Case 1:09-cv-00026-SLR Document 485 Filed 08/17/10 Page 1 of 25 PageID #: 4000
UNITED STATES DISTRICT COURT DISTRICT OF DELAWARE
XPOINT TECHNOLOGIES, INC.,
Plaintiff,
v.
INTEL CORPORATION, FARSTONE TECHNOLOGY, INC., ACRONIS INC., HEWLETT-PACKARD COMPANY, DELL INC., SYMANTEC CORPORATION, MICROSOFT Civil Action No. 09-CV-0026 (SLR) CORPORATION, ACER INC., ACER AMERICA CORPORATION, GATEWAY DEMAND FOR JURY TRIAL INC., TOSHIBA CORPORATION, TOSHIBA AMERICA INFORMATION SYSTEMS, INC., ASUSTEK COMPUTER INCORPORATED, ASUS COMPUTER INTERNATIONAL, SONY CORPORATION, SONY CORPORATION OF AMERICA, SONY ELECTRONICS INC., SOFTTHINKS SA, and SOFTTHINKS USA INC.,
Defendants.
SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT
1. Plaintiff Xpoint Technologies, Inc. (“Xpoint” or “Plaintiff”), by and
through its attorneys, for its Complaint against Defendants Intel Corporation (“Intel”),
FarStone Technology, Inc. (“FarStone”), Acronis Inc. (“Acronis”), Hewlett-Packard
Company (“HP”), Dell Inc. (“Dell”), Symantec Corporation (“Symantec”), Microsoft
Corporation (“Microsoft”), Acer Inc. (“Acer”), Acer America Corporation (“Acer
America”), Gateway Inc. (“Gateway”), Toshiba Corporation (“Toshiba”), Toshiba
{BMF-W0188684.} Case 1:09-cv-00026-SLR Document 485 Filed 08/17/10 Page 2 of 25 PageID #: 4001
America Information Systems, Inc. (“Toshiba AIS”), ASUSTeK Computer Incorporated
(“ASUSTeK”), ASUS Computer International (“ASUS International”), Sony Corporation
(“Sony”), Sony Corporation of America (“Sony America”), Sony Electronics Inc. (“Sony
Electronics”), SoftThinks SA (“SoftThinks”), and SoftThinks USA Inc. (“SoftThinks
USA”), alleges the following.
NATURE OF THE ACTION
2. This action seeks monetary damages and injunctive relief under the Patent
Act of the United States, 35 U.S.C. § 1 et seq., to remedy Defendants’ infringement of
United States Patents No. 7,024,581, No. 7,430,686, and 7,689,861, each entitled “Data
Processing Recovery System and Method Spanning Multiple Operating System” (the
“‘581 Patent,” “‘686 Patent,” and “‘861 Patent,” respectively, and collectively the
“Xpoint Patents”),1 and the harm to Xpoint caused by Defendants’ infringement. The
‘581 Patent,‘686 Patent, and ‘861 Patent were issued to Xpoint as assignee of the
inventors, Frank Wang and others, on April 4, 2006,September 30, 2008, and March 30,
2010, respectively. The application that resulted in the ‘686 Patent was a continuation of
the application that resulted in the ‘581 Patent. Similarly, the application that resulted in
the ‘861 Patent was a continuation of the application that resulted in the ‘686 Patent. The
‘581 Patent, ‘686 Patent, and ‘861 Patent are now, and have been at all times since their
respective dates of issuance, valid and enforceable.
Xpoint, Frank Wang, and the Xpoint Patents
3. Frank Wang, the lead inventor of the ‘686 Patent, the ‘581 Patent, and the
‘861 Patent, is a founder and the President and Chief Executive Officer of Xpoint, a
1 Copies of the ‘581 Patent, the ‘686 Patent, and the ‘861 Patent are attached as Exhibits A, B, and C, respectively.
-2- Case 1:09-cv-00026-SLR Document 485 Filed 08/17/10 Page 3 of 25 PageID #: 4002
privately held computer and networking technology company. Mr. Wang has over 30
years of experience in the computer and networking industry. Before founding Xpoint in
1994, Mr. Wang was for ten years the General Manager of the Internetworking and
Workstation Adapter business of Ungermann-Bass, a leading computer networking
company (later acquired by Tandem Computer). Before joining Ungermann-Bass, Mr.
Wang worked for six years at IBM, where he was a member of the original core
technology team that developed the first IBM personal computer. Mr. Wang holds M.S.
and B.S. degrees in electrical engineering from the State University of New York at
Stony Brook.
4. In summary, the Xpoint Patents disclose and claim a data processing
recovery system for restoring a computer system after corruption of the primary operating
system, applications software, user data, or physical storage area or physical storage
device. The system and method claimed by the Xpoint Patents involve the creation of a
backup copy of a primary storage area (including its operating system) stored outside of
the primary storage area. A second operating system is also stored outside of the primary
storage area along with incremental user data and changed content of the primary storage
area since the first copy. In the event the primary storage area is corrupted or damaged,
the Xpoint Patents permit the recovery of that storage area, including its operating
system, applications software, and user data, through the use of the second operating
system. Among other intended and realized advantages of the Xpoint Patents, the
invention optimizes the speed and data integrity of the copy and restore functions.
5. The Xpoint Patents provide significantly enhanced functionality for a
variety of computer operating systems. For example, processors, operating systems and
-3- Case 1:09-cv-00026-SLR Document 485 Filed 08/17/10 Page 4 of 25 PageID #: 4003
software infringing the Xpoint Patents, which are manufactured and sold by the
Defendants, are used in widely sold personal computers and servers. By using the
technology covered by the Xpoint Patents to create a separately stored copy along with a
second operating system and incremental user data, including changed contents of the
primary storage area, such computers and servers are able to quickly complete a backup
of the primary storage area with minimal impact to the user and to quickly restore a
corrupted primary storage area with a high degree of data integrity. One distinguishing
benefit is the capability to restore the primary operating system, user data, or incremental
user data on mobile and portable computers without connecting to a network or
reinstalling an operating system.
6. A significant benefit of the technology covered by the Xpoint Patents is
that enabling users to restore their computers easily themselves reduces customer service
expenses for computer and software companies such as Defendants. For example, a
SoftThinks marketing document for SoftThink’s PC Angel LE product, which infringes
the Xpoint Patents, states: “PC Angel LE™ is a hard-disk based disaster proof Backup &
Rescue/Recovery software designed specifically for System Builders and IT Solution
Providers to generate more revenue, add value and minimize after-sales support. . . . PC
Angel LE™ helps to ensure your margins by reducing the costs of After Sale Service and
cutting down on installation time.”
7. Xpoint markets and sells its One Button Restore® technology, which is
covered by the Xpoint Patents, and has suffered significant lost business and profits as a
result of the Defendants’ infringement of the Xpoint Patents.
-4- Case 1:09-cv-00026-SLR Document 485 Filed 08/17/10 Page 5 of 25 PageID #: 4004
Intel Learned of the Technology Claimed by the Xpoint Patents From Xpoint and Has Subsequently Infringed the Patents, Along With FarStone and Acronis
8. In September 2002, Intel contacted Xpoint requesting an evaluation
license for the Rapid Restore PRO or Rapid Restore Enterprise software systems, both of
which rely on the One Button Restore technology covered by the Xpoint Patents. In e-
mail discussions regarding the One Button Restore technology, Xpoint described the
invention to Intel as consisting of a “2nd line backup and recovery” system that includes
an “F11 partition.”
9. Intel and Xpoint proceeded to late-stage discussions about licensing the
One Button Restore technology, but Intel ultimately did not license the One Button
Restore technology from Xpoint.
10. Despite failing to enter into a licensing agreement with Xpoint, Intel used
its knowledge of the Xpoint Patents technology to develop or sell infringing technology.
For instance, Intel includes FarStone’s RestoreIT system and the Acronis True Image
technology, both of which infringe the Xpoint Patents, with motherboards it
manufactures and sells.
11. Intel documentation for its motherboards based on P945, 955, 965 and
975X Express chipsets indicates that these motherboards are offered for sale and/or sold
together with FarStone’s RestoreIT technology, which provides for a backup and restore
system that uses a separate storage area to store a copy of the primary storage area along
with a second operating system and user data, and includes all other claimed features,
thereby infringing the Xpoint Patents. For example, the Intel Motherboard and RestoreIT
8.1 User Guide describes a sector-based “image file” of the entire system that is stored
either externally or internally in a “partition[ed]” area called the “RestoreIT Secure Area”
-5- Case 1:09-cv-00026-SLR Document 485 Filed 08/17/10 Page 6 of 25 PageID #: 4005
that contains “the Pre-OS Mode program, Incremental Backup Points, Complete Backup
Points and File Backup Records.” Other RestoreIT documentation shows that the
software “keeps an ongoing record of all saved changes to your personal files.”
12. Similarly, Intel documentation for other Intel motherboards indicates they
are offered for sale and/or sold together with Acronis True Image technology, which also
includes all claimed features, thereby infringing the Xpoint Patents. The Acronis True
Image 11.0 Home Datasheet describes the use of a “special, hidden partition” called the
Acronis Secure Zone that contains “[r]aw sector-by-sector images” and a separate
operating system called Acronis Startup Recovery Manager. These features allow the
user to “copy your entire PC, including the operating system, applications, user settings,
and all data . . . [and] restore the entire disk contents in minutes no reinstallations
required!”
HP Learned of the Technology Claimed by the Xpoint Patents From Xpoint, and HP and SoftThinks Subsequently Infringed the Patents
13. In January 2003, HP contacted Xpoint about its need for a “quick
restoring” solution and stated that it had received recommendations for Xpoint’s product.
14. Xpoint provided HP with a description of the One Button Restore
technology and the Rapid Restore line of products. After evaluating the One Button
Restore technology, HP purchased a limited license of the Rapid Restore product to sell
to Best Buy Co., Inc. (“Best Buy”) for Best Buy’s own use (nor for resale). HP did not
enter into a broader license that would permit HP to use the One Button Restore
technology in other systems.
15. Despite failing to enter into an appropriately broad licensing agreement
with Xpoint, HP used its knowledge of the Xpoint Patents technology to develop or sell
-6- Case 1:09-cv-00026-SLR Document 485 Filed 08/17/10 Page 7 of 25 PageID #: 4006
infringing systems. For instance, HP has manufactured and sold computer systems for
desktop, laptop, and business computers utilizing the HP Backup & Recovery Manager,
which infringes the Xpoint Patents and was developed by HP and/or SoftThinks. A
screen image for the HP Backup & Recovery Manager indicates that it is copyrighted by
SoftThinks, and SoftThinks marketing documents state that SoftThinks provides backup
and recovery technology to HP.
16. HP documentation for the HP Backup & Recovery Manager system
indicates that it provides for a backup and restore system that uses a separately stored,
sector-based copy of the primary storage partition on a hard disk along with a second
operating system and user data, and includes all other claimed features, thereby infringing
the Xpoint Patents. For example, the HP Backup and Recovery Manager Administrator
Guide describes a system that makes an initial sector-based copy to create an “Entire
Drive Backup” and “Initial Recovery Point,” followed by incremental “file-based
backups” to recover “Subsequent Recovery Points and individual file and folder
backups.” The initial recovery point is always stored in a separate “[r]ecovery
[p]artition,” while the “Entire Drive Backup” can either be stored in the recovery
partition, in which case the partition will be “locked down,” or stored externally. The
recovery partition contains a copy of the Windows Preinstallation Environment, which is
the “media operating system used for a full PC Recovery (F11 key restore).”
17. HP documentation refers to the process of recovering the full PC through
the use of the F11 key as “One button restore in pre-OS environment.” One Button
Restore® has been registered as an Xpoint trademark since May 21, 2002.
-7- Case 1:09-cv-00026-SLR Document 485 Filed 08/17/10 Page 8 of 25 PageID #: 4007
18. SoftThinks has also licensed its infringing products to Compaq, Acer,
ViewSonic, Alienware, Best Buy, Microcenter, Dixon, ZT Group, Seneca Data, Tatung
Company, and other computer companies which resell the SoftThinks products in the
United States.
Dell Learned of the Technology Claimed by the Xpoint Patents From Xpoint and Has Subsequently Infringed the Patents
19. In January 2003, Steve Park, a member of Dell’s corporate strategy team,
visited Xpoint’s headquarters to discuss Xpoint’s products, with the goal of arriving at a
potential licensing deal for the One Button Restore technology. Prior to the visit, in
November 2002, Dell and Xpoint executed a Non-Disclosure Agreement.
20. In March 2003, Xpoint drafted a non-binding Letter of Understanding
(“LOU”) between Xpoint and Dell. The letter was drafted “[p]ursuant to Dell’s stated
interest in making Xpoint’s first-to-market Automatic Managed Recovery™ technology
its standard for client recovery” and stated that “Dell seeks to enter into a three year
Strategic Sourcing Agreement (the ‘Agreement’) with Xpoint.” (“Automatic Managed
Recovery” is an Xpoint trademark for the same technology covered by the “One Button
Restore” mark.) The LOU also stated that “the driving force” behind the Agreement was
to sell and support the One Button Restore technology. Later that month, Dell responded
by circulating an edited version of the LOU, in which none of the above provisions were
altered. This revised LOU was not ultimately executed.
21. Despite failing to enter into a licensing agreement with Xpoint, Dell used
its knowledge of the Xpoint Patents technology to develop or sell infringing systems. For
instance, Dell has sold its own-brand “Dell Local Recovery” and “Dell DataSafe”
computer restore products, which both infringe the Xpoint Patents and which were
-8- Case 1:09-cv-00026-SLR Document 485 Filed 08/17/10 Page 9 of 25 PageID #: 4008
produced by Symantec and licensed by Symantec to Dell. Dell also has sold and
continues to sell computer products utilizing, inter alia, Microsoft Windows Vista Home,
Vista Basic, Vista Enterprise, Vista Business, Vista Ultimate, Windows 7, and Windows
Server 2008 OS, which all infringe the Xpoint Patents.
Microsoft Infringes the Xpoint Patents
22. Microsoft documentation for the Windows Vista Home, Vista Basic, Vista
Enterprise, Vista Business, Vista Ultimate, Windows 7, and Windows Server 2008
operating systems indicates that they provide for a backup and restore system that uses a
second storage area separate from the primary storage area to store a copy of the primary
storage area of a hard disk along with a second operating system and user data, and
include all other claimed features, thereby infringing the Xpoint Patents. For example,
Windows Vista Home and Vista Basic use the System Restore feature, which stores a
copy of the primary storage area and incremental user data in a second storage area along
with a second operating system. Similarly, Windows Vista Enterprise, Vista Business,
and Vista Ultimate use the Windows Complete PC Backup system, which provides for
the creation of a “block-level” (sector-based) image-based backup that is stored as a
“Virtual Hard Drive” image file “in a different location from the original files” along
with “incremental” user data and the separate Windows Preinstallation Environment
operating system. Likewise, Windows 7 uses a Backup and Restore program that creates
a sector-based “system image backup” in a separate or partitioned drive, and performs a
second incremental backup that includes all “files and folders that are new and modified
and adds them to your backup.” Finally, Windows Server 2008 OS employs the
Windows Server Backup system to permit the user to “recover your server operating
-9- Case 1:09-cv-00026-SLR Document 485 Filed 08/17/10 Page 10 of 25 PageID #: 4009
system or full server” by accessing a backup copy saved, along with the Windows
Preinstallation Environment operating system, either on a “recovery partition” or locally
on the server.
23. The infringing software and operating systems manufactured by
Microsoft are used in numerous brands of desktop, mobile, and business computers,
including, for example, products from Dell, Acer, Acer America, Gateway, Toshiba, and
Toshiba AIS.
The Other Defendants Also Infringe the Xpoint Patents
24. Xpoint also believes, based on its investigation, that the other Defendants
manufacture infringing products and/or sell or import infringing products in or into the
United States. For example, Acer, Acer America, Gateway, Toshiba, Toshiba AIS,
ASUSTeK, ASUS International, Sony, Sony America, and Sony Electronics sell, offer to
sell, and/or import into the United States infringing computers containing software,
and/or operating systems produced by Microsoft.
25. The magnitude of Defendants’ infringement is enormous. For example,
approximately 67 million personal computers, including 16.8 million HP computers,
were sold in the United States in 2007. That same year, sales of servers in the United
States reached more than 2.8 million. Many of these computers and servers were sold
with Microsoft Windows Vista or Windows Server 2008 operating systems installed.
JURISDICTION, PARTIES AND VENUE
26. This is an action for patent infringement. The claims arise under the
patent laws of the United States, 35 U.S.C. § 1 et seq. This Court has subject matter
jurisdiction over these claims under 28 U.S.C. §§ 1331 and 1338(a).
-10- Case 1:09-cv-00026-SLR Document 485 Filed 08/17/10 Page 11 of 25 PageID #: 4010
27. Plaintiff Xpoint is a corporation organized and existing under the laws of
Delaware, having its principal place of business in Boca Raton, Florida.
28. Defendant Intel is a corporation organized and existing under the laws of
Delaware with its principal place of business at 2200 Mission College Boulevard, Santa
Clara, California 95054.
29. Intel transacts business directly and/or through third parties in this judicial
district by manufacturing, using, selling, or offering to sell products as described and
claimed in the Xpoint Patents and/or by conducting other business in this judicial district.
Intel has availed itself of this Court’s jurisdiction in other patent cases, e.g., Intel Corp. v.
Broadcom Corp., No. 1:00-cv-00796-SLR (D. Del. filed Aug. 30, 2000), and Intel Corp.
v. Via Technologies, Inc., No. 1:01-cv-00605-JJF (D. Del. filed Sept. 7, 2001).
Accordingly, this Court has personal jurisdiction over Intel under Fed. R. Civ. P.
4(k)(1)(A) and 10 Del. C. § 3104(b) and (c).
30. Defendant FarStone is a corporation organized and existing under the laws
of California with its principal place of business at 350 South Hope, Suite A103, Irvine,
California 93105.
31. FarStone transacts business directly and/or through third parties in this
judicial district by manufacturing, using, selling, or offering to sell products as described
and claimed in the Xpoint Patents and/or by conducting other business in this judicial
district. Accordingly, this Court has personal jurisdiction over FarStone under Fed. R.
Civ. P. 4(k)(1)(A) and 10 Del. C. § 3104(b) and (c).
-11- Case 1:09-cv-00026-SLR Document 485 Filed 08/17/10 Page 12 of 25 PageID #: 4011
32. Defendant Acronis is a corporation organized and existing under the laws
of Delaware with its principal place of business at 52 Third Avenue, Burlington,
Massachusetts 01803.
33. Acronis transacts business directly and/or through third parties in this
judicial district by manufacturing, using, selling, or offering to sell products as described
and claimed in the Xpoint Patents and/or by conducting other business in this judicial
district. Accordingly, this Court has personal jurisdiction over Acronis under Fed. R.
Civ. P. 4(k)(1)(A) and 10 Del. C. § 3104(b) and (c).
34. Defendant HP is a corporation organized and existing under the laws of
Delaware with its principal place of business at 3000 Hanover Street, Palo Alto,
California 94304.
35. HP transacts business directly and/or through third parties in this judicial
district by manufacturing, using, selling, or offering to sell products as described and
claimed in the Xpoint Patents and/or by conducting other business in this judicial district.
HP has availed itself of this Court’s jurisdiction in other patent cases, e.g., Hewlett-
Packard Corp. v. Intergraph Corp., No. 1:04-CV-243-KAJ (D. Del. filed Jan. 27, 2005),
and Hewlett-Packard Corp. v. Papst Licensing GmbH, No. 01:99-CV-395-SLR (D. Del.
filed June 22, 1999). Accordingly, this Court has personal jurisdiction over HP under
Fed. R. Civ. P. 4(k)(1)(A) and 10 Del. C. § 3104(b) and (c).
36. Defendant Dell is a corporation organized and existing under the laws of
Delaware with its principal place of business at 1 Dell Way, Round Rock, Texas 78682.
37. Dell transacts business directly and/or through third parties in this judicial
district by manufacturing, using, selling, or offering to sell products as described and
-12- Case 1:09-cv-00026-SLR Document 485 Filed 08/17/10 Page 13 of 25 PageID #: 4012
claimed in the Xpoint Patents and/or by conducting other business in this judicial district.
Dell has availed itself of this Court’s jurisdiction in other patent cases, e.g., Agfa Corp.,
et al. v. Compression Labs, Inc., et al., No. 1:04-CV-0818-SLR (D. Del. filed July 2,
2004), and Internet Media Corporation v. Dell, Inc., et al., No. 1:05-CV-0633-SLR (D.
Del. filed Aug. 29, 2005). (Dell asserted counterclaims in Internet Media.) Accordingly,
this Court has personal jurisdiction over Dell under Fed. R. Civ. P. 4(k)(1)(A) and 10
Del. C. § 3104(b) and (c).
38. Defendant Symantec is a corporation organized and existing under the
laws of Delaware with its principal place of business at 20330 Stevens Creek Blvd.,
Cupertino, California 95014.
39. Symantec transacts business directly and/or through third parties in this
judicial district by manufacturing, using, selling, or offering to sell products as described
and claimed in the Xpoint Patents and/or by conducting other business in this judicial
district. Symantec has availed itself of this Court’s jurisdiction in this case by moving to
intervene in the action. Accordingly, this Court has personal jurisdiction over Symantec
under Fed. R. Civ. P. 4(k)(1)(A) and 10 Del. C. § 3104(b) and (c).
40. Defendant Microsoft is a corporation organized and existing under the
laws of Washington with its principal place of business at 1 Microsoft Way, Redmond
Washington 98052.
41. Microsoft transacts business directly and/or through third parties in this
judicial district by manufacturing, using, selling, or offering to sell products as described
and claimed in the Xpoint Patents and/or by conducting other business in this judicial
district. Microsoft has availed itself of this Court’s jurisdiction in other patent cases, e.g.,
-13- Case 1:09-cv-00026-SLR Document 485 Filed 08/17/10 Page 14 of 25 PageID #: 4013
Microsoft v. Alcatel-Lucent Enterprise, No. 1:07-CV-0090-SLR (D. Del. filed Feb. 16,
2007). Accordingly, this Court has personal jurisdiction over Microsoft under Fed. R.
Civ. P. 4(k)(1)(A) and 10 Del. C. § 3104(b) and (c).
42. Defendant Acer is a corporation organized and existing under the laws of
Taiwan with its principal place of business in Taipei, Taiwan.
43. Defendant Acer America is the United States subsidiary of Acer and is a
corporation organized and existing under the laws of California with its principal place of
business at 333 W. San Carlos St., Suite 1500, San Jose, California 95110.
44. Acer and Acer America transact business directly and/or through third
parties in this judicial district by manufacturing, using, selling, or offering to sell products
as described and claimed in the Xpoint Patents and/or by conducting other business in
this judicial district. Acer and Acer America have availed themselves of this Court’s
jurisdiction in other patent cases, e.g., Elonex IP Holdings, et al. v. Acer
Communications, et al., No. 1:01-CV-0096-GMS (D. Del. filed Feb. 13, 2001). (Acer and
Acer America asserted counterclaims in Elonex.) Accordingly, this Court has personal
jurisdiction over Acer and Acer America under Fed. R. Civ. P. 4(k)(1)(A) and 10 Del. C.
§ 3104(b) and (c).
45. Defendant Gateway is a corporation organized and existing under the laws
of Delaware with its principal place of business at 7565 Irvine Center Drive, Irvine,
California 92618.
46. Gateway transacts business directly and/or through third parties in this
judicial district by manufacturing, using, selling, or offering to sell products as described
and claimed in the Xpoint Patents and/or by conducting other business in this judicial
-14- Case 1:09-cv-00026-SLR Document 485 Filed 08/17/10 Page 15 of 25 PageID #: 4014
district. Gateway has availed itself of this Court’s jurisdiction in other patent cases, e.g.,
Agfa Corp., et al. v. Compression Labs, Inc., et al., No. 1:04-CV-0818-SLR (D. Del. filed
July 2, 2004), and Elonex IP Holdings v. Gateway, No. 1:01-CV-0090-GMS (D. Del.
filed Feb. 13, 2001). (Gateway asserted counterclaims in Elonex.) Accordingly, this
Court has personal jurisdiction over Gateway under Fed. R. Civ. P. 4(k)(1)(A) and 10
Del. C. § 3104(b) and (c).
47. Defendant Toshiba is a corporation organized and existing under the laws
of Japan with its principal place of business in Tokyo, Japan.
48. Defendant Toshiba AIS is a California corporation and a subsidiary of
Toshiba with its principal place of business at 9740 Irvine Boulevard, Irvine, California
92618 and with a registered agent in Delaware (The Corporation Trust Company, 1209
Orange Street, Wilmington, Delaware 19801).
49. Toshiba and Toshiba AIS transact business directly and/or through third
parties in this judicial district by manufacturing, using, selling, or offering to sell products
as described and claimed in the Xpoint Patents and/or by conducting other business in
this judicial district. Toshiba has availed itself of this Court’s jurisdiction in other patent
cases, e.g., Toshiba Corp. v. Juniper Networks, et al., No. 1:03-CV-1035-SLR (D. Del.
filed Nov. 13, 2003). Accordingly, this Court has personal jurisdiction over Toshiba and
Toshiba AIS under Fed. R. Civ. P. 4(k)(1)(A) and 10 Del. C. § 3104(b) and (c).
50. Defendant ASUSTeK is a corporation organized and existing under the
laws of Taiwan with its principal place of business in Taipei, Taiwan.
-15- Case 1:09-cv-00026-SLR Document 485 Filed 08/17/10 Page 16 of 25 PageID #: 4015
51. Defendant ASUS International is a California corporation and a subsidiary
of ASUSTeK with its principal place of business at 800 Corporate Way, Fremont,
California 94539.
52. ASUSTeK and ASUS International transact business directly and/or
through third parties in this judicial district by manufacturing, using, selling, or offering
to sell products as described and claimed in the Xpoint Patents and/or by conducting
other business in this judicial district. ASUSTeK’s 2007 annual report stated that “ASUS
is the world number one [computer] brand in Europe, Asia, and America” and reported
“internal operating income” in “America/Canada” of approximately NT$102 billion in
2006 and NT$ 105 billion in 2007. Accordingly, this Court has personal jurisdiction over
ASUSTeK and ASUS International under Fed. R. Civ. P. 4(k)(1)(A) and 10 Del. C. §
3104(b) and (c).
53. Defendant Sony is a corporation organized and existing under the laws of
Japan with its principal place of business in Tokyo, Japan.
54. Defendant Sony America is a New York corporation and a subsidiary of
Sony with its principal place of business at 550 Madison Avenue, New York, New York
10022 and with a registered agent in Delaware (The Corporation Trust Company, 1209
Orange Street, Wilmington, Delaware 19801).
55. Defendant Sony Electronics is a Delaware corporation and a subsidiary of
Sony with its principal place of business at 16530 Via Esprillo, San Diego, California
92127.
56. Sony, Sony America, and Sony Electronics transact business directly
and/or through third parties in this judicial district by manufacturing, using, selling, or
-16- Case 1:09-cv-00026-SLR Document 485 Filed 08/17/10 Page 17 of 25 PageID #: 4016
offering to sell products as described and claimed in the Xpoint Patents and/or by
conducting other business in this judicial district. Sony Electronics sells such products at,
among other places, its “Sony Style” store located at Rehoboth Outlet, 34986 Midway
Outlet Drive, Rehoboth Beach, Delaware 19971. Sony, Sony America, and Sony
Electronics have availed themselves of this Court’s jurisdiction in other patent cases, e.g.,
Magnequench International, Inc. v. Sony Corp., et al., C.A. No. 04-135-GMS (D. Del.
filed Mar. 4, 2004), and St. Clair Intellectual Property Consultants, Inc. v. Sony Corp., et
al., C.A. No. 01-00557-JJF (D. Del. filed Aug. 14, 2001). (Sony, Sony America, and
Sony Electronics asserted counterclaims in Magnequench and St. Clair.) Accordingly,
this Court has personal jurisdiction over Sony, Sony America, and Sony Electronics
under Fed. R. Civ. P. 4(k)(1)(A) and 10 Del. C. § 3104(b) and (c).
57. Defendant SoftThinks is a société anonyme organized and existing under
the laws of France with its principal place of business in Villeneuve d'Ascq, France.
58. Defendant SoftThinks USA is a Delaware corporation and a subsidiary of
SoftThinks with its principal place of business at 371 Elan Village Lane, Suite 227, San
Jose, California 95134.
59. SoftThinks and SoftThinks USA transact business directly and/or through
third parties in this judicial district by manufacturing, using, selling, or offering to sell
products as described and claimed in the Xpoint Patents and/or by conducting other
business in this judicial district. A SoftThinks marketing document states that “PC Angel
LE™ is installed on 65% of all PCs retailed in the US & several millions more deployed
by brand-name OEMs.” Accordingly, this Court has personal jurisdiction over
-17- Case 1:09-cv-00026-SLR Document 485 Filed 08/17/10 Page 18 of 25 PageID #: 4017
SoftThinks and SoftThinks USA under Fed. R. Civ. P. 4(k)(1)(A) and 10 Del. C. §
3104(b) and (c).
60. Plaintiff Xpoint and Defendants Acronis, HP, Dell, Symantec, Gateway,
Sony Electronics, and SoftThinks USA are organized under Delaware law. Venue is
proper in this district under 28 U.S.C. §§ 1391(b) and (c) and 1400(b) for at least the
reasons that the Defendants reside in Delaware and/or have committed acts within this
judicial district giving rise to this action and do business in this district.
CAUSE OF ACTION FOR PATENT INFRINGEMENT (35 U.S.C. § 271 et seq.)
61. Xpoint incorporates by reference herein each and every allegation
contained in the paragraphs above as though fully set forth here.
62. Xpoint owns all right, title, and interest in the Xpoint Patents, including
the right to sue thereon and the right to recover for infringement thereof.
63. Intel manufactures, uses, sells and offers to sell, and/or imports into the
United States for subsequent use and sale products and services that infringe, directly
and/or indirectly, or which employ systems or components that make use of systems that
infringe, directly and/or indirectly, one or more claims of the Xpoint Patents, including
without limitation the Intel Rapid Recovery technology, the FarStone RestoreIT
technology, and the Acronis True Image technology, as well as any other software,
systems, or components acting or capable of acting in the manner described or claimed in
the Xpoint Patents.
64. FarStone manufactures, uses, sells and offers to sell, and/or imports into
the United States for subsequent use and sale products and services that infringe, directly
and/or indirectly, or which employ systems or components that make use of systems that
-18- Case 1:09-cv-00026-SLR Document 485 Filed 08/17/10 Page 19 of 25 PageID #: 4018
infringe, directly and/or indirectly, one or more claims of the Xpoint Patents, including
without limitation the RestoreIT technology, as well as any other software, systems or
components acting or capable of acting in the manner described or claimed in the Xpoint
Patents.
65. Acronis manufactures, uses, sells and offers to sell, and/or imports into the
United States for subsequent use and sale products and services that infringe, directly
and/or indirectly, or which employ systems or components that make use of systems that
infringe, directly and/or indirectly, one or more claims of the Xpoint Patents, including
without limitation the True Image technology, as well as any other software, systems or
components acting or capable of acting in the manner described or claimed in the Xpoint
Patents.
66. HP manufactures, uses, sells and offers to sell, and/or imports into the
United States for subsequent use and sale products and services that infringe, directly
and/or indirectly, or which employ systems or components that make use of systems that
infringe, directly and/or indirectly, one or more claims of the Xpoint Patents, including
without limitation the HP Backup & Recovery Manager and SoftThinks PC Angel, as
well as any other software, systems, or components acting or capable of acting in the
manner described or claimed in the Xpoint Patents.
67. Dell manufactures, uses, sells and offers to sell, and/or imports into the
United States for subsequent use and sale products and services that infringe, directly
and/or indirectly, or which employ systems or components that make use of systems that
infringe, directly and/or indirectly, one or more claims of the Xpoint Patents, including
without limitation Dell Local Recovery, Dell DataSafe, and software, and/or operating
-19- Case 1:09-cv-00026-SLR Document 485 Filed 08/17/10 Page 20 of 25 PageID #: 4019
systems produced by Microsoft, as well as any other software, systems, or components
acting or capable of acting in the manner described or claimed in the Xpoint Patents.
68. Symantec manufactures, uses, sells and offers to sell, and/or imports into
the United States for subsequent use and sale products and services that infringe, directly
and/or indirectly, or which employ systems or components that make use of systems that
infringe, directly and/or indirectly, one or more claims of the Xpoint Patents, including
without limitation the Dell Local Recovery and Dell DataSafe products that Symantec
licensed to Dell, as well as the Ghost and Save and Restore 2.0 products and any other
software, systems, or components acting or capable of acting in the manner described or
claimed in the Xpoint Patents.
69. Microsoft manufactures, uses, sells and offers to sell, and/or imports into
the United States for subsequent use and sale products and services that infringe, directly
and/or indirectly, or which employ systems or components that make use of systems that
infringe, directly and/or indirectly, one or more claims of the Xpoint Patents, including
without limitation its Windows Vista Home, Windows Vista Basic, Windows Vista
Enterprise, Windows Vista Business, Windows Vista Ultimate, Windows 7, and
Windows Server 2008 operating systems, as well as any other software, systems, or
components acting or capable of acting in the manner described or claimed in the Xpoint
Patents.
70. Acer and Acer America manufacture, use, sell and offer to sell, and/or
import into the United States for subsequent use and sale products and services that
infringe, directly and/or indirectly, or which employ systems or components that make
use of systems that infringe, directly and/or indirectly, one or more claims of the Xpoint
-20- Case 1:09-cv-00026-SLR Document 485 Filed 08/17/10 Page 21 of 25 PageID #: 4020
Patents, including without limitation the Acer eRecovery Management product
incorporated in Acer-, Gateway-, and eMachine-brand computers and software, and/or
operating systems produced by Microsoft, as well as any other software, systems, or
components acting or capable of acting in the manner described or claimed in the Xpoint
Patents.
71. Gateway manufactures, uses, sells and offers to sell, and/or imports into
the United States for subsequent use and sale products and services that infringe, directly
and/or indirectly, or which employ systems or components that make use of systems that
infringe, directly and/or indirectly, one or more claims of the Xpoint Patents, including
without limitation software, and/or operating systems produced by Microsoft and the
SoftThinks PC Angel, as well as any other software, systems, or components acting or
capable of acting in the manner described or claimed in the Xpoint Patents.
72. Toshiba and Toshiba AIS manufacture, use, sell and offer to sell, and/or
import into the United States for subsequent use and sale products and services that
infringe, directly and/or indirectly, or which employ systems or components that make
use of systems that infringe, directly and/or indirectly, one or more claims of the Xpoint
Patents, including without limitation software, and/or operating systems produced by
Microsoft, external hard drives having NTI backup software, as well as any other
software, systems, or components acting or capable of acting in the manner described or
claimed in the Xpoint Patents.
73. ASUSTeK and ASUS International manufacture, use, sell and offer to sell,
and/or import into the United States for subsequent use and sale products and services
that infringe, directly and/or indirectly, or which employ systems or components that
-21- Case 1:09-cv-00026-SLR Document 485 Filed 08/17/10 Page 22 of 25 PageID #: 4021
make use of systems that infringe, directly and/or indirectly, one or more claims of the
Xpoint Patents, including without limitation Windows Vista and the Windows Recovery
Environment and software, Windows 7 and/or other operating systems produced by
Microsoft, as well as any other software, systems, or components acting or capable of
acting in the manner described or claimed in the Xpoint Patents.
74. Sony, Sony America, and Sony Electronics manufacture, use, sell and
offer to sell, and/or import into the United States for subsequent use and sale products
and services that infringe, directly and/or indirectly, or which employ systems or
components that make use of systems that infringe, directly and/or indirectly, one or
more claims of the Xpoint Patents, including without limitation Vaio-brand computers
incorporating the Sony Vaio Data Rescue Tool, Windows Vista, and the Windows
Recovery Environment and other software, Windows 7 and/or other operating systems
produced by Microsoft, as well as any other software, systems, or components acting or
capable of acting in the manner described or claimed in the Xpoint Patents.
75. SoftThinks and SoftThinks USA manufacture, use, sell and offer to sell,
and/or import into the United States for subsequent use and sale products and services
that infringe, directly and/or indirectly, or which employ systems or components that
make use of systems that infringe, directly and/or indirectly, one or more claims of the
Xpoint Patents, including without limitation the SoftThinks PC Angel and HP Backup
and Recovery Manager technology, as well as any other software, systems or components
acting or capable of acting in the manner described or claimed in the Xpoint Patents.
76. Defendants, through the activities and products listed and described in the
paragraphs above, have infringed and are directly infringing the Xpoint Patents, and are
-22- Case 1:09-cv-00026-SLR Document 485 Filed 08/17/10 Page 23 of 25 PageID #: 4022
also aiding, abetting, and contributing to, and actively inducing infringement of the
Xpoint Patents by other Defendants and by non-parties, in the United States and foreign
countries, in violation of 35 U.S.C. § 271.
77. Defendants are not licensed or otherwise authorized to make, use, import,
offer to sell, market, provide, or sell any product or method claimed in the Xpoint
Patents, and Defendants’ infringing conduct is, in every instance, without Xpoint’s
consent.
78. By reason of Defendants’ infringing activities, Xpoint has suffered, and
will continue to suffer, substantial damages in an amount yet to be determined.
79. Defendants’ acts complained of herein have damaged and will continue to
damage Xpoint irreparably. Xpoint has no adequate remedy at law for these wrongs and
injuries. Xpoint is therefore entitled to a preliminary and permanent injunction
restraining and enjoining Defendants and their officers, directors, principals, agents,
servants, employees, successors, and assigns, and all persons and entities in active
concert or participation with them, from infringing, and from contributing to and
inducing the infringement of, the claims of the Xpoint Patents.
80. At all relevant times, Defendants have had actual and constructive notice
that their conduct infringe on the claims of the Xpoint Patents but nevertheless continued
their infringing conduct. Defendants’ infringement has been and continues to be willful.
PRAYER FOR RELIEF
WHEREFORE, Xpoint respectfully requests that the Court grant the following
relief:
-23- Case 1:09-cv-00026-SLR Document 485 Filed 08/17/10 Page 24 of 25 PageID #: 4023
(a) enter judgment that Defendants infringe and have infringed the Xpoint
Patents;
(b) declare that Defendants’ infringement of the Xpoint Patents has been
willful;
(c) enter a preliminary and permanent injunction enjoining Defendants and
their officers, directors, principals, agents, servants, employees, successors, and assigns,
and all persons and entities in active concert or participation with them, from infringing,
and from contributing to and inducing the infringement of, the claims of the Xpoint
Patents;
(d) enter judgment awarding Xpoint damages from Defendants adequate to
compensate for Defendants’ infringement, including interest and costs;
(e) enter judgment awarding Xpoint treble damages based on Defendants’
copying and willful infringement of the Xpoint Patents;
(f) declare this case to be exceptional and enter judgment awarding Xpoint
increased damages under 35 U.S.C. § 284 and its reasonable attorney fees and costs
under 35 U.S.C. § 285; and
(g) award Xpoint such further relief as this Court deems just and proper.
DEMAND FOR JURY TRIAL
Xpoint respectfully requests a trial by jury on all issues so triable in accordance
with Fed. R. Civ. P. 38.
-24- Case 1:09-cv-00026-SLR Document 485 Filed 08/17/10 Page 25 of 25 PageID #: 4024
BOUCHARD MARGULES &FRIEDLANDER, P.A. /s/ Sean M. Brennecke David J. Margules (#2254) Sean M. Brennecke (#4686) 222 Delaware Ave., Suite 1400 Wilmington, DE 19801 Phone: (302) 573-3500 Fax: (302) 573-3501 [email protected] [email protected]
BERNSTEIN LITOWITZ BERGER SUGHRUE MION, PLLC &GROSSMANN LLP William H. Mandir Chad Johnson John F. Rabena Joshua L. Raskin Kelly G. Hyndman Jai Chandrasekhar Brian K. Shelton Adam Wierzbowski Eric S. Barr Sean O’Dowd 2100 Pennsylvania Ave., N.W. 1285 Avenue of the Americas Washington, DC 20037 New York, NY 10019 Phone: (202) 663-7959 Phone: (212) 554-1400 Fax: (202) 293-7860 Fax: (212) 554-1444
Date: May 4, 2010
ATTORNEYS FOR XPOINT TECHNOLOGIES, INC.
-25-