MV3 Partners LLC v. Kohl's Corporation

Western District of Texas, txwd-6:2018-cv-00373

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2 IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS WACO DIVISION MV3 PARTNERS LLC, § § Civil Action No.: 6:18-cv-373 § Plaintiff, § § JURY TRIAL DEMANDED v. § § KOHL'S CORPORATION, § § Defendant. § COMPLAINT FOR PATENT INFRINGEMENT Plaintiff MV3 Partners LLC ("MV3"), by and through its attorneys, for its Complaint against Defendant Kohl's Corporation ("Kohl's"), hereby alleges the following: I. NATURE OF THE ACTION This is a patent infringement action to end Defendant's unauthorized and infringing use, sale, offering for sale, and/or importation of methods and products incorporating Plaintiff's patented inventions. MV3 is the owner of all right, title, and interest in and to United States Patent No. 8,863,223 (the "'223 Patent"), issued October 14, 2014 and titled "Mobile Set Top Box." A true and correct copy of the '223 Patent is attached hereto as Exhibit A. The '223 Patent discloses a set top box that acts as a conduit between disparate data networks and display devices. The '223 Patent describes a novel set top box that contains significant technical improvements over prior art set top boxes. 2 Kohl's uses, sells, offers to sell, and/or imports Roku, Inc.'s ("Roku") Roku TV and Roku's media players, such as the Roku Ultra, Roku Express, Roku Express+, Roku Premiere, Roku Premiere+, Roku Streaming Stick, Roku Streaming Stick+ (collectively, the "Roku Devices"), which infringe one or more claims of the '223 Patent. MV3 seeks monetary damages and prejudgment interest for Defendant's past and continuing infringement of the '223 Patent. II. PARTIES Plaintiff MV3 Partners LLC is a limited liability company organized and existing under the laws of Florida, with its principal place of business at 4440 PGA Blvd., Suite 600, Palm Beach Gardens, Florida 33410. Defendant Kohl's Corporation is a corporation organized and existing under the laws of Wisconsin, having a principal place of business at N56 W17000 Ridgewood Drive, Menomonee Falls, WI 53051, and authorized to do business in Texas. Kohl's may be served through its agent for service of process, Corporate Creations Network, Inc., 2425 W. Loop South #200, Houston, TX 77027. Kohl's has many retail establishments throughout this District including the following that can be found in the Waco/Austin area: • 2708 W. Loop 340, Waco, TX 76711; • 3170 S. 31st Street, Temple, TX 76502; • 1612 Lowes Blvd., Killeen, TX 76542; • 4805 W. Hwy 290, Sunset Valley, TX 78735; • 13609 N. I.H. 35, Austin, TX 78753; • 11111 Lakeline Blvd., Austin, TX 78717; • 200 Sundance Pkwy, Ste. 100, Round Rock, TX 78681; -2- 2 • 20185 Marketplace Ave., Kyle, TX 78640; • 1245 S. Highway 183, Leander, TX 78641; • 1019 W. University Ave., Georgetown, TX 78628; and • 1050 Interstate Hwy 35, New Braunfels, TX 78130. III. JURISDICTION AND VENUE This is an action for patent infringement, which arises under the Patent Laws of the United States, in particular, 35 U.S.C. §§ 271, 281, 282, 284, and 285. The Court has jurisdiction over the subject matter of this action under 28 U.S.C. §§ 1331 and 1338(a). This Court has personal jurisdiction over Kohl's because it has committed acts giving rise to this action within Texas and within this judicial District. Defendant regularly does business or solicits business in this District and in Texas, engages in other persistent courses of conduct and derives substantial revenue from products and/or services provided in this District and in Texas, and has purposefully established substantial, systematic, and continuous contacts within this District and should reasonably expect to be sued in a court in this District. For example, Kohl's has many retail establishments in this District and has a Texas registered agent for service. Kohl's operates a website that solicits sales of the infringing products by consumers in this District and in Texas. Given these contacts, the Court's exercise of jurisdiction over Kohl's will not offend traditional notions of fair play and substantial justice. Venue in the Western District of Texas is proper pursuant to 28 U.S.C. §§ 1391(b), (c) and 1400(b) because Kohl's has many retail establishments in this District, has committed acts within this judicial district giving rise to this action, and continues to conduct business in this judicial district, including one or more acts of using, selling, offering for sale, and/or importing infringing products or providing support service to Kohl's customers in this District. -3- 2 IV. THE PATENT-IN-SUIT The '223 Patent discloses a set top box that provides functionality that enables a connected display device to render a television signal and enables an upconversion/upscaling process from a mobile computing device where media content residing on or being streamed to the mobile computing device is forwarded to a display device. The specification of the '223 Patent identifies technical problems in the prior art and claims improvement to these problems. For instance, the specification explains that prior art set top boxes could only be used with the network that provided the box, such as Comcast or Verizon FIOS. ('223 Patent at 1:32-37.) Moreover, prior art mobile computing devices could not "be connected to large display monitors" and were "limited to displaying over-the-air signals on a mobile terminal." Id. at 2:24-37. The specification further explains the need to "enable the mobile set top box to up-convert content intended for a mobile computer device, such as a mobile phone, so that the content is properly viewed on a larger display, such as a large screen HDTV." Id. at 2:58-61. In essence, the '223 Patent claims a technical solution to these problems through a mobile set top box that combines the functionality of a set top box and a mobile communication system so that content normally available at discrete locations can be available any time. Further, the claimed mobile set top box can up-convert content intended for a mobile phone so that the content is properly viewed on a larger display. The claimed technical solution is further incorporated in at least claim 1 of the '223 patent. MV3 owns all substantial and material rights to and interests in the '223 Patent, including the right to recover damages for all past and future infringement thereof. The '223 Patent is valid and enforceable. -4- 2 COUNT I: INFRINGEMENT OF THE '223 PATENT MV3 incorporates paragraphs 1 through 14 herein by reference. Direct Infringement. Kohl's, without authorization or license from MV3, has been and is presently directly infringing, literally or under the doctrine of equivalents, at least claim 1 of the '223 Patent, as infringement is defined by 35 U.S.C. § 271(a), including through using (including for testing purposes), selling, offering for sale, and/or importing infringing products. Kohl's is thus liable for direct infringement of the '223 Patent pursuant to 35 U.S.C. § 271(a). Exemplary infringing products include the Roku Devices. Kohl's uses, sells, offers to sell, and/or imports the Roku Devices in this District. For example, the Roku Ultra device is available for pickup at the Killeen Kohl's store. https://www.kohls.com/product/prd-3572083/roku-ultra.jsp?prdPV=4 (last visited Dec. 10, 2018). -5- 2 The Roku Devices infringe at least claim 1 of the '223 Patent because they provide functionality to enable the provisioning of both broadcast television and internet content for display on a television screen. As reflected in Roku's own product literature illustrated below, the Roku Devices are configured to accept and receive content from a mobile computing device, such as an Android or iOS mobile phone. For example, the Roku Devices enable two-way wireless communication with a mobile computing device. Mobile computing devices are configured to receive media content (e.g., content from the Roku mobile app) from at least two different types of communications networks (e.g., cellular broadband and WiFi). All of this functionality is disclosed in at least claim 1 of the '223 Patent. https://support.roku.com/article/208755108-what-is-play-on-roku (last visited Oct. 16, 2018). -6- 2 https://support.roku.com/article/208754928-how-to-use-screen-mirroring-with-your-android-or- windows-device (last visited Oct. 16, 2018). https://www.roku.com/products/roku-ultra (last visited Oct. 16, 2018). As reflected in Roku's own product literature illustrated below, the Roku Devices provide for input of media content from a mobile computing device. For example, the Roku Devices are enabled to receive content cast from a mobile computing device. All of this functionality is disclosed in at least claim 1 of the '223 Patent. -7- 2 Id. https://image.roku.com/c3VwcG9ydC1B/Roku-TV-User-Guide-US-CA-8-0-2.pdf (at pg. 127, last visited Oct. 16, 2018). As reflected in Roku's own product literature illustrated below, the Roku Devices provide for input of a television signal (e.g., live television apps, such as the Roku Channel, DirecTV NOW, fuboTV, Hulu with Live TV, Philo, SlingTV, YouTube TV, and PlayStation Vue). All of this functionality is disclosed in at least claim 1 of the '223 Patent. https://www.roku.com/products/roku-ultra (last visited Oct. 16, 2018). https://www.roku.com/how-it-works (last visited Oct. 16, 2018). -8- 2 https://blog.roku.com/blog/2017/09/07/how-to-watch-local-channels-news-and-weather-on-your- roku-player-and-roku-tv/ (last visited Oct. 16, 2018). https://www.roku.com/whats-on/the-roku-channel (last visited Oct. 16, 2018). -9- 2 https://blog.roku.com/cable-alternatives (last visited Oct. 16, 2018). As reflected in Roku's own product literature illustrated below, the Roku Devices have a video processor that is configured to receive and process media content from a mobile computing device. Moreover, the video processor within the Roku Devices can process media content from unicast and multicast broadcasts and is able to process a predefined protocol stack of video packets. All of this functionality is disclosed in at least claim 1 of the '223 Patent. - 10 - 2 https://www.roku.com/products/roku-ultra (last visited Oct. 16, 2018). https://www.roku.com/roku-tv/picture-quality (last visited Oct. 16, 2018). http://open-media-community.com/2015/01/27/stream-any-format-to-roku/ (last visited Oct. 16, 2018). As reflected in Roku's own product literature illustrated below, the Roku Devices have a processor that enables upconversion. All of this functionality is disclosed in at least claim 1 of the '223 Patent. - 11 - 2 https://www.roku.com/products/roku-ultra (last visited Oct. 16, 2018). https://www.roku.com/roku-tv/picture-quality(last visited Oct. 16, 2018). As reflected in Roku's own product literature illustrated below, the Roku Devices are capable of upconverting media content from a mobile computing device for display on a larger display device (e.g., the display of a TV). All of this functionality is disclosed in at least claim 1 of the '223 Patent. - 12 - 2 https://support.roku.com/article/208754928-how-to-use-screen-mirroring-with-your-android-or- windows-device (last visited Oct. 16, 2018). https://www.forbes.com/sites/sethporges/2016/09/28/why-you-should-upgrade-to-the-roku-ultra- set-top-box/#feb4c443c061 (last visited Oct. 16, 2018). https://www.roku.com/roku-tv/picture-quality (last visited Oct. 16, 2018). As reflected in Roku's own product literature illustrated below, the Roku Devices receive media content from the mobile computing device in a first format. All of this functionality is disclosed in at least claim 1 of the '223 Patent. See https://support.roku.com/article/208754928- how-to-use-screen-mirroring-with-your-android-or-windows-device (last visited Oct. 16, 2018). - 13 - 2 The Roku Devices determine a file format from the mobile computing device. This functionality is disclosed in at least claim 1 of the '223 Patent. https://www.forbes.com/sites/sethporges/2016/09/28/why-you-should-upgrade-to-the-roku-ultra- set-top-box/#feb4c443c061 (last visited Oct. 16, 2018). https://support.roku.com/article/208755108-how-to-display-photos-on-the-tv-using-play-on-roku (last visited Oct. 16, 2018). As reflected in Roku's own product literature illustrated below, the Roku Devices query the display device by determining the required display resolution and determine the native display resolution of the second size format of the display device based on a response resulting from the query of the display device. All of this functionality is disclosed in at least claim 1 of the '223 Patent. - 14 - 2 https://support.roku.com/article/115009246867-how-to-change-the-display-type-on-your-roku- streaming-player (last visited Oct. 16, 2018). As reflected in Roku's own product literature illustrated below, the Roku Devices authenticate the validity of the user and determine whether the media is permitted to be displayed. This functionality is disclosed in at least claim 1 of the '223 Patent. - 15 - 2 https://support.roku.com/article/208754928-how-to-use-screen-mirroring-with-your-mobile- device (last visited Oct. 16, 2018). As reflected in Roku's own product literature illustrated below, the Roku Devices upscale the received content from mobile computing device to provide upconverted media content to the display. This functionality is disclosed in at least claim 1 of the '223 Patent. https://www.forbes.com/sites/sethporges/2016/09/28/why-you-should-upgrade-to-the-roku-ultra- set-top-box/#feb4c443c061 (last visited Oct. 16, 2018). https://www.roku.com/roku-tv/picture-quality (last visited Oct. 16, 2018). As reflected in Roku's own product literature illustrated below, the Roku Devices render a television signal into media content for display, receive a television signal from the television input, decode the television signal into media content, and render the media content on the display device. This functionality is disclosed in at least claim 1 of the '223 Patent. - 16 - 2 https://www.roku.com/how-it-works (last visited Oct. 16, 2018). https://www.roku.com/products/roku-ultra (last visited Oct. 16, 2018). https://blog.roku.com/blog/2017/09/07/how-to-watch-local-channels-news-and-weather-on-your- roku-player-and-roku-tv/ (last visited Oct. 16, 2018). - 17 - 2 As reflected in Roku's own product literature illustrated below, the Roku Devices have an output that enables displaying content on the display device from both a mobile computing device and also from a television signal. This functionality is disclosed in at least claim 1 of the '223 Patent. See https://www.roku.com/products/roku-ultra (last visited Oct. 16, 2018). ... https://image.roku.com/c3VwcG9ydC1B/Roku-TV-User-Guide-US-CA-8-0-2.pdf (at pgs. 1-2, last visited Oct. 16, 2018). Indirect Infringement. At least since Kohl's receipt of notice and/or the filing of this Complaint, Kohl's and its customers that use the Roku Devices without authorization or license from MV3 have been and are presently indirectly infringing at least claim 1 of the '223 Patent. Kohl's is contributing to the infringement by others and/or inducing infringement by others, by, among other things, inducing its customers to purchase and use the Roku Devices in an - 18 - 2 infringing manner as described above, including encouraging and instructing its customers through online product descriptions, specifications, and Q&As for the Roku Devices. Kohl's has specifically intended that its customers use the Roku Devices that infringe at least claim 1 of the '223 Patent by, at a minimum, providing access to support, training, and instructions for the infringing products to its customers to enable them to infringe at least claim 1 of the '223 Patent, as described above. Kohl's has known, at least as early as the service of this Complaint, that the infringing products, such as the Roku Devices, cannot be used without infringing the technology claimed in the '223 Patent, and are not staple articles of commerce suitable for substantial non- infringing uses. For example, as alleged above, the Roku Devices contain the functionality that enables a connected display to render a television signal and also an upconverted/upscaled input from a mobile computing device. Such functionality is not part of a staple article of commerce suitable for substantial non-infringing uses. MV3 is entitled to recover damages from Kohl's to compensate it for Kohl's infringement, as alleged above, in an amount measured by no less than a reasonable royalty under 35 U.S.C. § 284. V. DEMAND FOR JURY TRIAL MV3 demands a trial by jury of any and all issues triable of right before a jury. VI. PRAYER FOR RELIEF WHEREFORE, Plaintiff MV3 respectfully requests that the Court: A. Enter a judgment that Kohl's directly infringed, contributorily infringed, and/or induced infringement of one or more claims of the '223 Patent; B. Enter a judgment awarding Plaintiff MV3 all damages adequate to compensate it for Defendant Kohl's direct or contributory infringement of, or inducement to - 19 - 2 infringe, the '223 Patent, including all pre-judgment and post-judgment interest at the maximum rate permitted by law; C. Declare this case exceptional pursuant to 35 U.S.C. § 285; and D. Award Plaintiff MV3 its costs, disbursements, attorneys' fees, and such further and additional relief as is deemed appropriate by this Court. - 20 - 2 Dated: December 21, 2018 RESPECTFULLY SUBMITTED, By: /s/ J. Mark Mann J. Mark Mann (Texas Bar No. 12926150) mark@themannfirm.com G. Blake Thompson (Texas Bar No. 24042033) blake@themannfirm.com MANN | TINDEL | THOMPSON 300 W. Main Street Henderson, Texas 75652 913 Franklin Ave., Suite 201 Waco, Texas 76701 Telephone: (903) 657-8540 Facsimile: (903) 657-6003 Andy Tindel (Texas Bar No. 20054500) atindel@andytindel.com MANN | TINDEL | THOMPSON 112 E. Line Street, Suite 304 Tyler, Texas 75702 Telephone: (903) 596-0900 Facsimile: (903) 596-0909 Craig D. Cherry (Texas Bar No. 24012419) ccherry@haleyolson.com HALEY & OLSON, P.C. 100 N. Ritchie Road, Suite 200 Waco, Texas 76701 Telephone: (254) 776-3336 Facsimile: (254) 776-6823 Jonathan K. Waldrop (CA Bar No. 297903) (pro hac vice forthcoming) jwaldrop@kasowitz.com Darcy L. Jones (CA Bar No. 309474) (pro hac vice forthcoming) djones@kasowitz.com Marcus A. Barber (CA Bar No. 307361) (pro hac vice forthcoming) mbarber@kasowitz.com John W. Downing (CA Bar No. 252850) (pro hac vice forthcoming) jdowning@kasowitz.com Heather S. Kim (CA Bar No. 277686) (pro hac vice forthcoming) hkim@kasowitz.com Jack Shaw (CA Bar No. 309382) (pro hac vice forthcoming) jshaw@kasowitz.com Gurtej Singh (CA Bar No. 286547) (pro hac vice forthcoming) gsingh@kasowitz.com - 21 - 2 KASOWITZ BENSON TORRES LLP 333 Twin Dolphin Drive, Suite 200 Redwood Shores, California 94065 Telephone: (650) 453-5170 Facsimile: (650) 453-5171 Daniel C. Miller (NY Bar No. 4232773) (pro hac vice forthcoming) KASOWITZ BENSON TORRES LLP 1399 New York Avenue NW, Suite 201 Washington, DC 20005 Telephone: (202) 760-3400 Facsimile: (202) 760-3401 Email: dcmiller@kasowitz.com Rodney R. Miller (Texas Bar No. 24070280) (pro hac vice forthcoming) KASOWITZ BENSON TORRES LLP 1349 West Peachtree Street N.W., Suite 1500 Atlanta, Georgia 30309 Telephone: (404) 260-6080 Facsimile: (404) 260-6081 Email: rmiller@kasowitz.com Attorneys for Plaintiff MV3 Partners LLC - 22 -