice of allowance had been issued
`
`and which issued as the ’873 patent, and explained (in part):
`
`The PixMarx patent portfolio includes five (5) patent assets, each directed to
`
`providing downloadable software image geofilters to mobile phone cameras for
`
`use in real-time, when end-users are taking photographs with mobile phones . . . .
`
`Each of these patent assets relates to the increasingly widespread and valuable
`
`practice of providing downloadable software image geofilters that are used in
`
`mobile phone cameras in real-time to provide instant customization when
`
`consumers are snapping photographs with their mobile phones.
`
`9
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`30.
`
`Based on its pre-suit knowledge of the ’873 patent and/or the application that
`
`issued as the ’873 patent, Defendant knew (or should have known) that use of Snapchat infringes
`
`claims of the ’873 patent. Alternatively, and to the extent Defendant contends it did not have
`
`knowledge that use of Snapchat infringed the ’873 patent, Defendant was willfully blind to the
`
`fact. Defendant knew that use of Snapchat was likely to infringe the ’873 patent based at least
`
`on the materials sent to Defendant in August 2019 and deliberately ignored the ’873 patent
`
`and/or the proper scope and application of the ’873 patent’s claims to Snapchat.
`
`31.
`
`Despite having knowledge (or being willfully blind to the fact) that use of
`
`Snapchat infringes the ’873 patent, Defendant has specifically intended (and continues to
`
`specifically intend) for persons who acquire and use Snapchat, including Defendant’s customers
`
`and end consumers, to use Snapchat in a way that results in infringement of the ’873 patent,
`
`including at least claims 1-3 and 5-24, and Defendant knew or should have known that its actions
`
`have induced, and continue to induce, infringement.
`
`32.
`
`Defendant instructs and encourages users to use Snapchat in a manner that
`
`infringes the ’873 patent. For example, Defendant provides users with Snapchat, and
`
`Defendant’s product support webpage (https://support.snapchat.com/en-US/article/face-world-
`
`lenses) provides end users with detailed instructions on how to use the “lens” features of
`
`Snapchat in a way that results in infringement of the ’873 patent. Defendant also advertises and
`
`promotes use of Snapchat in a manner that results in infringement of the ’873 patent by
`
`publishing instructional materials on line (e.g., Filters and Lenses on Snapchat published by
`
`Defendant on YouTube, available at https://www.youtube.com/watch?v=PN76vow1TUc).
`
`33.
`
`Plaintiff has been damaged as a result of Defendant’s infringing conduct
`
`described in this Count. Defendant is, thus, liable to Plaintiff in an amount that adequately
`
`10
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`compensates Plaintiff for Defendant’s infringements, which, by law, cannot be less than a
`
`reasonable royalty, together with interest and costs as fixed by this Court under 35 U.S.C. § 284.
`
`COUNT II
`INFRINGEMENT OF U.S. PATENT NO. 10,102,601
`
`Plaintiff incorporates paragraphs 1 through 33 herein by reference.
`
`This cause of action arises under the patent laws of the United States, and in
`
`34.
`
`35.
`
`particular, 35 U.S.C. §§ 271, et seq.
`
`36.
`
`Plaintiff is the owner of the ’601 patent with all substantial rights to the ’601
`
`patent including the exclusive right to enforce, sue, and recover damages for past and future
`
`infringement.
`
`37.
`
`The ’601 patent is valid and enforceable and was duly issued in full compliance
`
`with Title 35 of the United States Code.
`
`DIRECT INFRINGEMENT (35 U.S.C. § 271(a))
`
`38.
`
`Defendant has infringed and continues to infringe one or more claims of the ’601
`
`patent in this judicial district and elsewhere in Texas and the United States.
`
`39.
`
`Defendant has infringed and continues to infringe, either by itself or via an agent,
`
`claims 1-16 of the ’601 patent by, among other things, testing and using Snapchat, including (but
`
`not limited to) the lens features of Snapchat.
`
`40.
`
`Attached hereto as Exhibit 6, and incorporated herein by reference, is a claim
`
`chart detailing how Snapchat infringes the ʼ601 patent.
`
`41.
`
`Defendant is liable for its infringements of the ’601 patent pursuant to 35 U.S.C.
`
`§ 271.
`
`INDIRECT INFRINGEMENT (INDUCEMENT – 35 U.S.C. § 271(b))
`
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`11
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`42.
`
`Based on the information presently available to Plaintiff, absent discovery, and in
`
`the alternative and in addition to direct infringement, Plaintiff contends that Defendant has
`
`indirectly infringed and continues to indirectly infringe one or more claims of the ’601 patent by
`
`inducing direct infringement by end users of Snapchat.
`
`43.
`
`Defendant has knowledge of its infringements and those of Snapchat users based
`
`at least on filing and receipt of this complaint. Upon information and belief, Defendant has also
`
`known about the ’601 patent since before this complaint was filed.
`
`44.
`
`Upon information and belief, Defendant first learned of one or more of the
`
`Pixmarx patents during discussions with Pixmarx, LLC concerning the use of the mark
`
`GEOFILTER between October 2016 and February 2017. At that time Defendant, or its
`
`representative, was aware of www.pixmarx.com, which by October 31, 2016, advertised the
`
`Pixmarx app as allowing users to “ADD GEOFRAMES TO YOUR PHOTOS” and identified the
`
`’689 patent. Over time www.pixmarx.com was updated to identify the other Pixmarx patents.
`
`45.
`
`Defendant also has pre-suit knowledge of the ’601 patent based on information
`
`sent to Defendant in August 2019. On August 22, 2019, Defendant received a marketing
`
`package describing the Pixmarx patent portfolio. The marketing package provided to Defendant
`
`identified the ’601 patent and explained (in part):
`
`The PixMarx patent portfolio includes five (5) patent assets, each directed to
`
`providing downloadable software image geofilters to mobile phone cameras for
`
`use in real-time, when end-users are taking photographs with mobile phones . . . .
`
`Each of these patent assets relates to the increasingly widespread and valuable
`
`practice of providing downloadable software image geofilters that are used in
`
`12
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`mobile phone cameras in real-time to provide instant customization when
`
`consumers are snapping photographs with their mobile phones.
`
`46.
`
`Based on its pre-suit knowledge of the ’601 patent and/or the application that
`
`issued as the ’601 patent, Defendant knew (or should have known) that use of Snapchat infringes
`
`claims of the ’601 patent. Alternatively, and to the extent Defendant contends it did not have
`
`knowledge that use of Snapchat infringed the ’601 patent, Defendant was willfully blind to the
`
`fact. Defendant knew that use of Snapchat was likely to infringe the ’601 patent based at least
`
`on the materials sent to Defendant in August 2019 and deliberately ignored the ’601 patent
`
`and/or the proper scope and application of the ’601 patent’s claims to Snapchat.
`
`47.
`
`Despite having knowledge (or being willfully blind to the fact) that use of
`
`Snapchat infringes the ’601 patent, Defendant has specifically intended (and continues to
`
`specifically intend) for persons who acquire and use Snapchat, including Defendant’s customers
`
`and end consumers, to use Snapchat in a way that results in infringement of the ’601 patent,
`
`including at least claims 1-16, and Defendant knew or should have known that its actions have
`
`induced, and continue to induce, infringement.
`
`48.
`
`Defendant instructs and encourages users to use Snapchat in a manner that
`
`infringes the ’601 patent. For example, Defendant provides users with Snapchat, and
`
`Defendant’s product support webpage (https://support.snapchat.com/en-US/article/face-world-
`
`lenses) provides users with detailed instructions on how to use the “lens” features of Snapchat in
`
`a way that results in infringement of the ’601 patent. Defendant also advertises and promotes
`
`use of Snapchat in a manner that results in infringement of the ’601 patent by publishing
`
`instructional materials on line (e.g., Filters and Lenses on Snapchat published by Defendant on
`
`YouTube, available at https://www.youtube.com/watch?v=PN76vow1TUc).
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`13
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`49.
`
`Plaintiff has been damaged as a result of Defendant’s infringing conduct
`
`described in this Count. Defendant is, thus, liable to Plaintiff in an amount that adequately
`
`compensates Plaintiff for Defendant’s infringements, which, by law, cannot be less than a
`
`reasonable royalty, together with interest and costs as fixed by this Court under 35 U.S.C. § 284.
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`COUNT III
`INFRINGEMENT OF U.S. PATENT NO. 9,792,662
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`Plaintiff incorporates paragraphs 1 through 49 herein by reference.
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`This cause of action arises under the patent laws of the United States, and in
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`50.
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`51.
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`particular, 35 U.S.C. §§ 271, et seq.
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`52.
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`Plaintiff is the owner of the ’662 patent with all substantial rights to the ’662
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`patent including the exclusive right to enforce, sue, and recover damages for past and future
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`infringement.
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`53.
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`The ’662 patent is valid and enforceable and was duly issued in full compliance
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`with Title 35 of the United States Code.
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`DIRECT INFRINGEMENT (35 U.S.C. § 271(a))
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`54.
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`Defendant has infringed and continues to infringe one or more claims of the ’662
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`patent in this judicial district and elsewhere in Texas and the United States.
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`55.
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`Defendant has infringed and continues to infringe, either by itself or via an agent,
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`at least claims 1, 2, 6, 8-10, 12, 13, and 16 of the ’662 patent by, among other things, testing and
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`using Snapchat, including (but not limited to) the lens features of Snapchat.
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`56.
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`Attached hereto as Exhibit 7, and incorporated herein by reference, is a claim
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`chart detailing how Snapchat infringes the ʼ662 patent.
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`57.
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`Defendant is liable for its infringements of the ’662 patent pursuant to 35 U.S.C.
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`§ 271.
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`INDIRECT INFRINGEMENT (INDUCEMENT – 35 U.S.C. § 271(b))
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`Based on the information presently available to Plaintiff, absent discovery, and in
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`58.
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`the alternative and in addition to direct infringement, Plaintiff contends that Defendant has
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`indirectly infringed and continues to indirectly infringe one or more claims of the ’662 patent by
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`inducing direct infringement by end users of Snapchat.
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`59.
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`Defendant has knowledge of its infringements and those of Snapchat users based
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`at least on filing and receipt of this complaint. Upon information and belief, Defendant has also
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`known about the ’662 patent since before this complaint was filed.
`
`60.
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`Upon information and belief, Defendant first learned of one or more of the
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`Pixmarx patents during discussions with Pixmarx, LLC concerning the use of the mark
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`GEOFILTER between October 2016 and February 2017. At that time Defendant, or its
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`representative, was aware of www.pixmarx.com, which by October 31, 2016, advertised the
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`Pixmarx app as allowing users to “ADD GEOFRAMES TO YOUR PHOTOS” and identified the
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`’689 patent. Over time www.pixmarx.com was updated to identify the other Pixmarx patents.
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`61.
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`Defendant also has pre-suit knowledge of the ’662 patent based on information
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`sent to Defendant in August 2019. On August 22, 2019, Defendant received a marketing
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`package describing the Pixmarx patent portfolio. The marketing package provided to Defendant
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`identified the ’662 patent and explained (in part):
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`The PixMarx patent portfolio includes five (5) patent assets, each directed to
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`providing downloadable software image geofilters to mobile phone cameras for
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`use in real-time, when end-users are taking photographs with mobile phones . . . .
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`Each of these patent assets relates to the increasingly widespread and valuable
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`practice of providing downloadable software image geofilters that are used in
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`mobile phone cameras in real-time to provide instant customization when
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`consumers are snapping photographs with their mobile phones.
`
`62.
`
`Based on its pre-suit knowledge of the ’662 patent and/or the application that
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`issued as the ’662 patent, Defendant knew (or should have known) that use of Snapchat infringes
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`claims of the ’662 patent. Alternatively, and to the extent Defendant contends it did not have
`
`knowledge that use of Snapchat infringed the ’662 patent, Defendant was willfully blind to the
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`fact. Defendant knew that use of Snapchat was likely to infringe the ’662 patent based at least
`
`on the materials sent to Defendant in August 2019 and deliberately ignored the ’662 patent
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`and/or the proper scope and application of the ’662 patent’s claims to Snapchat.
`
`63.
`
`Despite having knowledge (or being willfully blind to the fact) that use of
`
`Snapchat infringes the ’662 patent, Defendant has specifically intended (and continues to
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`specifically intend) for persons who acquire and use Snapchat, including Defendant’s customers
`
`and end consumers, to use Snapchat in a way that results in infringement of the ’662 patent,
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`including at least claims 1, 2, 6, 8-10, 12, 13, and 16, and Defendant knew or should have known
`
`that its actions have induced, and continue to induce, infringement.
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`64.
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`Defendant instructs and encourages users to use Snapchat in a manner that
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`infringes the ’662 patent. For example, Defendant provides users with Snapchat, and
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`Defendant’s product support webpage (https://support.snapchat.com/en-US/article/face-world-
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`lenses) provides users with detailed instructions on how to use the “lens” features of Snapchat in
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`a way that results in infringement of the ’662 patent. Defendant also advertises and promotes
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`use of Snapchat in a manner that results in infringement of the ’662 patent by publishing
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`instructional materials on line (e.g., Filters and Lenses on Snapchat published by Defendant on
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`YouTube, available at https://www.youtube.com/watch?v=PN76vow1TUc).
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`65.
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`Plaintiff has been damaged as a result of Defendant’s infringing conduct
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`described in this Count. Defendant is, thus, liable to Plaintiff in an amount that adequately
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`compensates Plaintiff for Defendant’s infringements, which, by law, cannot be less than a
`
`reasonable royalty, together with interest and costs as fixed by this Court under 35 U.S.C. § 284.
`
`COUNT IV
`INFRINGEMENT OF U.S. PATENT NO. 9,477,689
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`Plaintiff incorporates paragraphs 1 through 65 herein by reference.
`
`This cause of action arises under the patent laws of the United States, and in
`
`66.
`
`67.
`
`particular, 35 U.S.C. §§ 271, et seq.
`
`68.
`
`Plaintiff is the owner of the ’689 patent with all substantial rights to the ’689
`
`patent including the exclusive right to enforce, sue, and recover damages for past and future
`
`infringement.
`
`69.
`
`The ’689 patent is valid and enforceable and was duly issued in full compliance
`
`with Title 35 of the United States Code.
`
`DIRECT INFRINGEMENT (35 U.S.C. § 271(a))
`
`70.
`
`Defendant has infringed and continues to infringe one or more claims of the ’689
`
`patent in this judicial district and elsewhere in Texas and the United States.
`
`71.
`
`Defendant has infringed and continues to infringe, either by itself or via an agent,
`
`at least claims 1, 6, 8, 10, 12, and 16 of the ’689 patent by, among other things, testing and using
`
`Snapchat, including (but not limited to) the lens features of Snapchat.
`
`