`KT IMAGING USA, LLC,
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`Plaintiff
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`-against-
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`ACER AMERICA CORPORATION and
`ACER INC.,
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`Case 6:20-cv-00299-ADA Document 1 Filed 04/20/20 Page 1 of 8
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`Civil Action No.: 6:20-cv-299
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`Jury Trial Demanded
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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 Acer America Corporation and Acer Inc. (collectively “Acer” or “Defendants”),
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`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 Acer Inc. is a corporation organized and under the
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`laws of Taiwan, with a principal place of business at 1F, 88, Sec. 1, Xintai 5th Rd., Xizhi, New
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`Taipei City 221, Taiwan. On information and belief, Acer, Inc. can be served through its resident
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`agent for service of process in Texas: Arthur Gentry, 5105 34th St., Lubbock, TX 79414.
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`3.
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`On information and belief, Defendant Acer America Corporation is a corporation
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`organized under the laws of California with a registered address at 333 W San Carlos St, Ste 1500,
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`1
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`Case 6:20-cv-00299-ADA Document 1 Filed 04/20/20 Page 2 of 8
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`San Jose Ca 95110.
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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 Acer of claims of U.S. Patent No. 8,004,602; and U.S. Patent No. 8,314,481
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`(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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`Acer Inc. is subject to personal jurisdiction of this Court because, inter alia, on information
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`and belief, independently and/or via its agents, (i) Acer Inc. sells and offers for sale its products in
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`Texas, (ii) Acer Inc. sells and offers for sale its products by using distributors and sales
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`representatives located in Texas; and/or (iii) Acer Inc. places its products in the stream of
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`commerce with intent or knowledge that those products would end up in Texas. For example, Acer
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`Inc. sells its products including its chromebooks and tablets (directly or through agents) in Texas
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`and/or to residents of Texas.
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`7.
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`Acer America Corporation is subject to personal jurisdiction of this Court because, inter
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`alia, on information and belief, independently and/or via its agents, (i) Acer America Corporation
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`sells and offers for sale its products in Texas, (ii) Acer America Corporation sells and offers for
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`sale its products by using distributors and sales representatives located in Texas; and/or (iii) Acer
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`America Corporation places its products in the stream of commerce with intent or knowledge that
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`those products would end up in Texas. For example, Acer Inc. sells its products including its
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`chromebooks and tablets (directly or through agents) in Texas and/or to residents of Texas.
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`8.
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`Venue is proper in this district under 28 U.S.C. § 1391(c) because, inter alia, Acer Inc. is
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`a foreign entity.
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`9.
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`Venue is proper in this district under 35 U.S.C. § 1400(b) because Acer America
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`2
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`Case 6:20-cv-00299-ADA Document 1 Filed 04/20/20 Page 3 of 8
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`Corporation operates a regular and established place of business, which includes at least a repair
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`and service facility within the Western District of Texas located at 1394 Eberhardt Rd, Temple,
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`Texas 76504 and commits acts of infringement in this judicial district.
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`BACKGROUND
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`10.
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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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`11.
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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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`12.
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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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`13.
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`Acer has infringed and continues to infringe the Patents-in-Suit. For example, as set forth
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`below, Acer Chromebook 15.6 HD and Acer Iconia One 10 and all other products with
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`substantially similar imaging sensors, including the products identified in Attachment A
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`(“Accused Products”) infringe claims of the Patents-in-Suit.
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`NOTICE
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`14.
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`By letter dated February 6, 2020, KTI notified Acer of the existence of the Patents-in-Suit,
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`and of infringement thereof by Acer. KTI’s letter identified exemplary infringing Acer products
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`and an exemplary infringed claim for each of these patents. KTI’s February 6, 2020 letter invited
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`Acer to hold a licensing discussion with KTI.
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`15.
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`Acer has had notice of the ’481 Patent at least as of the time of filing of this Complaint.
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`3
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`Case 6:20-cv-00299-ADA Document 1 Filed 04/20/20 Page 4 of 8
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`COUNT I: INFRINGEMENT OF THE ’602 PATENT BY ACER
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`Plaintiff incorporates the preceding paragraphs as if fully set forth herein.
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`On information and belief, Acer has infringed the ’602 Patent pursuant to 35 U.S.C. §
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`16.
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`17.
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`271(a), literally or under the doctrine of equivalents, by making, using, offering to sell, selling in
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`the United States, or importing into the United States the Accused Products.
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`18.
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`For example, on information and belief, Acer has infringed and continues to infringe at
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`least claim 1 of the ’602 Patent by including an image sensor structure with an integrated lens
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`module in the Accused Products. See Ex. 1 (Iconia One 10 Rear Facing Image Sensor Module).
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`The image sensor structure in the Accused Products comprises a chip having a plurality of light-
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`sensing elements arranged on a light sensing area of a first surface of the chip, a plurality of first
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`conducting pads arranged around the light-sensing area and electrically connected to the light-
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`sensing elements, and at least one conducting channel passing through the chip and electrically
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`connected to the first conducting pads at one end as well as extending along with a second surface
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`of the chip. See Exs. 1, 2-4 (all Iconia One 10 Rear Facing Image Sensor Module). The image
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`sensor structure in the Accused Products comprises a lens module comprising a holder having a
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`through hole and a contact surface on a bottom of the holder, wherein the contact surface is
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`combined with the first surface, and at least one lens completely embedded inside the through hole
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`and integrated with the holder. See Exs. 1, 4.
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`19.
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`On information and belief, Acer has induced infringement of the ’602 Patent pursuant to
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`35 U.S.C. § 271(b), by actively and knowingly inducing, directing, causing, and encouraging
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`others, including, but not limited to, its partners, resellers, distributers, customers, and end users,
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`to make, use, sell, and/or offer to sell in the United States, and/or import into the United States,
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`the Accused Products by, among other things, providing the accused products and incorporated
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`image sensor technology, specifications, instructions, manuals, advertisements, marketing
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`4
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`Case 6:20-cv-00299-ADA Document 1 Filed 04/20/20 Page 5 of 8
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`materials, and technical assistance relating to the installation, set up, use, operation, and
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`maintenance of said products.
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`20.
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`On information and belief, Acer has committed the foregoing infringing activities without
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`a license.
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`21.
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`On information and belief, Acer knew the ’602 Patent existed, knew of an exemplary
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`infringed claim of the ’602 Patent, and knew of exemplary infringing Acer 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 II: INFRINGEMENT OF THE ’481 PATENT BY ACER
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`Plaintiff incorporates the preceding paragraphs as if fully set forth herein.
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`On information and belief, Acer has infringed the ’481 Patent pursuant to 35 U.S.C. §
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`22.
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`23.
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`271(a), literally or under the doctrine of equivalents, by making, using, offering to sell, selling in
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`the United States, or importing into the United States the Accused Products.
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`24.
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`For example, on information and belief, Acer has infringed and continues to infringe at
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`least claim 1 of the ’481 Patent by including a substrate structure for an image sensor package in
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`each of the Accused Products. See Ex. 5 (Acer Chromebook 15.6 HD Front Facing Image Sensor
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`Module). See also Exs. 6-8. The substrate structure in the Accused Products comprises a bottom
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`base having an upper surface formed with a plurality of first electrodes, and a lower surface formed
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`with a plurality of second electrodes, wherein an insulation layer is coated between first electrodes
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`and in direct surface contact with the upper surface of the bottom base. See Ex. 5. The substrate
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`structure in the Accused Products comprises a frame layer arranged on and in direct surface contact
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`with the first electrodes and the insulation layer to form a cavity together with the bottom base,
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`wherein the insulation layer is interposed between the bottom base and the frame layer. See Ex.
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`5.
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`5
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`Case 6:20-cv-00299-ADA Document 1 Filed 04/20/20 Page 6 of 8
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`25.
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`On information and belief, Acer has induced infringement of the ’481 Patent pursuant to
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`35 U.S.C. § 271(b), by actively and knowingly inducing, directing, causing, and encouraging
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`others, including, but not limited to, its partners, resellers, distributers, customers, and end users,
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`to make, use, sell, and/or offer to sell in the United States, and/or import into the United States,
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`the Accused Products by, among other things, providing the accused products and incorporated
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`image sensor technology, specifications, instructions, manuals, advertisements, marketing
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`materials, and technical assistance relating to the installation, set up, use, operation, and
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`maintenance of said products.
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`26.
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`On information and belief, Acer has committed the foregoing infringing activities without
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`a license.
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`WHEREFORE, KTI prays for judgment in its favor against the Acer 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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`D.
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`E.
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`Entry of judgment in favor of KTI against Acer on all counts;
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`Entry of judgment that Acer has infringed the Patent-in-Suit;
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`Entry of judgment that Acer’s infringement of the Patents-in-Suit has been willful;
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`An order permanently enjoining Acer from infringing the Patent-in-Suit;
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`Award of compensatory damages adequate to compensate KTI for Acer’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 Acer pursuant to 35
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`U.S.C. § 285;
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`G.
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`KTI’s costs;
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`6
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`Case 6:20-cv-00299-ADA Document 1 Filed 04/20/20 Page 7 of 8
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`H.
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`I.
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`Pre-judgment and post-judgment interest on KTI’s award; and
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`All such other and further relief as the Court deems just or equitable.
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`DEMAND FOR JURY TRIAL
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`Pursuant to Rule 38 of the Fed. R. Civ. Proc., Plaintiff hereby demands trial by jury in
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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
`(pro hac vice to be filed)
`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
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`7
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`Case 6:20-cv-00299-ADA Document 1 Filed 04/20/20 Page 8 of 8
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`Andrey Belenky
`abelenky@kblit.com
`KHEYFITS BELENKY LLP
`1140 Avenue of the Americas, 9th Floor
`New York, NY 10036
`Tel: 212-203-5399
`Fax: 212-203-5399
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`Attorneys for Plaintiff
`KT Imaging USA, LLC
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`8
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