1

IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

PROVEN NETWORKS, LLC.,

Plaintiff,

v.

SOLARWINDS CORP.,

Defendant.

Case No. 6:20-cv-00338

JURY TRIAL DEMANDED 

COMPLAINT FOR PATENT INFRINGEMENT 

AGAINST SOLARWINDS CORP.

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 Proven Networks, LLC (“Plaintiff” or “Proven 

Networks”) makes the following allegations against Defendant SolarWinds Corp. (“Defendant”):

INTRODUCTION

1. This complaint arises from Defendant’s unlawful infringement of United States

Patent No. 8,165,024 (the “’024 Patent” or the “Asserted Patent”), owned by Proven Networks, 

which generally relates to data networking technology.

2. The management and optimization of data flow in networking systems is essential

in modern society. Not only do computers, smartphones, and home automation devices operating 

via the Internet generate data traffic, but basic technology such as voice services and file transfers 

do as well. The enormous increase in multimedia content, such as videos, has greatly increased 

data traffic without proportional increases in data bandwidth. One problem caused by the large 

consumption of high-bandwidth multimedia content is that more important data, including 

relatively low-bandwidth services such as voice services and data transfers (e.g., financial data), 

Case 6:20-cv-00338-ADA Document 1 Filed 04/28/20 Page 1 of 6
2

can suffer due to lack of bandwidth, resulting in dropped calls and incomplete file transfers. 

Optimization of data traffic in data networks has become even more important in order to navigate 

the bandwidth limitations.

3. The Asserted Patent originated from telecommunications and wireless networking 

research from Alcatel-Lucent. The inventors were keenly aware of the increase of high-bandwidth 

applications such as video, especially in wireless and mobile networks, and sought to develop 

technology to maintain acceptable performance for as many users, for as long as possible, under 

varying and adverse data traffic conditions. 

4. For example, the ’024 Patent teaches the use of a “deep packet inspection” device, 

especially in wireless networks, to examine the characteristics of data packets passing through the 

network in order to provide classification data to the data packets for downstream applicationspecific processing. 

PARTIES

5. Plaintiff Proven Networks, LLC is a company organized under the laws of the State 

of California. Proven Networks is the sole owner by assignment of all right, title, and interest in 

each Asserted Patent.

6. On information and belief, Defendant SolarWinds Corp. is a corporation organized 

under the laws of the State of Delaware, with its principal place of business at 7171 Southwest 

Parkway, Building 400, Austin, Texas 78735.

JURISDICTION AND VENUE

7. 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).

Case 6:20-cv-00338-ADA Document 1 Filed 04/28/20 Page 2 of 6
3

8. This Court has personal jurisdiction over Defendant in this action because 

Defendant 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 Defendant would not 

offend traditional notions of fair play and substantial justice. Defendant, directly and through 

subsidiaries or intermediaries, has committed and continues to commit acts of infringement in this 

District by, among other things, making, using, importing, offering to sell, and selling products 

that infringe the Asserted Patent.

9. Venue is proper in this District under 28 U.S.C. § 1400(b). Defendant is registered 

to do business in Texas, and upon information and belief, Defendant has transacted business in 

this District and has committed acts of direct and indirect infringement in this District by, among 

other things, importing, offering to sell, and selling products that infringe the Asserted Patent. 

Defendant has a regular and established place of business in the District, including corporate 

offices at 7171 Southwest Parkway, Building 400, Austin, Texas 78735.

COUNT I

INFRINGEMENT OF U.S. PATENT NO. 8,165,024

10. Plaintiff realleges and incorporates by reference the foregoing paragraphs as if fully 

set forth herein.

11. Plaintiff owns by assignment all rights, title, and interest in U.S. Patent No. 

8,165,024, titled “Use of DPI to Extract and Forward Application Characteristics.” The ’024 Patent 

was duly and legally issued by the United States Patent and Trademark Office on April 24, 2012. 

A true and correct copy of the ’024 Patent is attached as Exhibit 1.

12. On information and belief, Defendant makes, uses, offers for sale, sells, and/or 

imports certain products (“Accused Products”), such as the Solarwinds Network Performance 

Case 6:20-cv-00338-ADA Document 1 Filed 04/28/20 Page 3 of 6
4

Monitor (NPM) solution, that directly infringe, literally and/or under the doctrine of equivalents, 

claims 1–25 of the ’024 Patent. 

13. Defendant also knowingly and intentionally induces infringement of claims 1–25

of the ’024 Patent in violation of 35 U.S.C. § 271(b). At least through the filing and service of this 

Complaint, Defendant has knowledge of the ’024 Patent and the infringing nature of the Accused 

Products. Despite this knowledge of the ’024 Patent, Defendant continues to actively encourage 

and instruct its customers and end users (for example, through user manuals and online instruction 

materials on its website) to use the Accused Products in ways that directly infringe the ’024 Patent. 

Defendant does so knowing and intending that its customers and end users will commit these 

infringing acts. Defendant also continues to make, use, offer for sale, sell, and/or import the 

Accused Products, despite its knowledge of the ’024 Patent, thereby specifically intending for and 

inducing its customers to infringe the ’024 Patent through the customers’ normal and customary 

use of the Accused Products.

14. The Accused Products satisfy all claim limitations of claims 1–25 of the ’024

Patent. A claim chart comparing independent claim 1 of the ’024 Patent to the representative 

Accused Product, Solarwinds Network Performance Monitor (NPM) solution, is attached as 

Exhibit 2.

15. By making, using, offering for sale, selling and/or importing into the United States 

the Accused Products, Defendant has injured Plaintiff and is liable for infringement of the ’024

Patent pursuant to 35 U.S.C. § 271.

16. As a result of Defendant’s infringement of the ’024 Patent, Plaintiff is entitled to 

monetary damages in an amount adequate to compensate for Defendant’s infringement, but in no 

Case 6:20-cv-00338-ADA Document 1 Filed 04/28/20 Page 4 of 6
5

event less than a reasonable royalty for the use made of the invention by Defendant, together with 

interest and costs as fixed by the Court.

17. Defendant’s infringing activities have injured and will continue to injure Plaintiff

unless and until this Court enters an injunction prohibiting further infringement of the ’024 Patent, 

and, specifically, enjoining further manufacture, use, sale, importation, and/or offers for sale that 

come within the scope of the patent claims.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff respectfully requests that this Court enter:

a. A judgment in favor of Plaintiff that Defendant has infringed, either literally and/or 

under the doctrine of equivalents, the ’024 Patent;

b. A permanent injunction prohibiting Defendant from further acts of infringement of 

the ’024 Patent;

c. A judgment and order requiring Defendant to pay Plaintiff its damages, costs, 

expenses, and pre-judgment and post-judgment interest for Defendant’ infringement of the ’024

Patent; and

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

supplemental damages to Plaintiff, including without limitation, pre-judgment and post-judgment 

interest; 

e. A judgment and order finding that this is an exceptional case within the meaning 

of 35 U.S.C. § 285 and awarding to Plaintiff its reasonable attorneys’ fees against Defendant; and

f. Any and all other relief as the Court may deem appropriate and just under the 

circumstances.

Case 6:20-cv-00338-ADA Document 1 Filed 04/28/20 Page 5 of 6
6

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: April 28, 2020 Respectfully submitted,

/s/ Reza Mirzaie

Reza Mirzaie (CA SBN 246953)

rmirzaie@raklaw.com

Marc A. Fenster (CA SBN 181067)

Email: mfenster@raklaw.com 

Brian D. Ledahl (CA SBN 186579)

Email: bledahl@raklaw.com 

Benjamin T. Wang (CA SBN 228712)

Email: bledahl@raklaw.com 

Kent N. Shum (CA SBN 259189)

kshum@raklaw.com

Jonathan Ma (CA SBN 312773)

jma@raklaw.com

RUSS AUGUST & KABAT

12424 Wilshire Blvd. 12th Floor

Los Angeles, CA 90025

Phone: (310) 826-7474

Attorneys for Plaintiff Proven Networks, LLC

Case 6:20-cv-00338-ADA Document 1 Filed 04/28/20 Page 6 of 6