Case 6:21-cv-00747-ADA Document 3 Filed 07/27/21 Page 1 of 9
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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. 6:21-00747
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`The Honorable Alan D. Albright
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`JURY TRIAL DEMANDED
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`M4siz Limited
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`Plaintiff,
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`v.
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`Walgreen Co.
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`Defendant
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`AMENDED (CORRECTED) COMPLAINT FOR PATENT INFRINGEMENT
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`TO THE HONORABLE JUDGE OF SAID COURT:
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`Plaintiff M4siz Limited (“M4siz” or “Plaintiff”), files this Complaint for Patent
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`Infringement against Walgreen Co. (“Walgreens” or “Defendant”), and would respectfully show
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`the Court as follows:
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`PARTIES
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`1. Plaintiff is a Private Limited Company registered in England with its principal place of
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`business located at Hallmark House, 25 Downham Rd, Ramsden Heath, Billericay CM11 1PU,
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`United Kingdom.
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`2. On information and belief, Walgreen Co. is an Illinois corporation with a principal address
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`of 200 Wilmot Road, Deerfield, Illinois, 60015 USA, and has regular and established places of
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`business throughout this District, including at least at 4100 Bosque Boulevard, Waco, TX 76710.
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`Defendant is registered to do business in Texas and has may be served via its registered agent at
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`Prentice Hall Corporation System, located at 211 E. 7th Street, Suite 620, Austin, TX 78701-3218
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`USA.
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`3. On information and belief, Defendant directly and/or indirectly develops, designs,
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`manufactures, distributes, markets, offers to sell and/or sells infringing products and services in
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`the United States, including in the Western District of Texas, and otherwise directs infringing
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`activities to this District in connection with its products and services.
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`JURISDICTION
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`4. This civil action arises under the Patent Laws of the United States, 35 U.S.C. § 1 et seq.,
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`including without limitation 35 U.S.C. §§ 271, 281, 283, 284, and 285 based on Defendant's
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`unauthorized commercial manufacture, use, importation, offer for sale, and sale of the Accused
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`Products in the United States. This is a patent infringement lawsuit over which this Court has
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`subject matter jurisdiction under, inter alia, 28 U.S.C. §§ 1331, 1332, and 1338(a).
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`5. This United States District Court for the Western District of Texas has general and specific
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`personal jurisdiction over Defendant because, directly or through intermediaries, Defendant has
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`committed acts within the District giving rise to this action and are present in and transact and
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`conduct business in and with residents of this District and the State of Texas.
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`6. Plaintiff’s causes of action arise, at least in part, from Defendant’s contacts with and
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`activities in this District and the State of Texas.
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`7. Defendant has committed acts of infringing the patent-in-suit within this District and the
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`State of Texas by making, using, selling, offering for sale, and/or importing in or into this District
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`and elsewhere in the State of Texas, products claimed by the patent-in-suit, including without
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`limitation products made by practicing the claimed methods of the patent-in-suit. Defendant,
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`directly and through intermediaries, makes, uses, sells, offers for sale, imports, ships, distributes,
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`advertises, promotes, and/or otherwise commercializes such infringing products into this District
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`and the State of Texas. Defendant regularly conducts and solicits business in, engages in other
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`persistent courses of conduct in, and/or derives substantial revenue from goods and services
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`provided to residents of this District and the State of Texas.
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`8.
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`This Court has personal jurisdiction over Defendant pursuant to TEX. CIV. PRAC. &
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`REM. CODE § 17.041 et seq. Personal jurisdiction exists over Defendant because Defendant has
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`minimum contacts with this forum as a result of business regularly conducted within the State of
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`Texas and within this district, and, on information and belief, specifically as a result of, at least,
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`committing the tort of patent infringement within Texas and this District. This Court has personal
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`jurisdiction over Defendant, in part, because Defendant does continuous and systematic business
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`in this District, including by providing infringing products and services to the residents of the
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`Western District of Texas that Defendant knew would be used within this District, and by soliciting
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`business from the residents of the Western District of Texas. For example, Defendant is subject to
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`personal jurisdiction in this Court because, inter alia, Defendant has regular and established places
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`of business throughout this District, including at least at 4100 Bosque Boulevard, Waco, TX 76710,
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`and directly and through agents regularly does, solicits, and transacts business in the Western
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`District of Texas. Also, Defendant has hired and is hiring within this District for positions that, on
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`information and belief, relate to infringement of the patent-in-suit. Accordingly, this Court’s
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`jurisdiction over the Defendant comports with the constitutional standards of fair play and
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`substantial justice and arises directly from the Defendant’s purposeful minimum contacts with the
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`State of Texas.
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`9.
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`This Court also has personal jurisdiction over Defendant, because in addition to
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`Defendant’s own online website and advertising with this District, Defendant has also made its
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`products available within this judicial district and advertised to residents within the District to hire
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`employees to be located in this District.
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`10.
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`11.
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`The amount in controversy exceeds $75,000 exclusive of interests and costs.
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`Venue is proper in this Court under 28 U.S.C. § 1400(b) based on information set
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`forth herein, which is hereby repeated and incorporated by reference. Further, upon information
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`and belief, Defendant has committed or induced acts of infringement, and/or advertise, market,
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`sell, and/or offer to sell products, including infringing products, in this District. In addition, and
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`without limitation, Defendant has regular and established places of business throughout this
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`District, including at least at 4100 Bosque Boulevard, Waco, TX 76710.
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`THE PATENT-IN-SUIT
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`12.
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`On October 11, 2016, United States Patent No. 6,526,402 (“the ‘402 patent”),
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`entitled “Searching procedures” was duly and legally issued by the United States Patent and
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`Trademark Office (“USPTO”). On May 14, 2007, the ‘402 patent was duly and lawfully conveyed
`to M4siz Limited, including all rights, title, and interest in and to the invention of the ‘402 patent
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`and its underlying patent applications, including the right to sue and recover for patent
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`infringements, by written assignments recorded on May 28, 2010 in the United States Patent and
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`Trademark Office. The ‘402 patent claims patent-eligible subject matter and is valid and
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`enforceable. M4siz is the exclusive owner by assignment of all rights, title, and interest in the ‘402
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`Patent, including the right to bring this suit for injunctive relief and damages, and including the
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`right to sue and recover all past, present, and future damages for infringement of the ‘402 Patent.
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`Defendant is not licensed to the ‘402 Patent, either expressly or implicitly, nor do they enjoy or
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`benefit from any rights in or to the ‘402 patent whatsoever. A true and correct copy of the ‘402
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`patent is attached hereto as Exhibit A.
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`13.
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`The ‘402 patent is referred to herein as the “patent-in-suit.”
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`14.
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`Plaintiff M4siz is the owner of the entire right, title, and interest in and to the patent-
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`in-suit. The patent-in-suit is presumed valid under 35 U.S.C. § 282.
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`ACCUSED INSTRUMENTALITIES
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`15.
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`The term “Accused Instrumentalities” or “Accused Products” refers to, by way of
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`example
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`and
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`without
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`limitation, Walgreens-branded
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`websites
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`(see,
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`e.g.,
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`https://www.walgreens.com).
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`COUNT I
`PATENT INFRINGEMENT OF THE ‘402 PATENT
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`Plaintiff restates and realleges the preceding paragraphs of this Complaint as if fully
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`16.
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`set forth herein.
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`17.
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`Defendant has, under 35 U.S.C. §271(a), directly infringed, and continues to
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`directly infringe, literally and/or under the doctrine of equivalents, one or more claims, including
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`without limitation at least claim 1 of the ‘402 patent, by making, using, testing, selling, offering
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`for sale and/or importing into the United States Defendant’s Accused Products.
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`18.
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`Defendant also indirectly infringes the ‘402 patent by actively inducing the direct
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`infringement by third parties under 35 U.S.C. § 271(b). Defendant has knowingly and intentionally
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`actively aided, abetted and induced others to directly infringe at least one claim of the ‘402 patent
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`(such as its customers in this District and throughout the United States). Defendant continues to
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`induce infringement of the ‘402 patent. Defendant has contributorily infringed and is a
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`contributory infringer because, with knowledge of the ‘402 patent, it supplies a material part of an
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`infringing method and/or system, where the material part is not a staple article of commerce, and
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`is incapable of substantial noninfringing use. Defendant contributes to its customers’ infringement
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`because, with knowledge of the ‘402 patent, Defendant supplies the technology that allows its
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`customers to infringe the patent.
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`19.
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`Defendant has knowledge that its activities concerning the Accused Products
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`infringe one or more claims of the ‘402 patent. On information and belief, Defendant will continue
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`to encourage, aid, or otherwise cause third parties to import, sell, offer for sale, and use the Accused
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`Products (which are acts of direct infringement of the ‘402 patent) and Defendant has and will
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`continue to encourage those acts with the specific intent to infringe one or more claims of the ‘402
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`patent. Further, Defendant provides information and technical support to its customers, including
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`product manuals, brochures, videos, demonstrations, and website materials encouraging its
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`customers to purchase and instructing them to use Defendant’s Accused Products (which are acts
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`of direct infringement of the ‘402 patent). Alternatively, Defendant knows and/or will know that
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`there is a high probability that the importation, sale, offer for sale, and use of the Accused Products
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`constitutes direct infringement of the ‘402 patent but took deliberate actions to avoid learning of
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`these facts.
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`20.
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`On information and belief, Defendant’s infringement of the ‘402 patent has been
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`willful and merits increased damages.
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`21.
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`On information and belief, Defendant has known that its activities concerning the
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`Accused Products infringed one or more claims of the ‘402 patent since at least the date of this
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`Complaint.
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`22.
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`On information and belief, Defendant has made no attempt to design around the
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`claims of the ‘402 patent.
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`23.
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`On information and belief, Defendant did not have a reasonable basis for believing
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`that the claims of the ‘402 patent were invalid.
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`24.
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`On information and belief, Defendant’s Accused Products are available to
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`businesses and individuals throughout the United States and in the State of Texas, including in this
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`District.
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`25. M4siz has been damaged as the result of Defendant’s willful infringement. Upon
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`information and belief, Defendant will continue to infringe one or more claims of the ‘402 patent
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`unless and until they are enjoined by this Court.
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`26.
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`Defendant has caused and will continue to cause M4siz irreparable injury and
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`damage by infringing one or more claims of the ‘402 patent. M4siz will suffer further irreparable
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`injury, for which it has no adequate remedy at law, unless and until Defendant is enjoined from
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`infringing the claims of the ‘402 patent.
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`27.
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`The claim chart attached hereto as Exhibit B describes how the elements of an
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`exemplary claim 1 from the ‘402 patent are infringed by the Accused Products. This provides
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`details regarding only one example of Defendant’s infringement, and only as to a single patent
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`claim. Plaintiff reserves its right to amend and fully provide its infringement arguments and
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`evidence thereof until its Preliminary and Final Infringement Contentions are later produced
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`according to the court’s scheduling order in this case.
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff M4siz respectfully requests the following relief:
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`A.
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`A judgment that Defendant has directly infringed either literally and/or under the
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`doctrine of equivalents and continue to directly infringe the patent-in-suit;
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`B.
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`A judgment that Defendant has induced infringement and continues to induce
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`infringement of the patent-in-suit;
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`C.
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`A judgment that Defendant has contributorily infringed and continues to
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`contributorily infringe the patent-in-suit;
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`D.
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`A judgment and order requiring Defendant to pay Plaintiff damages under 35
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`U.S.C. § 284 including past damages based on, inter alia, any necessary compliance with 35
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`U.S.C. §287, treble damages for willful infringement as provided by 35 U.S.C. § 284, and
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`supplemental damages for any continuing post-verdict infringement through entry of the final
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`judgment with an accounting as needed;
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`E.
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`A judgment that this is an exceptional case within the meaning of 35 U.S.C. § 285
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`and Plaintiff is therefore entitled to reasonable attorneys’ fees;
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`F.
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`A judgment and order requiring Defendant to pay Plaintiff pre-judgment and post-
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`judgment interest on the damages awarded;
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`G.
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`H.
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`I.
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`A judgment and order awarding a compulsory ongoing royalty;
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`A judgment and order awarding Plaintiff costs associated with bringing this action;
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`A judgment granting a preliminary and permanent injunction that restrains and
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`enjoins Defendant, its officers, directors, divisions, employees, agents, servants, parents,
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`subsidiaries, successors, assigns, and all those in privity, concert or participation with them from
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`directly or indirectly infringing the patent-in-suit; and
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`J.
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`Such other and further relief as the Court deems just and equitable.
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`JURY TRIAL DEMANDED
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`Pursuant to FED. R. CIV. P. 38, Plaintiff M4siz hereby demands a trial by jury on all issues
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`so triable.
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`Case 6:21-cv-00747-ADA Document 3 Filed 07/27/21 Page 9 of 9
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`Dated: July 27, 2021
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` Respectfully submitted,
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` By: /s/ Erick S. Robinson
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`Erick S. Robinson
`Texas Bar No. 24039142
`Porter Hedges LLP
`1000 Main St., 36th Floor
`Houston, TX 77002
`Telephone: (713) 226-6615
`Mobile: (713) 498-6047
`Fax: (713) 583-9737
`erobinson@porterhedges.com
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`Attorneys for M4siz Limited
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