Aire Technology v. Apple

Case 6:21-cv-01101 Document 1 Filed 10/22/21 Page 1 of 32
UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS
WACO DIVISION
AIRE TECHNOLOGY LTD.,
Plaintiff, Case No. 6:21-cv-01101
v. JURY TRIAL DEMANDED
APPLE INC.,
Defendant.
COMPLAINT FOR PATENT INFRINGEMENT

AGAINST APPLE INC.
This is an action for patent infringement arising under the Patent Laws of the United States
of America, 35 U.S.C. § 1 et seq., in which Plaintiff Aire Technology Limited (“Plaintiff” or
“Aire”) makes the following allegations against Defendant Apple Inc. (“Defendant” or “Apple”):
INTRODUCTION
1. This complaint arises from Apple’s unlawful infringement of the following United
States patents owned by Plaintiff, which relate to improvements in Near Field Communication
(NFC) and secure digital payment solutions: United States Patent Nos. 8,581,706 (“the ’706
Patent”), 8,205,249 (“the ’249 Patent”), and 8,174,360 (“the ’360 Patent”) (collectively, the
“Asserted Patents”).
PARTIES
2. Plaintiff Aire Technology Limited is a limited liability company organized and
existing under the law of Ireland, with its principal place of business at The Hyde Building, Suite
23, The Park, Carrickmines, Dublin 18, Ireland. Aire is the sole owner by assignment of all rights,
title, and interest in the Asserted Patents, including the right to recover damages for past, present,
and future infringement.
3. On information and belief, Defendant Apple Inc. is a publicly traded corporation
organized under the laws of the State of California, with its principal place of business at One
Apple Park Way, Cupertino, CA 95014. Apple may be served with process through its registered
agent, CT Corporation System, at 330 North Brand Boulevard, Suite 700, Glendale, CA 91203.
JURISDICTION AND VENUE
4. This action arises under the patent laws of the United States, Title 35 of the United
States Code. This Court has original subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and
1338(a).
5. This Court has personal jurisdiction over Apple in this action because Apple has
committed acts within this District giving rise to this action and has established minimum contacts
with this forum such that the exercise of jurisdiction over Apple would not offend traditional
notions of fair play and substantial justice. Apple, directly and through subsidiaries or
intermediaries, has committed and continues to commit acts of infringement in this District by,
among other things, importing, offering to sell, and selling products that infringe the Asserted
Patents.
6. Venue is proper in this District under 28 U.S.C. §§ 1391 and 1400(b). Apple is
registered to do business in Texas, and upon information and belief, Apple has transacted business
in this District and has committed acts of direct and indirect infringement in this District by, among
other things, making, using, offering to sell, selling, and importing products that infringe the
Asserted Patents. Apple has regular and established places of business in this District, including
at 12545 Riata Vista Cir., Austin, Texas 78727; 12801 Delcour Dr., Austin, Texas 78727; and
2
3121 Palm Way, Austin, Texas 78758.1 Apple also has posted job listings for engineer positions
related to NFC and/or Apple Pay in Austin, Texas, which is a job that concerns the implementation
of the inventions contained in the Asserted Patents.2
THE ASSERTED PATENTS
7. On November 12, 2013, the United States Patent and Trademark Office issued U.S.
Patent No. 8,581,706 (“the ’706 Patent”), entitled “Data storage medium and method for
contactless communication between the data storage medium and a reader,” after full and fair
examination. Plaintiff is the assignee of all rights, title, and interest in and to the ’706 Patent and
possesses all rights of recovery under the ’706 Patent, including the right to recover damages for
past, present, and future infringement. The ’706 Patent is valid and enforceable. A true and correct
copy of the ’706 Patent is attached hereto as Exhibit 1.
8. On June 19, 2012, the United States Patent and Trademark Office issued U.S. Patent
No. 8,205,249 (“the ’249 Patent”), entitled “Method for carrying out a secure electronic transaction
using a portable data support,” after full and fair examination. Plaintiff is the assignee of all rights,
title, and interest in and to the ’249 Patent and possesses all rights of recovery under the ’249
Patent, including the right to recover damages for past, present, and future infringement. The ’249
Patent is valid and enforceable. A true and correct copy of the ’249 Patent is attached hereto as
Exhibit 2.
1
See, e.g., https://www.apple.com/newsroom/2019/11/apple-expands-in-austin/;
https://www.google.com/maps/place/Apple+Inc./@30.4324406,-
97.7359733,15z/data=!4m5!3m4!1s0x0:0x5852421ec4ac410c!8m2!3d30.4322558!4d-
97.7359386; https://www.apple.com/retail/domainnorthside/.
2
See, e.g., https://jobs.apple.com/en-us/details/200292503/nfc-uwb-field-design-
engineer?team=HRDWR; https://jobs.apple.com/en-us/details/200299202/software-engineer-
apple-pay?team=SFTWR.
3
9. On May 8, 2012, the United States Patent and Trademark Office issued U.S. Patent
No. 8,174,360 (“the ’360 Patent”), entitled “Communication apparatus for setting up a data
connection between intelligent devices,” after full and fair examination. Plaintiff is the assignee
of all rights, title, and interest in and to the ’360 Patent and possesses all rights of recovery under
the ’360 Patent, including the right to recover damages for past, present, and future infringement.
The ’360 Patent is valid and enforceable. A true and correct copy of the ’360 Patent is attached
hereto as Exhibit 3.
APPLE’S INFRINGEMENT
10. The allegations provided below are exemplary and without prejudice to Plaintiff’s
infringement contentions provided pursuant to the Court’s scheduling order and local rules.
Plaintiff’s claim construction contentions regarding the meaning and scope of the claim terms will
be provided under the Court’s scheduling order and local rules. As detailed below, each element
of at least one claim of each of the Asserted Patents is literally present in the accused products. To
the extent that any element is not literally present, each such element is present under the doctrine
of equivalents. Plaintiff’s analysis below should not be taken as an admission that the preamble is
limiting. While publicly available information is cited below, Plaintiff may rely on other forms of
evidence to prove infringement, including evidence that is solely in the possession of Apple and/or
third parties.
11. The accused products include at least the following products, as well as products
with reasonably similar functionality, including all Plus and Max sub-models. Identification of
the accused products will be provided in Plaintiff’s infringement contentions pursuant to the
Court’s scheduling order and local rules. Apple imports, uses, makes, offers for sale, and sells in
the United States the following products that support NFC and/or mobile payment applications,
4
such as Apple Pay, that infringe at least one claim of the Asserted Patents: iPhone 6, 6 Plus, 6S,
6S Plus, SE (first and second generation), 7, 7 Plus, 8, 8 Plus, X, XR, XS, XS Max, 11, 11 Pro, 11
Pro Max, 12, 12 mini, 12 Pro, 12 Pro Max, 13, 13 mini, 13 Pro, 13 Pro Max, Watch Series 1,
Watch Series 2, Watch Series 3, Watch Series 4, Watch Series 5, Watch SE, Watch Series 6, and
Watch Series 7 (the “Accused Products”). See https://support.apple.com/en-us/HT208531.
COUNT I
INFRINGEMENT OF U.S. PATENT NO. 8,581,706
12. Plaintiff realleges and incorporates by reference the foregoing paragraphs as if fully
set forth herein.
13. Apple has been and is now directly infringing the ’706 Patent, literally and/or under
the doctrine of equivalents, in violation of 35 U.S.C. § 271(a), including by making, using, selling,
and/or offering for sale in the United States or importing into the United States infringing products,
including at least the Accused Products identified above. The Accused Products satisfy all of the
claim limitations of one or more claims of the ’706 Patent, including but not limited to claim 11.
14. Claim 11 of the ’706 Patent recites a “contactlessly communicating portable data
carrier.” To the extent the preamble is limiting, the Accused Products each include a portable data
carrier that is capable of contactless communication through the use of Near Field Communication
(NFC) technology. For example, Apple advertises that the Accused Products support NFC:
5
See https://www.apple.com/iphone-13/specs/.
15. Claim 11 of the ’706 Patent recites that the portable data carrier comprises “at least
two applications stored thereon.” The Accused Products are configured to store at least two
applications. For example, the Accused Products are configured to store at least two applications
that utilize NFC:
See https://www.apple.com/wallet/.
See https://developer.apple.com/wallet/get-started/.
6
16. Claim 11 of the ’706 Patent recites that the portable data carrier comprises “a
communication device configured to control communication between a reading device and the at
least two applications.” The Accused Products contain a communication device configured to
control communication between a reading device and at least two applications. For example, the
Accused Products utilize an NFC antenna, NFC chip, and related hardware and software to control
communication with a reading device and at least two applications, as shown in the exemplary
iPhone 13:
See https://www.techinsights.com/blog/teardown/apple-iphone-13-pro-teardown; see also
https://www.ifixit.com/Teardown/iPhone+13+Pro+Teardown/144928 (identifying NXP SN210V
NFC controller with secure element).
7
17. Claim 11 of the ’706 Patent recites “wherein the communication device is set up to
generate communication-readiness signals to the reading device which in each case indicate to the
reading device a communication readiness for one of the applications and comprise an
identification number assigned to the corresponding communication-readiness application.” The
Accused Products contain a communication device that is set up to generate communication-
readiness signals to the reading device which in each case indicate to the reading device a
communication readiness for one of the applications and comprise an identification number
assigned to the corresponding communication-readiness application. For example, the
communication device generates communication-readiness signals to an NFC reader which
comprise an identification number that corresponds to an application:
8
See https://support.apple.com/en-us/HT201239.
9
18. Claim 11 of the ’706 Patent recites “wherein the communication device is set up to
store information in a nonvolatile memory of the data carrier about which of the at least two
applications last communicated with a reading device.” Each of the Accused Products contains a
10
communication device that is set up to store information in a nonvolatile memory of the data carrier
about which of the at least two applications last communicated with a reading device. For example,
the Accused Products provide information about the last application that communicated with a
reading device:
11
19. Apple also knowingly and intentionally induces infringement of one or more claims
of the ’706 Patent in violation of 35 U.S.C. § 271(b). As of at least the filing and service of this
complaint, Apple has knowledge of the ’706 Patent and the infringing nature of the Accused
Products. Despite this knowledge of the ’706 Patent, Apple continues to actively encourage and
instruct its customers and end users (for example, through user manuals and online instruction
materials on its website, and other online publications cited above) to use the Accused Products in
ways that directly infringe the ’706 Patent, for example by utilizing the NFC functionality on the
Accused Products and/or mobile payment applications, such as Apple Pay, in an infringing
manner. Apple does so knowing and intending (or with willful blindness to the fact) that its
customers and end users will commit these infringing acts. Apple also continues to make, use,
offer for sale, sell, and/or import the Accused Products, despite its knowledge of the ’706 Patent,
thereby specifically intending for and inducing its customers to infringe the ’706 Patent through
the customers’ normal and customary use of the Accused Products.
20. Apple has also infringed, and continues to infringe, one or more claims of the ’706
Patent by selling, offering for sale, or importing into the United States, the Accused Products,
knowing that the Accused Products constitute a material part of the inventions claimed in the ’706
Patent, are especially made or adapted to infringe the ’706 Patent, and are not staple articles or
commodities of commerce suitable for non-infringing use. Apple has been, and currently is,
contributorily infringing the ’706 Patent in violation of 35 U.S.C. §§ 271(c) and/or (f).
21. By making, using, offering for sale, selling and/or importing into the United States
the Accused Products, Apple has injured Plaintiff and is liable for infringement of the ’706 Patent
pursuant to 35 U.S.C. § 271.
12
22. As a result of Apple’s infringement of the ’706 Patent, Plaintiff is entitled to
monetary damages (past, present, and future) in an amount adequate to compensate for Apple’s
infringement, but in no event less than a reasonable royalty for the use made of the invention by
Apple, together with interest and costs as fixed by the Court.
COUNT II
set forth herein.
the doctrine of equivalents, in violation of 35 U.S.C. § 271(a), including by making, using, selling,
25. Claim 10 recites a “portable data carrier for performing a security-operation within
a secure electronic transaction.” To the extent the preamble is limiting, the Accused Products
include a portable data carrier for performing a security-operation within a secure electronic
transaction. For example, the Accused Products support mobile payment applications, such as
Apple Pay, which enable a security-operation within a secure electronic transaction:
13
26. Claim 10 of the ’249 Patent recites that the portable data carrier is “arranged to
perform different quality user authentication methods.” To the extent the preamble is limiting, the
Accused Products include a portable data carrier that is arranged to perform different quality user
authentication methods. For example, the Accused Products support mobile payment applications,
such as Apple Pay, which utilize different quality user authentication methods:
14
15
27. Claim 10 recites “wherein the difference in quality of said user authentication
methods varies between an inherently relatively lower quality and an inherently relatively higher
quality from a security perspective.” To the extent the preamble is limiting, the Accused Products
include a data carrier arranged to perform different quality user authentication methods, wherein
the difference in quality of said user authentication methods varies between an inherently relatively
lower quality and an inherently relatively higher quality from a security perspective. For example,
the Accused Products support mobile payment applications, such as Apple Pay, which utilize
different authentication methods that vary in quality from a security perspective:
16
17
28. Claim 10 of the ’249 Patent recites that “the portable data carrier is arranged to
perform a user authentication using one of said implemented user authentication methods.” The
Accused Products include a portable data carrier arranged to perform a user authentication using
one of said implemented user authentication methods. For example, the Accused Products support
mobile payment applications, such as Apple Pay, which utilize different user authentication
methods:
18
29. Claim 10 of the ’249 Patent recites that “the portable data carrier is arranged to
confirm the authentication to a terminal.” The Accused Products include a portable data carrier
arranged to confirm the authentication to a terminal. For example, the Accused Products support
mobile payment applications, such as Apple Pay, and confirm the authentication to a terminal:
See https://support.apple.com/guide/security/secure-element-and-nfc-controller-
seccb53a35f0/web.
19
20
30. Claim 10 of the ’249 Patent recites “wherein the data carrier is arranged to create
quality information about said user authentication method used and to attach such quality
information to the result of the security establishing operation.” The Accused Products include a
portable data carrier that is arranged to create quality information about the user authentication
method used and to attach such quality information to the result of the security establishing
operation. For example, on information and belief, the Accused Products include a data carrier
that creates quality information about the type of authentication method used by a user and attach
that information to the result of the security establishing operation in an electronic transaction.
21
See https://web.archive.org/web/20201108133245/https:/support.apple.com/en-us/HT202527.
See https://support.apple.com/guide/security/payment-authorization-with-apple-pay-
secc1f57e189/1/web/1.
22
See https://support.apple.com/guide/security/paying-with-cards-using-apple-pay-
secfbd5c0e54/1/web/1.
See https://support.apple.com/guide/security/adding-transit-and-student-id-cards-to-wallet-
seccba2be6de/1/web/1.
23
Accused Products and/or mobile payment applications, such as Apple Pay, in an infringing
manner. Apple does so knowing and intending (or with willful blindness to the fact) that its
customers and end users will commit these infringing acts. Apple also continues to make, use,
offer for sale, sell, and/or import the Accused Products, despite its knowledge of the ’249 Patent,
thereby specifically intending for and inducing its customers to infringe the ’249 Patent through
the customers’ normal and customary use of the Accused Products.
24
COUNT III
set forth herein.
the doctrine of equivalents, in violation of 35 U.S.C. § 271, including by making, using, selling,
37. Claim 1 of the ’360 Patent recites a “communication apparatus for setting up a data
connection between intelligent devices.” To the extent the preamble is limiting, the Accused
Products include a communication apparatus for setting up a data connection between intelligent
devices. For example, Apple advertises that the Accused Products support NFC:
38. Claim 1 of the ’360 Patent recites an “apparatus” comprising “a transmission
oscillator for carrying out a contactless data exchange, said oscillator including a coil.” The
Accused Products include a transmission oscillator for carrying out a contactless data exchange,
25
said oscillator including a coil. For example, the Accused Products include an NFC antenna, NFC
chip, and related hardware and software, as shown in the exemplary Apple iPhone 13:
26
See https://www.commoncriteriaportal.org/files/epfiles/nscib-cc-235773_2-st-lite.pdf.
39. Claim 1 of the ’360 Patent recites an “apparatus” comprising “a communication
element which is connected to the coil and to a data processing component of an intelligent device
and which emits search signals via the coil to receive a response from another intelligent device.”
The Accused Products include a communication element which is connected to the coil and to a
data processing component of an intelligent device and which emits search signals via the coil to
receive a response from another intelligent device. For example, teardowns show that the Accused
Products include an NFC antenna, NFC chip, and related hardware and software, as shown in the
exemplary Apple iPhone 13:
27
28
See https://www.commoncriteriaportal.org/files/epfiles/nscib-cc-235773_2-st-lite.pdf.
40. Claim 1 of the ’360 Patent recites an “apparatus” comprising “a measuring device
for monitoring a property of the transmission oscillator which outputs a control signal when
ascertaining a change of the monitored property, the monitored property of the transmission
oscillator includes the frequency or impedance of the transmission oscillator in resonance.” The
Accused Products include a measuring device for monitoring a property of the transmission
oscillator which outputs a control signal when ascertaining a change of the monitored property,
the monitored property of the transmission oscillator includes the frequency or impedance of the
transmission oscillator in resonance. For example, on information and belief, the Accused
Products include low power modes for the NFC functionality that satisfy this limitation.
41. Claim 1 of the ’360 Patent recites an “apparatus” comprising “a switching apparatus
which is connected to the measuring device and the communication element and which switches
on the communication element when it has received the control signal from the measuring device
29
by connecting the communication element to an energy source.” The Accused Products include a
switching apparatus which is connected to the measuring device and the communication element
and which switches on the communication element when it has received the control signal from
the measuring device by connecting the communication element to an energy source. For example,
on information and belief, the Accused Products include low power modes for the NFC
functionality that satisfy this limitation.
Accused Products, in an infringing manner. Apple does so knowing and intending (or with willful
blindness to the fact) that its customers and end users will commit these infringing acts. Apple
also continues to make, use, offer for sale, sell, and/or import the Accused Products, despite its
knowledge of the ’360 Patent, thereby specifically intending for and inducing its customers to
infringe the ’360 Patent through the customers’ normal and customary use of the Accused
Products.
30
PRAYER FOR RELIEF
WHEREFORE, Plaintiff respectfully requests that this Court enter:
a. A judgment in favor of Plaintiff that Apple has infringed, either literally and/or
under the doctrine of equivalents, the ’706, ’249, and ’360 Patents;
b. A judgment and order requiring Apple to pay Plaintiff its damages (past, present,
and future), costs, expenses, and pre-judgment and post-judgment interest for Apple’s
infringement of the ’706, ’249, and ’360 Patents;
c. A judgment and order requiring Apple to pay Plaintiff compulsory ongoing
licensing fees, as determined by the Court in equity.
d. A judgment and order requiring Apple to provide an accounting and to pay
supplemental damages to Plaintiff, including without limitation, pre-judgment and post-judgment
interest and compensation for infringing products released after the filing of this case that are not
colorably different from the accused products;
e. A judgment and order finding that this is an exceptional case within the meaning
31
of 35 U.S.C. § 285 and awarding to Plaintiff its reasonable attorneys’ fees against Apple; and
f. Any and all other relief as the Court may deem appropriate and just under the
circumstances.
DEMAND FOR JURY TRIAL
Plaintiff, under Rule 38 of the Federal Rules of Civil Procedure, requests a trial by jury of
any issues so triable by right.
Dated: October 22, 2021 Respectfully submitted,
/s/Brett E. Cooper
Brett E. Cooper (NY SBN 4011011)

[email protected]
Reza Mirzaie (CA SBN 246953)
[email protected]
Marc A. Fenster (CA SBN 181067)
[email protected]
Seth Hasenour (TX SBN 24059910)
[email protected]
Drew B. Hollander (NY SBN 5378096)
[email protected]
RUSS AUGUST & KABAT

12424 Wilshire Blvd. 12th Floor
Los Angeles, CA 90025
Phone: (310) 826-7474
Facsimile: (310) 826-6991
Attorneys for Plaintiff Aire Technology

Limited
32

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Case 6:21-cv-01101 Document 1 Filed 10/22/21 Page 1 of 32

UNITED STATES DISTRICT COURT

AIRE TECHNOLOGY LTD.,

Plaintiff, Case No. 6:21-cv-01101

v. JURY TRIAL DEMANDED

COMPLAINT FOR PATENT INFRINGEMENT

of America, 35 U.S.C. § 1 et seq., in which Plaintiff Aire Technology Limited (“Plaintiff” or

2. Plaintiff Aire Technology Limited is a limited liability company organized and

and future infringement.

3. On information and belief, Defendant Apple Inc. is a publicly traded corporation

JURISDICTION AND VENUE

of the inventions contained in the Asserted Patents.2

THE ASSERTED PATENTS

copy of the ’706 Patent is attached hereto as Exhibit 1.

Watch Series 7 (the “Accused Products”). See https://support.apple.com/en-us/HT208531.

INFRINGEMENT OF U.S. PATENT NO. 8,581,706

set forth herein.

that utilize NFC:

See https://www.techinsights.com/blog/teardown/apple-iphone-13-pro-teardown; see also

https://www.ifixit.com/Teardown/iPhone+13+Pro+Teardown/144928 (identifying NXP SN210V

NFC controller with secure element).

identification number assigned to the corresponding communication-readiness application.” The

Accused Products contain a communication device that is set up to generate communication-

assigned to the corresponding communication-readiness application. For example, the

communication device generates communication-readiness signals to an NFC reader which

comprise an identification number that corresponds to an application:

the customers’ normal and customary use of the Accused Products.

pursuant to 35 U.S.C. § 271.

22. As a result of Apple’s infringement of the ’706 Patent, Plaintiff is entitled to

Apple, together with interest and costs as fixed by the Court.

INFRINGEMENT OF U.S. PATENT NO. 8,205,249

set forth herein.

Apple Pay, which enable a security-operation within a secure electronic transaction:

different authentication methods that vary in quality from a security perspective:

the customers’ normal and customary use of the Accused Products.

pursuant to 35 U.S.C. § 271.

34. As a result of Apple’s infringement of the ’249 Patent, Plaintiff is entitled to

Apple, together with interest and costs as fixed by the Court.

INFRINGEMENT OF U.S. PATENT NO. 8,174,360

set forth herein.

38. Claim 1 of the ’360 Patent recites an “apparatus” comprising “a transmission

See https://www.techinsights.com/blog/teardown/apple-iphone-13-pro-teardown; see also

https://www.ifixit.com/Teardown/iPhone+13+Pro+Teardown/144928 (identifying NXP SN210V

NFC controller with secure element).

39. Claim 1 of the ’360 Patent recites an “apparatus” comprising “a communication

exemplary Apple iPhone 13:

See https://www.techinsights.com/blog/teardown/apple-iphone-13-pro-teardown; see also

https://www.ifixit.com/Teardown/iPhone+13+Pro+Teardown/144928 (identifying NXP SN210V

NFC controller with secure element).

functionality that satisfy this limitation.

pursuant to 35 U.S.C. § 271.

45. As a result of Apple’s infringement of the ’360 Patent, Plaintiff is entitled to

Apple, together with interest and costs as fixed by the Court.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff respectfully requests that this Court enter:

infringement of the ’706, ’249, and ’360 Patents;

c. A judgment and order requiring Apple to pay Plaintiff compulsory ongoing

licensing fees, as determined by the Court in equity.

d. A judgment and order requiring Apple to provide an accounting and to pay