Case: 1:21-cv-01840 Document #: 1 Filed: 04/06/21 Page 1 of 20 PageID #:1

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS

CINE GRAPHIC SOLUTIONS LLC,

Plaintiff, Case No. v. PATENT CASE 21-cv- 1840 MOBILITY LLC, JURY TRIAL DEMANDED Defendant.

COMPLAINT FOR PATENT INFRINGEMENT

Plaintiff Cine Graphic Solutions LLC (“Cine Graphic” or “Plaintiff”) files this Complaint against LLC (“Motorola” or “Defendant”) for infringement of U.S. Patent Nos.

7,388,587 (“the ʼ587 patent”), 7,629,977 (“the ʼ977 patent”), and 8,035,644 (“the ʼ644 patent”)

(collectively, the “patents-in-suit”).

THE PARTIES

1. Cine Graphic is a Texas limited liability company with its principal place of business located at 11 Tattersall, Laguna Niguel, CA 92677.

2. Motorola is a Delaware company with its principal place of business located at 222

W. Merchandise Mart Plaza, Suite 1800, Chicago, Illinois 60654.

JURISDICTION AND VENUE

3. Plaintiff brings this action for patent infringement under the patent laws of the

United States, namely 35 U.S.C. §§ 271, 281, and 284-285, among others. This Court has subject matter jurisdiction pursuant to 28 U.S.C. § 1331 (federal question jurisdiction) and § 1338(a)

(jurisdiction over patent actions).

4. Motorola is subject to personal jurisdiction in this Court. In particular, this Court has personal jurisdiction over Motorola because Motorola has engaged in continuous, systematic,

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and substantial activities within this State, including substantial marketing and sales of products within this State and this District. Furthermore, on information and belief, this Court has personal jurisdiction over Motorola because Motorola has committed acts giving rise to Cine Graphic’s claims for patent infringement within and directed to this District.

5. Venue is proper in this judicial district pursuant to 28 U.S.C. § 1400(b). Motorola has committed acts of infringement in this judicial district and has a regular and established place of business in this district. Specifically, Motorola is headquartered at 222 W. Merchandise Mart

Plaza, Suite 1800, Chicago, Illinois 60654.

6. On information and belief, Motorola has conducted and does conduct substantial business in this forum, directly and/or through subsidiaries, agents, representatives, or intermediaries, such substantial business including but not limited to: (i) at least a portion of the infringements alleged herein; (ii) purposefully and voluntarily placing one or more infringing products into the stream of commerce with the expectation that they will be purchased by consumers in this forum; or (iii) regularly doing or soliciting business, engaging in other persistent courses of conduct, or deriving substantial revenue from goods and services provided to individuals in Illinois and in this judicial district.

THE INVENTOR OF THE PATENTS-IN-SUIT

7. Doug Richardson (pictured below) lives in Dripping Springs, Texas. He is the named inventor on the patents-in-suit.

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8. Mr. Richardson has worked in various capacities as a professional photographer.

Starting with his college internship at the Texas Parks and Wildlife Department, Mr. Richardson has worked for more than two decades shooting for sports publications, commercial videos, and online advertising.

9. In the late 1990s, Mr. Richardson worked for the University of Texas as a photographer for the UT Cheerleading Team.

10. In 2001, Mr. Richardson switched to digital photography and in 2005 invented the

“Cinegif,” an image having an isolated area of motion that draws the viewer’s eye to a particular area of the image.

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11. Advertisers immediately recognized the value of focusing attention on a specific part of an image and engaged Mr. Richardson to provide his Cinegifs via his patent-pending methods and/or products.

12. For instance, Mr. Richardson provided Cinegifs for Jaguar Land Rover of Austin that appeared in online media advertising in 2005. His Cinegifs garnered immediate and extensive attention.

13. Advertisers across industries from automotive marketing to real estate to healthcare have used Mr. Richardson’s Cinegifs to attract customers and increase click-through rates.

14. More recently, Mr. Richardson provided his Cinegifs for Maserati of Austin, Keller

Williams Realty, Century 21 Realty, John Deere, Kraft, Starwood Resorts, Chick-fil-A, and Deep

Eddy Vodka.

GENERAL ALLEGATIONS

15. Motorola makes, uses, sells, offers to sell, and/or imports into the United States products as claimed and/or otherwise engages in practices that infringe one or more claims of the each of the patents-in-suit.

16. On information and belief, Motorola developed a feature for its hardware and software products that provides the same and/or similar functionality as Mr. Richardson’s Cinegifs after the publication and/or issuance of the patents-in-suit. Specifically, Motorola developed and released mobile phone products, products, and software (such as apps) that include a feature Motorola has dubbed “Cinemagraph.”

17. Motorola has infringed and continues to infringe the patents-in-suit by making, using, selling, offering to sell, and/or importing into the United States mobile devices with

Motorola’s Cinemagraph feature including Motorola’s , Moto Z3 play, , Moto

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G-series of (Moto G6, Moto G7, Moto G7 play, Moto G7 Power, Power,

Moto G8 Plus, Power, Moto G Stylus), Motorola One, Motorola One Macro, Motorola

One Action, Motorola One Vision, Motorola One Zoom, Motorola One Hyper, ,

Motorola Edge, + and Motorola One Fusion (the “Accused Phones”).

18. Motorola delivers the Accused Phones with software and hardware pre-installed and pre-configured for creating Cinegifs (which Motorola refers to as “Cinemagraphs,” as stated above).

19. Motorola has and continues to infringe the patents-in-suit by making, using, selling, offering to sell, and/or importing into the United States its Moto Camera and Moto Camera 2 apps

(the “Accused Apps”). The Accused Phones and the Accused Apps are collectively referred to as the “Accused Products.”

20. Promotional materials published by Motorola and authorized third parties highlight the infringing technology as a key feature in the Accused Products.

21. Motorola advertises the Cinemagraph feature in the Accused Products.

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22. For example, Motorola previously published the following information about the

Motorola One Action:

Formerly available at, https://www.motorola.com/mea/smartphones-motorola-one- action/p#shootpro.

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23. Instructions published by Motorola on its website instruct users how to use the

Accused Products to create Cinemagraphs in accordance with the patents-in-suit:

https://support.motorola.com/us/en/solution/MS148726. See also, http://motorola-global-en- roe.custhelp.com/app/answers/detail/a_id/154021.

24. Motorola publishes advertisements and instructional materials on YouTube to encourage end users and potential customers to purchase the Accused Products and use them to create Cinemagraphs.

25. The following screenshot is taken from content published by Motorola on YouTube that describes the Motorola One Action:

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Formerly available at, https://www.youtube.com/watch?v=ep_lPC3f314

26. Motorola highlights infringing Cinemagraph functionality in advertisements for the

Accused Products. For example, below is such an advertisement for the Moto G7 smartphone:

27. Motorola published the following information about the Moto One smartphone camera functions highlighting its Cinemagraph and spot color features:

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Formerly available at, https://www.motorola.com/us/smartphones-motorola-one/p.

28. Instructional manuals published by Motorola for the Accused Products instruct users how to use them to create Cinemagraphs:

https://download.lenovo.com/Motorola/Manuals/133922/3839398/motorola%20one.UG.en- GB.SSC8C35917A.pdf

29. Motorola highlights the Cinemagraph feature in advertising for the Accused

Products and prominently features the Cinemagraph application software and functionality of the

Accused Products in press kits.

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30. The Motorola Accused Products are designed and used to practice the patents-in- suit.

31. Motorola’s customers and other end users of the Accused Products have directly infringed and continue to directly infringe the patents-in-suit by using the Accused Products.

Through its product manuals, promotional materials, customer support, and/or sales and marketing activities, Motorola solicits, instructs, encourages, and aids and abets its customers to purchase and use the Accused Products in an infringing way. Examples of such materials are shown above.

32. Motorola has knowledge of the patents-in-suit at least as of service of this lawsuit.

33. Motorola’s ongoing actions are with specific intent to cause infringement of one or more claims of each of the patents-in-suit.

34. Further discovery may reveal earlier knowledge of one or more of the patents-in- suit, which would provide additional evidence of Motorola’s specific intent and/or willful blindness with respect to infringement.

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35. Mr. Richardson is the owner of the patents-in-suit.

36. Cine Graphic is the exclusive licensee of the patents-in-suit with all substantial

rights to the patents-in-suit including the exclusive right to enforce, sue, and recover damages for

past and future infringement.

37. Cine Graphic has standing to sue for infringement of the patents-in-suit.

38. Motorola has not obtained a license to any of the patents-in-suit.

39. Motorola does not have Cine Graphic’s permission to make, use, sell, offer to sell,

import products or otherwise engage in practices that are covered by one or more claims of any of

the patents-in-suit.

40. Motorola needs to obtain a license to the patents-in-suit and cease its ongoing

infringement of Cine Graphic’s and Mr. Richardson’s patent rights.

41. Cine Graphic has been and continues to be damaged as a result of Motorola’s

infringing conduct. Motorola is therefore liable to Cine Graphic in an amount that adequately compensates Cine Graphic for Motorola’s infringement, which, by law, cannot be less than a reasonable royalty, together with interest and costs as fixed by this Court under 35 U.S.C. § 284.

COUNT I (INFRINGEMENT OF U.S. PATENT NO. 7,388,587)

42. Plaintiff incorporates paragraphs 1 through 41 herein by reference.

43. This cause of action arises under the patent laws of the United States, and in

particular, 35 U.S.C. §§ 271, et seq.

44. The ʼ587 patent, entitled “Method For Embedding Animation In Electronic Mail

And Websites,” duly and legally issued on June 17, 2008.

45. The inventions claimed in the ʼ587 patent relate to improved methods and

computing products for creating animations for efficient electronic communications.

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46. Plaintiff is the exclusive licensee of the ’587 patent with all substantial rights to the

’587 patent including the exclusive right to enforce, sue, and recover damages for past and future infringement. A true and correct copy of the ʼ587 patent is attached hereto as Exhibit 1 and is incorporated by reference.

47. Each claim in the ʼ587 patent is presumed valid and directed to patent eligible subject matter.

48. Each claim in the ʼ587 patent claims patent-eligible subject matter under 35

U.S.C. § 101.

49. The ’587 patent is valid, enforceable and was duly issued in full compliance with

Title 35 of the United States Code.

DIRECT INFRINGEMENT (35 U.S.C. § 271(a))

50. Defendant has, and continues to, directly infringe one or more claims of the ’587

patent in this judicial district and elsewhere in Illinois and the United States.

51. In particular, Defendant has, and continues to, infringe at least claim 1 of the ’587

patent by, among other things, making, using, offering to sell, selling, and/or importing into the

United States the Accused Products.

52. Attached hereto as Exhibit 4, and incorporated herein by reference, is a claim chart

detailing how the Accused Products infringe the ʼ587 patent.

INDIRECT INFRINGEMENT (INDUCEMENT – 35 U.S.C. § 271(b))

53. Based on the information presently available to Plaintiff, absent discovery, and in

the alternative to direct infringement, Plaintiff contends that Defendant has, and continues to,

indirectly infringe one or more claims of the ’587 patent by inducing direct infringement by

users of the Accused Product.

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54. Defendant has had knowledge of the ’587 patent since at least service of this lawsuit.

55. On information and belief, despite having knowledge of the ’587 patent, Defendant has specifically intended for persons who acquire and use the Accused Products, including

Defendant’s customers and end consumers, to acquire and/or use such devices in a way that infringes the ’587 patent, including at least claim 1, and Defendant knew or should have known that its actions were inducing infringement.

56. Defendant instructs and encourages users to use the products in a manner that infringes the ’587 patent. For example, Defendant’s instructional manuals, support materials, and promotional, advertising, and sales materials encourage end users to use the Cinemagraph feature in the Accused Products. See, e.g., supra ¶¶ 15-34.

57. Furthermore, Defendant has not provided any information or indication that it has implemented a design around or otherwise taken any remedial action with respect to the ’587 patent. In accordance with Fed. R. Civ. P. 11(b)(3), Plaintiff will likely have additional evidentiary support after a reasonable opportunity for discovery on this issue.

58. Defendant is liable for these infringements of the ’587 patent pursuant to 35 U.S.C.

§ 271.

59. Plaintiff has been damaged as a result of Defendant’s infringing conduct described in this Count. Defendant is, thus, liable to Plaintiff in an amount that adequately compensates

Plaintiff for Defendant’s infringements, which, by law, cannot be less than a reasonable royalty, together with interest and costs as fixed by this Court under 35 U.S.C. § 284.

COUNT II (INFRINGEMENT OF U.S. PATENT NO. 7,629,977)

60. Plaintiff incorporates paragraphs 1 through 41 herein by reference.

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61. This cause of action arises under the patent laws of the United States, and in particular, 35 U.S.C. §§ 271, et seq.

62. The ʼ977 patent, entitled “Embedding Animation in Electronic Mail and Websites,” duly and legally issued on December 8, 2009.

63. The inventions claimed in the ʼ977 patent relate to improved methods and computing products for creating animations for efficient electronic communications.

64. Plaintiff is the exclusive licensee of the ’977 patent with all substantial rights to the

’977 patent including the exclusive right to enforce, sue, and recover damages for past and future infringement. A true and correct copy of the ʼ977 patent is attached hereto as Exhibit 2 and is incorporated by reference.

65. Each claim in the ʼ977 patent is presumed valid and directed to patent eligible subject matter.

66. Each claim in the ʼ977 patent claims patent-eligible subject matter under 35

U.S.C. § 101.

67. The ’977 patent is valid, enforceable and was duly issued in full compliance with

Title 35 of the United States Code.

DIRECT INFRINGEMENT (35 U.S.C. § 271(a))

68. Defendant has, and continues to, directly infringe one or more claims of the ’977 patent in this judicial district and elsewhere in Illinois and the United States.

69. In particular, Defendant has, and continues to, infringe at least claim 1 of the ’977 patent by, among other things, making, using, offering to sell, selling, and/or importing into the

United States the Accused Products.

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70. Attached hereto as Exhibit 5, and incorporated herein by reference, is a claim chart detailing how the Accused Products infringe the ʼ977 patent.

INDIRECT INFRINGEMENT (INDUCEMENT – 35 U.S.C. § 271(b))

71. Based on the information presently available to Plaintiff, absent discovery, and in the alternative to direct infringement, Plaintiff contends that Defendant has, and continues to, indirectly infringe one or more claims of the ’977 patent by inducing direct infringement by users of the Accused Products.

72. Defendant has had knowledge of the ’977 patent since at least service of this lawsuit.

73. On information and belief, despite having knowledge of the ’977 patent, Defendant has specifically intended for persons who acquire and use the Accused Products, including

Defendant’s customers and end consumers, to acquire and/or use such devices in a way that infringes the ’977 patent, including at least claim 1, and Defendant knew or should have known that its actions were inducing infringement.

74. Defendant instructs and encourages users to use the products in a manner that infringes the ’977 patent. For example, Defendant’s instructional manuals, support materials, and promotional, advertising, and sales materials encourage end users to use the Cinemagraph feature in the Accused Products. See, e.g., supra ¶¶ 15-34.

75. Furthermore, Defendant has not provided any information or indication that it has implemented a design around or otherwise taken any remedial action with respect to the ’977 patent. In accordance with Fed. R. Civ. P. 11(b)(3), Plaintiff will likely have additional evidentiary support after a reasonable opportunity for discovery on this issue.

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76. Defendant is liable for these infringements of the ’587 patent pursuant to 35 U.S.C.

§ 271.

77. Plaintiff has been damaged as a result of Defendant’s infringing conduct described

in this Count. Defendant is, thus, liable to Plaintiff in an amount that adequately compensates

Plaintiff for Defendant’s infringements, which, by law, cannot be less than a reasonable royalty,

together with interest and costs as fixed by this Court under 35 U.S.C. § 284.

COUNT III (INFRINGEMENT OF U.S. PATENT NO. 8,035,644)

78. Plaintiff incorporates paragraphs 1 through 41 herein by reference.

79. This cause of action arises under the patent laws of the United States, and in

particular, 35 U.S.C. §§ 271, et seq.

80. The ʼ644 patent, entitled “Method for Embedding Animation in Electronic Mail and Websites,” duly and legally issued on October 11, 2011.

81. The inventions claimed in the ʼ644 patent relate to improved methods and computing products for creating animations for efficient electronic communications.

82. Plaintiff is the exclusive licensee of the ’644 patent with all substantial rights to the

’644 patent including the exclusive right to enforce, sue, and recover damages for past and future infringement. A true and correct copy of the ʼ644 patent is attached hereto as Exhibit 3 and is incorporated by reference.

83. Each claim in the ʼ644 patent is presumed valid and directed to patent eligible subject matter.

84. Each claim in the ʼ644 patent claims patent-eligible subject matter under 35

U.S.C. § 101.

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85. The ’644 patent is valid, enforceable and was duly issued in full compliance with

Title 35 of the United States Code.

DIRECT INFRINGEMENT (35 U.S.C. § 271(a))

86. Defendant has, and continues to, directly infringe one or more claims of the ’644 patent in this judicial district and elsewhere in Illinois and the United States.

87. In particular, Defendant has, and continues to, infringe at least claim 1 of the ’644 patent by, among other things, making, using, offering to sell, selling, and/or importing into the

United States the Accused Products.

88. Attached hereto as Exhibit 6, and incorporated herein by reference, is a claim chart detailing how the Accused Products infringe the ʼ644 patent.

INDIRECT INFRINGEMENT (INDUCEMENT – 35 U.S.C. § 271(b))

89. Based on the information presently available to Plaintiff, absent discovery, and in the alternative to direct infringement, Plaintiff contends that Defendant has, and continues to, indirectly infringe one or more claims of the ’644 patent by inducing direct infringement by users of the Accused Products.

90. Defendant has had knowledge of the ’644 patent since at least service of this lawsuit.

91. On information and belief, despite having knowledge of the ’644 patent, Defendant has specifically intended for persons who acquire and use the Accused Products, including

Defendant’s customers and end consumers, to acquire and/or use such devices in a way that infringes the ’644 patent, including at least claim 1, and Defendant knew or should have known that its actions were inducing infringement.

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92. Defendant instructs and encourages users to use the products in a manner that infringes the ’644 patent. For example, Defendant’s instructional manuals, support materials, and promotional, advertising, and sales materials encourage end users to use the Cinemagraph feature in the Accused Products. See, e.g., supra ¶¶ 15-34.

93. Furthermore, Defendant has not provided any information or indication that it has implemented a design around or otherwise taken any remedial action with respect to the ’644 patent. In accordance with Fed. R. Civ. P. 11(b)(3), Plaintiff will likely have additional evidentiary support after a reasonable opportunity for discovery on this issue.

94. Defendant is liable for these infringements of the ’644 patent pursuant to 35 U.S.C.

§ 271.

95. Plaintiff has been damaged as a result of Defendant’s infringing conduct described in this Count. Defendant is, thus, liable to Plaintiff in an amount that adequately compensates

Plaintiff for Defendant’s infringements, which, by law, cannot be less than a reasonable royalty, together with interest and costs as fixed by this Court under 35 U.S.C. § 284.

JURY DEMAND

Plaintiff requests a trial by jury pursuant to Rule 38 of the Federal Rules of Civil Procedure.

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PRAYER FOR RELIEF

Plaintiff asks that the Court find in its favor and against Defendant and that the Court grant

Plaintiff the following relief:

a. Judgment that one or more claims of each patent-in-suit have been infringed directly and/or indirectly, literally and/or under the doctrine of equivalents, by Defendant;

b. Judgment that Defendant account for and pay to Plaintiff all damages and costs incurred by Plaintiff because of Defendant’s infringing activities and other conduct complained of herein, including an accounting for any sales or damages not presented at trial;

c. Judgment that Defendant account for and pay to Plaintiff a reasonable, ongoing, post judgment royalty because of Defendant’s infringing activities, including continuing infringing activities, and other conduct complained of herein;

d. That Plaintiff be granted pre-judgment and post judgment interest on the damages caused by Defendant’s infringing activities and other conduct complained of herein; and

e. That Plaintiff be granted such other and further relief as the Court may deem just and proper under the circumstances.

DATED: April 6, 2021 CINE GRAPHIC SOLUTIONS LLC

By: /s/ Timothy E. Grochocinski Timothy E. Grochocinski Illinois Bar No. 6295055 NELSON BUMGARDNER ALBRITTON, P.C. 15020 S. Ravinia Avenue, Suite 29 Orland Park, Illinois 60462 P. 708-675-1974 [email protected]

COUNSEL FOR PLAINTIFF CINE GRAPHIC SOLUTIONS LLC

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