Case 1:21-cv-00027-LY Document 1 Filed 01/08/21 Page 1 of 9
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`Austin Division
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`Case No. 1:21-cv-00027
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`JURY TRIAL DEMANDED
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`Plaintiff,
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`MEDIA CHAIN, LLC,
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`v.
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`ROKU, INC.,
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`Defendant.
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`COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff, Media Chain, LLC (“Media Chain” or “Plaintiff”), sues Roku, Inc. (“Roku” or
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`“Defendant”), for patent infringement, and alleges:
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`NATURE OF THE ACTION
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`1.
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`Media Chain owns United States Patent Nos. 9,715,581 B1 (the ’581 Patent”),
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`9,898,590 B2 (the “’590 Patent”), 10,489,560 B2 (the “’560 Patent”), 10,515,191 B2 (the “’191
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`Patent”), 10,860,691 B2 (the “’691 Patent”), and 10,885,154 B2 (the “’154 Patent”) (the ’581
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`Patent, ’590 Patent, ’560 Patent, ’191 Patent, ’691 Patent, and ’154 Patent, together the
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`“Patents”) by assignment. See Composite Exhibit A.
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`2.
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`The Abstract of the Patents state:
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`Systems and methods for monetizing the reproduction of digital media
`content for the rights-holders of the digital media content. Embodiments
`of the present disclosure relate to determining whether a user of a media
`content item has a license to reproduce the media content item. In one
`embodiment, the media content item may be reproduced when the user is
`licensed. The user is prompted to select to acquire a license to reproduce
`the media content item or to decline the license to reproduce the media
`content item when the user is not licensed. Further embodiments
`determine whether a user may receive a license when the user wishes to
`acquire a license. In an embodiment, the user is declined a license when
`not approved for the license.
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`1
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`Case 1:21-cv-00027-LY Document 1 Filed 01/08/21 Page 2 of 9
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`Media Chain was formed in 2018 by Christopher A. Estes to own and
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`3.
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`commercialize the Patents, issued on his inventions.
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`4.
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`Through this Complaint, Media Chain alleges direct patent infringement, in
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`violation of 35 U.S.C. § 271, against Roku, as set forth below in Counts I-VI.
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`PARTIES
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`5.
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`Media Chain is a Delaware limited liability company, and maintains its principal
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`place of business in Miami-Dade County, Florida.
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`6.
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`Roku is a Delaware corporation, and maintains a corporate headquarters at 1155
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`Coleman Ave., San Jose, California 95110.
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`7.
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`Roku also maintains and operates out of several other offices located across the
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`United States, including an office located at 9606 N. Mopac Expressway, Suite 400, Austin,
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`Texas 78759 (Roku’s “Austin Office”).
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`8.
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`Upon information and belief, the Austin Office is a physical place of business in
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`this district that is owned or leased by Roku, and over 100 Roku employees work out of the
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`Austin Office.
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`9.
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`Roku has been registered as a foreign for-profit corporation with the Texas
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`Secretary of State since 2014.
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`JURISDICTION AND VENUE
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`10.
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`Pursuant to 28 U.S.C. §1338(a), this Court has original jurisdiction over the
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`subject matter of this action because this is an action arising under the patent laws of the United
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`States, including 35 U.S.C. § 1 et. seq.
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`2
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`Case 1:21-cv-00027-LY Document 1 Filed 01/08/21 Page 3 of 9
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`11.
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`This Court has personal jurisdiction over Roku because Roku is engaged in
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`substantial and not isolated activities within Texas, and it has continuous and systematic contacts
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`with Texas.
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`12.
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`Roku committed at least one of the acts of infringement alleged herein in Texas,
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`and this judicial district.
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`13.
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`Pursuant to 28 U.S.C. §1400(b), venue is proper in the Western District of Texas,
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`Austin Division, because it is where Roku has committed acts of infringement and has a regular
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`and established place of business.
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`GENERAL ALLEGATIONS
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`14.
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`The inventions claimed by the Patents represent a significant advance over the
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`prior art.
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`15.
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`By reviewing publically available information including, but not limited to, the
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`articles, websites, and other materials or relevant portions thereof attached hereto as Composite
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`Exhibit B, Media Chain learned that Roku infringed at least: claim 1 of the ’581 Patent; claim 1
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`of the ’590 Patent; claim 1 of the ’560 Patent; claim 1 of the ’191 Patent; claim 1 of the ’691
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`Patent; and claim 1 of the ’154 Patent through its products and services.
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`16. Media Chain has prepared preliminary claim charts (“Preliminary Claim Charts”),
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`which are attached hereto as Composite Exhibit C, and are incorporated by reference herein.
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`17.
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`The Preliminary Claim Charts allege and explain how Roku performs each and
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`every step of one or more claims of the Patents.
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`18.
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`To the extent that Media Chain is considered not to perform any of the claimed
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`method steps itself, Roku directs or controls another to perform such steps.
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`3
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`19.
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`To the extent that any of the claimed method steps are considered to be performed
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`by another entity, upon information and belief, Roku has contracted with such entity to perform
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`such steps pursuant to an agreement, and Roku conditions payment to such entity upon such
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`entity’s performance of such steps.
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`20.
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`All conditions precedent to bringing this action have occurred or been waived.
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`21. Media Chain has retained counsel to represent it in this matter and is obligated to
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`pay its counsel a reasonable fee for its services.
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`COUNT I: DIRECT INFRINGEMENT OF THE ’581 PATENT
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`22.
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`The allegations contained in paragraphs 1 – 21 above are hereby re-alleged as if
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`fully set forth herein.
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`23.
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`As set forth in Exhibit C, in violation of 35 U.S.C. § 271, and in connection with
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`its products and services in the United Sates, Roku infringed the ’581 Patent either literally or
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`under the doctrine of equivalents by performing each and every step set forth in at least claim 1
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`of the ’581 Patent.
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`24. Media Chain has been damaged by Roku’s infringement.
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`WHEREFORE, Media Chain respectfully requests the Court enter a judgment:
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`A.
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`B.
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`Finding that Defendant infringed the ’581 Patent;
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`Awarding Media Chain the greater of (a) damages adequate to compensate for the
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`patent infringement that has occurred plus any enhancement of these damages the Court deems
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`just under 35 U.S.C. § 284, or (b) a reasonable royalty;
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`C.
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`D.
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`Awarding Media Chain pre-judgment interest and costs;
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`Enjoining Roku and its agents, servants, employees, attorneys, and all other
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`persons acting in concert or in participation with Roku from infringing the ’581 Patent; and
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`4
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`Case 1:21-cv-00027-LY Document 1 Filed 01/08/21 Page 5 of 9
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`E.
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`Awarding Media Chain all such other and further relief as the Court deems just
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`and proper.
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`COUNT II: DIRECT INFRINGEMENT OF THE ’590 PATENT
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`25.
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`The allegations contained in paragraphs 1 – 21 above are hereby re-alleged as if
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`fully set forth herein.
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`26.
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`As set forth on Exhibit C, in violation of 35 U.S.C. § 271, and in connection with
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`its Roku products and services in the United Sates, Roku infringed the ’590 Patent either literally
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`or under the doctrine of equivalents by performing each and every step set forth in at least claim
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`1 of the ’590 Patent.
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`27. Media Chain has been damaged by Roku’s infringement.
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`WHEREFORE, Media Chain respectfully requests the Court enter a judgment:
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`A.
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`B.
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`Finding that Roku infringed the ’590 Patent;
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`Awarding Media Chain the greater of (a) damages adequate to compensate for the
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`patent infringement that has occurred plus any enhancement of these damages the Court deems
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`just under 35 U.S.C. § 284, or (b) a reasonable royalty;
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`C.
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`D.
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`Awarding Media Chain pre-judgment interest and costs;
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`Enjoining Roku and its agents, servants, employees, attorneys, and all other
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`persons acting in concert or in participation with Roku from infringing the ’590 Patent; and
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`E.
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`Awarding Media Chain all such other and further relief as the Court deems just
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`and proper.
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`COUNT III: DIRECT INFRINGEMENT OF THE ’560 PATENT
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`28.
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`The allegations contained in paragraphs 1 – 21 above are hereby re-alleged as if
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`fully set forth herein.
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`Case 1:21-cv-00027-LY Document 1 Filed 01/08/21 Page 6 of 9
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`29.
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`As set forth on Exhibit C, in violation of 35 U.S.C. § 271, and in connection with
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`its Roku products and services in the United Sates in the United Sates, Roku infringed the ’560
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`Patent either literally or under the doctrine of equivalents by performing each and every step set
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`forth in at least claims 1 of the ’560 Patent.
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`30. Media Chain has been damaged by Roku’s infringement.
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`WHEREFORE, Media Chain respectfully requests the Court enter a judgment:
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`A.
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`B.
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`Finding that Roku infringed the ’560 Patent;
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`Awarding Media Chain the greater of (a) damages adequate to compensate for the
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`patent infringement that has occurred plus any enhancement of these damages the Court deems
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`just under 35 U.S.C. § 284, or (b) a reasonable royalty;
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`C.
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`D.
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`Awarding Media Chain pre-judgment interest and costs;
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`Enjoining Roku and its agents, servants, employees, attorneys, and all other
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`persons acting in concert or in participation with Roku from infringing the ’560 Patent; and
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`E.
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`Awarding Media Chain all such other and further relief as the Court deems just
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`and proper.
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`COUNT IV: DIRECT INFRINGEMENT OF THE ’191 PATENT
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`31.
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`The allegations contained in paragraphs 1 – 21 above are hereby re-alleged as if
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`fully set forth herein.