Case 6:20-cv-00819 Document 1 Filed 09/08/20 Page 1 of 11
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`Case No. 6:20-cv-0819
`
`Patent Case
`
`Jury Trial Demanded
`
`
`FLEXIWORLD TECHNOLOGIES, INC.,
`
`
` Plaintiff,
`
`v.
`
`ROKU INC.,
` Defendant.
`
`
`
`
`
`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff Flexiworld Technologies, Inc., files this Original Complaint for patent
`
`infringement against Roku Inc. alleging as follows:
`
`NATURE OF THE SUIT
`
`1.
`
`This is a claim for patent infringement arising under the patent laws of the United
`
`States, Title 35 of the United States Code.
`
`THE PARTIES
`
`2.
`
`Plaintiff Flexiworld Technologies, Inc. (“Plaintiff” or “Flexiworld”) is a
`
`Washington corporation with its principal place of business at 2716 SE 169th Ave Q147,
`
`Vancouver, WA.
`
`3.
`
`Defendant Roku Inc. (“Roku”) is a Delaware corporation with a principal place
`
`of business located at 9606 N. Mopac Expressway, Suite 400, Austin, Texas 78759.
`
`JURISDICTION AND VENUE
`
`4.
`
`This action arises under the patent laws of the United States, 35 U.S.C. § 101, et
`
`seq. This Court’s jurisdiction over this action is proper under the above statutes, including 35
`
`U.S.C. § 271, et seq., 28 U.S.C. § 1331 (federal question jurisdiction), and § 1338 (jurisdiction
`
`over patent actions).
`
`ORIGINAL COMPLAINT
`
`Page 1 of 11
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`Case No. 6:20-cv-0819
`
`Patent Case
`
`Jury Trial Demanded
`
`
`FLEXIWORLD TECHNOLOGIES, INC.,
`
`
` Plaintiff,
`
`v.
`
`ROKU INC.,
` Defendant.
`
`
`
`
`
`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff Flexiworld Technologies, Inc., files this Original Complaint for patent
`
`infringement against Roku Inc. alleging as follows:
`
`NATURE OF THE SUIT
`
`1.
`
`This is a claim for patent infringement arising under the patent laws of the United
`
`States, Title 35 of the United States Code.
`
`THE PARTIES
`
`2.
`
`Plaintiff Flexiworld Technologies, Inc. (“Plaintiff” or “Flexiworld”) is a
`
`Washington corporation with its principal place of business at 2716 SE 169th Ave Q147,
`
`Vancouver, WA.
`
`3.
`
`Defendant Roku Inc. (“Roku”) is a Delaware corporation with a principal place
`
`of business located at 9606 N. Mopac Expressway, Suite 400, Austin, Texas 78759.
`
`JURISDICTION AND VENUE
`
`4.
`
`This action arises under the patent laws of the United States, 35 U.S.C. § 101, et
`
`seq. This Court’s jurisdiction over this action is proper under the above statutes, including 35
`
`U.S.C. § 271, et seq., 28 U.S.C. § 1331 (federal question jurisdiction), and § 1338 (jurisdiction
`
`over patent actions).
`
`ORIGINAL COMPLAINT
`
`Page 1 of 11
`
`
`
`Case 6:20-cv-00819 Document 1 Filed 09/08/20 Page 2 of 11
`
`5.
`
`Roku is subject to personal jurisdiction in this Court. In particular, this Court has
`
`personal jurisdiction over Roku because Roku has engaged in continuous, systematic, and
`
`substantial activities within this State, including substantial marketing and sales of products within
`
`this State and this District. Furthermore, upon information and belief, this Court has personal
`
`jurisdiction over Roku because Roku has committed acts giving rise to Flexiworld’s claims for
`
`patent infringement within and directed to this District.
`
`6.
`
`Upon information and belief, Roku has committed acts of infringement in this
`
`District and has one or more regular and established places of business within this District under
`
`the language of 28 U.S.C. § 1400(b). Thus, venue is proper in this District under 28 U.S.C.
`
`§ 1400(b).
`
`7.
`
`Roku maintains a permanent physical presence within the Western District of
`
`Texas, conducting business from at least its location 9606 N. Mopac Expressway, Suite 400,
`
`Austin, Texas 78759.
`
`8.
`
`Upon information and belief, Roku has conducted and does conduct substantial
`
`business in this forum, directly and/or through subsidiaries, agents, representatives, or
`
`intermediaries, such substantial business including but not limited to: (i) at least a portion of the
`
`infringements alleged herein; (ii) purposefully and voluntarily placing one or more infringing
`
`products into the stream of commerce with the expectation that they will be purchased by
`
`consumers in this forum; or (iii) regularly doing or soliciting business, engaging in other persistent
`
`courses of conduct, or deriving substantial revenue from goods and services provided to
`
`individuals in Texas and in this judicial district.
`
`9.
`
`Venue is proper in the Western District of Texas pursuant to 28 U.S.C. §1391 and
`
`28 U.S.C. § 1400(b).
`
`ORIGINAL COMPLAINT
`
`Page 2 of 11
`
`
`
`Case 6:20-cv-00819 Document 1 Filed 09/08/20 Page 3 of 11
`
`FLEXIWORLD AND THE PATENTS-IN-SUIT
`
`10.
`
`Flexiworld is a pioneer and leading innovator in the field of pervasive wireless
`
`technologies.
`
`11.
`
`Flexiworld was founded by American scientist and inventor William Ho Chang and
`
`is an innovator engaged in research and development of technologies for wireless applications and
`
`embedded solutions in short-range wireless (e.g., Bluetooth, WiFi) and mobile device markets.
`
`12.
`
`Flexiworld has significantly contributed to the innovation of wireless devices such
`
`as mobile phones, notebooks, PDAs, digital cameras, wireless television, wireless printers, and
`
`wireless audio devices, etc.
`
`13.
`
`Flexiworld was voted the best early stage company in the Pacific Northwest in 2002
`
`and Flexiworld’s business plan was also voted, consecutively, as the top 2 among the “Ten Best”
`
`in 2002 and in 2003 by the Business Journal in Silicon Valley, USA.
`
`14.
`
`Flexiworld’s innovative work and results have been widely recognized in the
`
`industry. The company’s patents have been repeatedly forward cited by major technology
`
`companies worldwide, including by Roku.
`
`15.
`
`Flexiworld develops wireless applications and embedded solutions for the short-
`
`range wireless and mobile device market.
`
`16. William H. Chang, one of the named co-inventors on the Patents-in-Suit, is the
`
`founder and President of Flexiworld. Mr. Chang has been granted over 83 United States patents
`
`and over 97 patents worldwide on his inventions.
`
`17.
`
`Christina Ying Liu, one of the named co-inventors on the Patents-in-suit, is a
`
`Flexiworld shareholder. Ms. Liu has been granted over 66 United States patents and over 76
`
`patents worldwide on her inventions.
`
`ORIGINAL COMPLAINT
`
`Page 3 of 11
`
`
`
`Case 6:20-cv-00819 Document 1 Filed 09/08/20 Page 4 of 11
`
`18.
`
`This cause of action asserts infringement of United States Patent Nos. 8,989,064
`
`(“the ’064 Patent”), 10,346,114 (“the ’114 Patent”), and 10,740,066 (“the ’066 Patent”)
`
`(collectively, the “Patents-in-Suit”).
`
`The ʼ064 Patent
`
`19.
`
`The ’064 Patent, entitled “Wireless controller wire connectable to output devices
`
`such as televisions for accessing digital content and for wireless communication with mobile
`
`information apparatus,” duly and legally issued on March 24, 2015, from U.S. Patent Application
`
`No. 11/929,445, filed on October 30, 2007, naming William Ho Chang and Christina Ying Liu as
`
`the inventors. A true and correct copy of the ’064 Patent is attached hereto as Exhibit 1 and is
`
`incorporated by reference.
`
`20.
`
`21.
`
`The ’064 Patent claims patent-eligible subject matter under 35 U.S.C. § 101.
`
`Flexiworld is the owner and assignee of all rights, title, and interest in and under
`
`the ’064 Patent.
`
`22.
`
`An assignment of the ’064 Patent from inventors Chang and Liu to Flexiworld is
`
`recorded at the PTO at Reel/Frame 029112/0430.
`
`23.
`
`Flexiworld has standing to sue for infringement of the ’064 Patent.
`
`The ʼ114 Patent
`
`24.
`
`The ’114 Patent, entitled “Digital content services over the internet that transmit or
`
`stream protected digital content to mobile devices, display devices, audio output devices, printing
`
`devices, televisions, or television controllers,” duly and legally issued on July 9, 2019, from U.S.
`
`Patent Application No. 15/973,317, filed on May 7, 2018, naming William Ho Chang and Christina
`
`Ying Liu as the inventors. A true and correct copy of the ’114 Patent is attached hereto as Exhibit
`
`2 and is incorporated by reference.
`
`25.
`
`The ’114 Patent claims patent-eligible subject matter under 35 U.S.C. § 101.
`
`ORIGINAL COMPLAINT
`
`Page 4 of 11
`
`
`
`Case 6:20-cv-00819 Document 1 Filed 09/08/20 Page 5 of 11
`
`26.
`
`Flexiworld is the owner and assignee of all rights, title, and interest in and under
`
`the ’072 Patent.
`
`27.
`
`An assignment of the ’114 Patent from inventors Chang and Liu to Flexiworld is
`
`recorded at the PTO at 012325/0362.
`
`28.
`
`Flexiworld has standing to sue for infringement of the ’114 Patent.
`
`The ʼ066 Patent
`
`29.
`
`The ’066 Patent, entitled “Output devices that establish wireless connection with
`
`an information apparatus subsequent to having been wirelessly discovered by the information
`
`apparatus,” duly and legally issued on August 11, 2020, from U.S. Patent Application No.
`
`16/396,460, filed on April 26, 2019 naming William Ho Chang and Christina Ying Liu as the
`
`inventors. A true and correct copy of the ’066 Patent is attached hereto as Exhibit 3 and is
`
`incorporated by reference.
`
`30.
`
`31.
`
`The ’066 Patent claims patent-eligible subject matter under 35 U.S.C. § 101.
`
`Flexiworld is the owner and assignee of all rights, title, and interest in and under
`
`the ’066 Patent.
`
`32.
`
`An assignment of the ’066 Patent from inventors Chang and Liu to Flexiworld is
`
`recorded at the PTO at Reel/Frame 50223/6419 and 50436/8189.
`
`33.
`
`34.
`
`Flexiworld has standing to sue for infringement of the ’066 Patent.
`
`On information and belief, with respect to each Patent-in-Suit Flexiworld has
`
`complied with the requirements of 35 U.S.C. § 287.
`
`35.
`
`36.
`
`Roku has not obtained a license to any of the Patents-in-Suit.
`
`Roku does not have Flexiworld’s permission to make, use, sell, offer to sell, or
`
`import products that are covered by one or more claims of any of the Patents-in-Suit.
`
`ORIGINAL COMPLAINT
`
`Page 5 of 11
`
`
`
`Case 6:20-cv-00819 Document 1 Filed 09/08/20 Page 6 of 11
`
`37.
`
`Roku needs to obtain a license to the Patents-in-Suit and cease its ongoing
`
`infringement of Flexiworld’s patent rights.
`
`GENERAL ALLEGATIONS
`
`38.
`
`Roku makes, uses, sells, offers to sell, and/or imports into the United States
`
`products as claimed in each of the Patents-in-Suit.
`
`39.
`
`Roku makes, uses, sells, offers to sell, and/or imports into the United States
`
`products that infringe at least one claim of one or more of the Patents-in-Suit, including but not
`
`limited to its Express, Express+, Premiere, Streaming Stick, Streaming Stick+, and Ultra products
`
`(hereinafter, collectively, “Roku Devices”).
`
`40.
`
`Roku has infringed and continues to infringe (literally and/or under the doctrine of
`
`equivalents), directly, indirectly, and/or through subsidiaries, agents, representatives, or
`
`intermediaries, one or more claims of each of the Patents-in-Suit by making, using, importing,
`
`testing, supplying, causing to be supplied, selling, and/or offering for sale in the United States its
`
`Roku Devices.
`
`41.
`
`Roku’s customers have directly infringed and continue to directly infringe the
`
`Patents-in-Suit by using the Roku Devices purchased from Roku. Through its product manuals
`
`and/or sales and marketing activities, Roku solicits, instructs, encourages, and aids and abets its
`
`customers to purchase and use the Roku Devices in an infringing way.
`
`42.
`
`43.
`
`Roku has knowledge of the Patents-in-Suit at least as of the filing of this lawsuit.
`
`Roku’s ongoing actions are with specific intent to cause infringement of one or
`
`more claims of each of the Patents-in-Suit.
`
`ORIGINAL COMPLAINT
`
`Page 6 of 11
`
`
`
`Case 6:20-cv-00819 Document 1 Filed 09/08/20 Page 7 of 11
`
`44.
`
`Further discovery may reveal earlier knowledge of one or more of the Patents-in-
`
`Suit, which would provide additional evidence of Roku’s specific intent and/or willful blindness
`
`with respect to infringement.
`
`45.
`
`Flexiworld has been and continues to be damaged as a result of Roku’s infringing
`
`conduct. Roku is therefore liable to Flexiworld in an amount that adequately compensates
`
`Flexiworld for Roku’s infringement, 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.
`
`46.
`
`Roku markets and sells other products that are not covered by the claims of the
`
`Patents-in-Suit but that are sold with or in conjunction with the Roku Devices. Accordingly,
`
`Flexiworld is entitled to collect damages from Roku for convoyed sales of certain non-patented
`
`items.
`
`47.
`
`Roku failed to obtain permission from Flexiworld to make, use, sell, offer to sell,
`
`or import products incorporating the inventions claimed in the Patents-in-Suit including, but not
`
`limited to, the Roku Devices.
`
`48.
`
`Attached hereto are Exhibits 4-6, and incorporated herein by reference, are
`
`representative claim charts detailing how the exemplar Roku Devices have, and continue to,
`
`infringe the Patents-in-Suit.
`
`49.
`
`For each count of infringement listed below, Flexiworld incorporates and re-states
`
`the allegations contained in the preceding paragraphs above, including these General Allegations,
`
`as if fully set forth in each count of infringement.
`
`COUNT I – INFRINGEMENT OF THE ’064 PATENT
`
`50.
`
`Flexiworld incorporates herein the allegations made in paragraphs 1 through 49.
`
`ORIGINAL COMPLAINT
`
`Page 7 of 11
`
`
`
`Case 6:20-cv-00819 Document 1 Filed 09/08/20 Page 8 of 11
`
`51.
`
`Roku has and continues to directly infringe one or more claims of the ’064 Patent,
`
`including, for example, claim 1, in violation of 35 U.S.C. § 271(a) by making, using, selling,
`
`offering for sale, and/or importing into the United States infringing products including, but not
`
`limited to, its Roku Devices
`
`52.
`
`Additionally, Roku is indirectly infringing the ’064 Patent in violation of 35 U.S.C.
`
`§ 271(b) at least by inducing customers to purchase the Roku Devices and/or by instructing
`
`customers how to use the devices in a way that directly infringes at least claim 1 of the ’064 Patent.
`
`53.
`
`Roku has had actual knowledge of the ’064 Patent since at least service of this
`
`lawsuit.
`
`54.
`
`Roku’s ongoing actions represent a specific intent to induce infringement of at least
`
`claim 1 of the ’064 Patent.
`
`55.
`
`An exemplary claim chart demonstrating Roku’s infringement of the ’064 Patent is
`
`attached as Exhibit 4 and incorporated herein by reference.
`
`56.
`
`As a result of Roku’s infringement of the ’064 Patent, Flexiworld has suffered and
`
`is owed monetary damages adequate to compensate it for the infringement under 35 U.S.C. § 284,
`
`but in no event less than a reasonable royalty.
`
`COUNT II – INFRINGEMENT OF THE ’114 PATENT
`
`57.
`
`58.
`
`Flexiworld incorporates herein the allegations made in paragraphs 1 through 56.
`
`Roku has and continues to directly infringe one or more claims of the ’114 Patent,
`
`including, for example, claim 8, in violation of 35 U.S.C. § 271(a) by making, using, selling,
`
`offering for sale, and/or importing into the United States infringing products including, but not
`
`limited to, its Roku Devices.
`
`59.
`
`Additionally, Roku is indirectly infringing the ’114 Patent in violation of 35 U.S.C.
`
`§ 271(b) at least by inducing customers to purchase the Roku Devices and/or by instructing
`
`ORIGINAL COMPLAINT
`
`Page 8 of 11
`
`
`
`Case 6:20-cv-00819 Document 1 Filed 09/08/20 Page 9 of 11
`
`customers how to use the Roku Devices in a way that directly infringes at least claim 8 of the ’114
`
`Patent.
`
`60.
`
`Roku has had actual knowledge of the ’114 Patent since at least service of this
`
`lawsuit.
`
`61.
`
`An exemplary claim chart demonstrating Roku’s infringement of the ’114 Patent is
`
`attached as Exhibit 5 and incorporated herein by reference.
`
`62.
`
`As a result of Roku’s infringement of the ’114 Patent, Flexiworld has suffered and
`
`is owed monetary damages adequate to compensate it for the infringement under 35 U.S.C. § 284,
`
`but in no event less than a reasonable royalty.
`
`COUNT III – INFRINGEMENT OF THE ’066 PATENT
`
`63.
`
`64.
`
`Flexiworld incorporates herein the allegations made in paragraphs 1 through 62.
`
`Roku has and continues to directly infringe one or more claims of the ’066 Patent,
`
`including, for example, claim 7, in violation of 35 U.S.C. § 271(a) by making, using, selling,
`
`offering for sale, and/or importing into the United States infringing products including, but not
`
`limited to, its Roku Devices.
`
`65.
`
`Additionally, Roku is indirectly infringing the ’066 Patent in violation of 35 U.S.C.
`
`§ 271(b) at least by inducing customers to purchase the Roku Devices and/or by instructing
`
`customers how to use the Roku Devices in a way that directly infringes at least claim 7 of the ’066
`
`Patent.
`
`66.
`
`Roku has had actual knowledge of the ’066 Patent since at least service of this
`
`lawsuit.
`
`67.
`
`An exemplary claim chart demonstrating Roku’s infringement of the ’066 Patent is
`
`attached as Exhibit 6 and incorporated herein by reference.
`
`ORIGINAL COMPLAINT
`
`Page 9 of 11
`
`
`
`Case 6:20-cv-00819 Document 1 Filed 09/08/20 Page 10 of 11
`
`68.
`
`As a result of Roku’s infringement of the ’066 Patent, Flexiworld has suffered and
`
`is owed monetary damages adequate to compensate it for the infringement under 35 U.S.C. § 284,
`
`but in no event less than a reasonable royalty.
`
`DEMAND FOR A JURY TRIAL
`
`Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Flexiworld demands a trial by
`
`jury on all issues triable of right by a jury.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Flexiworld respectfully requests that this Court enter judgment in its favor
`
`and grant the following relief:
`
`a.
`
`
`b.
`
`
`c.
`
`
`d.
`
`
`e.
`
`f.
`
`A judgment that Roku has directly and/or indirectly infringed one or more claims
`of each of the Patents-in-Suit;
`
`A judgment and order requiring Roku to pay Flexiworld past and future damages
`under 35 U.S.C. § 284, including for supplemental damages arising from any
`continuing post-verdict infringement for the time between trial and entry of the final
`judgment with an accounting, as needed, as provided by 35 U.S.C. § 284;
`
`A judgment and order requiring Roku to pay Flexiworld reasonable ongoing
`royalties on a going-forward basis after final judgment;
`
`A judgment and order requiring Roku to pay Flexiworld pre-judgment and post-
`judgment interest on the damages award;
`
`A judgment and order requiring Roku to pay Flexiworld’s costs; and
`
`Such other and further relief as the Court may deem just and proper.
`
`
`
`
`
`
`
`ORIGINAL COMPLAINT
`
`Page 10 of 11
`
`
`
`Case 6:20-cv-00819 Document 1 Filed 09/08/20 Page 11 of 11
`
`Dated: September 8, 2020
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Joseph P. Oldaker_______________
`TIMOTHY E. GROCHOCINSKI
`ILLINOIS BAR NO. 6295055
`JOSEPH P. OLDAKER
`ILLINOIS BAR NO. 6295319
`NELSON BUMGARDNER ALBRITTON PC
`15020 S. Ravinia Avenue, Suite 29
`Orland Park, Illinois 60462
`708.675.1974 (telephone)
`tim@nbafirm.com
`joseph@nbafirm.com
`
`ERIC M. ALBRITTON
`STATE BAR NO. 00790215
`ANDREW J. WRIGHT
`STATE BAR NO. 24063927
`NELSON BUMGARDNER ALBRITTON PC
`3131 West 7th Street, Suite 300
`Fort Worth, Texas 76107
`817.377.9111 (telephone)
`903.758.7397 (facsimile)
`ema@nbafirm.com
`andrew@nbafirm.com
`
`COUNSEL FOR PLAINTIFF
`FLEXIWORLD TECHNOLOGIES, INC.
`
`ORIGINAL COMPLAINT
`
`Page 11 of 11
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
