United States District Court for the District of Delaware

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UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

) CALIFORNIA INSTITUTE OF ) TECHNOLOGY ) ) Civil Action No. 13-cv-1589-GMS Plaintiff, ) ) VS. ) ) JURY TRIAL DEMANDED OMNIVISION TECHNOLOGIES, INC. ) ) Defendant. ) )

FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT

Plaintiff California Institute of Technology, by and through its undersigned counsel, files this action for patent infringement against OmniVision Technologies, Inc. as follows:

THE PARTIES

1. California Institute of Technology (“Caltech”) is a private university having a

principal address of 1200 East California Boulevard, Pasadena, California 91125.

2. OmniVision Technologies, Inc. (“OmniVision” or “Defendant”) is a corporation

organized under the laws of Delaware with its principal place of business at 4275 Burton Drive,

Santa Clara, California 95054. OmniVision can be served with process by serving its registered

agent, The Corporation Trust Company, Corporation Trust Center, 1209 Orange Street,

Wilmington, DE 19801.

JURISDICTION AND VENUE

3. This action arises under the Patent Laws of the United States, 35 U.S.C. § 1, et

seq., including 35 U.S.C. §§ 271, 281, 283, 284, and 285. This is a patent infringement lawsuit,

over which this Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and 1338(a).

4. This Court has personal jurisdiction over OmniVision. OmniVision is a citizen of

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Delaware because it is incorporated in this State. It has conducted and does conduct business within the State of Delaware. OmniVision, directly or through intermediaries (including distributors, retailers, and others), ships, distributes, offers for sale, and/or sells its products in the

United States and the State of Delaware. OmniVision has purposefully and voluntarily placed one or more of its infringing products into the stream of commerce with the expectation that they will be purchased by consumers in the state of Delaware. Upon information and belief,

OmniVision has committed acts of patent infringement within the State of Delaware.

5. Venue is proper in this district under 28 U.S.C. §§ 1391(b), (c), and/or (d), as well as 28 U.S.C. § 1400(b).

PATENTS-IN-SUIT

6. On November 24, 1998, the United States Patent and Trademark Office issued

U.S. Patent No. 5,841,126 entitled “CMOS Active Pixel Sensor Type Imaging System on a

Chip” (“the ’126 Patent”). A true and correct copy of the ’126 Patent is attached hereto as

Exhibit A.

7. On November 23, 1999, the United States Patent and Trademark Office issued

U.S. Patent No. 5,990,506 entitled “Active Pixel Sensors with Substantially Planarized Color

Filtering Elements” (“the ’506 Patent”). A true and correct copy of the ’506 Patent is attached hereto as Exhibit B.

8. On August 12, 2003, the USPTO issued U.S. Patent No. 6,606,122 entitled

“Single Chip Camera Active Pixel Sensor” (“the ’122 Patent”). A true and correct copy of the

’122 Patent is attached hereto as Exhibit C.

9. On May 6, 2008, the USPTO issued U.S. Patent No. 7,369,166 entitled “Single

Substrate Camera Device with CMOS Image Sensor” (“the ’166 Patent”). A true and correct

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copy of the ’166 Patent is attached hereto as Exhibit D.

10. On November 15, 2011, the USPTO reissued U.S. Patent No. 6,549,235 as

RE42,918 entitled “Single Substrate Camera Device with CMOS Image Sensor” (“the RE42,918

Patent”). A true and correct copy of the RE42,918 Patent is attached hereto as Exhibit E.

11. On November 29, 2011, the USPTO reissued U.S. Patent No. 6,570,617 as

RE42,974 entitled “CMOS Active Pixel Sensor Type Imaging System on a Chip” (“the

RE42,974 Patent”). A true and correct copy of the RE42,974 Patent is attached hereto as Exhibit

12. On November 10, 2009, the USPTO issued U.S. Patent No. 7,615,808 entitled

“Structure for Implementation of Back-Illuminated CMOS or CCD Imagers” (“the ’808 Patent”).

A true and correct copy of the ’808 Patent is attached hereto as Exhibit G.

13. On July 6, 2010, the USPTO issued U.S. Patent No. 7,749,799 entitled “Back-

Illuminated Imager and Method for Making Electrical and Optical Connections to Same” (“the

’799 Patent”). A true and correct copy of the ’799 Patent is attached hereto as Exhibit H.

14. On September 24, 2002, the USPTO issued U.S. Patent No. 6,456,326 entitled

“Single Chip Camera Having Double Sampling Operation” (“the ’326 Patent). A true and correct copy of the ’326 Patent is attached hereto as Exhibit I.

15. On April 29, 2004, the USPTO issued U.S. Patent No. 6,555,842 entitled “Active

Pixel Sensor with Intra-pixel Charge Transfer” (hereinafter “the ’842 Patent”). A true and correct copy of the ‘842 Patent is attached hereto as Exhibit J.

16. On June 1, 2004, the USPTO issued U.S. Patent No. 6,744,068 entitled “Active

Pixel Sensor with Intra-pixel Charge Transfer” (hereinafter “the ’068 Patent”). A true and correct copy of the ‘068 Patent is attached hereto as Exhibit K.

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17. The ’126 Patent, ’506 Patent, ’122 Patent, ’166 Patent, RE42,918 Patent,

RE42,974 Patent, ’808 Patent, ’799 Patent, ’326 Patent, ’842 Patent, and ’068 Patent are

collectively referred to herein as the “Caltech Patents.”

COUNT I

PATENT INFRINGEMENT OF U.S. PATENT NO. 5,841,126

18. Caltech repeats and re-alleges the allegations in paragraphs 1-17 as though fully

set forth herein.

19. Caltech is the owner of all rights, title, and interest in and under the ’126 Patent

with full right to bring suit to enforce the patent, including the right to recover for past

infringement damages.

20. The ’126 Patent is valid and enforceable.

21. Upon information and belief, OmniVision has been and now is directly, literally

under 35 U.S.C. § 271(a), and/or equivalently under the doctrine of equivalents, infringing the

’126 Patent by making, using, selling, offering for sale, and/or importing in or into the United

States, without authority, products that fall within the scope of one or more claims of the ’126

Patent including, but not limited to, (1) front side illumination (“FSI”) sensors incorporating any

of the following technologies: OmniPixel, OmniPixel2, OmniPixel3, and OmniPixel3-HS, (2) back side illumination (“BSI”) sensors incorporating any of the following technologies:

OmniBSI, OmniBSI+, and OmniBSI-2, and (3) devices that perform substantially the same function as an invention claimed in the ’126 Patent in substantially the same way to achieve substantially the same result. Upon information and belief, image sensors that infringe the ’126

Patent include, but are not limited to, the color FSI sensors listed in Exhibit L, the black and white FSI sensors listed in Exhibit M, and the BSI sensors listed in Exhibit N.

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22. OmniVision has known of the ’126 Patent since no later than September 2001

when it entered into a patent license agreement for several patents including the ’126 Patent.

OmniVision has unlawfully infringed the ’126 Patent since the expiration of the licensing term.

23. OmniVision has had actual notice of, and has knowingly and willfully infringed the ’126 Patent. OmniVision had and continues to have actual knowledge of or a deliberate disregard for the ’126 Patent and its coverage of OmniVision’s infringing instrumentalities, but has nonetheless engaged in the infringing conduct. OmniVision’s infringement of the ’126 Patent was and continues to be willful.

24. OmniVision has been and is continuing to actively and knowingly induce, with specific intent, infringement of the ’126 Patent under 35 U.S.C. § 271(b) and contributes to the infringement of the ’126 Patent under 35 U.S.C. § 271(c), by making, using, offering for sale, selling, and/or importing image sensors such as those listed above, as well as by contracting with manufacturers and/or distributors including, but not limited to Apple Inc. (“Apple”), Motorola

Mobility LLC (“Motorola”), and Dell Inc. (“Dell”), to use, market, sell, offer to sell, and/or

import without authority, image sensors, such as those listed above, that fall within the scope of

one or more claims of the ’126 Patent. For example, several Apple products contain

OmniVision’s OV5650 image sensor, including the Apple iPad (3rd and 4th generations) and

iPhone 4. Also by example, Motorola products, including the Moto X, incorporate OmniVision’s

OV10820 image sensor. Also by example, Dell products, including the Dell Streak 7, incorporate

OmniVision’s OV5642 and OV9665 image sensors. OmniVision encourages and facilitates

infringing sales and uses of image sensors, such as those listed above, through the creation and

dissemination of promotional and marketing materials, instructional materials, product manuals,

and/or technical materials to manufacturers and/or distributors. OmniVision contributes to

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infringement by others, including manufacturers, distributors, and end users, knowing that its

image sensors, such as those listed above, constitute a material part of the inventions of the ’126

Patent, knowing those image sensors to be especially made or adapted to infringe the ’126

Patent, and knowing that those image sensors are not staple articles or commodities of commerce suitable for substantial non-infringing use. OmniVision knew, or should have known, that its encouragement would result in infringement of at least one claim of the ’126 Patent.

COUNT II

PATENT INFRINGEMENT OF U.S. PATENT NO. 5,990,506

25. Caltech repeats and re-alleges the allegations in paragraphs 1-24 as though fully

set forth herein.

26. Caltech is the owner of all rights, title, and interest in and under the ’506 Patent

with full right to bring suit to enforce the patent, including the right to recover for past

infringement damages.

27. The ’506 Patent is valid and enforceable.

28. Upon information and belief, OmniVision has been and now is directly, literally

under 35 U.S.C. § 271(a), and/or equivalently under the doctrine of equivalents, infringing the

’506 Patent by making, using, selling, offering for sale, and/or importing in or into the United

States, without authority, products that fall within the scope of one or more claims of the ’506

Patent including, but not limited to, (1) FSI color image sensors incorporating any of the

following technologies: OmniPixel, OmniPixel2, OmniPixel3, and OmniPixel3-HS, (2) BSI

color image sensors incorporating any of the following technologies: OmniBSI, OmniBSI+, and

OmniBSI-2, and (3) devices that perform substantially the same function as an invention claimed in the ’506 Patent in substantially the same way to achieve substantially the same result. Upon

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information and belief, image sensors that infringe the ’506 Patent include, but are not limited to,

the color FSI sensors listed in Exhibit L and the BSI sensors listed in Exhibit N.

29. OmniVision has known of the ’506 Patent since no later than September 2001

when it entered into a patent license agreement for several patents including the ’506 Patent.

OmniVision has unlawfully infringed the ’506 Patent since the expiration of the licensing term.

30. OmniVision has had actual notice of, and has knowingly and willfully infringed

the ’506 Patent. OmniVision had and continues to have actual knowledge of or a deliberate

disregard for the ’506 Patent and its coverage of OmniVision’s infringing instrumentalities, but

has nonetheless engaged in the infringing conduct. OmniVision’s infringement of the ’506 Patent

was and continues to be willful.

31. OmniVision has been and is continuing to actively and knowingly induce, with

specific intent, infringement of the ’506 Patent under 35 U.S.C. § 271(b) and contributes to the

infringement of the ’506 Patent under 35 U.S.C. § 271(c), by making, using, offering for sale,

selling, and/or importing image sensors such as those listed above, as well as by contracting with

manufacturers and/or distributors including, but not limited to Apple, Motorola, and Dell, to use,

market, sell, offer to sell, and/or import without authority, image sensors, such as those listed

above, that fall within the scope of one or more claims of the ’506 Patent. For example, several

Apple products contain OmniVision’s OV5650 image sensor, including the Apple iPad (3rd and

4th generations) and iPhone 4. Also by example, Motorola products, including the Moto X, incorporate OmniVision’s OV10820 image sensor. Also by example, Dell products, including the Dell Streak 7, incorporate OmniVision’s OV5642 and OV9665 image sensors. OmniVision encourages and facilitates infringing sales and uses of image sensors, such as those listed above, through the creation and dissemination of promotional and marketing materials, instructional

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materials, product manuals, and/or technical materials to manufacturers and/or distributors.

OmniVision contributes to infringement by others, including manufacturers, distributors, and end users, knowing that its image sensors, such as those listed above, constitute a material part of the inventions of the ’506 Patent, knowing those image sensors to be especially made or adapted to infringe the ’506 Patent, and knowing that those image sensors are not staple articles or commodities of commerce suitable for substantial non-infringing use. OmniVision knew, or should have known, that its encouragement would result in infringement of at least one claim of the ’506 Patent.

COUNT III

PATENT INFRINGEMENT OF U.S. PATENT NO. 6,606,122

32. Caltech repeats and re-alleges the allegations in paragraphs 1-31 as though fully set forth herein.

33. Caltech is the owner of all rights, title, and interest in and under the ’122 Patent with full right to bring suit to enforce the patent, including the right to recover for past infringement damages.

34. The ’122 Patent is valid and enforceable.

35. OmniVision has at no time, either expressly or impliedly, been licensed under the

’122 Patent.

36. Upon information and belief, OmniVision has been and now is directly, literally under 35 U.S.C. § 271(a), and/or equivalently under the doctrine of equivalents, infringing the

’122 Patent by making, using, selling, offering for sale, and/or importing in or into the United

States, without authority, products that fall within the scope of one or more claims of the ’122

Patent including, but not limited to, (1) FSI image sensors incorporating any of the following

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technologies: OmniPixel, OmniPixel2, OmniPixel3, and OmniPixel3-HS, (2) BSI image sensors

incorporating any of the following technologies: OmniBSI, OmniBSI+, and OmniBSI-2, and (3)

devices that perform substantially the same function as an invention claimed in the ’122 Patent in

substantially the same way to achieve substantially the same result. Upon information and belief,

image sensors that infringe the ’122 Patent include, but are not limited to, the color FSI sensors

listed in Exhibit L, the black and white FSI sensors listed in Exhibit M, and the BSI sensors

listed in Exhibit N.

37. OmniVision has had actual knowledge of the ’122 Patent, and its infringement of

that patent as a result of a subpoena it was served with in August 2012 in connection with ITC

investigation 337-TA-846, styled In the Matter of Certain CMOS Image Sensors and Products

Containing Same. As a result of that subpoena, OmniVision learned that Caltech was suing

OmniVision’s competitors, such as STMicroelectronics, for infringing the ’122 Patent, and had

an affirmative obligation to obtain relevant documents. Moreover, OmniVision has actual notice

of its infringement of the ’122 Patent as a result of Caltech's filing of this lawsuit.

38. OmniVision has had actual notice of, and has knowingly and willfully infringed

the ’122 Patent. OmniVision had and continues to have actual knowledge of or a deliberate disregard for the’122 Patent and its coverage of OmniVision’s infringing instrumentalities, but has nonetheless engaged in the infringing conduct. OmniVision’s infringement of the ’122 Patent was and continues to be willful.

39. OmniVision has been and is continuing to actively and knowingly induce, with specific intent, infringement of the ’122 Patent under 35 U.S.C. § 271(b) and contributes to the infringement of the ’122 Patent under 35 U.S.C. § 271(c), by making, using, offering for sale, selling, and/or importing image sensors such as those listed above, as well as by contracting with

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manufacturers and/or distributors including, but not limited to Apple, Motorola, and Dell, to use,

market, sell, offer to sell, and/or import without authority, image sensors, such as those listed

above, that fall within the scope of one or more claims of the ’122 Patent. For example, several

Apple products contain OmniVision’s OV5650 image sensor, including the Apple iPad (3rd and

OmniVision contributes to infringement by others, including manufacturers, distributors, and end users, knowing that its image sensors, such as those listed above, constitute a material part of the

inventions of the ’122 Patent, knowing those image sensors to be especially made or adapted to infringe the ’122 Patent, and knowing that those image sensors are not staple articles or

commodities of commerce suitable for substantial non-infringing use. OmniVision knew, or should have known, that its encouragement would result in infringement of at least one claim of the ’122 Patent.

COUNT IV

PATENT INFRINGEMENT OF U.S. PATENT NO. 7,369,166

40. Caltech repeats and re-alleges the allegations in paragraphs 1-39 as though fully

set forth herein.

41. Caltech is the owner of all rights, title, and interest in and under the ’166 Patent

with full right to bring suit to enforce the patent, including the right to recover for past

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infringement damages.

42. The ’166 Patent is valid and enforceable.

43. Upon information and belief, OmniVision has been and now is directly, literally

under 35 U.S.C. § 271(a), and/or equivalently under the doctrine of equivalents, infringing the

’166 Patent by making, using, selling, offering for sale, and/or importing in or into the United

States, without authority, products that fall within the scope of one or more claims of the ’166

Patent including, but not limited to, (1) FSI image sensors incorporating any of the following

technologies: OmniPixel, OmniPixel2, OmniPixel3, and OmniPixel3-HS, (2) BSI image sensors

incorporating any of the following technologies: OmniBSI, OmniBSI+, and OmniBSI-2, and (3)

devices that perform substantially the same function as an invention claimed in the ’166 Patent in

substantially the same way to achieve substantially the same result. Upon information and belief,

image sensors that infringe the ’166 Patent include, but are not limited to, the color FSI sensors

listed in Exhibit L, the black and white FSI sensors listed in Exhibit M, and the BSI sensors

listed in Exhibit N.

44. OmniVision has known of the ’166 Patent and that its infringing products would

infringe the ‘166 Patent due to a previous patent license agreement for several patents including the ’166 Patent. OmniVision has unlawfully infringed the ’166 Patent since the expiration of the licensing term. Moreover, OmniVision has actual notice of its infringement of the ’166 Patent as a result of Caltech's filing of this lawsuit.

45. OmniVision has had actual notice of, and has knowingly and willfully infringed the ’166 Patent. OmniVision had and continues to have actual knowledge of or a deliberate disregard for the’166 Patent and its coverage of OmniVision’s infringing instrumentalities, but has nonetheless engaged in the infringing conduct. OmniVision’s infringement of the ’166 Patent

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was and continues to be willful.

46. OmniVision has been and is continuing to actively and knowingly induce, with

specific intent, infringement of the ’166 Patent under 35 U.S.C. § 271(b) and contributes to the

infringement of the ’166 Patent under 35 U.S.C. § 271(c), by making, using, offering for sale,

selling, and/or importing image sensors such as those listed above, as well as by contracting with manufacturers and/or distributors including, but not limited to Apple, Motorola, and Dell, to use, market, sell, offer to sell, and/or import without authority, image sensors, such as those listed above, that fall within the scope of one or more claims of the ’166 Patent. For example, several

Apple products contain OmniVision’s OV5650 image sensor, including the Apple iPad (3rd and

OmniVision contributes to infringement by others, including manufacturers, distributors, and end users, knowing that its image sensors, such as those listed above, constitute a material part of the

inventions of the ’166 Patent, knowing those image sensors to be especially made or adapted to infringe the ’166 Patent, and knowing that those image sensors are not staple articles or

COUNT V

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PATENT INFRINGEMENT OF U.S. PATENT NO. RE42,918

47. Caltech repeats and re-alleges the allegations in paragraphs 1-46 as though fully set forth herein.

48. Caltech is the owner of all rights, title, and interest in and under the RE42,918

Patent with full right to bring suit to enforce the patent, including the right to recover for past infringement damages.

49. The RE42,918 Patent is valid and enforceable.

50. Upon information and belief, OmniVision has been and now is directly, literally under 35 U.S.C. § 271(a), and/or equivalently under the doctrine of equivalents, infringing the

RE42,918 Patent by making, using, selling, offering for sale, and/or importing in or into the

United States, without authority, products that fall within the scope of one or more claims of the

RE42,918 Patent including, but not limited to, (1) FSI image sensors incorporating any of the following technologies: OmniPixel, OmniPixel2, OmniPixel3, and OmniPixel3-HS, (2) BSI image sensors incorporating any of the following technologies: OmniBSI, OmniBSI+, and

OmniBSI-2, and (3) devices that perform substantially the same function as an invention claimed in the RE42,918 Patent in substantially the same way to achieve substantially the same result.

Upon information and belief, image sensors that infringe the RE42,918 Patent include, but are not limited to, the color FSI sensors listed in Exhibit L, the black and white FSI sensors listed in

Exhibit M, and the BSI sensors listed in Exhibit N.

51. OmniVision has known of the RE42,918 Patent and that its infringing products would infringe the RE42,918 Patent due to a previous patent license agreement for several patents including the RE42,918 Patent. Moreover, OmniVision has actual notice of its infringement of the RE42,918 Patent as a result of Caltech's filing of this lawsuit.

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52. OmniVision has had actual notice of, and has knowingly and willfully infringed

the RE42,918 Patent. OmniVision had and continues to have actual knowledge of or a deliberate

disregard for the RE42,918 Patent and its coverage of OmniVision’s infringing instrumentalities,

but has nonetheless engaged in the infringing conduct. OmniVision’s infringement of the

RE42,918 Patent was and continues to be willful.

53. OmniVision has been and is continuing to actively and knowingly induce, with

specific intent, infringement of the RE42,918 Patent under 35 U.S.C. § 271(b) and contributes to

the infringement of the RE42,918 Patent under 35 U.S.C. § 271(c), by making, using, offering for sale, selling, and/or importing image sensors such as those listed above, as well as by contracting with manufacturers and/or distributors including, but not limited to Apple, Motorola, and Dell, to use, market, sell, offer to sell, and/or import without authority, image sensors, such as those listed above, that fall within the scope of one or more claims of the RE42,918 Patent.

For example, several Apple products contain OmniVision’s OV5650 image sensor, including the

Apple iPad (3rd and 4th generations) and iPhone 4. Also by example, Motorola products, including the Moto X, incorporate OmniVision’s OV10820 image sensor. Also by example, Dell products, including the Dell Streak 7, incorporate OmniVision’s OV5642 and OV9665 image sensors. OmniVision encourages and facilitates infringing sales and uses of image sensors, such as those listed above, through the creation and dissemination of promotional and marketing materials, instructional materials, product manuals, and/or technical materials to manufacturers and/or distributors. OmniVision contributes to infringement by others, including manufacturers, distributors, and end users, knowing that its image sensors, such as those listed above, constitute a material part of the inventions of the RE42,918 Patent, knowing those image sensors to be especially made or adapted to infringe the RE42,918 Patent, and knowing that those image

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sensors are not staple articles or commodities of commerce suitable for substantial non- infringing use. OmniVision knew, or should have known, that its encouragement would result in

infringement of at least one claim of the RE42,918 Patent.

COUNT VI

PATENT INFRINGEMENT OF U.S. PATENT NO. RE42,974

54. Caltech repeats and re-alleges the allegations in paragraphs 1-53 as though fully

set forth herein.

55. Caltech is the owner of all rights, title, and interest in and under the RE42,974

Patent with full right to bring suit to enforce the patent, including the right to recover for past

infringement damages.

56. The RE42,974 Patent is valid and enforceable.

57. Upon information and belief, OmniVision has been and now is directly, literally

under 35 U.S.C. § 271(a), and/or equivalently under the doctrine of equivalents, infringing the

RE42,974 Patent by making, using, selling, offering for sale, and/or importing in or into the

United States, without authority, products that fall within the scope of one or more claims of the

RE42,974 Patent including, but not limited to, (1) FSI image sensors incorporating any of the

following technologies: OmniPixel, OmniPixel2, OmniPixel3, and OmniPixel3-HS, (2) BSI

image sensors incorporating any of the following technologies: OmniBSI, OmniBSI+, and

OmniBSI-2, and (3) devices that perform substantially the same function as an invention claimed

in the RE42,974 Patent in substantially the same way to achieve substantially the same result.

Upon information and belief, image sensors that infringe the RE42,974 Patent include, but are

not limited to, the color FSI sensors listed in Exhibit L, the black and white FSI sensors listed in

Exhibit M, and the BSI sensors listed in Exhibit N.

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58. OmniVision has known of the RE42,974 Patent and that its infringing products

would infringe the RE42,974 Patent due to a previous patent license agreement for several

patents including the RE42,974 Patent. Moreover, OmniVision has actual notice of its

infringement of the RE42,974 Patent as a result of Caltech's filing of this lawsuit.

59. OmniVision has had actual notice of, and has knowingly and willfully infringed

the RE42,974 Patent. OmniVision had and continues to have actual knowledge of or a deliberate

disregard for the RE42,974 Patent and its coverage of OmniVision’s infringing instrumentalities,

but has nonetheless engaged in the infringing conduct. OmniVision’s infringement of the

RE42,974 Patent was and continues to be willful.

60. OmniVision has been and is continuing to actively and knowingly induce, with

specific intent, infringement of the RE42,974 Patent under 35 U.S.C. § 271(b) and contributes to

the infringement of the RE42,974 Patent under 35 U.S.C. § 271(c), by making, using, offering for sale, selling, and/or importing image sensors such as those listed above, as well as by contracting with manufacturers and/or distributors including, but not limited to Apple, Motorola, and Dell, to use, market, sell, offer to sell, and/or import without authority, image sensors, such as those listed above, that fall within the scope of one or more claims of the RE42,974 Patent.

For example, several Apple products contain OmniVision’s OV5650 image sensor, including the

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and/or distributors. OmniVision contributes to infringement by others, including manufacturers,

distributors, and end users, knowing that its image sensors, such as those listed above, constitute

a material part of the inventions of the RE42,974 Patent, knowing those image sensors to be

especially made or adapted to infringe the RE42,974 Patent, and knowing that those image

sensors are not staple articles or commodities of commerce suitable for substantial non- infringing use. OmniVision knew, or should have known, that its encouragement would result in

infringement of at least one claim of the RE42,974 Patent.

COUNT VII

PATENT INFRINGEMENT OF U.S. PATENT NO. 7,615,808

61. Caltech repeats and re-alleges the allegations in paragraphs 1-60 as though fully

set forth herein.

62. Caltech is the owner of all rights, title, and interest in and under the ’808 Patent

with full right to bring suit to enforce the patent, including the right to recover for past

infringement damages.

63. The ’808 Patent is valid and enforceable.

64. OmniVision has at no time, either expressly or impliedly, been licensed under the

’808 Patent.

65. Upon information and belief, OmniVision has been and now is directly, literally

under 35 U.S.C. § 271(a), and/or equivalently under the doctrine of equivalents, infringing the

’808 Patent by making, using, selling, offering for sale, and/or importing in or into the United

States, without authority, products that fall within the scope of one or more claims of the ’808

Patent including, but not limited to, image sensors incorporating any of the following

technologies: OmniBSI, OmniBSI+, and/or OmniBSI-2, and devices that perform substantially

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the same function as an invention claimed in the ’808 Patent in substantially the same way to

achieve substantially the same result. Upon information and belief, image sensors that infringe the ’808 Patent include, but are not limited to, the BSI sensors listed in Exhibit N.

66. OmniVision has actual notice of its infringement of the ’808 Patent as a result of

Caltech’s filing of this lawsuit.

67. OmniVision induces, with specific intent, infringement of the ’808 Patent under

35 U.S.C. § 271(b) and contributes to the infringement of the ’808 Patent under 35 U.S.C. §

271(c), by making, using, offering for sale, selling, and/or importing image sensors such as those listed above, as well as by contracting with manufacturers and/or distributors including, but not limited to Apple, Motorola, and Dell, to use, market, sell, offer to sell, and/or import without authority, image sensors, such as those listed above, that fall within the scope of one or more claims of the ’808 Patent. For example, several Apple products contain OmniVision’s OV5650 image sensor, including the Apple iPad (3rd and 4th generations) and iPhone 4. Also by example, Motorola products, including the Moto X, incorporate OmniVision’s OV10820 image sensor. Also by example, Dell products, including the Dell Streak 7, incorporate OmniVision’s

OV5642 image sensor. OmniVision encourages and facilitates infringing sales and uses of image sensors, such as those listed above, through the creation and dissemination of promotional and marketing materials, instructional materials, product manuals, and/or technical materials to manufacturers and/or distributors. OmniVision contributes to infringement by others, including manufacturers, distributors, and end users, knowing that its image sensors, such as those listed above, constitute a material part of the inventions of the ’808 Patent, knowing those image sensors to be especially made or adapted to infringe the ’808 Patent, and knowing that those image sensors are not staple articles or commodities of commerce suitable for substantial non-

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infringing use. OmniVision knows, or should know, that its encouragement would result in

infringement of at least one claim of the ’808 Patent.

68. Caltech reserves the right to further allege willful infringement, and amend,

supplement, or modify its allegations of infringement as facts regarding such allegations arise during the course of this case.

COUNT VIII

PATENT INFRINGEMENT OF U.S. PATENT NO. 7,749,799

69. Caltech repeats and re-alleges the allegations in paragraphs 1-68 as though fully

set forth herein.

70. Caltech is the owner of all rights, title, and interest in and under the ’799 Patent

with full right to bring suit to enforce the patent, including the right to recover for past

infringement damages.

71. The ’799 Patent is valid and enforceable.

72. OmniVision has at no time, either expressly or impliedly, been licensed under the

’799 Patent.

73. Upon information and belief, OmniVision has been and now is directly, literally

under 35 U.S.C. § 271(a), and/or equivalently under the doctrine of equivalents, infringing the

’799 Patent by making, using, selling, offering for sale, and/or importing in or into the United

States, without authority, products that fall within the scope of one or more claims of the ’799

Patent including, but not limited to, image sensors incorporating any of the following

technologies: OmniBSI, OmniBSI+, and/or OmniBSI-2, and other similar devices, which

perform substantially the same function as the devices embodied in one or more claims of the

’799 Patent in substantially the same way to achieve substantially the same result. Upon

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information and belief, image sensors that infringe the ’799 Patent include, but are not limited to,

the BSI sensors listed in Exhibit N.

74. OmniVision has actual notice of its infringement of the ’799 Patent as a result of

Caltech’s filing of this lawsuit.

75. OmniVision induces, with specific intent, infringement of the ’799 Patent under

35 U.S.C. § 271(b) and contributes to the infringement of the ’799 Patent under 35 U.S.C. §

271(c), by making, using, offering for sale, selling, and/or importing image sensors such as those listed above, as well as by contracting with manufacturers and/or distributors including, but not limited to Apple, Motorola, and Dell, to use, market, sell, offer to sell, and/or import without authority, image sensors, such as those listed above, that fall within the scope of one or more claims of the ’799 Patent. For example, several Apple products contain OmniVision’s OV5650 image sensor, including the Apple iPad (3rd and 4th generations) and iPhone 4. Also by example, Motorola products, including the Moto X, incorporate OmniVision’s OV10820 image sensor. Also by example, Dell products, including the Dell Streak 7, incorporate OmniVision’s

OV5642 image sensor. OmniVision encourages and facilitates infringing sales and uses of image

sensors, such as those listed above, through the creation and dissemination of promotional and

marketing materials, instructional materials, product manuals, and/or technical materials to

manufacturers and/or distributors. OmniVision contributes to infringement by others, including

manufacturers, distributors, and end users, knowing that its image sensors, such as those listed

above, constitute a material part of the inventions of the ’799 Patent, knowing those image

sensors to be especially made or adapted to infringe the ’799 Patent, and knowing that those image sensors are not staple articles or commodities of commerce suitable for substantial non- infringing use. OmniVision knows, or should know, that its encouragement would result in

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infringement of at least one claim of the ’799 Patent.

76. Caltech reserves the right to further allege willful infringement, and amend,

supplement, or modify its allegations of infringement as facts regarding such allegations arise during the course of this case.

COUNT IX

PATENT INFRINGEMENT OF U.S. PATENT NO. 6,456,326

77. Caltech repeats and re-alleges the allegations in paragraphs 1-76 as though fully

set forth herein.

78. Caltech is the owner of all rights, title, and interest in and under the ’326 Patent

with full right to bring suit to enforce the patent, including the right to recover for past

infringement damages.

79. The ’326 Patent is valid and enforceable.

80. Upon information and belief, OmniVision has been and now is directly, literally

under 35 U.S.C. § 271(a), and/or equivalently under the doctrine of equivalents, infringing the

’326 Patent by making, using, selling, offering for sale, and/or importing in or into the United

States, without authority, products that fall within the scope of one or more claims of the ’326

Patent including, but not limited to, (1) FSI image sensors incorporating any of the following

technologies: OmniPixel, OmniPixel2, OmniPixel3, and OmniPixel3-HS, (2) BSI image sensors

incorporating any of the following technologies: OmniBSI, OmniBSI+, and OmniBSI-2, and (3)

devices that perform substantially the same function as an invention claimed in the ’326 Patent in

substantially the same way to achieve substantially the same result. Upon information and belief,

image sensors that infringe the ’326 Patent include, but are not limited to, the color FSI sensors

listed in Exhibit L, the black and white FSI sensors listed in Exhibit M, and the BSI sensors

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listed in Exhibit N.

81. OmniVision has known of the ’326 Patent and that its infringing products would

infringe the ’326 Patent due to a previous patent license agreement for several patents including the ’326 Patent. Moreover, OmniVision has actual notice of its infringement of the ’326 Patent as a result of Caltech's filing of this lawsuit.

82. OmniVision has had actual notice of, and has knowingly and willfully infringed the ’326 Patent. OmniVision had and continues to have actual knowledge of or a deliberate

disregard for the ’326 Patent and its coverage of OmniVision’s infringing instrumentalities, but

has nonetheless engaged in the infringing conduct. OmniVision’s infringement of the ’326 Patent

was and continues to be willful.

83. OmniVision has been and is continuing to actively and knowingly induce, with

specific intent, infringement of the ’326 Patent under 35 U.S.C. § 271(b) and contributes to the

infringement of the ’326 Patent under 35 U.S.C. § 271(c), by making, using, offering for sale,

Apple products contain OmniVision’s OV5650 image sensor, including the Apple iPad (3rd and

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materials, product manuals, and/or technical materials to manufacturers and/or distributors.

OmniVision contributes to infringement by others, including manufacturers, distributors, and end

users, knowing that its image sensors, such as those listed above, constitute a material part of the

inventions of the ’326 Patent, knowing those image sensors to be especially made or adapted to

infringe the ’326 Patent, and knowing that those image sensors are not staple articles or

commodities of commerce suitable for substantial non-infringing use. OmniVision knew, or

should have known, that its encouragement would result in infringement of at least one claim of

the ’326 Patent.

COUNT X

PATENT INFRINGEMENT OF U.S. PATENT NO. 6,555,842

84. Caltech repeats and re-alleges the allegations in paragraphs 1-83 as though fully

set forth herein.

85. Caltech is the owner of all rights, title, and interest in and under the ’842 Patent

with full right to bring suit to enforce the patent, including the right to recover for past

infringement damages.

86. The ’842 Patent is valid and enforceable.

87. Upon information and belief, OmniVision has been and now is directly, literally

under 35 U.S.C. § 271(a), and/or equivalently under the doctrine of equivalents, infringing the

’842 Patent by making, using, selling, offering for sale, and/or importing in or into the United

States, without authority, products that fall within the scope of one or more claims of the ’842

Patent including, but not limited to, certain image sensors and devices that perform substantially the same function as an invention claimed in the ’842 Patent in substantially the same way to

achieve substantially the same result.

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88. OmniVision has known of the ’842 Patent and that its infringing products would

infringe the ’842 Patent due to a previous patent license agreement for several patents including the ’842 Patent. Moreover, OmniVision has actual notice of its infringement of the ’842 Patent as a result of Caltech's filing of this lawsuit.

89. OmniVision has had actual notice of, and has knowingly and willfully infringed the ’842 Patent. OmniVision had and continues to have actual knowledge of or a deliberate disregard for the ’842 Patent and its coverage of OmniVision’s infringing instrumentalities, but has nonetheless engaged in the infringing conduct. OmniVision’s infringement of the ’842 Patent was and continues to be willful.

90. OmniVision has been and is continuing to actively and knowingly induce, with specific intent, infringement of the ’842 Patent under 35 U.S.C. § 271(b) and contributes to the infringement of the ’842 Patent under 35 U.S.C. § 271(c), by making, using, offering for sale, selling, and/or importing certain image sensors, as well as by contracting with certain manufacturers and/or distributors to use, market, sell, offer to sell, and/or import without

authority, image sensors that fall within the scope of one or more claims of the ’842 Patent.

OmniVision encourages and facilitates infringing sales and uses of image sensors through the

creation and dissemination of promotional and marketing materials, instructional materials,

product manuals, and/or technical materials to manufacturers and/or distributors. OmniVision

contributes to infringement by others, including manufacturers, distributors, and end users,

knowing that its image sensors constitute a material part of the inventions of the ’842 Patent,

knowing those image sensors to be especially made or adapted to infringe the ’842 Patent, and

knowing that those image sensors are not staple articles or commodities of commerce suitable for

substantial non-infringing use. OmniVision knew, or should have known, that its encouragement

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would result in infringement of at least one claim of the ’842 Patent.

COUNT XI

PATENT INFRINGEMENT OF U.S. PATENT NO. 6,744,068

91. Caltech repeats and re-alleges the allegations in paragraphs 1-90 as though fully

set forth herein.

92. Caltech is the owner of all rights, title, and interest in and under the ’068 Patent

with full right to bring suit to enforce the patent, including the right to recover for past

infringement damages.

93. The ’068 Patent is valid and enforceable.

94. Upon information and belief, OmniVision has been and now is directly, literally

under 35 U.S.C. § 271(a), and/or equivalently under the doctrine of equivalents, infringing the

’068 Patent by making, using, selling, offering for sale, and/or importing in or into the United

States, without authority, products that fall within the scope of one or more claims of the ’068

Patent including, but not limited to, certain image sensors and devices that perform substantially the same function as an invention claimed in the ’068 Patent in substantially the same way to

achieve substantially the same result.

95. OmniVision has known of the ’068 Patent and that its infringing products would

infringe the ’068 Patent due to a previous patent license agreement for several patents including the ’068 Patent. Moreover, OmniVision has actual notice of its infringement of the ’068 Patent as a result of Caltech's filing of this lawsuit.

96. OmniVision has had actual notice of, and has knowingly and willfully infringed the ’068 Patent. OmniVision had and continues to have actual knowledge of or a deliberate disregard for the ’068 Patent and its coverage of OmniVision’s infringing instrumentalities, but

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has nonetheless engaged in the infringing conduct. OmniVision’s infringement of the ’068 Patent was and continues to be willful.

97. OmniVision has been and is continuing to actively and knowingly induce, with specific intent, infringement of the ’068 Patent under 35 U.S.C. § 271(b) and contributes to the infringement of the ’068 Patent under 35 U.S.C. § 271(c), by making, using, offering for sale, selling, and/or importing certain image sensors, as well as by contracting with certain manufacturers and/or distributors to use, market, sell, offer to sell, and/or import without authority, image sensors that fall within the scope of one or more claims of the ’068 Patent.

OmniVision encourages and facilitates infringing sales and uses of image sensors through the creation and dissemination of promotional and marketing materials, instructional materials, product manuals, and/or technical materials to manufacturers and/or distributors. OmniVision contributes to infringement by others, including manufacturers, distributors, and end users, knowing that its image sensors constitute a material part of the inventions of the ’068 Patent, knowing those image sensors to be especially made or adapted to infringe the ’068 Patent, and knowing that those image sensors are not staple articles or commodities of commerce suitable for substantial non-infringing use. OmniVision knew, or should have known, that its encouragement would result in infringement of at least one claim of the ’068 Patent.

CONCLUSION

98. Unless this Court enjoins OmniVision from continuing its patent infringements,

Caltech will suffer additional irreparable harm and impairment of the value of its patent rights, for which no adequate remedy at law exists.

99. Caltech is entitled to recover from OmniVision the damages sustained by Caltech as a result of OmniVision’s wrongful acts in an amount subject to proof at trial, which, by law,

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cannot be less than a reasonable royalty, together with interest and costs as fixed by this Court.

100. Caltech has incurred and will incur attorneys’ fees, costs, and expenses in the

prosecution of this action. This is an “exceptional case” under 35 U.S.C. § 285 for which the

Court should award attorneys’ fees to Caltech.

101. Caltech reserves the right to amend, supplement, or modify its allegations of

infringement as facts regarding such allegations arise during the course of this case.

PRAYER FOR RELIEF

Caltech prays for the following relief:

A. A judgment that the OmniVision has infringed and continues to infringe each of

the patents-in-suit as alleged herein;

B. A judgment and order requiring the Defendant to pay Caltech damages under 35

U.S.C. § 284, including treble damages for willful infringement as provided by 35 U.S.C. § 284,

and supplemental damages for any continuing post-verdict infringement up until entry of the final judgment with an accounting as needed;

C. A judgment and order requiring the Defendant to pay Caltech pre-judgment and

post-judgment interest on the damages awarded;

D. A judgment and order finding this to be an exceptional case and requiring the

Defendant to pay the costs of this action (including all disbursements) and attorneys’ fees as

provided by 35 U.S.C. § 285;

E. A preliminary and thereafter a permanent injunction against the Defendant’s

direct infringement, active inducements of infringement, and/or contributory infringement of the

Caltech Patents, as well as against each Defendant’s agents, employees, representatives,

successors, and assigns, and those acting in privity or in concert with them; and

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F. In the event a final injunction is not awarded, a compulsory on-going royalty; and

G. Such other and further relief as the Court deems just and equitable.

JURY DEMAND

Caltech hereby demands a trial by jury of any and all causes of action.

DATED: October 7, 2013 Respectfully submitted,

FARNAN LLP

/s/ Brian E. Farnan Brian E. Farnan(Bar No. 4089) 919 North Market St., 12th Floor Wilmington, DE 19801 Telephone: (302) 777-0300 Facsimile: (302) 777-0301 [email protected]

Michael W. Shore (admitted pro hac vice) Joseph F. DePumpo (admitted pro hac vice) Jennifer M. Rynell (admitted pro hac vice) Russell DePalma (admitted pro hac vice) Ari Rafilson (admitted pro hac vice) Timothy T. Wang (admitted pro hac vice) SHORE CHAN DEPUMPO LLP 901 Main Street, Suite 3300 Dallas, Texas 75202 Telephone: (214) 593-9110 Facsimile: (214) 593-9111 [email protected] [email protected] [email protected] [email protected] [email protected] [email protected]

Attorneys for Plaintiff California Institute of Technology