ITC Investigation Draft (non-confidential version)

U.S. International Trade Commission

Intellectual Capital Consulting, Ltd.

Certain Vehicular Smartwatch Systems, Related Software and Components Thereof I. INTRODUCTION

1. This Complaint is filed by Intellectual Capital Consulting, Ltd. ("ICC" or

"Complainant") under Section 337 of the Tariff Act of 1930, as amended, 19 U.S.C.

§ 1337, based on the unlawful importation into the United States, the sale for

importation into the United States, the sale within the United States after

importation, and/or the use within the United States after importation by the

proposed Respondents of certain smartwatch vehicular systems and components

and software thereof that infringe certain claims of United States Patent No.

7,068,151 ("the ‘151 Patent") (also referred as the , "ICC Asserted Patent") either

literally or under the doctrine of equivalents.

2. Intellectual Capital Consulting, Ltd. is a pioneer in the field of wristwatch

operated vehicles security systems, also known as smartwatch vehicular systems.

The ICC smartwatch vehicular system, which is sold under the trade name

"Blackhawk RES," was the first commercialized aftermarket smartwatch vehicular

system solution.

3. For many of consumers, smartphones have become the center of their

lives, reminding them of appointments, keeping them up on the latest news, letting

them know what friends are up to, telling them how to get to places, and even

being a conduit to pay for products or services. At the same time, many new

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vehicles don't require a traditional key, instead letting consumers use a plastic key

fob remote to transmit RF signals to unlock doors and start the engine. Included

with the Blackhawk RES system is this traditional method of user engagement.

4. As an extension of the smartphone and plastic key fob, ICC integrated the

functions of these devices into wristwatch form factors, making one less item for

users to carry in their pocket. The Blackhawk RES system sends signals over its

data connection to ICC’s server, which then sends the lock or unlock signal to the

car, there is no distance restriction. Users can activate the locks from anywhere in

the world that have a data connection for their mobile phones.

5. In addition, the Blackhawk RES system incorporates a GPS module,

enabling a geo-fencing feature useful for parents. With that, consumers can use the

Blackhawk RES system to define a circular area around a central point. If the car

was driven outside of that area, the Blackhawk RES system shows an alert.

6. One of the challenges ICC faced in creating a commercially viable product

was to create a smartwatch vehicular system that matched the performance,

reliability and pricing of traditional plastic key fob, smartphone and GPS tracking

system solutions. ICC surpassed this challenge and developed a smartwatch

vehicular system that was commensurate to existing solutions like plastic key fob,

smartphone and GPS tracking security systems. To do so, ICC developed unique,

market rate, mid-tier and elite packaging options to appeal to the spectrum of

vehicle enthusiasts. Further, ICC needed to package the wristwatch remote in a

fashion forward manner while providing the user with necessary notifications,

alerts and/or updates from the vehicle. This is the essence of the ‘151 Patent.

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7. A user of the Blackhawk RES system will not only be able to keep track of

the time and check notifications from their smartphone via the smartwatch but

also will be able to arm/lock, disarm/unlock and remotely start their vehicle by

interfacing with the smartwatch. Moreover, it is common for people to lose or

misplace their keys along with the plastic remote fob that is attached to the keys.

Since the smartwatch situated on the users wrist, the user never has to worry

about damage due to dropping on a hard surfaces, in liquids (ex. water), or even

losing their plastic remote fob. Therefore, the ICC smartwatch vehicular

technology drastically improves consumer smartwatch adaptation, system

reliability, and significantly increases user convenience.

8. The proposed Respondents Hyundai Motor Company, Hyundai Motor

America, Hyundai Motor Manufacturing Alabama, LLC (collectively, “Hyundai”),

General Motors Corporation, General Motors LLC, OnStar, LLC (collectively, “GM”),

Audi AG, Audi of America LLC, Audi of America, Inc. (collectively, “Audi”),

Volkswagen AG, Volkswagen Group of America, Inc. (collectively, “Volkswagen”),

BMW of North America, LLC, Bayerische Motoren Werke AG (collectively, “BMW”),

Dr. Ing. h.c. F. Porsche AG, Porsche Cars North America, Inc. (collectively, “Porsche

AG”), DEI Holdings, Inc., Directed Electronics, Inc. (collectively, “Directed

Electronics”), Samsung Electronics Co. Ltd., Samsung Electronics America, Inc.,

Samsung Telecommunications America LLC (collectively, “Samsung”), LG

Corporation, LG Electronics U.S.A. Inc., LG Electronics MobileComm U.S.A., Inc.

(collectively, “LG”), Sony Corporation, Sony Electronics, Inc., Sony Corporation of

America (collectively, “Sony”), Lenovo Limited Group, Lenovo Holding Company,

Inc., Lenovo (United States), Inc. (collectively, “Lenovo”), Motorola Mobility, Inc.

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(“Motorola”), Apple, Inc. (Apple), Station Digital Media, Inc. (Station Digital) and

Rego Apps, LLC (Rego) develop, manufacture, import, sell for importation into the

United States, sell after importation into the United States, and uses after

importation into the United States smartwatch vehicular systems and components

and software therein, such as wristwatches and their on-board device

components, operating systems, and/or other software (collectively, the "Accused

Products"). As set forth in Section VII below, the Accused Products are

manufactured abroad in locations such as, but not limited to, Korea, Vietnam,

Mexico, Canada, Germany and China, and are imported for sale into the United

States. The Accused Products incorporate, without any license from ICC, many

technologies developed by ICC and protected by the patent owned by ICC. The

patent-in-suit and their asserted claims (independent claims in bold) are listed

below:

9. Certified copies of ICC’s Asserted Patent are included at Exhibit 1

ICC owns all rights, title, and interest in each of ICC’s Asserted Patents, including

the right to sue for infringement. Certified copies of the assignment records for

each of ICC’s Asserted Patent are included at Exhibit 2 & Confidential Exhibit 52.

10. A domestic industry as required by 19 U.S.C. §§ 1337(a)(2) and (3) exists

or is in the process of being established in the United States relating to articles

protected by ICC’s Asserted Patent, including significant investment in equipment,

Patent Number Asserted Claims

7,068,151 (Independent claim in bold)

Independent 1

Dependent 2, 3, 4, 5, 8, 10, 12, 14, 18, 19, 20, 21, 22

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significant employment of labor and capital, and substantial investment in the

exploitation of the invention claimed in ICC’s Asserted Patent, including through

engineering, research, and development.

11. ICC seeks as relief a permanent limited exclusion order under 19 U.S.C. §

1337(d) barring from entry into the United States directly-infringing and/or

indirectly infringing smartwatch vehicular systems, components and software

thereof manufactured, sold, or used by or on behalf of Respondents. ICC further

seeks as relief a permanent cease and desist order under 19 U.S.C. § 1337(f)

prohibiting Respondents from marketing, distributing, selling, offering for sale,

warehousing inventory for distribution, or otherwise transferring or bringing into

the United States infringing smartwatch vehicular systems and/or their

components and software thereof.

II. COMPLAINANT

12. ICC is a limited liability company organized and existing under the laws of

Colorado, having its principal place of business at 3160 W. 71st Avenue, suite 3-

307, Westminster, Colorado 80030. ICC is the assignee and exclusive licensee of

the ICC Asserted Patent, with the right to sue for all infringement thereof.

13. Founded in 2010, ICC is a management consulting firm specializing in

patent prosecution, and technology transfer and commercialization that acquired

all rights to the ‘151 Patent, becoming a leading innovator of smartwatch vehicular

systems. ICC has significant operations in the United States, including with respect

to ICC’s Asserted Patent. ICC has researched, developed, tested, engineered,

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assembled, packaged, and installed the ICC Asserted Patent under the brand name

Blackhawk RES.

14. On July 18, 2014 the Specialty Equipment Marketing Association (SEMA)

selected the Blackhawk RES as one of the Top 10 innovations of 2014 See Exhibit

42. In addition, SEMA launched a Facebook voting campaign to narrow the

selected ten innovations down to five. On September 10, 2014, SEMA selected the

Blackhawk RES was as one of the top five innovations and invited to present the

technology during its 2014 SEMA trade show in Las Vegas See Exhibit 43. Further,

ICC debuted the ICC Patented Products via the Blackhawk RES brand and launched

a crowd funding campaign during the SEMA presentation.

15. ICC’s smartwatch vehicular system, specifically ICC’s smartwatch remote

start products use the inventions claimed in ICC’s Asserted Patent. As explained in

more detail in the chart included as Confidential Exhibit 39, one or more of ICC’s

Asserted Patents is implemented in the Blackhawk RES system (including at least

the Blackhawk RES 530, 810 and 818 series).

16. ICC researched and developed the technologies that are protected by

ICC’s Asserted Patent. ICC is the full owner of all rights and title to the ICC Asserted

Patent. Certified copies of the relevant assignment records are attached at

Exhibits 2. Additionally, the confidential exclusive license agreement is attached

at Confidential Exhibit 52.

17. ICC has made and continues to make significant investments in the

design and development of products protected by ICC’s Asserted Patent. In the

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United States, ICC exploits the technologies covered by ICC’s Asserted Patent

through various activities, including substantial research and development,

engineering, assembly, installation, and product and warranty support among

others, as discussed more fully in Section XI below.

III. THE PROPOSED RESPONDENTS

18. Upon information and belief, Hyundai Motor Company, General Motors

Corporation, Audi AG, BMW AG, Dr. Ing. h.c. F. Porsche AG, Directed Electronics,

Inc., Samsung Electronics Co. Ltd., LG Corporation, Sony Corporation, Lenovo

Group Limited., Motorola Mobility, Inc., Apple, Inc., Station Digital Media, Inc., and

Rego Apps, LLC each develop, manufacture, import, sell for importation into the

United States, sell after importation into the United States, and/or uses after

importation into the United States smartwatch vehicular systems and

components and software therein, such as wristwatches and their on-board

components, operating systems, and/or other software, as further described in

Section VII below.

A. Hyundai Motor Company

19. Upon information and belief, Hyundai Motor Company is a Korean

company with a place of business at 231 Yangjae-dong, Seocho-gu, Seoul, South

Korea 137-938. Further, Hyundai Motor Company is in the business of developing,

making, offering for sale, selling, importing, and supporting products containing

vehicular smartwatch systems, related software and components thereof

including, without limitation, vehicles, and their respective on board components

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that are manufactured outside of the United States. Moreover, said product either

under the doctrine of equivalents, or directly and/or indirectly infringe the ‘151

Patent. Hyundai Motor Company is the parent corporation of Respondents

Hyundai Motor America and Hyundai Motor Manufacturing Alabama.

B. Hyundai Motor America

20. Upon information and belief, Hyundai Motor America is a California

corporation with a place of business at 10550 Talbert Ave. Fountain View, CA

92708. Upon information and belief, Hyundai Motor America is a subsidiary of

Hyundai Motor Company and, in part, responsible for U.S. operations. Hyundai

Motor America sells, markets, distributes, manufactures, sells for importation,

imports, and/or sells after importation into the United States product that either


Patent. Upon information and belief, further discovery will reveal additional

details regarding the division of responsibilities amongst Hyundai-family entities.

C. Hyundai Motor Manufacturing Alabama, LLC

21. Upon information and belief, Hyundai Motor Manufacturing Alabama,

LLC is a Delaware limited liability company with its principal place of business at

700 Hyundai Blvd., Montgomery, Alabama 36105. Hyundai Motor Manufacturing

Alabama, LLC is in the business of developing, making, offering for sale, selling,

importing, and supporting products containing vehicular smartwatch systems,

related software and components thereof including, without limitation, vehicles,

and their respective on board components that are manufactured outside of the

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United States that either under the doctrine of equivalents, or directly and/or

indirectly infringe the ‘151 Patent. Hyundai Motor Manufacturing Alabama, LLC is

a subsidiary corporation of Respondent Hyundai Motor Company. Hyundai Motor

Manufacturing Alabama, LLC, Hyundai Motor America and Hyundai Motor

Company are referred to collectively as “Hyundai.”

D. General Motors Company

22. Upon information and belief, General Motors Company is a company

organized under the laws of Delaware with its principal place of business at 300

Renaissance Center, Detroit, Michigan 48265. Further, General Motors Company is

in the business of developing, making, offering for sale, selling, importing, and

supporting products containing vehicular smartwatch systems, related software

and components thereof including, without limitation, vehicles, and their

respective on board components that are manufactured outside of the United

States. Moreover, said product either under the doctrine of equivalents, or

directly and/or indirectly infringe the ‘151 Patent. General Motors Company is the

parent corporation of Respondents General Motors LLC and OnStar, LLC.

E. General Motors, LLC

23. Upon information and belief, General Motors LLC is a limited liability

company organized under the laws of Delaware with its principal place of business

at 300 Renaissance Center, Detroit, Michigan 48265. General Motors, LLC is in the

business of developing, making, offering for sale, selling, importing, and


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States that either under the doctrine of equivalents, or directly and/or indirectly

infringe the ‘151 Patent.

F. OnStar, LLC

24. Upon information and belief, OnStar, LLC is a limited liability company

organized under the laws of Delaware with its principal place of business at 400

Renaissance Center, Detroit, Michigan 48265. OnStar, LLC is a subsidiary of

General Motors Company and, in part, responsible for operations that use, sell,

market, distribute, manufacture, sells for importation, imports, and/or sells after

importation into the United States product that either under the doctrine of

equivalents, or directly and/or indirectly infringe the ‘151 Patent. Patent. Upon

information and belief, further discovery will reveal additional details regarding

the division of responsibilities amongst GM-family entities. General Motors

Company, General Motors, LLC and OnStar, LLC are referred to collectively as

“GM.”

G. Volkswagen AG

25. Upon information and belief, Volkswagen AG is a corporation organized

and existing under the laws of Germany, having its principal place of business at

Brieffach 1848-2, 38436 Wolfsburg, Germany. Further, Volkswagen AG is in the



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directly and/or indirectly infringe the ‘151 Patent. Volkswagen AG is the parent

corporation of Respondent Volkswagen Group of America, Inc.

H. Volkswagen Group of America, Inc.

26. Upon information and belief, Volkswagen Group of America, Inc. is a New

Jersey corporation with its headquarters and principal place of business located at

2200 Ferdinand Porsche Drive, Herndon, Virginia 20171. Upon information and

belief, Volkswagen Group of America, Inc. is responsible for operations that use,

sell, market, distribute, manufacture, sells for importation, imports, and/or sells

after importation into the United States product that either under the doctrine of

equivalents, or directly and/or indirectly infringe the ‘151 Patent.

27. Upon information and belief, Volkswagen AG and Volkswagen Group of

America, Inc. bear the primary responsibility for the marketing and sales of

Volkswagen-branded products within the United States. Upon information and

belief, further discovery will reveal additional details regarding the division of

responsibilities amongst Volkswagen-family entities. Volkswagen AG and

Volkswagen Group of America, Inc. are referred to collectively as “Volkswagen.”

I. Audi AG

28. Upon information and belief, Audi AG is a German corporation with its

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principal place of business at Ettinger Strasse, D-85045, Ingolstadt, Germany.

Further, Audi AG is in the business of developing, making, offering for sale, selling,


related software and components thereof including, without limitation, vehicles,

and their respective on board components that are manufactured outside of the

United States. Moreover, said product either under the doctrine of equivalents, or

directly and/or indirectly infringe the ‘151 Patent. Audi AG is the parent

corporation of Respondents Audi of America, Inc. and Audi of America, LLC. Audi

AG has primary responsibility for the business planning and manufacturing of

Audi-branded products.

J. Audi of America, Inc.

29. Upon information and belief, Audi of America, Inc. is a Delaware

corporation with its principal place of business at 2200 Ferdinand Porsche Dr.,

Herndon, VA 20171. Audi of America, Inc. is a subsidiary of Audi AG and is, in part,

responsible for operations that use, sell, market, distribute, manufacture, sells for

importation, imports, and/or sells after importation into the United States product

that either under the doctrine of equivalents, or directly and/or indirectly infringe

the ‘151 Patent.

K. Audi of America LLC

30. Upon information and belief, Audi of America LLC is a New Jersey

corporation with its principal place of business at 3800 W. Hamlin Road, Auburn

Hills, MI 48326. Audi of America LLC is a subsidiary of Audi AG and is, in part,

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the ‘151 Patent.

31. Upon information and belief, Audi of America, Inc. and Audi of America

LLC bear the primary responsibility for the importation, marketing, and sales of

Audi-branded products within the United States. Upon information and belief,

further discovery will reveal additional details regarding the division of

responsibilities amongst Audi-family entities. Audi AG, Audi of America, Inc., and

Audi of America, LLC are referred to collectively as “Audi.”

L. Bayerische Motoren Werke AG

32. Upon information and belief, Bayerische Motoren Werke AG (“BMW AG”)

is a corporation organized under the laws of the Federal Republic of Germany with

its principal place of business at Petuelring 130, 80809 Munich, Germany. BMW

AG designs and manufactures motor vehicles, parts, and other products for sale in

Europe and for export and sale throughout the world. Further, BMW AG is in the






directly and/or indirectly infringe the ‘151 Patent. BMW AG is the parent

corporation of Respondents BMW of North America, LLC. BMW AG has primary

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responsibility for the business planning and manufacturing of BMW-branded

products

M. BMW of North America, LLC

33. Upon information and belief, BMW of North America, LLC (“BMW NA”) is

a Delaware limited liability company having its principal place of business at 300

Chestnut Ridge Road, Woodcliff Lake, New Jersey 07677. BMW NA is a wholly

owned subsidiary of BMW (US) Holding Corporation, a Delaware corporation,

which is a wholly owned subsidiary of BMW AG. BMW NA is responsible for

operations that use, sell, market, distribute, manufacture, sells for importation,



Patent.

34. Upon information and belief, BMW AG and BMW NA bear the primary

responsibility for the importation, marketing, and sales of BMW-branded products

within the United States. Upon information and belief, further discovery will

reveal additional details regarding the division of responsibilities amongst BMW-

family entities. BMW AG and BMW of North America, LLC are referred to

collectively as “BMW.”

N. Dr. Ing. h.c. F. Porsche AG

35. Upon information and belief, Dr. Ing. h.c. F. Porsche AG is a corporation

organized under the laws of Germany with its principal place of business at

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Porscheplatz 1, D 70435, Stuttgart, Germany. Dr. Ing. h.c. F. Porsche AG designs

and manufactures motor vehicles, parts, and other products for sale in Europe and

for export and sale throughout the world. Further, Dr. Ing. h.c. F. Porsche AG is in

the business of developing, making, offering for sale, selling, importing, and





directly and/or indirectly infringe the ‘151 Patent. Dr. Ing. h.c. F. Porsche AG is the

parent corporation of Respondent Porsche Cars of North America, Inc. Dr. Ing. h.c.

F. Porsche AG has primary responsibility for the business planning and

manufacturing of Porsche-branded products.

O. Porsche Cars of North America, Inc.

36. Upon information and belief, Porsche Cars North America, Inc., is a

corporation organized under the laws of Delaware, with its principal place of

business at 980 Hammond Drive NE, Suite 1000, Atlanta, Georgia, 30328, and a

registered agent at The Corporation Trust Company, 1209 Orange Street,

Wilmington, Delaware, 1980. Upon information and belief, Porsche Cars North

America, Inc. bears the primary responsibility for the importation, marketing, and

sales of Porsche-branded products within the United States that either under the

doctrine of equivalents, or directly and/or indirectly infringe the ‘151 Patent..

37. Upon information and belief, further discovery will reveal additional

details regarding the division of responsibilities amongst Porsche-family entities.

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Dr. Ing. h.c. F. Porsche AG and Porsche Cars of North America, Inc. are referred to

collectively as “Porsche” or “Porsche AG.”

P. DEI Holdings, Inc.

38. Upon information and belief, DEI Holdings, Inc. is a Florida corporation

with its principal place of business at One Viper Way, Vista, California 92083. DEI

Holdings, Inc. is in the business of developing, making, offering for sale, selling,


related software and components thereof including, without limitation, vehicle

security systems, and their respective on board components that are

manufactured outside of the United States. Moreover, said product either under

the doctrine of equivalents, or directly and/or indirectly infringe the ‘151 Patent.

DEI Holdings, Inc. is the parent corporation of Respondent Directed Electronics,

Inc.

39. Upon information and belief, DEI Holdings, Inc. has primary

responsibility for the business planning and support of Directed-branded

products.

Q. Directed Electronics, Inc.

40. Upon information and belief, Directed Electronics, Inc. is a corporation

organized and existing under the laws of the State of California, having its

principal place of business at One Viper Way, Vista, California 92083. Directed

Electronics, Inc. is responsible for operations that use, sell, market, distribute,

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manufacture, sells for importation, imports, and/or sells after importation into the

United States product that either under the doctrine of equivalents, or directly

and/or indirectly infringe the ‘151 Patent..

41. Upon information and belief, DEI Holdings, Inc. and Directed Electronics,

Inc. bear the primary responsibility for the importation, marketing, and sales of

Directed Electronics-branded products within the United States. Upon information

and belief, further discovery will reveal additional details regarding the division of

responsibilities amongst Directed Electronics-family entities. DEI Holdings, Inc.

and Directed Electronics, Inc. are referred to collectively as “Directed Electronics.”

R. Samsung Electronics Co., Ltd.

42. Upon information and belief, Samsung Electronics Co., Ltd. is a

corporation organized under the laws of South Korea with its principal place of

business located at Samsung Main Building, 250, Taepyeongno 2-ga, Jung-gu, Seoul

100-742, Republic of Korea. Further, Samsung Electronics Co., Ltd. is in the


supporting products incorporating vehicular smartwatch systems, related

software and components thereof including, without limitation, smartwatches,

and their respective components that are manufactured outside of the United


directly and/or indirectly infringe the ‘151 Patent. Samsung Electronics Co., Ltd. is

the parent corporation of Respondents Samsung Electronics America, Inc. and

Samsung Telecommunications America LLC. Samsung Electronics Co., Ltd. has

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primary responsibility for the business planning and manufacturing of Samsung-

branded products

S. Samsung Electronics America, Inc.

43. Samsung Electronics America, Inc. is a New York corporation and a

subsidiary of Samsung Electronics Co., Ltd. This Respondent’s principal place of

business is located at 85 Challenger Rd., Ridgefield Park, NJ, 07660. It may be

contacted with process through its registered agent in the Commonwealth of

Virginia, CT Corporation System, 4701 Cox Rd., Suite 301, Glen Allen, Virginia

23060-6802. Samsung Electronics America, Inc. is responsible for operations that

use, sell, market, distribute, manufacture, sells for importation, imports, and/or

sells after importation into the United States product that either under the

doctrine of equivalents, or directly and/or indirectly infringe the ‘151 Patent.

T. Samsung Telecommunications America LLC

44. Samsung Telecommunications America LLC is a Delaware corporation

and a subsidiary of Samsung Electronics Co., Ltd. This Respondent’s principal

place of business is located at 1301 E. Lookout Drive, Richardson, Texas 75082. It

may be contacted with process through its registered agent in the Commonwealth

of Virginia, Corporation Service Company, 11 S. 12th St., PO Box 1463, Richmond,

Virginia 23218. Samsung Telecommunications America LLC is responsible for



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Patent.

45. Upon information and belief, Samsung Electronics America, Inc. and

Samsung Telecommunications America LLC are subsidiaries of Samsung

Electronics Co., Ltd. and bear the primary responsibility for the marketing and

sales of Samsung-branded products within the United States. Upon information


responsibilities amongst Samsung-family entities. Samsung Electronics Co., Ltd.,

Samsung Electronics America, Inc., and Samsung Telecommunications America

LLC are referred to collectively as “Samsung.”

U. LG Corporation

46. Upon information and belief, LG Corporation is a South Korea

corporation with its principal place of business in Seoul, South Korea. On

information and belief, this Respondent may be contacted with process at its

principal place of business at LG Twin Towers, 20 Yeouido-dong, Yeongdeungpo-

gu, Seoul 150 - 721, South Korea. Further, LG Corporation is in the business of

developing, making, offering for sale, selling, importing, and supporting products

incorporating vehicular smartwatch systems, related software and components

thereof including, without limitation, smartwatches, and their respective

components that are manufactured outside of the United States. Moreover, said

product either under the doctrine of equivalents, or directly and/or indirectly

infringe the ‘151 Patent. LG Corporation is the parent corporation of Respondents

LG Electronics U.S.A., Inc. and LG Electronics MobileComm U.S.A., Inc. LG

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Corporation has primary responsibility for the business planning and

manufacturing of LG-branded products.

V. LG Electronics U.S.A., Inc.

47. Upon information and belief, LG Electronics U.S.A., Inc. is a Delaware

corporation with its principal place of business at 1000 Sylvan Avenue Englewood

Cliffs, New Jersey, U.S.A. 07632, U.S.A. This Respondent may be contacted with

process in Delaware through its registered agent, United States Corporation

Company, 2711 Centerville Road, Suite 400, Wilmington, Delaware 19808.

48. LG Electronics U.S.A., Inc. is a subsidiary of LG Corporation and is




the ‘151 Patent.. Upon information and belief, further discovery will reveal

additional details regarding the division of responsibilities amongst LG-family

entities.

W. LG Electronics MobileComm U.S.A., Inc.

49. LG Electronics MobileComm U.S.A., Inc. (“LGM”) is a California

corporation with its principal place of business at 10225 Willow Creek Road, San

Diego, California 92131, and at least one other place of business in the State of

California at 2570 North 1st Street, #360, San Jose, California 95131. On

information and belief, LGM is a wholly-owned subsidiary of LG Electronics U.S.A.,

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Inc. On information and belief, LGM manufactures, has manufactured, uses, offers

for sale, sells and/or imports into the United States various consumer electronics

products, including smartwatches, conducts primary market and product research

for LG Corporation and LG Electronics U.S.A., Inc. LGM is responsible for


imports, and/or sells after importation into the United States that either under the

doctrine of equivalents, or directly and/or indirectly infringe the ‘151 Patent. LG

Corporation, LG Electronics U.S.A., Inc., and LG Electronics MobileComm U.S.A., Inc.

are referred to collectively as “LG.”

X. Sony Corporation

50. Upon information and belief, Sony Corporation is a corporation

organized under the laws of Japan with its principal place of business at 1-7-1

Konan, Minato-ku, Tokyo 108-0075, Japan. Upon information and belief, Sony

Corporation is in the business of developing, making, manufacturing, offering for

sale, selling, importing, and supporting products incorporating vehicular

smartwatch systems, related software and components thereof including, without

limitation, smartwatches, and their respective components that are manufactured

outside of the United States. Moreover, said product either under the doctrine of

equivalents, or directly and/or indirectly infringe the ‘151 Patent. Sony

Corporation is the parent corporation of Respondents Sony Corporation of

America and Sony Electronics, Inc. Sony Corporation has primary responsibility

for the business planning and manufacturing of Sony-branded products.

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Y. Sony Corporation of America

51. Upon information and belief, Sony Corporation of America ("Sony

America") is a corporation organized under the laws of the State of New York with

its principal place of business at 550 Madison Avenue, New York, New York 10022.

Upon information and belief, Sony America manufactures, markets, sells for

importation, imports, and/or sells after importation into the United States

products that either under the doctrine of equivalents, or directly and/or

indirectly infringe the ‘151 Patent.

Z. Sony Electronics, Inc.

52. Upon information and belief, Sony Electronics, Inc. ("Sony Electronics")

is a corporation organized under the laws of the State of California with its

principal place of business at 16530 Via Esprillo, San Diego, CA 92127. Upon

information and belief, Sony Electronics manufacturers, markets, sells for




53. Upon information and belief, Sony America is a subsidiary of Sony

Corporation, and Sony Electronics is a subsidiary of Sony America. Upon

information and belief, Sony America is responsible for business planning and

marketing Sony-branded products within the United States. Upon information and

belief, Sony Electronics has primary responsibility for the marketing and sales of

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Sony-branded electronic products within the United States. Upon information and

belief, further discovery will reveal additional details regarding the division of

responsibilities amongst Sony family entities. Sony Corporation, Sony Corporation

of America, and Sony Electronics, Inc., are referred to collectively as “Sony.”

AA. Lenovo Group Limited

54. Upon information and belief, Lenovo Group Limited is a corporation

organized and existing under the laws of China, having a principal place of

business at No. 6 Chuang Ye Road, Haidian District, 100085, Beijing, China. Lenovo

Group Limited is in the business of developing, making, manufacturing, offering

for sale, selling, importing, and supporting products incorporating vehicular

smartwatch systems, related software and components thereof including, without

limitation, smartwatches, and their respective components that are manufactured

outside of the United States. Moreover, said product either under the doctrine of

equivalents, or directly and/or indirectly infringe the ‘151 Patent. Lenovo Group

Limited is the parent corporation of Respondents Lenovo (United States), Inc.,

Lenovo Holding Company and Motorola Mobility, Inc. Lenovo Group Limited has

primary responsibility for the business planning and manufacturing of Lenovo and

Motorola branded products.

BB. Lenovo (United States), Inc.

55. Upon information and belief, Lenovo (United States), Inc. is a

corporation organized and existing under the laws of Delaware, having a principal

place of business at The Centre at Purchase, One Manhattanville Road, Purchase,

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New York, 10577. Upon information and belief, Lenovo (United States), Inc.

manufacturers, markets, sells for importation, imports, and/or sells after

importation into the United States products that either under the doctrine of

equivalents, or directly and/or indirectly infringe the ‘151 Patent.

CC. Lenovo Holding Company, Inc.

56. Upon information and belief, Lenovo Holding Company, Inc. is a

corporation organized and existing under the laws of Delaware having a principal

place of business at 1009 Think Place, Morrisville, North Carolina, 27560. Upon

information and belief, Lenovo Holding Company Inc. manufacturers, markets,

sells for importation, imports, and/or sells after importation into the United States



57. Upon information and belief, Lenovo (United States), Inc. and Lenovo

Holding Company, Inc. are subsidiaries of Lenovo Group Limited and bear the

primary responsibility for the marketing and sales of Lenovo-branded products


reveal additional details regarding the division of responsibilities amongst

Lenovo-family entities. Lenovo (United States), Inc., Lenovo Holding Company,

and Lenovo Group Limited are referred to collectively as “Lenovo.”

25

DD. Motorola Mobility, Inc.

58. Upon information and belief, Motorola Mobility, Inc. is a wholly-owned

subsidiary of Lenovo Group Limited organized under the laws of Delaware with its

principal place of business at 222 W. Merchandise Mart Plaza, Suite 1800, Chicago,

Illinois 60654. Motorola Mobility, Inc. is in the business of developing, making,

manufacturing, offering for sale, selling, importing, and supporting products

incorporating vehicular smartwatch systems, related software and components

thereof including, without limitation, smartwatches, and their respective

components that are manufactured outside of the United States. Moreover, said

product either under the doctrine of equivalents, or directly and/or indirectly

infringe the ‘151 Patent.

59. Upon information and belief, further discovery will reveal additional

details regarding the division of responsibilities amongst Motorola-family entities.

Motorola Mobility, Inc. is referred to as “Motorola.”

EE. Apple, Inc.

60. Upon information and belief, Apple, Inc. is a corporation organized and

existing under the laws of California, having a principal place of business at 1

Infinite Loop, Cupertino, CA 95014. Apple’s registered agent, registered with the

Texas State Secretary of State’s Office, is CT Corp. Systems at 350 N. St. Paul Street,

Suite 2900, Dallas, TX 75201

26

61. Upon information and belief, Apple, Inc. is in the business of developing,

making, manufacturing, offering for sale, selling, importing, and supporting

products incorporating vehicular smartwatch systems, related software and

components thereof including, without limitation, smartwatches, and their

respective components that are manufactured outside of the United States.

Moreover, said product either under the doctrine of equivalents, or directly

and/or indirectly infringe the ‘151 Patent. Additionally, Apple, Inc. bears the

primary responsibility for the marketing and sales of Apple-branded products


reveal additional details regarding the division of responsibilities amongst Apple-

family entities.

FF. Station Digital Media, Inc.

62. Station Digital Media, Inc. is a corporation organized and existing under

the laws of California, having a principal place of business at 111 W Ocean Blvd.

4th Floor Long Beach, CA 90802. Station Digital’s registered agent, registered with

the California State Secretary of State’s Office, is 17140 Bernardo Center Drive,

Suite 354, San Diego, CA 92128.

63. Upon information and belief, Station Digital Media, Inc. is in the business

of developing, making, manufacturing, offering for sale, selling, importing, and


software and components thereof including, without limitation, smartwatches and

software thereof, and their respective components that are manufactured outside

of the United States. Moreover, said product either under the doctrine of

27

equivalents, or directly and/or indirectly infringe the ‘151 Patent. Additionally,

Station Digital Media, Inc. bears the primary responsibility for the development of

infringing Hyundai-branded products within the United States. Upon information


responsibilities amongst Hyundai family entities and Station Digital Media, Inc.

GG. Rego Apps, LLC

64. Upon information and belief, Rego Apps, LLC is a corporation organized

and existing under the laws of Florida, having a principal place of business at 217

Acadia Terrace, Celebration, Florida 34747.

65. Upon information and belief, Rego Apps, LLC is in the business of

developing, making, manufacturing, offering for sale, selling, importing, and


software and components thereof including, without limitation, smartwatches and

software thereof, and their respective components that are manufactured outside

of the United States. Moreover, said product either under the doctrine of

equivalents, or directly and/or indirectly infringe the ‘151 Patent. Rego Apps, LLC

bears the primary responsibility for the development of infringing smartwatch

products, component and/or software. Upon information and belief, further

discovery will reveal additional details regarding the division of responsibilities

amongst Rego Apps, LLC family entities.

28

IV. TECHNOLOGY AND PRODUCTS AT ISSUE

66. The technology at issue relate to smartwatch vehicular systems and

certain components and software therein.

67. Specifically, the Accused Products smartwatch vehicular systems,

components, and software therein, such as wristwatches and their on-board

components, operating systems, and/or other software. These smart watches and

connected vehicle devices, components, operating systems, and other software are

imported into the United States and in turn used by businesses, institutions,

service providers, and other entities in the United States to supply networks and

transport data, voice, and video. By way of example, the Accused Products may be

deployed on individually owned vehicles or vehicle fleets with dedicated

computing center environments in connection with an organization's servers,

associated data, and/or IT applications and between such items and other

networks such as the Internet. The Accused Products are sold for importation into,

imported into, sold after importation into, and used within the United States by or

on behalf of each Respondent.

V. PATENT IN SUIT

68. From its research and development on vehicle security systems,

including its smartwatch vehicular systems technology, ICC obtained, on June 27,

2006, the duly, properly and legally issued U.S. Patent No. 7,068,151, entitled

"Vehicle Security System." ICC obtained the '151 Patent as assignee of named

29

inventor and ICC founder, Samuel K. Giles, and exclusive licensee of named

inventor Christopher E. Smith. See Exhibits 2, 3 & Confidential Exhibit 52.

69. Generally speaking, the ICC '151 Patent is directed to smartwatch

operated vehicular security systems. The system generally includes a smartwatch

that communicates with an on-board vehicular control unit, thus providing end

users with vehicular security and convenience features such as remote door lock

and unlock, trunk release, and remote engine start.

70. Samuel K. Giles and Christopher E. Smith are the named inventors of

the ICC '151 Patent. As a part of his fiduciary duty with ICC, Samuel K. Giles

assigned all rights, title, and interest in the ICC '151 Patent to ICC. Additionally,

co-inventor Mr. Smith has also exclusively licensed to ICC all substantial rights in

the ’151 patent, including the right to exclude others and to enforce, sue, and

recover damages for past and future infringements. See Exhibit 2 & Confidential

52.

71. Pursuant to Commission Rule 210.12(c), copies of the certified

prosecution history of the ICC Asserted Patent have been submitted with this

Complaint as Appendices A. Pursuant to Commission Rule 210.12(c), the cited

references for the ICC Asserted Patents also have been submitted with this

Complaint as Appendices B.

30

VI. NONTECHNICAL DESCRIPTION OF THE INVENTION

72. Pursuant to United States Patent No. 7,068,151 (‘151 Patent), entitled

"Vehicle Security System," issued on June 27, 2006 and lists Samuel K. Giles and

Christopher E. Smith as its inventors. The ‘151 Patent expires on June 27, 2023.

The ‘151 Patent claims priority to U.S. Provisional Patent App. No. 60/470,566,

filed on May 14, 2003.

73. The ‘151 Patent contains 22 claims, including 1 independent claim and

21 dependent claims. ICC asserts that Respondent's smartwatch enabled vehicular

system components and software therein, and activities relating thereto, infringe

at least system claim 1, and dependent claims 2, 3, 4, 5, 8, 10, 12, 14, 18, 19, 20, 21,

& 22 of the ‘151 Patent, directly or indirectly, either literally or under the doctrine

of equivalents.

74. The ‘151 Patent generally relates to a system for improved

communication between wearable technology devices and connected vehicles.

Further, the ‘151 Patent discusses remote watch design for a car security system.

A user of the smartwatch will not only be able to keep track of the time but also

will be able to arm/lock, disarm/unlock and remotely start their vehicle by

interfacing with the watch. It is common for people to lose or misplace their keys

along with the keyless remote that is attached to the keys. Since the watch is

conveniently located on the users wrist, the user never has to worry about damage

due to dropping it on a hard surface, in liquids (ex. water), or even losing their

keyless remote as you would by having a keyless remote attached to keys or a key

31

chain. If the user ever loses their keys or locks them in a trunk, the remote watch

will allow the user to maintain access to their vehicle.

VII. UNLAWFUL AND UNFAIR ACTS OF RESPONDENTS – PATENT INFRINGEMENT

75. The Respondents have engaged in unlawful and unfair acts including the

sale for importation into the United States, importation into the United States, sale

within the United States after importation, and/or use within the United States

after importation of the Accused Products that infringe one or more of the

following claims (independent claims in bold):

76. Upon information and belief, the Respondents import, sell for

importation, sell after importation into the United States, and/or uses after

importation into the United States Accused Products that infringe the ‘151 Patent.

77. The Accused Products infringe, directly and/or indirectly, at least system

claim 1, and dependent claims 2, 3, 4, 5, 8, 10, 12, 14, 18, 19, 20, 21, & 22 of the

‘151 Patent. Respondents directly and/or indirectly infringe at least system claim

1, and dependent claims 2, 3, 4, 5, 8, 10, 12, 14, 18, 19, 20, 21, & 22 of the ‘151

Patent by importing, selling for importation, selling after importation, and/or

using after importation into the United States the Accused Products. See Exhibits

5-32 (infringement claim charts for U.S. Patent No. 7,068,151). The Accused

Patent Number Asserted Claims

7,068,151 (Independent claim in bold)

Independent 1

Dependent 2, 3, 4, 5, 8, 10, 12, 14, 18, 19, 20, 21, 22

32

Products satisfy all claim limitations system claim 1, and dependent claims 2, 3, 4,

5, 8, 10, 12, 14, 18, 19, 20, 21, & 22 at the time of importation, and Respondents

directly infringe the apparatus claim by importing, selling for importation, selling

after importation, and/or using after importation into the United States the

Accused Products. The Accused Products, at the time of importation, are capable

to dictate the performance of and mimic system claim 1 and all aspects of

dependent claims 2, 3, 4, 5, 8, 10, 12, 14, 18, 19, 20, 21, & 22, and Respondents

directly infringe this claim by importing, selling for importation, selling after

importation, and/or using after importation into the United States the Accused

Products. In addition, as further alleged below, Respondents indirectly infringe

the apparatus claim by importing, selling for importation, selling after

importation, and/or using after importation into the United States the Accused

Products.

78. The Respondents actively induce others, including purchasers and end

users who deploy the Accused Products in their networks, to directly infringe at

least system claim 1, and dependent claims 2, 3, 4, 5, 8, 10, 12, 14, 18, 19, 20, 21, &

22 of the ‘151 Patent. On information and belief, purchasers who deploy the

Accused Products in their networks and make routine use of the Accused

Products, also directly infringe at least system claim 1, and dependent claims 2, 3,

4, 5, 8, 10, 12, 14, 18, 19, 20, 21, & 22 of the ‘151 Patent. Respondents are aware of

the ‘151 Patent at least because the Respondents have had actual knowledge of the

‘151 Patent at least as of June 2 2015, when ICC filed a Complaint asserting the

‘151 Patent against Respondents in the Eastern District of Texas, as discussed in

Section X, below. Further, in light of the above, Respondents knowingly induces

infringement of the ‘151 Patent with specific intent to do so by providing at least

33

manuals, white papers, training, and/or other support, to perform acts intended

by Respondents to cause direct infringement of at least system claim 1, and

dependent claims 2, 3, 4, 5, 8, 10, 12, 14, 18, 19, 20, 21, & 22 of the ‘151 Patent.

79. Respondents contribute to infringement of at least system claim 1, and

dependent claims 2, 3, 4, 5, 8, 10, 12, 14, 18, 19, 20, 21, & 22 of the ‘151 Patent,

including purchasers who deploy the Accused Products in their vehicular systems,

by providing the Accused Products, which are specially made or adapted for use in

an infringement of these claims and are not staple articles of commerce suitable

for substantial non-infringing use. Respondents are aware of the ‘151 Patent at

least because Respondents have had actual knowledge of the ‘151 Patent at least

as of June 2, 2015, when ICC filed a Complaint asserting the ‘151 Patent against

Respondents in the Eastern District of Texas, as discussed in Section X, below.

Further, having debuted the technology during the 2014 international SEMA trade

show, Respondents are aware of the ‘151 Patent. In light of these allegations,

Respondents had knowledge that the Accused Products were specially made or

adapted for use in an infringement of the ‘151 Patent and not a staple article of

commerce suitable for substantial non-infringing use.

80. Claim charts comparing the ‘151 Patent's asserted independent system

claim 1, and dependent claims 2, 3, 4, 5, 8, 10, 12, 14, 18, 19, 20, 21, & 22 to

Respondents’ Accused Products are attached as Exhibits 5-32. Additional

evidence of importation is set forth below.

34


81. Upon information and belief, Hyundai manufactures, markets, sells for


products that directly and/or indirectly infringe the ‘151 Patent ("the Accused

Hyundai Products").

82. The Accused Hyundai Products include vehicles sold under the following

names and model numbers:

83. Upon information and belief, the Accused Hyundai Products are

manufactured, assembled, and/or packaged outside of the United States. These

same products are then imported into the United States, sold for importation into

the United States, and/or sold after importation into the United States by Hyundai.

These acts of Hyundai constitute direct infringement of the ‘151 Patent. Claim

charts demonstrating how the Accused Hyundai Products directly infringe the

‘151 Patent are attached as Exhibit 6.

Company

Hyundai

Azera Elantra Equus Genesis Genesis Coupe

Sonata Sonata Hybrid Tucson Veloster

Azera Elantra Elantra Coupe Elantra GT Equus

Genesis Genesis Coupe Sante Fe Sante Fe Sport Sonata

Sonata Hybrid Tucson Veloster

Azera Elantra GT Genesis Genesis Coupe Sante Fe

Sante Fe Sport Sonata Sonata Hybrid Veloster

2012 Azera Sonata Sonata Hybrid Veloster

2013

Product - Bluelink ®

Models

2015

2014

35

84. These acts of Hyundai also constitute contributory and induced

infringement of the ‘151 Patent. Claim charts demonstrating how the Accused

Hyundai Products indirectly infringe the ‘151 Patent is attached as Exhibit 6.

85. Hyundai is a contributory infringer because the Accused Hyundai

Products are not staple articles of commerce and are not suitable for any

substantial non-infringing use. To the contrary, their sole, substantial use is to be

used in infringing systems as shown in the attached claim charts. Hyundai has

previously been given actual knowledge of the ‘151 Patent at least as of June 2,

2015, when ICC filed a Complaint asserting the ‘151 Patent against Respondents in

the Eastern District of Texas of their contributory infringement, and Hyundai

knows that the Accused Hyundai Products are specially adapted for use in

practicing the inventions of the ‘151 Patent.

B. General Motors Company & OnStar, LLC.

86. GM manufactures, markets, sells for importation, imports, and/or sells

after importation into the United States products that directly and/or indirectly

infringe the ‘151 Patent ("the Accused GM Products").

87. The Accused GM Products include vehicles sold under the following


36

Company

GM / OnStar

Camaro Cruze Malibu Spark Tahoe

Captiva Equinox Orlando Spark EV Traverse

Colorado Express Silverado SS Performance Sedan Trax

Corvette Impala Sonic Suburban Volt

2015 Buick Enclave Encore LaCrosse Regal Verano

Acadia Canyon Denali Savana Sierra

Terrain Yukon Yukon XL

ATS CTS CTS-V ELR Escalade

Escalade ESV SRX Stretch Limo XTS

Avalanche Camaro Captiva Corvette Cruze

Equinox Express Impala Malibu Orlando

Silverado Sonic Spark SS Suburban

Tahoe Traverse Trax Volt


Acadia Denali Savana Sierra Terrain

Yukon

ATS CTS ELR Escalade SRX

XTS

Avalanche Camaro Captiva Cruze Equinox

Express Impala Malibu Silverado Sonic

Spark Suburban Tahoe Traverse Volt


Acadia Denali Savana Sierra Terrain

Yukon

2013 Cadillac ATS CTS Escalade SRX XTS

Avalanche Camaro Captiva Cruze Equinox

Express Impala Malibu Silverado Sonic

Suburban Tahoe Traverse Volt

2012 Buick Enclave LaCrosse Regal Verano

2012 GMC Acadia Savana Sierra Terrain Yukon

2012 Cadillac CTS Escalade SRX

Avalanche Camaro Cruze Equinox Express

HHR Impala Malibu Suburban Tahoe

Traverse Volt

2011 Buick Enclave LaCrosse Lucerne Regal

2011 GMC Acadia Savana Sierra Terrain Yukon

2011 Cadillac CTS DTS Escalade SRX

Avalanche HHR Impala Malibu Silverado

Suburban Tahoe Traverse

2010 Buick Enclave Lucerne

2010 GMC Acadia Yukon

2010 Cadillac DTS Escalade

2014 Chevrolet

Product - RemoteLink ®

Model

2015 Chevrolet

2015 GMC

2015 Cadillac

2010 Chevrolet

2014 GMC

2014 Cadillac

2013 Chevrolet

2013 GMC

2012 Chevrolet

2011 Chevrolet

37

88. On information and belief, the Accused GM Products are, whole or in

part, manufactured, assembled, and/or packaged outside of the United States.

These same products are then imported into the United States, sold for

importation into the United States, and/or sold after importation into the United

States by GM. These acts of GM constitute direct infringement of the ‘151 Patent.

Claim charts demonstrating how the Accused GM Products directly infringe the

‘151 Patent are attached as Exhibit 8.

89. These acts of GM also constitute contributory and induced infringement

of the ‘151 Patent. Claim charts demonstrating how the Accused GM Products

indirectly infringe the ‘151 Patent is attached as Exhibit 8.

90. GM is a contributory infringer because the Accused GM Products are not

staple articles of commerce and are not suitable for any substantial non-infringing

use. To the contrary, their sole, substantial use is to be used in infringing systems

as shown in the attached claim charts. GM has previously been given actual

knowledge of the ‘151 Patent at least as of June 2, 2015, when ICC filed a

Complaint asserting the ‘151 Patent against Respondents in the Eastern District of

Texas of their contributory infringement, and GM knows that the Accused GM

Products are specially adapted for use in practicing the inventions of the ‘151

Patent.

C. Volkswagen AG

91. Upon information and belief, Volkswagen manufactures, markets, sells

for importation, imports, and/or sells after importation into the United States

38


Volkswagen Products").

92. The Accused Volkswagen Products include vehicles sold under the

following names and model numbers:

93. On information and belief, the Accused Volkswagen Products are



the United States, and/or sold after importation into the United States by

Volkswagen. These acts of Volkswagen constitute direct infringement of the ‘151

Patent. Claim charts demonstrating how the Accused Volkswagen Products

directly infringe the ‘151 Patent is attached as Exhibit 10.

94. These acts of Volkswagen also constitute contributory and induced


Volkswagen Products indirectly infringe the ‘151 Patent is attached as Exhibit 10.

95. Volkswagen is a contributory infringer because the Accused Volkswagen



used in infringing systems as shown in the attached claim charts. Volkswagen has


Company

Volkswagen

2015

Model

e-Golf

Product

39


the Eastern District of Texas of their contributory infringement, and Volkswagen

knows that the Accused Volkswagen Products are specially adapted for use in


D. Audi AG

96. Upon information and belief, Audi manufactures, markets, sells for



Audi Products").

97. The Accused Audi Products include vehicles sold under the following


98. On information and belief, the Accused Audi Products are manufactured,

assembled, and/or packaged outside of the United States. These same products

are then imported into the United States, sold for importation into the United

States, and/or sold after importation into the United States by Audi. These acts of

Audi constitute direct infringement of the ‘151 Patent. Claim charts demonstrating

how the Accused Audi Products directly infringe the ‘151 Patent are attached as

Exhibit 12.

Company

Audi

2015

Product

Model

Q7

40

99. These acts of Audi also constitute contributory and induced


Audi Products indirectly infringe the ‘151 Patent is attached as Exhibit 12.

100. Audi is a contributory infringer because the Accused Audi Products are

not staple articles of commerce and are not suitable for any substantial non-

infringing use. To the contrary, their sole, substantial use is to be used in

infringing systems as shown in the attached claim charts. Audi has previously been

given actual knowledge of the ‘151 Patent at least as of June 2, 2015, when ICC

filed a Complaint asserting the ‘151 Patent against Respondents in the Eastern

District of Texas of their contributory infringement, and Audi knows that the

Accused Audi Products are specially adapted for use in practicing the inventions of

the ‘151 Patent.

E. BMW

101. Upon information and belief, BMW manufactures, markets, sells for



BMW Products").

102. The Accused BMW Products include vehicles sold under the following


41

103. On information and belief, the Accused BMW Products are



the United States, and/or sold after importation into the United States by BMW.

These acts of BMW constitute direct infringement of the ‘151 Patent. Claim charts

demonstrating how the Accused BMW Products directly infringe the ‘151 Patent

are attached as Exhibit 14.

104. These acts of BMW also constitute contributory and induced


BMW Products indirectly infringe the ‘151 Patent is attached as Exhibit 14.

105. BMW is a contributory infringer because the Accused BMW Products are



infringing systems as shown in the attached claim charts. BMW has previously

been given actual knowledge of the ‘151 Patent at least as of June 2, 2015, when

ICC filed a Complaint asserting the ‘151 Patent against Respondents in the Eastern

District of Texas of their contributory infringement, and BMW knows that the

Accused BMW Products are specially adapted for use in practicing the inventions

of the ‘151 Patent.

Company

BMW

2015

2015

Product - BMW I Remote®

Model

i8

i3

42

F. Dr. Ing. h.c. F. Porsche AG

106. Upon information and belief, Porsche AG manufactures, markets, sells

for importation, imports, and/or sells after importation into the United States


Porsche AG Products").

107. The Accused Porsche AG Products include vehicle sold under the


108. On information and belief, the Accused Porsche AG Products are



the United States, and/or sold after importation into the United States by Porsche

AG. These acts of Porsche AG constitute direct infringement of the ‘151 Patent.

Claim charts demonstrating how the Accused Porsche AG Products directly

infringe the ‘151 Patent are attached as Exhibit 16.

109. These acts of Porsche AG also constitute contributory and induced


Porsche AG Products indirectly infringe the ‘151 Patent is attached as Exhibit 16.

Company

Porsche AG

Panamera 918 Spyder Macan Cayenne

Panamera 918 Spyder Macan Cayenne

2015

2014

Product - Porsche Car Connect ®

Models

43

110. Porsche AG is a contributory infringer because the Accused Porsche AG



used in infringing systems as shown in the attached claim charts. Porsche AG has



the Eastern District of Texas of their contributory infringement, and Porsche AG

knows that the Accused Porsche AG Products are specially adapted for use in


G. DEI Holdings, Inc.

111. Upon information and belief, Directed Electronics manufactures,

markets, sells for importation, imports, and/or sells after importation into the

United States products that directly and/or indirectly infringe the ‘151 Patent

("the Accused Directed Electronics Products").

112. The Accused Directed Electronics Products include vehicle security

systems sold under the following names and model numbers:

Company

Directed Electronics

Viper SmartStart

Model

VSS5000

VMS250

Product

VSS3001

44

113. On information and belief, the Accused Directed Electronics Products are



the United States, and/or sold after importation into the United States by Directed

Electronics. These acts of Directed Electronics constitute direct infringement of

the ‘151 Patent. Claim charts demonstrating how the Accused Directed Electronics

Products directly infringe the ‘151 Patent are attached as Exhibit 18.

114. These acts of Directed Electronics also constitute contributory and

induced infringement of the ‘151 Patent. Claim charts demonstrating how the

Accused Directed Electronics Products indirectly infringe the ‘151 Patent is

attached as Exhibit 18.

115. Directed Electronics is a contributory infringer because the Accused

Directed Electronics Products are not staple articles of commerce and are not

suitable for any substantial non-infringing use. To the contrary, their sole,

substantial use is to be used in infringing systems as shown in the attached claim

charts. Directed Electronics has previously been given actual knowledge of the

‘151 Patent at least as of June 2, 2015, when ICC filed a Complaint asserting the

‘151 Patent against Respondents in the Eastern District of Texas of their

contributory infringement, and Directed Electronics knows that the Accused

Directed Electronics Products are specially adapted for use in practicing the

inventions of the ‘151 Patent.

45

H. Samsung Electronics Co., Ltd.

116. Upon information and belief, Samsung manufactures, markets, sells for



Samsung Products").

117. The Accused Samsung Products include smartwatches sold under the


118. On information and belief, the Accused Samsung Products are




Samsung. These acts of Samsung constitute direct infringement of the ‘151 Patent.

Claim charts demonstrating how the Accused Samsung Products directly infringe

the ‘151 Patent are attached as Exhibit 20.

119. These acts of Samsung also constitute contributory and induced


Samsung Products indirectly infringe the ‘151 Patent is attached as Exhibit 20.

Company

Samsung

Gear Live

Product

Model

Galaxy Gear 2 (tizen)

Galaxy Gear 2 (Andriod Wear)

46

120. Samsung is a contributory infringer because the Accused Samsung



used in infringing systems as shown in the attached claim charts. Samsung has



the Eastern District of Texas of their contributory infringement, and Samsung

knows that the Accused Samsung Products are specially adapted for use in


I. LG Corporation

121. Upon information and belief, LG manufactures, markets, sells for

importation, import, and/or sells after importation into the United States products

that directly and/or indirectly infringe the ‘151 Patent ("the Accused LG

Products").

122. The Accused LG Products include smartwatches sold under the following


Company

LG

G Watch R

Model

G Watch

Product

47

123. On information and belief, the Accused LG Products are manufactured,

assembled, and/or packaged outside of the United States. These same products

are then imported into the United States, sold for importation into the United

States, and/or sold after importation into the United States by LG. These acts of LG

constitute direct infringement of the ‘151 Patent. Claim charts demonstrating how

the Accused LG Products directly infringe the ‘151 Patent are attached as Exhibit

22.

124. These acts of LG also constitute contributory and induced infringement

of the ‘151 Patent. Claim charts demonstrating how the Accused LG Products

indirectly infringe the ‘151 Patent is attached as Exhibit 22.

125. LG is a contributory infringer because the Accused LG Products are not

staple articles of commerce and are not suitable for any substantial non-infringing

use. To the contrary, their sole, substantial use is to be used in infringing systems

as shown in the attached claim charts. LG has previously been given actual

knowledge of the ‘151 Patent at least as of June 2, 2015, when ICC filed a

Complaint asserting the ‘151 Patent against Respondents in the Eastern District of

Texas of their contributory infringement, and LG knows that the Accused LG

Products are specially adapted for use in practicing the inventions of the ‘151

Patent.

J. Sony Corporation

126. Upon information and belief, Sony manufactures, markets, sells for


48

that directly and/or indirectly infringe the ‘151 Patent ("the Accused Sony

Products").

127. The Accused Sony Products include smartwatches sold under the


128. Upon information and belief, the Accused Sony Products are



the United States, and/or sold after importation into the United States by Sony.

These acts of Sony constitute direct infringement of the ‘151 Patent. Claim charts

demonstrating how the Accused Sony Products directly infringe the ‘151 Patent


129. These acts of Sony also constitute contributory and induced


Sony Products indirectly infringe the ‘151 Patent is attached as Exhibit 24.

130. Sony is a contributory infringer because the Accused Sony Products are



infringing systems as shown in the attached claim charts. Sony has previously


Company

Sony Model

Smartwatch 3

Product

49


District of Texas of their contributory infringement, and Sony knows that the

Accused Sony Products are specially adapted for use in practicing the inventions of

the ‘151 Patent.

K. Lenovo Group Limited

131. Upon information and belief, Lenovo manufactures, markets, sells for



Lenovo Products").

132. The Accused Lenovo Products include smartwatches sold under the


133. On information and belief, the Accused Lenovo Products are



the United States, and/or sold after importation into the United States by Lenovo.

These acts of Lenovo constitute direct infringement of the ‘151 Patent. Claim

charts demonstrating how the Accused Lenovo Products directly infringe the ‘151

Patent are attached as Exhibit 26.

Company

Lenovo / Motorola

Moto 360

Product

Model

50

134. These acts of Lenovo also constitute contributory and induced


Lenovo Products indirectly infringe the ‘151 Patent is attached as Exhibit 26.

135. Lenovo is a contributory infringer because the Accused Lenovo Products

are not staple articles of commerce and are not suitable for any substantial non-


infringing systems as shown in the attached claim charts. Lenovo has previously



District of Texas of their contributory infringement, and Lenovo knows that the

Accused Lenovo Products are specially adapted for use in practicing the

inventions of the ‘151 Patent.

L. Motorola Mobility, Inc.

136. Upon information and belief, Motorola manufactures, markets, sells for


that directly and/or indirectly infringe the ‘151 Patent ("the Accused Motorola

Products").

137. The Accused Motorola Products include smartwatches sold under the


Company

Lenovo / Motorola

Moto 360

Product

Model

51

138. On information and belief, the Accused Motorola Products are




Motorola. These acts of Motorola constitute direct infringement of the ‘151 Patent.

Claim charts demonstrating how the Accused Motorola Products directly infringe

the ‘151 Patent are attached as Exhibit 26.

139. These acts of Motorola also constitute contributory and induced


Motorola Products indirectly infringe the ‘151 Patent is attached as Exhibit 26.

140. Motorola is a contributory infringer because the Accused Motorola



used in infringing systems as shown in the attached claim charts. Motorola has



the Eastern District of Texas of their contributory infringement, and Motorola

knows that the Accused Motorola Products are specially adapted for use in


52

M. Apple, Inc.

141. Apple manufactures, markets, sells for importation, import, and/or sells

after importation into the United States products that directly and/or indirectly

infringe the ‘151 Patent ("the Accused Apple Products").

142. The Accused Apple Products include smartwatches sold under the


143. On information and belief, the Accused Apple Products are



the United States, and/or sold after importation into the United States by Apple.

These acts of Apple constitute direct infringement of the ‘151 Patent. Claim charts

demonstrating how the Accused Apple Products directly infringe the ‘151 Patent


144. These acts of Apple also constitute contributory and induced


Apple Products indirectly infringe the ‘151 Patent is attached as Exhibit 28.

145. Apple is a contributory infringer because the Accused Apple Products

are not staple articles of commerce and are not suitable for any substantial non-

Company

Apple

Product

Model

Apple Watch

53


infringing systems as shown in the attached claim charts. Apple has previously



District of Texas of their contributory infringement, and Apple knows that the

Accused Apple Products are specially adapted for use in practicing the inventions


N. Station Digital Media, Inc.

146. Station Digital manufactures and develops for importation, import,

and/or sells after importation into the United States products that directly and/or

indirectly infringe the ‘151 Patent ("the Accused Station Digital Products").

147. The Accused Station Digital Products include smartwatch vehicular

systems components and/or software sold under the following names and model

numbers:

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148. On information and belief, the Accused Station Digital Products are

developed, manufactured, assembled, and/or packaged outside of the United

States. These same products are then imported into the United States, sold for

importation into the United States, and/or sold after importation into the United

States by Hyundai Motor Company. These acts of Station Digital constitute direct


Station Digital Products directly infringe the ‘151 Patent are attached as Exhibit

30.

149. These acts of Station Digital also constitute contributory and induced


Station Digital Products indirectly infringe the ‘151 Patent is attached as Exhibit

30.

150. Station Digital is a contributory infringer because the Accused Station

Digital Products are not staple articles of commerce and are not suitable for any


used in infringing systems as shown in the attached claim charts. Station Digital

has previously been given actual knowledge of the ‘151 Patent at least as of June 2,


the Eastern District of Texas of their contributory infringement, and Station Digital

knows that the Accused Station Digital Products are specially adapted for use in


55

O. Rego Apps, LLC

151. Upon information and belief, Rego manufactures and develops for


that directly and/or indirectly infringe the ‘151 Patent ("the Accused Rego

Products").

152. The Accused Rego Products include smartwatch vehicular systems

components and/or software sold under the following names and model numbers:

153. On information and belief, the Accused Rego Products are imported into

the United States, sold for importation into the United States, and/or sold after

importation into the United States by Rego. These acts of Rego constitute direct


Rego Products directly infringe the ‘151 Patent are attached as Exhibit 32.

154. These acts of Rego also constitute contributory and induced


Rego Products indirectly infringe the ‘151 Patent is attached as Exhibit 32.

155. Rego is a contributory infringer because the Accused Rego Products are


Company

BMW

2015

Product

Model

Rego S

56


infringing systems as shown in the attached claim charts. Rego has previously



District of Texas of their contributory infringement, and Rego knows that the

Accused Rego Products are specially adapted for use in practicing the inventions


VIII. SPECIFIC INSTANCES OF UNFAIR IMPORTATION AND SALE

156. The Proposed Respondents have sold for importations, imported, and/or

sold after importation in the United States Accused Products as identified below.

157. The United States National Highway Traffic Safety Administration

requires that all “passenger cars, multipurpose passenger vehicles, trucks, buses,

trailers (including trailer kits), incomplete vehicles, and motorcycles” bear a 17-

character vehicle identification number (VIN). (49 C.F.R. 565.1 et seq.) The VIN is

assigned by the automobile manufacturer, and must be affixed on the car in a

location that is not designed to be removed. Typically, the VIN is listed at least on

a sticker inside the driver’s door panel, as well as on a panel on the dash-board

facing out the windshield just above the steering wheel.

158. The first three digits of the VIN identify the manufacturer, make and type

of motor vehicle. The first digit typically identifies the country of final assembly,

for example vehicles with VIN’s that begin in the letter “J” are manufactured in

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Japan, those that begin in the number “3” are manufactured in Mexico, etc. A

sampling of codes as relevant to the exemplary Accused Products follows:

2 = Canada J = Japan 3 = Mexico K = Republic of Korea

W = Germany Y = Sweden S = England

159. The VIN of each of the exemplary Accused Products begins in a character

indicating that the automobile was made outside the United States. The

exemplary Accused Products were all offered for sale or sold in the United States.

This proves that the exemplary Accused Products were each manufactured abroad

and imported into the United States. The VIN for each exemplary accused product

is identified below and in the supporting claim charts at Exhibits 5-32.

160. Further, the Automobile Information Disclosure Act of 1958, 15 U.S.C. §§

1231-1233, requires:

“Every manufacturer of new automobiles distributed in commerce shall… securely

affix to the windshield, or side window of such automobile a label on which such

manufacturer shall endorse clearly, distinctly and legibly true and correct entries

disclosing the following information concerning such automobile - the final

assembly point.”

161. Even for automobiles that were finally assembled in the United States,

many such automobiles use smartwatch vehicular systems manufactured abroad

and imported into the United States. Such products are similarly embodied in the

scope of this Complaint.

58


162. Upon information and belief, Hyundai sells for importation, imports,

and/or sells after importation into the United States the Accused Hyundai

Products, for example, the Hyundai Elantra GT with Blue Link ® smartwatch

application. One 2015 Hyundai Sonata bears the VIN KMHD35LH2FU242485,

indicating that it was manufactured in Ulsan, Korea

163. Further, the Automobile Information Disclosure Act sticker at Exhibit 5

reveals that the Accused Hyundai Products are being imported, distributed for

commerce, and are widely available for sale in the United States.

164. The 2015 Hyundai Elantra GTand other Accused Hyundai Products are

available at Hyundai dealers nationwide, including but not limited to Planet

Hyundai located at 15601 W Colfax Ave Golden, CO 80401.

B. General Motors Company & OnStar, LLC.

165. Upon information and belief, GM sells for importation, imports, and/or

sells after importation into the United States the Accused GM Products, for

example, the Chevrolet, Buick, GMC and Cadillac brands with the OnStar

RemoteLink ® smartwatch application. One 2015 Chevrolet Camaro bears the

VIN 2G1FB3D34E9170555, indicating that it was manufactured Oshawa, ON

Canada.

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reveals that the Accused GM Products are being imported, distributed for


167. The 2015 Chevrolet Camaro and other Accused GM Products are

available at GM dealers nationwide, including but not limited to Medved Chevrolet

Cadillac located at 11001 Interstate 70 Frontage Road North, Wheat Ridge, CO

80033.

C. Volkswagen AG

168. Upon information and belief, Volkswagen sells for importation, imports,

and/or sells after importation into the United States the Accused Volkswagen

Product, for example, the e-Golf with smartwatch keyfob applications. One 2015

e-Golf bears the VIN WVWKP7AU4FW90698 indicating that it was manufactured

in Germany.


reveals that the Accused Volkswagen Product are being imported, distributed for


170. The 2015 e-Golf is available at Volkswagen dealers nationwide, including

but not limited to Coastal Volkswagen located at 1 Saturn Drive Hanover, MA

02339.

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D. Audi AG

171. Upon information and belief, Audi sells for importation, imports, and/or

sells after importation into the United States the Accused Audi Product, for

example, the Audi Q7 with smartwatch keyfob applications. One 2015 Audi Q7

bears the VIN WA1CGAFP5FAO34516, indicating that it was manufactured in

Germany.


reveals that the Accused Audi Product are being imported, distributed for


173. The 2015 Audi Q7 and other Accused Audi Products are available at Audi

dealers nationwide, including but not limited to Audi Denver located at 6060 S

Broadway, Littleton, CO 80121.

E. BMW AG

174. Upon information and belief, BMW sells for importation, imports, and/or

sells after importation into the United States the Accused BMW Product, for

example, the BMW i3 with smartwatch keyfob applications. One 2015 BMW i3

bears the VIN WBY1Z2C50EVX51234, indicating that it was manufactured in

Germany.


reveals that the Accused BMW Products are being imported, distributed for


61

176. The 2015 BMW i3 and other Accused BMW Products are available at

BMW dealers nationwide, including but not limited to BMW of Denver located at

2910 S Havana St, Aurora, CO 80014.

F. Porsche AG

177. Upon information and belief, Porsche AG sells for importation, imports,

and/or sells after importation into the United States the Accused Porsche AG

Product, for example, the Porsche Cayenne Turbo S with smartwatch keyfob

applications. One 2014 Porsche Cayenne Turbo S bears the VIN

WP1AC2A28ELA85911, indicating that it was manufactured in Germany.


reveals that the Accused Porsche AG Products are being imported, distributed for


179. The 2014 Porsche Cayenne Turbo S and other Accused Porsche AG

Products are available at Porsche dealers nationwide, including but not limited to

Stevinson Imports, 5500 South Broadway, Littleton, CO 80121.

G. DEI Holdings, Inc.

180. Upon information and belief, prior to filing this Complaint,

representatives for ICC purchased representative Accused Directed Electronics

Products in the United States. A copy of a receipt of one of those purchases is

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attached hereto as Exhibit 33. The packaging for these Accused Directed

Electronics Products indicates that the products were made outside the United

States. For example, the packaging of the representative Accused Directed

Electronics Product states that it was "Made in China."

H. Samsung Electronics Co., Ltd.


representatives for ICC purchased representative Accused Samsung Products in

the United States. A copy of a receipt of one of those purchases is attached hereto

as Exhibit 34. The packaging for these Accused Samsung Products indicates that

the products were made outside the United States. For example, the packaging of

the representative Accused Samsung Product states that it was "Made in Vietnam."

I. LG Corporation


representatives for ICC purchased representative Accused LG Products in the

United States. A copy of a receipt of one of those purchases is attached hereto as

Exhibit 35. The packaging for these Accused LG Products indicates that the

products were made outside the United States. For example, the packaging of the

representative Accused LG Product states that it was "Made in Korea."

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J. Sony Corporation

183. Upon information and belief, Upon information and belief, prior to filing

this Complaint, representatives for ICC purchased representative Accused Sony

Products in the United States. A copy of a receipt of one of those purchases is

attached hereto as Exhibit 36. The packaging for these Accused Sony Products

indicates that the products were made outside the United States. For example, the

packaging of the representative Accused Sony Product states that it was "Made in

China."

K. Lenovo Group Limited / Motorola Mobility, Inc.


representatives for ICC purchased representative Accused Motorola Products in

the United States. A copy of a receipt of one of those purchases is attached hereto

as Exhibit 37. The packaging for these Accused Motorola Products indicates that

the products were made outside the United States. For example, the packaging of

the representative Accused Motorola Product states that it was "Made in China."

IX. HARMONIZED TARIFF SCHEDULE ITEM NUMBERS

185. Upon information and belief, the Accused Products fall within at least the

8511.80.20, 8525.20.9080, and/or 9102.19.20 classification of the Harmonized

Tariff Schedule ("HTS") of the United States. See Exhibit 4. The identified HTS

number is intended to be for illustration only and is not exhaustive of the products

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accused of infringement in this Complaint. The HTS number is not intended to

limit the scope of the Investigation.

X. FOREIGN PATENTS CORRESPONDING

186. In accordance with Commission Rule 2l0.l2(a)(9)(v), ICC is unaware of any

foreign counterparts to the asserted ‘151 Patent.

XI. RELATED LITIGATION

187. On June 2, 2015, ICC filed a Complaint in the Eastern District of Texas,

accusing Hyundai Motor Company et al et al. of infringing ICC’s Asserted Patents.

See Exhibit 40 (Intellectual Capital Consulting, Ltd. v. Hyundai Motor Company et al.,

Case No. 2:15-cv-00917-RWS-RSP. Discovery has not yet commenced in this

action.

XII. THE DOMESTIC INDUSTRY

188. In accordance with 19 U.S.C. § 1337(a)(2) and 19 U.S.C. § 1337(a)(3), a

domestic industry exists and is also in the process of being established in the

United States in connection with the ‘151 Patent. Specifically, ICC has established

and is actively engaged in developing a domestic industry in the United States in

products covered by the ‘151 Patent. Furthermore, ICC has made significant

investments in engineering hours, research and development, pre-and post-

manufacturing activities in the United States, such as conceptualizing product

requirements and specifications, simulating designs, testing, marketing and selling

65

to support its products practicing the Asserted Patent. Additionally, ICC does not

have any licensees and is not relying upon any license to establish standing or

satisfy the domestic injury requirement.

A. ICC Meets the Economic Prong of the Domestic Industry

Requirement

189. ICC offers a number of products that are covered by the ‘151 Patent, and

is preparing to offer additional such products (the "ICC Patented Products"). Prior

to product development, ICC previously manufactured prototypes of its ICC

Patented Products in working towards commercialization. ICC has completed the

pre-production phase and is marketing the ICC Patented Products under the

Blackhawk Remote Engine Starter (Blackhawk RES) brand.

190. Section 337(a)(3) sets forth the criteria for establishing the "economic

prong." Specifically, "an industry in the United States shall be considered to exist if

there is in the United States, with respect to the articles protected by patent ... (A)

significant investment in plant and equipment; (B) significant employment of

labor or capital; or (C) substantial investment in its exploitation, including

engineering, research and development, or licensing." 19 U.S.C. § 1337(a)(3)(A)-

(C). Satisfaction of anyone of these criteria is sufficient to meet the economic

prong of the domestic industry requirement. Certain Silicon Microphone Packages

and Products Containing the Same, Inv. No. 337-TA-695, Initial Determination, p.

86 (March 24, 2010). In the instant matter, ICC meets aspect § 337(a)(3)(C).

66

191. Moreover, since the ‘151 Patent arises from inventive work in the United

States and ICC has continuously taken the necessary steps toward

commercialization, thus it has sufficiently established a nexus between its

domestic investments and the asserted ‘151 Patent. (See SKG Decl.¶19 Ex. 49).

192. Furthermore, the Federal Circuit had held that the “articles protected by

the patent” requirement is satisfied when the patented technology was found in

both the licensed products and the accused products, concluding: “As long as the

patent covers the article that is the subject of the exclusion proceeding, and as long

as the party seeking relief can show that it has a sufficiently substantial

investment in the exploitation of the intellectual property to satisfy the domestic

industry requirement of the statute, that party is entitled to seek relief under

section 337.” See InterDigital Communications LLC v. ITC, 707 F.3d 1295, 1297-98

(Fed. Cir. 2013). Claim charts showing that the ICC Patented Products practice the

‘151 Patent are attached hereto as Confidential Exhibit 39.

193. ICC’s acquisition licensing investment of the ‘151 Patent rights have

driven the adoption, development and the production of Blackhawk RES domestic

articles, thus the in-licensing activity satisfies 19 U.S.C. § 1337(a)(3)(C). See

Confidential Exhibit 52

i. ICC Has Made a Substantial Investment within the United

States for the Exploitation of Articles Protected by the Asserted

Patent, Including Engineering, and Research and Development

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194. ICC has made substantial investment in the United States for the

exploitation of its products practicing the claims of the Asserted Patents. For

example, ICC maintains significant wireless, warranty, and after-sales customer

service within the United States for its Blackhawk RES smartwatch vehicular

systems practicing the claims of the ICC Asserted Patent. Additionally, ICC

contracts with Aeris Communications to provide wireless support and services for

its current customers. Further, ICC has invested in continued research and

development in smartwatch interfaces applications for the vehicular system, as

detailed by the recent ICC design patent submission, U.S. Patent Application No.

29/513,798. See Confidential Exhibit 51.

B. Domestic Industry, If not Already Established, is in the Process of

Being Established

195. To the extent that ICC’s activities do not already establish domestic

industry, ICC’s investments demonstrate that it is taking necessary, tangible steps

to establish an industry in the United States, and there is a significant likelihood

that the domestic-industry requirement will be met in the future. As for the

legislative history of section 337(a)(2), an industry would be considered “in the

process of being established” if the patent owner “can demonstrate that he is

taking the necessary tangible steps to establish such an industry in the United

States.” S. Rep. 100-71 at 130. “The owner of the intellectual property right must

be actively engaged in steps leading to the exploitation of the intellectual property,

including application engineering, design work, or other such activities. The

Commission should determine whether the steps being taken indicate a significant

likelihood that the industry requirement will be satisfied in the future.” H. Rep.

68

100-40 at 157. Moreover, “the mere ownership of a patent or other form of

intellectual property rights would not be sufficient to satisfy this test.” S. Rep.

100-71 at 129.

i. What was the level of interest from potential manufacturers,

investors, and licensees in ICC’s technology prior to release of

the Respondents’ smartwatch vehicular systems? Did

Respondents’ release of smartwatch vehicular systems cause

this interest to decrease? To what extent would the

products(s) being developed by ICC compete with

Respondents’ products?

196. On or about September 10, 2014, the Specialty Equipment Marketing

Association (SEMA) selected ICC’s patented Blackhawk RES was as one of the top

five innovations and was invited to present the technology during SEMA’s annual

trade show in Las Vegas See Exhibit 42. Further, ICC debuted the ICC Patented

Products via the Blackhawk RES brand and launched a crowd funding campaign

during the SEMA presentation. There was and still is interest from potential

manufacturers, investors and licensees. For example, potential manufacturers

such as Audiovox and Delphi expressed interest in the technology. Unfortunately,

it is suspected that Audiovox lost interest in the technology due to the barrage of

non-licensed market entrants.

197. Additionally, one potential investor is the renowned start-up accelerator

Techstars. As a global ecosystem, Techstars empowers entrepreneurs to bring

new technologies to market wherever they choose to build their business. The

69

start-up accelerator provides $118,000 in seed funding, intensive mentorship, and

a network of alumni for 7-10% equity in select startup companies. Historically,

Techstars companies go on to average more than $2.0M raised in outside capital

after the program. Specifically, an institutional investor recommended that ICC

participate in the Techstars Mobility program with Ford Motor Company, Magna

International and Verizon Telematics as sponsoring partners. See Confidential

Exhibit 53. Another significant institutional investor that has expressed interest in

the patented Blackhawk RES technology is the Birmingham, MI based venture firm

IncWell. Founded by Tom LaSorda, former CEO of Chrysler Corp. and Fisker

Automotive Inc., IncWell is limited partnership private venture capital fund for

startup companies in automotive, connected car, health care, medical device, clean

energy, transportation, information technology, software and applications See

Confidential Exhibit 53.

198. Further, the Michigan Mobility Transformation Center (MTC) is a

public/private partnership with diverse government and industry collaborators

convened by the University of Michigan with the goal to dramatically improve

transportation safety, sustainability, and accessibility by laying the foundation for

a commercially viable ecosystem of connected and automated vehicles. A central

feature of MTC’s approach is to test and demonstrate emerging technologies and

concepts with three deployments of vehicles and infrastructure equipped on the

roads of Ann Arbor and Southeast Michigan. Through the MTC and its partners’

initial investments combined with an unique approach, have attracted fifteen

founding leadership circle members from a wide array of diverse industry sectors,

each pledging $1M over three years to support the MTC foundational research and

deployment activities.

70

199. ICC is informed and believes that the MTC views smartwatch vehicular

systems and components and software therein, such as security and remote start

systems and their components, operating systems, and/or other software as

critical to the achieving their partnership objectives. See Confidential Exhibit 53.

During the 2014 SEMA trade show, ICC was recruited to participate in the MTC

partnership as an Affiliate Member. ICC is informed and believes that the MTC

partnership evaluation as an Affiliate Member is will be conducted and upon

acceptance would result in a transfer, whole or in part, of ‘151 Patent rights from

ICC to the MTC via a license.

200. Additionally, Respondents’ infringing acts in direct competition against

ICC have stalled ICC’s ability to enter into the market and establish market

position with the pioneering patent. See Hybritech Inc. v. Abbott Laboratories, 849

F.2d 1446, 1458 (Fed. Cir. 1988), (finding evidence of irreparable harm where

infringer prevented a patentee from “establish[ing] a market position and

creat[ing] business relationships in the market”); Celsis in Vitro, Inc., 664 F.3d at

930 (“There is no effective way to measure the loss of sales or potential growth—

to ascertain the people who do not knock on the door or to identify the specific

persons who do not reorder because of the existence of the infringer.”).

201. It has been widely recognized that loss of market share is often long-

term or even permanent due to the effects of brand loyalty and switching costs

associated with changing products. See e.g., Multi-Channel TV Cable Co. v.

Charlottesville Quality Cable Operating Co., 22 F.3d 546, 552 (4th Cir. 1994);

Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharm. Co.,

71

290 F.3d 578, 596 (3d Cir. 2002). The Federal Circuit has also recognized

irreparable harm as a result of the “incumbency effect” created when a first-time

customer purchases an infringing product. Broadcom Corp. v. Emulex Corp., 732

F.3d 1325, 1337 (Fed. Cir. 2013). The potential permanency of ICC’s lost market

share is only heightened in this case, as at least one federal court has recognized

the “initial decision regarding which product to purchase” may be even more

important where the “potential customers that [the patentee] loses to [the

infringer] may have long-term effects that are difficult to calculate and may not be

recaptured.” Apple, Inc. v. Samsung Elecs. Co., 2011 U.S. Dist. LEXIS 139049, at *64

(N.D. Cal. Dec. 2, 2011).

ii. How close is ICC’s technology to being commercialized and/or

production ready?

202. The necessary investments and tangible steps toward a production

ready product have been taken or are currently underway. Clearly, ICC has moved

the product beyond the product concept and initial research phases.

203. Crowdfunding is one mechanism small businesses can raise capital to

launch new products or services, or fund other company projects. The

crowdfunding commercialization milestone process starts when an entrepreneur

puts out a call for financial support to the public, typically on the Internet through

sites such as Indiegogo. Supporters then invest to fund the project with a certain

amount of money. Funds raised through crowdfunding are not paid back as they

would be with a loan, but the business raising the funds will often provide free

products, discounts, or other incentives to those who contribute. On or about

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March 2015, ICC completed its crowdfunding commercialization milestone by

delivering the ICC Patented Products to the crowdfunding campaign investors.

204. Other tangible steps toward commercialization include, but not limited

to product design development, proof of concept prototype, functional prototype,

hardware schematics drafts, software user experience wireframes development,

prototype testing, redesigning for manufacturability, assembly analysis, and

receiving product feedback. (See SKG Decl.¶14 Ex. 49).

205. ICC will begin offering ICC Patented Products through its website at

www.blackhawkres.com. Images of examples of ICC Patented Products are

attached hereto as Exhibit 38. Claim charts showing that the ICC Patented

Products practice the ‘151 Patent are attached hereto as Exhibits 39. Upon the

conclusion of a crowd funding campaign, ICC has received a number of pre-orders

for ICC Patented Products and has fulfilled those preorders during March 2015.

206. ICC is actively pursuing agreements to make ICC Patented Products

available through retailers, including Amazon.com, with an anticipated availability

beginning in July, 2015. ICC has conducted all of its engineering, research, and

development, and activities in the United States, and is committed to continuing

those activities exclusively within the United States.

207. ICC has made substantial investments contributing to the engineering,

research, and development of its ICC Patented Products by investing in the

following engineering, research, and development expenses in the United States:

investments in equipment and designs used in connection with engineering,

73

research, and development activities, including by attending trade shows and

travel costs related thereto. These substantial investments have culminated in the

development of ICC’s patent portfolio, including ICC’s ‘151 Patent, and the highly-

successful Domestic Industry Products at issue here. See Exhibit 38. Additional

details regarding ICC’s business and its development of the domestic industry are

provided in Confidential Exhibits 41 & 53.

iii. To what extent was ICC’s shift in product oriented activities to

litigation oriented activities a strategic business decision not

caused by Respondents’ activities? Could ICC have continued

its commercialization efforts without resorting to litigation? Is

ICC taking the “necessary tangible steps to establish” a

domestic industry?

208. Initially, there was no intent to litigate. ICC was confident of its strong

patent position and a first to market opportunity; however on or about February

2014 ICC’s first to market opportunity was thwarted by infringing Respondents

Samsung, OnStar and GM. Despite this unreasonable threat to its patent rights and

market share opportunity, ICC continued to make necessary investments and

execute tangible steps toward commercialization versus litigation orientated

activities. Not only was the first to market opportunity and right to exclude

destroyed by Respondents, the sheer size and scope of their operations, and

industry connections are evidence of the irreparable harm to ICC. The

Respondents are international in scope have a presence in all fifty states. Only

after thoughtful and serious consideration of these factors, ICC had to commit to

divert resources from business development to litigation-orientated activities.

74

209. Clearly, ICC has moved the product beyond the product concept and

initial research phases. Other tangible steps toward commercialization include,

but not limited to product design development, proof of concept prototype,

functional prototype, hardware schematics drafts (See Confidential Exhibit 41),

software user experience wireframes development (See Confidential Exhibit 41),

prototype testing, redesigning for manufacturability, assembly analysis, and

receiving product feedback. ICC also makes investments related to fabrication and

testing of the ICC Patent Products through payments to other domestic entities.

210. The premium Blackhawk RES systems integrate smartwatches with

precious metals. ICC has partnered with Tanury Industries to plate certain parts

prior to final assembly on site at ICC. See Confidential Exhibit 53 Essentially, at

this juncture, ICC has completed the major tangible steps toward

commercialization. As the need to scale production ensues, the any certification

steps will be executed.

C. ICC Meets the Technical Prong of the Domestic Industry

Requirement

211. ICC has researched, developed, tested, engineered, assembled, packaged,

and installed the Asserted Patent. ICC’s smartwatch vehicular systems, specifically

ICC’s smartwatch remote start products use the inventions claimed in ICC’s

Asserted Patents. As explained in more detail in the chart included as Confidential

Exhibit 39, the Asserted Patent is implemented in the Blackhawk RES system

(including at least the Blackhawk RES 530, 810 and 818 series).

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212. Furthermore, the aforementioned ICC product line practices the

Asserted Patent. As an initial matter, the Blackhawk RES 530, 810 and 818 series

are manufactured to incorporate the features and attributes claimed in the ’151

Patent. Exemplary claim charts attached as Confidential Exhibit 39 and

demonstrate that the Blackhawk RES 530, 810 and 818 series practice system

claim 1, and dependent claims 2, 3, 4, 5, 8, 10, 12, 14, 18, 19, 20, 21, & 22 of the

‘151 Patent.

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XIII. RELIEF REQUESTED

213. WHEREFORE, by reason of the foregoing, ICC respectfully request that

the United States International Trade Commission:

a. Institute an immediate investigation, pursuant to Section 337 of the

Tariff Act of 1930, as amended, 19 U.S.C. § 1337(a)(1)(A)(ii),

(a)(1)(B)(i) and (ii), with respect to violations of Section 337 based on

Respondents' unlawful importation into the United States, sale for

importation into the United States, and/or sale in the United States

after importation of smartwatch operated vehicular systems products

that directly or indirectly infringe one or more of the claims of U.S.

Patent No. 7,068,151;

b. Issue general exclusion orders pursuant to 19 U.S.C. § 1337(d)(2) or

limited exclusion orders pursuant to 19 U.S.C. § 1337(d)(1) excluding

from entry into the United States all of Respondents' imported smart

watch vehicular systems that directly or indirectly infringe one or

more claims of U.S. Patent Nos. 7,068,151;

c. Issue a permanent cease and desist order, pursuant to 19 U.S.C. §

1337(f), prohibiting Respondents, or others acting on its behalf, from

importing, marketing, advertising, demonstrating, warehousing

inventory for distribution, distributing, offering for sale, selling,

licensing, using, or transferring outside the United States for sale in

the United States any smart watch operated vehicular networking

77

products or components or software therein that infringe one or more

claims of U.S. Patent No. 7,068,151;

d. Impose a bond, pursuant to 19 U.S.C. § 1337(j), upon importation of

any smart watch operated vehicular systems products or components

or software therein that directly or indirectly infringe one or more

claims of U.S. Patent No. 7,068,151 during any Presidential Review;

and

e. Grant such other and further relief as the Commission deems just

under the law, and proper based on the facts determined by the

investigation and the authority of the Commission.

Respectfully submitted, Dated: __________________________ By: __________________________________ Samuel K. Giles U.S. Patent Agent Reg. No. 68,887 INTELLECTUAL CAPITAL CONSULTING, LTD. 3160 W. 71st Avenue, Ste. 307 Westminster, CO 80030 Telephone: 800.545.4290 Complainant

ITC Investigation Draft (non-confidential version)

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Transcript of ITC Investigation Draft (non-confidential version)