Case 2:18-cv-00034-JRG Document 31 Filed 11/12/18 Page 1 of 73 PageID #: 337 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION FLEXIJET TECHNOLOGIES, INC., Plaintiff, Civil Action No. 2:18-CV-00034-JRG v. JURY TRIAL DEMANDED MAGICJACK VOCALTEC LTD., Defendant. FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT Plaintiff FlexiJet Technologies, Inc. (“FlexiJet”) files this First Amended Complaint against Defendant magicJack VocalTec Ltd (“Defendant” or “magicJack”) for infringement of U.S. Patents Nos. 8,296,757, 8,533,352, 8,595,717, 9,043,482, and 9,116,723, and hereby allege as follows: NATURE OF THE ACTION 1. This is an action for patent infringement arising under the Patent Laws of the United States, 35 U.S.C. §§ 1, et seq. PARTIES 2. Plaintiff FlexiJet Technologies, Inc. is a Texas corporation with a place of business located at 5851 Legacy Circle, Suite 600, Plano, Texas 75024. FlexiJet is a pioneering technology development firm that develops IP solutions for critical functionalities to portable communication devices, AutoRun applications and chipsets, voice communication software, and much more. Flexiworld was the first company to develop integrated circuits with autorun software using FlexiJet technology. More information about Flexiworld can be found at FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT Page 1 of 73 Case 2:18-cv-00034-JRG Document 31 Filed 11/12/18 Page 2 of 73 PageID #: 338 http://flexiwave.com/index.htm. FlexiJet Technologies Inc. is the assignee of Flexiworld’s patents and trademark associated with FlexiJet’s devices and AutoRun applications for licensing to the industry. 3. Upon information and belief, Defendant magicJack VocalTec Ltd. is an Israeli corporation having a place of business at 12 Haomanut Street, 2nd Floor, Poleg Industrial Zone, Netanya, Israel 42504. Defendant has a place of business in this district at 400 Chisholm Pl. #100, Plano, TX, 75075, and can be served through its registered agent, Corporation Service Company d/b/a/ CSC – Lawyers Incorporated, 211 E. 7th Street, Suite 620, Austin, TX 78701. https://www.collincad.org/propertysearch?prop=2700105&year=2018. FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT Page 2 of 73 Case 2:18-cv-00034-JRG Document 31 Filed 11/12/18 Page 3 of 73 PageID #: 339 JURISDICTION AND VENUE 4. This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and 1338(a). 5. Defendant is subject to this Court’s specific and general personal jurisdiction due to their substantial business in this forum. For example, upon information and belief, Defendant is subject to the specific personal jurisdiction of this Court because FlexiJet’s claims for patent infringement arise from Defendant’s acts of infringement in the State of Texas. These acts of infringement include selling infringing products in the State of Texas and placing infringing products into the stream of commerce through an established distribution channel with full awareness that substantial quantities of the products have been shipped into the State of Texas. Therefore, this Court has personal jurisdiction over Defendant under the Texas long-arm statute, TEX. CIV. PRAC. & REM. CODE § 17.042. 6. Venue is proper in this judicial district under 28 U.S.C. § 1400(b). According to Defendant’s Security and Exchange Commission filings, Defendant has a regular and established place of business in this District at which it conducts research and development: magicJack VocalTec Ltd Form 10-Q for Quarter ending September 30, 2017, p. 8. 7. Further, magicJack VocalTec Ltd., a foreign corporation, can be sued in any district, including this District. See Brunette Machine Works, Ltd. v. Kockum Industries, Inc., 406 U.S. 706, 714 (1972) (discussed in TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514, 1520, n.2 (2017)). PATENTS-IN-SUIT 8. FlexiJet is the owner and the assignee of U.S. Patent No. 8,296,757 (the “`757 Patent”), entitled “Copy Protection of Software and/or Data” and FlexiJet holds the FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT Page 3 of 73 Case 2:18-cv-00034-JRG Document 31 Filed 11/12/18 Page 4 of 73 PageID #: 340 exclusive right to license the `757 Patent. FlexiJet has ownership of all substantial rights in the `757 Patent, including the right to exclude others and to enforce, sue and recover damages for past and future infringement. A true and correct copy of the `757 Patent is attached as Exhibit A. 9. The `757 Patent is valid, enforceable and was duly issued in full compliance with Title 35 of the United States Code. 10. FlexiJet is the owner and assignee of U.S. Patent No. 8,533,352 (the “`352 Patent”), entitled “Method for Internet Access and for Communication” and FlexiJet holds the exclusive right to license the `352 Patent. FlexiJet has ownership of all substantial rights in the `352 Patent, including the right to exclude others and to enforce, sue and recover damages for past and future infringement. A true and correct copy of the `352 Patent is attached as Exhibit B. 11. The `352 Patent is valid, enforceable and was duly issued in full compliance with Title 35 of the United States Code. 12. FlexiJet is the owner and assignee of U.S. Patent No. 8,595,717 (the “`717 Patent”), entitled “Memory Controller that Includes Support for Autorun of Software or Data” and FlexiJet holds the exclusive right to license the `717 Patent. FlexiJet has ownership of all substantial rights in the `717 Patent, including the right to exclude others and to enforce, sue and recover damages for past and future infringement. A true and correct copy of the `717 Patent is attached as Exhibit C. 13. The `717 Patent is valid, enforceable and was duly issued in full compliance with Title 35 of the United States Code. 14. FlexiJet is the owner and the assignee of U.S. Patent No. 9,043,482 (the “`482 Patent”), entitled “Portable Communication Device for Providing Phone Calling Service” and FlexiJet holds the exclusive right to license the `482 Patent. FlexiJet has ownership of all FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT Page 4 of 73 Case 2:18-cv-00034-JRG Document 31 Filed 11/12/18 Page 5 of 73 PageID #: 341 substantial rights in the `482 Patent, including the right to exclude others and to enforce, sue and recover damages for past and future infringement. A true and correct copy of the `482 Patent is attached as Exhibit D. 15. The `482 Patent is valid, enforceable and was duly issued in full compliance with Title 35 of the United States Code. 16. FlexiJet is the owner and the assignee of U.S. Patent No. 9,116,723 (the “`723 Patent”), entitled “Communication Device or Media Device for Providing Phone Calling Service, Internet Access Service, or Digital Content Service” and FlexiJet holds the exclusive right to license the `723 Patent. FlexiJet has ownership of all substantial rights in the `723 Patent, including the right to exclude others and to enforce, sue and recover damages for past and future infringement. A true and correct copy of the `723 Patent is attached as Exhibit E. 17. The `723 Patent is valid, enforceable and was duly issued in full compliance with Title 35 of the United States Code. 18. The `757, `352, `717, `482 and `723 Patents are collectively the “Patents-in-Suit.” 19. The Patents-in-Suit generally cover communication devices and media devices that contain autorun software that supplies service such as phone calling, internet access, or digital content service. ACCUSED PRODUCTS 20. Upon information and belief, Defendant makes, uses, offers to sell, sells, and/or imports integrated circuit voice over internet protocol (VoIP) devices that provide phone service to customers at their home, enterprise, or while traveling. Such products include, but are not limited to: the magicJack GO, the magicJack Express, and magicJack Plus. These products, and FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT Page 5 of 73 Case 2:18-cv-00034-JRG Document 31 Filed 11/12/18 Page 6 of 73 PageID #: 342 any of Defendant’s other similar products, are collectively referred to herein as the “Accused Products.” 21. Upon information and belief, the Accused Products are offered for sale and sold throughout the United States, including within this District. 22. Upon information and belief, Defendant has purposefully and voluntarily placed the Accused Products into the stream of commerce with the expectation that these products will be purchased and used by end users in the United States, including end users in this District. 23. Upon information and belief, Defendant provides direct and indirect support concerning the Accused Products to end users, including end users within this District. COUNT I INFRINGEMENT OF U.S. PATENT NO. 8,296,757 24. FlexiJet alleges and hereby incorporates by reference every allegation made in the foregoing paragraphs of this First Amended Complaint as if each were separately set forth herein. 25. In violation of 35 U.S.C. § 271, Defendant has directly infringed and continues to directly infringe, both literally and/or under the doctrine of equivalents, the `757 Patent by making, using, offering for sale, selling, and/or importing the Accused Products in the United States, including within this District, that infringe at least claim one of the `757 Patent without the authority of FlexiJet. 26. The Claims of the `757 Patent are presumed valid. 27. Each of the Accused Products is a portable memory device connectable by a user to a host computing device. For example, the representative magicJack Express is a device that can be plugged into a personal computer or laptop.