PLAINTIFF’S ORIGINAL COMPLAINT

FOR PATENT INFRINGEMENT 1

IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

(WACO DIVISION) 

OCEANA INNOVATIONS LLC, 

Plaintiff, 

v. 

ROKU, INC. 

Defendant. 

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C.A. No. 6:20-cv-399 

JURY TRIAL DEMANDED 

PLAINTIFF’S ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT 

Plaintiff Oceana Innovations LLC (“Oceana” or “Plaintiff”) files this Original Complaint 

against Defendant Roku, Inc. (“Roku” or “Defendant”) for infringement of U.S. Patent No. 

6,508,678 (“the ’678 patent” or “the patent-in-suit”). 

THE PARTIES 

1. Oceana is a Texas limited liability company with its principal place of business 

located in Dallas, TX. 

2. Upon information and belief, Defendant is a Delaware corporation having a place 

of business at 9606 N. Mopac Expressway, Suite 400, Austin, TX 78759. Roku may be served 

through its registered agent Corporation Service Company, 211 E. 7th St, Suite 620, Austin Texas 

78701. 

JURISDICTION AND VENUE 

3. This action arises under the patent laws of the United States, namely 35 U.S.C. §§ 

271, 281, and 284-285, among others. 

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4. This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and 

1338(a). 

5. Venue is proper in this judicial district pursuant to 28 U.S.C. § 1400(b) because 

Defendant has committed acts of infringement (including making, using, offering to sell and/or 

selling infringing products) in the District and has a regular and established place of business in 

this District. Defendant transacts business in this District, including from its office located at 9606 

N. Mopac Expressway, Suite 400, Austin, TX 78759. 

6. Defendant is subject to personal jurisdiction pursuant to due process due at least to 

its substantial business in this State, including: (A) at least part of its infringing activities alleged 

herein; and (B) regularly doing or soliciting business, engaging in other persistent conduct, and/or 

deriving substantial revenue from goods sold and services provided to Texas residents. Defendant 

has conducted and regularly conducts business within the United States and this District. 

Defendant has purposefully availed itself of the privileges of conducting business in the United 

States, and more specifically in Texas and this District. Defendant has sought protection and 

benefit from the laws of the State of Texas by placing infringing products into the stream of 

commerce through an established distribution channel with the awareness and/or intent that they 

will be purchased by consumers in this District. 

7. On information and belief, Defendant has significant ties to, and presence in, this 

District, making venue in this judicial district both proper and convenient for this action. 

THE PATENT-IN-SUIT 

8. The ʼ678 patent is titled “Electrical Connector Assembly.” The inventions claimed 

in the patent-in-suit generally relate to new and novel assemblies for coupling cabling to an 

electronic device. 

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FOR PATENT INFRINGEMENT 3

9. The ʼ678 patent lawfully issued on January 21, 2003, and stems from Application 

No. 09/653,129, which was filed on August 31, 2000. The named inventor on the patent-in-suit is 

Sheng-Ho Yang. A copy of the ʼ678 patent is attached hereto as Exhibit A. 

10. Each asserted claim in the patent-in-suit is presumed valid. The ’678 patent is valid, 

enforceable and was duly issued in fully compliance with Title 35 of the United States Code. 

11. Plaintiff is the owner of the ’678 patent with all substantial rights to the ’678 patent 

including the exclusive right to enforce, sue, and recover damages for past and future infringement. 

12. Defendant has knowledge of the patent-in-suit at least based on a letter sent to 

Defendant by Oceana’s counsel, a copy of which is attached hereto as Exhibit B. Oceana’s letter 

to Roku included the claim chart attached hereto as Exhibit C. 

COUNT I 

(Infringement of U.S. Patent No. 6,508,678) 

13. Plaintiff incorporates paragraphs 1 through 12 herein by reference. 

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

particular, 35 U.S.C. §§ 271, et seq. 

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

15. Defendant has, and continues to, infringe one or more claims of the ’678 patent in 

this judicial district and elsewhere in Texas and the United States. 

16. Defendant has, and continues to, either by itself or via an agent, infringe claims of 

the ’678 patent (including for example claim 1) by, among other things, making, selling, offering 

for sale, using, and/or importing systems that include an electronic device with one or more HDMI 

Type A connectors and an HDMI cable (the “Accused Systems”), including (for example) the 

Roku Express. 

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17. The claim chart attached as Exhibit C illustrates how Accused Systems infringe the 

’678 patent.1

18. Defendant is liable for its infringements of the ’678 patent pursuant to 35 U.S.C. § 

271. 

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

19. Defendant has, and continues to, indirectly infringe one or more claims of the ’678 

patent by inducing direct infringement by end users of the Accused Systems. 

20. Defendant has had knowledge of the ’678 patent and its infringements since at least 

as May 4, 2020, when Defendant received a copy of the letter attached hereto as Exhibit B and the 

claim chart attached hereto as Exhibit C detailing infringing use of Roku devices. 

21. Despite having knowledge of the ’678 patent and its infringements, Defendant has 

specifically intended for persons, including end users of Defendant’s products (e.g., the Roku 

Express), to make and use Accused Systems by acquiring and using Roku devices in a way that 

infringes the ’678 patent, including at least claim 1, and Defendant knew or should have known 

that its actions were inducing infringement. 

22. Defendant instructs and encourage users to make and use the Accused Systems in 

a manner that infringes the ’678 patent. For example, Defendant provides quick start guides and 

other instructional materials that encourage and instruct users to make and use the Accused 

Systems by connecting an HDMI cable to a Roku streaming device and/or television. See, e.g., 

Roku Express Quick Start Guide, available at https://image.roku.com/c3VwcG9ydC1B/ExpressQSG-US.pdf. 

1

 The chart attached as Exhibit C is illustrative and provided for purposes of satisfying Plaintiff’s 

pleading obligations and should not be construed as limiting. Plaintiff will serve infringement 

contentions in this case in accord with the Local Rules and schedule entered by the Court. 

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23. Defendant is liable for inducing infringement of the ’678 patent pursuant to 35 

U.S.C. § 271(b). 

INDIRECT INFRINGEMENT (CONTRIBUTORY INFRINGEMENT - 35 U.S.C. §271(c)) 

24. Defendant has, and continues to, indirectly infringe one or more claims of the ’678 

patent by contributing to direct infringement by end users of the Accused Systems. 

25. Defendant has had knowledge of the ’678 patent and that end users of Roku devices 

directly infringe the ’678 patent since as May 4, 2020, when Defendant received a copy of the 

letter attached hereto as Exhibit B and the claim chart detailing infringing use of Roku devices 

attached hereto as Exhibit C. 

26. Despite having knowledge of the ’678 patent and infringing use of the Accused 

Systems by its customers, Defendant has, and continues to, contribute to infringement of the ’678 

by selling devices that include an HDMI Type A connector (e.g., the Roku Express). As illustrated 

by Exhibit C hereto, these connectors constitute a material part of the invention claimed by the 

’678 patent. 

27. The HDMI Type A connector(s) included with Roku devices are not a staple article 

or commodity of commerce suitable for non-infringing use. Such connectors are intended to, and 

can only be, used to make the disclosed and claimed “electrical connector assembly.” 

28. Defendant is liable for contributing to infringement of the ’678 patent pursuant to 

35 U.S.C. § 271(c) 

29. 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. 

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COUNT II 

(Willful Infringement) 

30. Plaintiff incorporates paragraphs 1 through 29 herein by reference. 

31. Prior to the filing of this action Defendant was aware of the ʼ678 patent. 

32. As detailed above, Oceana sent Defendant a claim chart detailing Defendant’s 

infringement of the ʼ678 patent. 

33. Defendant has been, or should have been, aware of its infringement of the ʼ678 

patent since at least its receipt and review of the Oceana’s pre-suit letter. 

34. On information and belief, despite being aware of the ʼ678 patent and its 

infringement of the ʼ678 patent, Defendant has not changed or otherwise altered its products or its 

practices in an effort to avoid infringing the ʼ678 patent; nor has Defendant sought to take a license 

to the ’678 patent. Rather, despite having notice of the ’678 patent, Defendant has, and continues 

to, infringe the ’678 patent, directly and/or indirectly, in disregard to Plaintiff’s patent rights. 

35. Defendant has acted recklessly and/or egregiously, and continues to willfully, 

wantonly, and deliberately engage in acts of infringement of the ʼ678 patent, justifying a finding 

of willful infringement and an award to Plaintiff of increased damages under 35 U.S.C. § 284, and 

attorneys’ fees and costs incurred under 35 U.S.C. § 285. 

JURY DEMAND

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

Procedure. 

 

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PLAINTIFF’S ORIGINAL COMPLAINT

FOR PATENT INFRINGEMENT 7

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 the ’678 patent have been infringed, either 

literally and/or under the doctrine of equivalents, by Defendant; 

b. Judgment that one or more claims of the ʼ678 patent have been willfully infringed 

by Defendant; 

c. 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; 

d. 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; 

e. 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; 

f. That this case be found exceptional under the provisions of 35 U.S.C. § 285 and 

award Plaintiff enhanced damages; and 

g. That Plaintiff be granted such other and further relief as the Court may deem just 

and proper under the circumstances. 

 

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PLAINTIFF’S ORIGINAL COMPLAINT

FOR PATENT INFRINGEMENT 8

Dated: May 15, 2020 Respectfully submitted, 

/s/Robert D. Katz

Robert D. Katz 

Texas Bar No. 24057936 

KATZ PLLC 

6060 N. Central Expressway, Suite 560 

Dallas, TX 75206 

214-865-8000 

888-231-5775 (fax) 

rkatz@katzfirm.com

Ryan Griffin (admission pending) 

Texas Bar No. 24053687 

GRIFFIN LAW PLLC 

312 W 8th Street 

Dallas, TX 75208 

214.500.1797 

ryan@griffiniplaw.com 

Attorneys for Plaintiff 

OCEANA INNOVATIONS LLC

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