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UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

HERITAGE IP LLC,

Plaintiff,

v.

RESIDEO TECHNOLOGY, INC.

Defendant.

Case No. 6:20-cv-00449

COMPLAINT FOR PATENT

INFRINGEMENT

JURY TRIAL DEMANDED

COMPLAINT FOR PATENT INFRINGEMENT

Plaintiff Heritage IP LLC (“Heritage” or “Plaintiff”) hereby asserts the following claims

for patent infringement against Defendant Resideo Technology, Inc. (“Resideo” or “Defendant”),

and alleges as follows:

SUMMARY

1. Heritage owns United States Patent Nos. 6,854,067 and 7,221,200 (“Asserted

Patents”).

2. Defendant infringes the Asserted Patents by implementing, without authorization,

Heritage’s proprietary technologies in a number of its products including, inter alia, the Resideo

Buoy Whole Home Water Controller (“Accused Product”).

3. By this action, Heritage seeks to obtain compensation for the harm it has suffered

as a result of Defendants’ infringement of the Asserted Patents.

NATURE OF THE ACTION

4. This is a civil action for patent infringement arising under the patent laws of the

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United States, 35 U.S.C. § 1 et seq.

5. Defendant has infringed and continues to infringe, and at least as early as the filing

and/or service of this Complaint, has induced and continues to induce infringement of, and has

contributed to and continues to contribute to infringement of, at least one or more claims of

Heritage’s Asserted Patents at least by making, using, selling, and/or offering to sell its products

and services in the United States, including in this District.

6. Heritage is the legal owner by assignment of the Asserted Patents, which were duly

and legally issued by the United States Patent and Trademark Office (“USPTO”). Heritage seeks

monetary damages for Defendant’s infringement of the Asserted Patents.

THE PARTIES

7. Plaintiff Heritage IP LLC is a Texas limited liability company with its principal

place of business at 10900 Research Blvd, Ste 160C PMB 1042, Austin, TX 78759. Heritage is

the owner of intellectual property rights at issue in this action.

8. On information and belief, Defendant Resideo is a corporation organized under the

laws of Delaware, with a regular established place of business at 901 E 6th St, Austin, TX 78702.

Resideo may be served via its registered agent, Corporation Service Company, 251 Little Falls

Drive, Wilmington, DE, 19808.

9. On information and belief, Defendant directly and/or indirectly develops, designs,

manufactures, distributes, markets, offers to sell and/or sells infringing products and services in

the United States, including in the Western District of Texas, and otherwise directs infringing

activities to this District in connection with its products and services.

JURISDICTION AND VENUE

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10. As this is a civil action for patent infringement arising under the patent laws of the

United States, 35 U.S.C. § 1 et seq., this Court has subject matter jurisdiction over the matters

asserted herein under 28 U.S.C. §§ 1331 and 1338(a).

11. This Court has personal jurisdiction over Defendant, in part because Defendant

does continuous and systematic business in this District, including by providing infringing

products and services to the residents of the Western District of Texas that Defendant knew would

be used within this District, and by soliciting business from the residents of the Western District

of Texas. For example, Defendant is subject to personal jurisdiction in this Court because, inter

alia, Defendant has a regular place of business in the District, and directly and through agents

regularly does, solicits, and transacts business in the Western District of Texas.

12. In particular, Defendant has committed and continues to commit acts of

infringement in violation of 35 U.S.C. § 271, and has made, used, marketed, distributed, offered

for sale, sold, and/or imported infringing products in the State of Texas, and engaged in infringing

conduct within and directed at or from this District. For example, Defendant has purposefully and

voluntarily placed the Accused Products into the stream of commerce with the expectation that the

Accused Products will be used in this District. The Accused Products have been and continue to

be distributed to and used in this District. Defendant’s acts cause and have caused injury to

Heritage, including within this District.

13. Venue is proper in this District under the provisions of 28 U.S.C. § 1400(b) at least

because Defendants have committed acts of infringement in this District and has a regular and

established place of business in this District at 901 E 6th St, Austin, TX 78702.

THE ’067 PATENT

14. U.S. Patent No. 6,854,067 (“the ’067 Patent”) is entitled “Method and System for

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Interaction Between a Processor and a Power on Reset circuit to Dynamically Control Power States

in a Microcontroller,” and was issued on February 8, 2005. A true and correct copy of the ’067

Patent is attached as Exhibit A.

15. The ’067 Patent was filed on June 22, 2001 as U.S. Patent Application No.

09/887,923.

16. Heritage is the owner of all rights, title, and interest in and to the ’067 Patent, with

the full and exclusive right to bring suit to enforce the ’067 Patent, including the right to recover

for past infringement.

17. The ’067 Patent is valid and enforceable under United States Patent Laws.

18. The ’067 Patent recognized several problems with existing microcontrollers having

Power on Reset (POR) circuits. Specifically, the prior art was “problematic because it either fails

to address microcontroller power stability issues beyond initial boot-up POR, requires the

dedication of existing system resources to address them, or requires the provision of additional

resources to address them.” Exhibit A at 1:63-67.

19. For instance, the ’067 Patent recognized that “[d]edicating existing resources,

internal to the microcontroller, to sense, analyze, and react to post-booting power instability

removes circuitry from other possible applications.” Id. at 2:4-7. “Further, these effectively

internal control functions demand the expenditure of power, heat dissipation, logic, memory, and

other System infrastructure and energy.” Id. at 2:7-9. “These finite System resources then become

unavailable for executing the design external control functions of the microcontroller. Thus,

microcontroller performance can Suffer.” Id. at 2:10-12.

20. The ’067 Patent also recognized problems with providing additional resources (e.g.

adding them into the microcontroller) made the microcontroller more expensive to manufacture

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and operate, “in terms of also demanding the additional expenditures of power, heat dissipation,

logic, memory, and other System infrastructure and energy to meet an effectively internal control

function, especially to achieve power control automatically.” Id. at 2:13-22.

21. To address one or more shortcomings of these existing microcontrollers, the ’067

Patent discloses, inter alia, a “method and system which effectively functions to provide dynamic

power control capabilities for a microcontroller.” The ’067 Patent further discloses a method and

system that retains the inherent advantages of existing POR and processor technology to

accomplish the foregoing requirements with no extra demand on system resources or requirement

for additional System resources. Id. at 2:52-63.

THE ’200 PATENT

22. U.S. Patent No. 7,221,200 (“the ’200 Patent”) is entitled “Programmable Low

Voltage Reset Apparatus for Multi-VDD Chips,” and was issued on May 22, 2007. A true and

correct copy of the ’200 Patent is attached as Exhibit B.

23. The ’200 Patent was filed on March 8, 2005 as U.S. Patent Application No.

11/075,632.

24. Heritage is the owner of all rights, title, and interest in and to the ’200 Patent, with

the full and exclusive right to bring suit to enforce the ’200 Patent, including the right to recover

for past infringement.

25. The ’200 Patent is valid and enforceable under United States Patent Laws.

26. The ’200 Patent recognized several problems with existing low voltage reset

schemes for microcontrollers. Exhibit B at 1:17-27. Specifically, in the prior art solution, “the low

voltage inhibit reset signal generation circuit cannot support devices having multiple power supply

levels (multiple VDDs).” Id. at 1:46-48. For instance, “[w]hen there are multiple Vdds on a chip,

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a reset circuit needs to be activated when one or more of the Vdds is lost.” Id. at 1:48-51

27. To address one or more shortcomings of these existing microcontrollers, the ’200

Patent discloses, inter alia, a “low voltage reset apparatus for a device having a plurality of power

supplies. Id. at 1:62-65.

COUNT I: INFRINGEMENT OF U.S. PATENT NO. 6,854,067

28. Heritage incorporates by reference and re-alleges paragraphs 1-27 of this

Complaint as if fully set forth herein.

29. Defendants have infringed and is infringing, either literally or under the doctrine of

equivalents, the ’067 Patent in violation of 35 U.S.C. § 271 et seq., directly and/or indirectly, by

making, using, offering for sale, or selling in the United States, and/or importing into the United

States without authority or license, the Resideo Buoy Whole Home Water Controller (“Accused

Product”)

30. As just one non-limiting example, set forth below (with claim language in bold and

italics) is exemplary evidence of infringement of Claim 1 of the ‘067 Patent in connection with the

Accused Products. This description is based on publicly available information. Heritage reserves

the right to modify this description, including, for example, on the basis of information about the

Accused Products that it obtains during discovery.

1(a): In a microcontroller with an embedded processor, a switched mode pump power

supply and power on reset circuit, a method of dynamically controlling a plurality of power

stability functions for said microcontroller, said method comprising: Defendant makes, uses,

sells, and/or offers to sell a device or system that practices the method in accordance with Claim

1.

For instance, the Accused Product includes a microcontroller (e.g., Arm Cortex-M0 based

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microcontroller) with an embedded processor (e.g., ARM Cortex M0 core processor), a switched

mode pump power supply (e.g., buck converter supply) and power on reset circuit. The accused

product practices a method of dynamically controlling a plurality of power stability functions for

said microcontroller (e.g., Arm Cortex-M0 based microcontroller). See Exhibit A-1, Figs. 1-11.

1(b): Supplying a power state to said microcontroller from said switched mode pump

power supply, wherein said processor and said power on reset circuit are interconnectedly

coupled, and wherein said switched mode pump power supply is interconnectedly coupled with

said power on reset circuit and responsive to signals therefrom;—Defendant makes, uses, sells,

and/or offers to sell a device or system that supplies a power state to the microcontroller from the

power supply, wherein the processor and power on reset circuit are interconnectedly coupled and

the power supply is interconnectedly coupled with the power on reset circuit.

For instance, the Accused Product practices supplying a power state (e.g., a power state

corresponding to a buck converted voltage) to said microcontroller (e.g., Arm Cortex-M0 based

microcontroller) from said switched mode pump power supply (e.g., buck converter), wherein said

processor (e.g., ARM Cortex M0 core processor) and said power on reset circuit are

interconnectedly coupled, and wherein said switched mode pump power supply (e.g., buck

converter) is interconnectedly coupled with said power on reset circuit (e.g., connected through

Digital Core LDO) and responsive to signals therefrom (e.g., Vbatt_buck). See Exhibit A-1, Figs.

12-18.

1(c): sensing a power state condition of said power state;—Defendant makes, uses, sells,

and/or offers to sell a device or system that sense a power state condition of the power state.

For instance, the Accused Products practices sensing a power state condition (e.g., power

state corresponding to a voltage level) of said power state (e.g., power state corresponding to a

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buck converted voltage). See Exhibit A-1, Fig. 19

1(d): determining a suitability status of said power state condition;—Defendant makes,

uses, sells, and/or offers to sell a device or system that determines a suitability status of the power

state condition.

For instance, the Accused Products compare with threshold voltage of the power state

condition (e.g., power state corresponding to a voltage level). See Exhibit A-1, Fig. 20-21.

1(e): communicating said suitability status between said power on reset circuit and said

processor;—Defendant makes, uses, sells, and/or offers to sell a device or system that

communicates suitability status between the power on reset circuit and said processor.

For instance, as noted above, the Accused Products practice communicating (e.g.,

reset_n_1p2 signal) said suitability status (e.g., comparison output with threshold voltage) between

said power on reset circuit and said processor (e.g., ARM Cortex core processor). See Exhibit A1, Fig. 22

1(f): controlling certain functions of said microcontroller accordingly.—Defendant

makes, uses, sells, and/or offers to sell a device or system that controls certain functions of the

microcontroller accordingly.

For instance, the Accused Products practices controlling certain functions of said

microcontroller accordingly (e.g., POR signal resets specific registers of the controller of

ATBTLC1000 which controls various functions). See Exhibit A-1, Fig. 23.

31. Additionally, Defendant has been and/or currently is an active inducer of

infringement of the ‘067 Patent under 35 U.S.C. § 271(b) and contributory infringer of the ‘067

Patent under 35 U.S.C. § 271(c).

32. At least as early as of the date of the filing of the Complaint, Defendants have had

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actual knowledge of the ‘067 Patent.

33. Defendants have provided the Accused Products to its customers and, on

information and belief, instructions to use the Accused Products in an infringing manner while

being on notice of (or willfully blind to) the ‘067 Patent and Defendants’ infringement. Therefore,

on information and belief, Defendants knew or should have known of the ‘067 Patent and of its

own infringing acts, or deliberately took steps to avoid learning of those facts.

34. Defendant knowingly and intentionally encourages and aids at least its end-user

customers to directly infringe the ’067 Patent.

35. Defendant’s end-user customers directly infringe at least one or more claims of the

‘067 Patent by using the Accused Products in their intended manner to infringe. Defendant induces

such infringement by providing the Accused Products and instructions to enable and facilitate

infringement, knowing of, or being willfully blind to the existence of, the ‘067 Patent. On

information and belief, Defendant specifically intends that its actions will result in infringement

of one or more claims of the ‘067 Patent, or subjectively believe that their actions will result in

infringement of the ‘067 Patent, but took deliberate actions to avoid learning of those facts, as set

forth above.

36. Additionally, Defendant contributorily infringes at least one or more claims of the

‘067 Patent by providing the Accused Products and/or software components thereof, that embody

a material part of the claimed inventions of the ‘067 Patent, that are known by Defendant to be

specially made or adapted for use in an infringing manner, and are not staple articles with

substantial non-infringing uses. The Accused Products are specially designed to infringe at least

one or more claims of the ‘067 Patent, and their accused components have no substantial noninfringing uses. In particular, on information and belief, the software modules and code that

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implement and perform the infringing functionalities identified above are specially made and

adapted to carry out said functionality and do not have any substantial non-infringing uses.

37. At least as early as the filing and/or service of this Complaint, Defendant’s

infringement of the ‘067 Patent was and continues to be willful and deliberate, entitling Heritage

to enhanced damages.

38. Additional allegations regarding Defendant’s knowledge of the ‘067 Patent and

willful infringement will likely have evidentiary support after a reasonable opportunity for

discovery.

39. Defendant’s infringement of the ‘067 Patent is exceptional and entitles Heritage to

attorneys’ fees and costs incurred in prosecuting this action under 35 U.S.C. § 285.

40. Heritage is in compliance with any applicable marking and/or notice provisions of

35 U.S.C. § 287 with respect to the ‘067 Patent.

41. Heritage is entitled to recover from Defendant all damages that Heritage has

sustained as a result of Defendant’s infringement of the ‘067 Patent, including, without limitation,

a reasonable royalty.

COUNT II: INFRINGEMENT OF U.S. PATENT NO. 7,221,200

42. Heritage incorporates by reference and re-alleges paragraphs 1-41 of this

Complaint as if fully set forth herein.

43. Defendant has infringed and is infringing, either literally or under the doctrine of

equivalents, the ’200 Patent in violation of 35 U.S.C. § 271 et seq., directly and/or indirectly, by

making, using, offering for sale, or selling in the United States, and/or importing into the United

States without authority or license, the Accused Product.

44. As just one non-limiting example, set forth below (with claim language in bold and

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italics) is exemplary evidence of infringement of Claim 1 of the ‘200 Patent in connection with the

Accused Product. This description is based on publicly available information. Heritage reserves

the right to modify this description, including, for example, on the basis of information about the

Accused Product that it obtains during discovery.

1(a): A low voltage reset apparatus, comprising: Defendant makes, uses, sells, and/or

offers to sell a device or system having a low voltage reset apparatus in accordance with Claim 1.

For instance, the Accused Product includes a SoC with reset on Brown Out function. The

ATBTLC1000 SoC Bluetooth low energy SoC which performs reset on Brown Out. See Exhibit

B-1, Figs. 1-10.

1(b): a programmable reference voltage generator for generating a programmable

reference voltage according to a power supply voltage;—Defendant makes, uses, sells, and/or

offers to sell a device or system having a programmable reference voltage generator for generating

a programmable reference voltage according to a power supply voltage.

For instance, the low voltage reset apparatus (e.g., the SoC with reset on Brown Out

function) utilized by the accused product comprises a programmable reference voltage generator

(e.g., a reference voltage generator which generates reference voltages viz. 1.73 V, 1.8V, 1.92V)

for generating a programmable reference voltage (e.g., one of 1.73 V, 1.8 V and 1.92 V) according

to a power supply voltage. The accused product is capable of generating a programmable voltage

references (e.g., 1.73 V, 1.8V, 1.92V etc.). See Exhibit B-1, Figs. 11-12.

1(c): a low voltage signal generator coupled to the programmable reference voltage

generator, the low voltage signal generator for generating a low voltage signal when the power

supply voltage decreases below the programmable reference voltage; and;—Defendant makes,

uses, sells, and/or offers to sell a device or system having a low voltage signal generator coupled

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to the programmable reference voltage generator, the low voltage signal generator for generating

a low voltage signal when the power supply voltage decreases below the programmable reference

voltage.

For instance, the low voltage reset apparatus (e.g., the SoC with reset on Brown Out

function) utilized by the accused product comprises a low voltage signal generator (e.g., Brownout detector) coupled to the programmable reference voltage generator, the low voltage signal

generator (e.g., Brown-out detector) for generating a low voltage signal (e.g, bout signal indicating

low VBATT_BUCK voltage) when the power supply voltage (e.g., VBATT_BUCK) decreases

below the programmable reference voltage(e.g., one of 1.73V, 1.8V and 1.92V). See Exhibit B-1,

Figs. 13-16

1(d): a reset selector coupled to the low voltage signal generator for selectively passing

the low voltage signal as a reset signal in response to a reset selector control signal.;—Defendant

makes, uses, sells, and/or offers to sell a device or system having a reset selector coupled to the

low voltage signal generator for selectively passing the low voltage signal as a reset signal in

response to a reset selector control signal.

For instance, the low voltage reset apparatus the low voltage reset apparatus (e.g., the SoC

with reset on Brown Out function) utilized by the accused product comprises a reset selector (e.g.,

POR Circuit) coupled to the low voltage signal generator (e.g., Brown-out detector) for selectively

passing the low voltage signal (e.g., bout signal indicating low VBATT_Buck voltage ) as a reset

signal in response to a reset selector control signal (e.g., POC signal). See Exhibit B-1, Figs. 17-

20.

45. Additionally, Defendant has been and/or currently is an active inducer of

infringement of the ‘200 Patent under 35 U.S.C. § 271(b) and contributory infringer of the ‘200

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Patent under 35 U.S.C. § 271(c).

46. At least as early as of the date of the filing of the Complaint, Defendants have had

actual knowledge of the ‘200 Patent.

47. Defendant has provided the Accused Products to its customers and, on information

and belief, instructions to use the Accused Products in an infringing manner while being on notice

of (or willfully blind to) the ‘200 Patent and Defendant’s infringement. Therefore, on information

and belief, Defendant knew or should have known of the ‘200 Patent and of its own infringing

acts, or deliberately took steps to avoid learning of those facts.

48. Defendant knowingly and intentionally encourages and aids at least its end-user

customers to directly infringe the ’200 Patent.

49. Defendant’s end-user customers directly infringe at least one or more claims of the

‘200 Patent by using the Accused Products in their intended manner to infringe. Defendant induces

such infringement by providing the Accused Products and instructions to enable and facilitate

infringement, knowing of, or being willfully blind to the existence of, the ‘200 Patent. On

information and belief, Defendant specifically intends that its actions will result in infringement

of one or more claims of the ‘200 Patent, or subjectively believe that their actions will result in

infringement of the ‘200 Patent, but took deliberate actions to avoid learning of those facts, as set

forth above.

50. Additionally, Defendant contributorily infringes at least one or more claims of the

‘200 Patent by providing the Accused Products and/or software components thereof, that embody

a material part of the claimed inventions of the ‘200 Patent, that are known by Defendant to be

specially made or adapted for use in an infringing manner, and are not staple articles with

substantial non-infringing uses. The Accused Products are specially designed to infringe at least

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one or more claims of the ‘200 Patent, and their accused components have no substantial noninfringing uses. In particular, on information and belief, the software modules and code that

implement and perform the infringing functionalities identified above are specially made and

adapted to carry out said functionality and do not have any substantial non-infringing uses.

51. At least as early as the filing and/or service of this Complaint, Defendant’s

infringement of the ‘200 Patent was and continues to be willful and deliberate, entitling Heritage

to enhanced damages.

52. Additional allegations regarding Defendant’s knowledge of the ‘200 Patent and

willful infringement will likely have evidentiary support after a reasonable opportunity for

discovery.

53. Defendant’s infringement of the ‘200 Patent is exceptional and entitles Heritage to

attorneys’ fees and costs incurred in prosecuting this action under 35 U.S.C. § 285.

54. Heritage is in compliance with any applicable marking and/or notice provisions of

35 U.S.C. § 287 with respect to the ‘200 Patent.

55. Heritage is entitled to recover from Defendant all damages that Heritage has

sustained as a result of Defendant’s infringement of the ‘200 Patent, including, without limitation,

a reasonable royalty.

PRAYER FOR RELIEF

WHEREFORE, Heritage respectfully requests:

A. That Judgment be entered that Defendant has infringed at least one or more

claims of the ‘200 Patent, directly and/or indirectly, literally and/or under the doctrine

of equivalents;

B. An award of damages sufficient to compensate Heritage for Defendant’s

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infringement under 35 U.S.C. § 284, including an enhancement of damages on account

of Defendant’s willful infringement;

C. That the case be found exceptional under 35 U.S.C. § 285 and that Heritage

be awarded its reasonable attorneys’ fees;

D. Costs and expenses in this action;

E. An award of prejudgment and post-judgment interest; and

F. Such other and further relief as the Court may deem just and proper.

DEMAND FOR JURY TRIAL

Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Heritage respectfully

demands a trial by jury on all issues triable by jury.

Respectfully submitted,

Dated: May 30, 2020

By: /s/ Neal Massand

Neal Massand

Texas Bar No. 24039038

nmassand@nilawfirm.com

Timothy T. Wang

Texas Bar No. 24067927

twang@nilawfirm.com

Stevenson Moore V

Texas Bar No. 24076572

smoore@nilawfirm.com

NI, WANG & MASSAND, PLLC

8140 Walnut Hill Ln., Ste. 500

Dallas, TX 75231

Tel: (972) 331-4600

Fax: (972) 314-0900

Attorney for Plaintiff

Heritage IP LLC

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