THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

ROTHSCHILD BROADCAST 

DISTRIBUTION SYSTEMS, LLC,

Plaintiff,

v.

ROCKWELL AUTOMATION,

INC. DBA PLEX SYSTEMS, INC.

Defendant.

 CIVIL ACTION NO. 2:23-cv-371

 JURY TRIAL DEMANDED

COMPLAINT

Plaintiff Rothschild Broadcast Distribution Systems, LLC (“Plaintiff” or “RBDS”) files 

this complaint against Rockwell Automation, Inc. DBA Plex Systems, Inc. (“Defendant”) for 

infringement of U.S. Patent No. 8,856,221 (hereinafter the “221 Patent”) and alleges as follows:

PARTIES

1. Plaintiff is a Texas limited liability company with an office at 1 East Broward 

Boulevard, Suite 700, Ft. Lauderdale, FL 33301.

2. On information and belief, Defendant has an office located at 

6601 Cascades Ct, Suite 130, The Colony, TX 75056.

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JURISDICTION AND VENUE

3. This action arises under the patent laws of the United States, 35 U.S.C. § 271 et 

seq. Plaintiff is seeking damages, as well as attorney fees and costs. 

4. Jurisdiction is proper in this Court pursuant to 28 U.S.C. §§ 1331 (Federal 

Question) and 1338(a) (Patents). 

5. This Court has personal jurisdiction over Defendant. Defendant has continuous 

and systematic business contacts with the State of Texas. Defendant transacts business within this 

District and elsewhere in the State of Texas and has appointed an agent for service of process in 

Texas. Further, this Court has personal jurisdiction over Defendant based on its commission of 

one or more acts of infringement of Decapolis’ Patents in this District and elsewhere in the State 

of Texas.

6. Defendant directly conducts business extensively throughout the State of Texas, by 

distributing, making, using, offering for sale, selling, and advertising its services in the State of 

Texas and in this District. Defendant has purposefully and voluntarily made its business services, 

including the infringing systems and services, available to residents of this District and into the 

stream of commerce with the intention and expectation that they will be purchased and/or used by 

consumers in this District.

7. On information and belief, Defendant maintains physical brick-and-mortar 

business locations in the State of Texas and within this District, retains employees specifically in 

this District for the purpose of servicing customers in this District, and generates substantial 

revenues from its business activities in this District. See Figure 1 below.

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Figure 1 – Job Openings at Rockwell Automation located in East Texas on or about August 

12, 2023.

8. Venue is proper in the Western District of Texas as to Defendant pursuant to at 

least 28 U.S.C. §§ 1391(c)(2) and 1400(b). As noted above, Defendant maintains a regular and 

established business presence in this District.

PATENT-IN-SUIT

9. Plaintiff is the sole and exclusive owner, by assignment, of U.S. Patent No. 

8,856,221 (hereinafter “the ’221 Patent”). The ’221 Patent is attached as Exhibit A.

10. The ’221 Patent is valid, enforceable, and was duly issued in full compliance with 

Title 35 of the United States Code.

11. Plaintiff possesses all rights of recovery under the ‘221 Patent, including the 

exclusive right to recover for past, present and future infringement.

12. The inventor of the ’221 Patent, Mr. Leigh M. Rothschild, was Chairman and Chief 

Executive Officer of IntraCorp Entertainment, Inc., a consumer software company with worldwide 

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product distribution. From October 1998 through February 2004, Mr. Rothschild was also 

Chairman and founder of BarPoint.com, a NASDAQ publicly traded wireless company that was 

the leader and early creator of connecting symbology, such as barcodes, to the Internet.

13. Mr. Rothschild is a former presidential appointee to the High-Resolution Board for 

the United States under former President George H.W. Bush, and has also served as an advisor for 

former President Ronald Reagan. Mr. Rothschild served Governors on technology boards, served 

as a special advisor to then Florida Secretary of Commerce John Ellis “Jeb” Bush, and served on 

the IT Florida Technology Board as an appointee of former Governor John Ellis “Jeb” Bush.

14. Mr. Rothschild chairs the Rothschild Family Foundation, which endows 

outstanding charities and institutions around the world.

15. The ’221 Patent contains thirteen claims including two independent claims (claims 

1 and 7) and eleven dependent claims.

16. The priority date of the ’221 Patent is at least as early August 29, 2011. As of the 

priority date, the inventions as claimed were novel, non-obvious, unconventional, and non-routine. 

17. Plaintiff alleges infringement on the part of Defendant of the ’221 Patent.

18. The ’221 Patent teaches a method and apparatus for media content storage and 

delivery. See ’221 Patent, Abstract. Among other things, the claimed system includes a server, 

which has a receiver in communication with a processor. Id. The receiver receives a request 

message. Id. The request message includes media data indicating requested media content and a 

consumer device identifier corresponding to a consumer device. Id. The processor determines 

whether the consumer device identifier corresponds to a registered consumer device. Id. If the 

processor determines that the consumer device identifier corresponds to the registered consumer 

device, then the processor determines whether the request message is one of a storage request 

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message and a content request message. Id. If the request message is the storage request message, 

then the processor is further configured to determine whether the requested media content is 

available for storage. Id. If the request message is the content request message, then the processor

initiates delivery of the requested media content to the consumer device.

19. As noted, the claims of the ’221 Patent have priority date at least as early as August 

29, 2011. The present invention solves problems that existed with then-existing media delivery 

systems. One problem with prior delivery systems is that the customer was charged according to 

the expenses of the provider rather than the usage of the customer. ’221 Patent, 1:31-57. 

Customers were not charged based on the amount of programming delivered or the amount or 

duration of the customer’s storage of media. Id. Another such problem, more generally, is that 

customers were not billed and services were not provided, in a way that was tailored to the 

customer’s needs and usage. Id., 2:3-13.

20. The claims of the ’221 Patent overcome deficiencies existing in the art as of the 

date of invention, and comprise non-conventional approaches that transform the inventions as 

claimed into substantially more than mere abstract ideas. For example, the inventive system 

includes a processor in communication with a receiver. Id., 2:23-34. The processor determines 

media content characteristics that correspond to the media content to be stored. Id. The processor 

determines a length of time to store the media content based on the media data and determines a 

cost amount based at least in part on the determined media content characteristics and length of 

time to store the media content. Id. As another example, the system makes a determination that 

media content is available for download. Id., 2:64-3:2. A determination is made that content is not 

stored. Download of the media content is initiated. Id. The media content is received and the 

received media content is stored. Id.

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21. The ’221 Patent is directed to computerized technologies to provide users with 

tailored media delivery systems and tailored billing for such systems. Among other things, the 

’221 Patent claims include sending and receiving of request messages indicating requested media 

content and including a device identifier corresponding to a consumer device. A determination is 

made whether the identifier corresponds to the device. A determination is also made as to whether 

the request is for delivery or storage. The media data in the request includes time data that indicates 

a length of time for storage. A processor is configured to determine whether requested media 

exists and whether there are any restrictions associated with delivery or storage of the requested 

media.

22. The system(s) and methods of the ’221 Patent include software and hardware that 

do not operate in a conventional manner. For example, the software is tailored to provide 

functionality to perform recited steps and the processor is configured (and/or programmed) to 

provide functionality recited throughout the claims of the ’221 Patent.

23. The ’221 Patent solves problems with the art that are rooted in computer technology 

and that are associated with electronic transmission, loading, and storage of location information, 

as well as automatic provisioning of route guidance. The ’221 Patent claims do not merely recite 

the performance of some business practice known from the pre-Internet world along with the 

requirement to perform it on the Internet.

24. The improvements of the ’221 Patent and the features recited in the claims in the 

’221 Patent provide improvements to conventional hardware and software systems and methods. 

The improvements render the claimed invention of the ’221 Patent non-generic in view of 

conventional components.

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25. The improvements of the ’221 Patent and the features recitations in the claims of 

the ’221 Patent are not those that would be well-understood, routine, or conventional to one of 

ordinary skill in the art at the time of the invention.

26. The ’221 Patent was examined by Primary United States Patent Examiner Hua Fan. 

During the examination of the ’221 Patent, the United States Patent Examiner searched for prior 

art in the following US Classifications: 709/203; 709/204; 709/231; 709/226; and 709/249.

27. After conducting a search for prior art during the examination of the ’221 Patent, 

the United States Patent Examiner identified and cited the following as the most relevant prior art 

references found during the search: US 6,882,639; US 7,496,608; US 8,108,441; US 

2002/0069252; US 2003/0014630; US 2003/0060264; US 2003/0061281; US 2005/0021869; US 

2005/0076220; US 2006/0080452; US 2010/0217759; US 2010/0223385; US 2010/0268736; US 

2010/0332456; and US 2011/0066687.

28. After giving full proper credit to the prior art and having conducted a thorough 

search for all relevant art and having fully considered the most relevant art known at the time, the 

United States Patent Examiner allowed all of the claims of the ’221 Patent to issue. In so doing, 

it is presumed that Examiner Fan used his knowledge of the art when examining the claims. K/S 

Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1369 (Fed. Cir. 2014). It is further presumed 

that Examiner Jen had experience in the field of the invention, and that the Examiner properly 

acted in accordance with a person of ordinary skill. In re Sang Su Lee, 277 F.3d 1338, 1345 (Fed. 

Cir. 2002). In view of the foregoing, the claims of the ’221 Patent are novel and non-obvious, 

including over all non-cited art which is merely cumulative with the referenced and cited prior art. 

Likewise, the claims of the ’221 Patent are novel and non-obvious, including over all non-cited 

contemporaneous state of the art systems and methods, all of which would have been known to a 

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person of ordinary skill in the art, and which were therefore presumptively also known and 

considered by Examiner Fan.

29. The claims of the ’221 Patent were all properly issued, and are valid and 

enforceable for the respective terms of their statutory life through expiration, and are enforceable 

for purposes of seeking damages for past infringement even post-expiration. See, e.g., Genetics 

Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., 655 F.3d 1291, 1299 (Fed. Cir. 2011) 

(“[A]n expired patent is not viewed as having ‘never existed.’ Much to the contrary, a patent does 

have value beyond its expiration date. For example, an expired patent may form the basis of an 

action for past damages subject to the six-year limitation under 35 U.S.C. § 286”) (internal citations 

omitted).

30. The nominal expiration date for the claims of the ’221 Patent is no earlier than 

November 21, 2031.

ACCUSED INSTRUMENTALITIES

31. Upon information and belief, Defendant sells, advertises, offers for sale, uses, or 

otherwise provides media content storage and delivery systems and services with its Plex Media 

Server as well as similar products (the “Accused Instrumentalities”), which infringe at least Claim 

1 of the ’221 Patent.

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Figure 2 – Excerpt from Exhibit B to the Complaint.

COUNT ONE

(Infringement of United States Patent No. 8,856,221) 

32. Plaintiff refers to and incorporates the allegations in Paragraphs 1-31, the same as 

if set forth herein. 

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

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

34. Defendant has knowledge of its infringement of the ’221 Patent, at least as of the 

service of the present complaint.

35. Accordingly, Defendant has infringed and continues to infringe, the ’221 Patent in 

violation of 35 U.S.C. § 271. Upon information and belief, Defendant has infringed and continues 

to infringe one or more claims, including at least Claim 1, of the ’221 Patent by making, using, 

importing, selling, and/or offering for sale (as identified in the Claim Chart attached hereto as 

Exhibit B) the Accused Instrumentalities.

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36. Defendant also has and continues to directly infringe, literally or under the doctrine 

of equivalents, one or more claims, including at least Claim 1, of the ’221 Patent, by having its 

employees internally test and use the Accused Instrumentalities.

37. The service of this Complaint, in conjunction with the attached Claim Chart

(Exhibit B) and references cited, constitutes actual knowledge of infringement as alleged here.

38. Exhibit B includes at least one chart comparing the exemplary Claim 1 of the ’221

Patent to the Accused Instrumentalities. As set forth in this chart, the Accused Instrumentalities 

practice the technology claimed by the ’221 Patent. Accordingly, the Accused Instrumentalities 

incorporated in this chart satisfy all elements of exemplary Claim 1 of the ’221 Patent.

39. Plaintiff therefore incorporates by reference in its allegations herein the claim chart 

of Exhibit B.

40. Plaintiff is entitled to recover damages adequate to compensate for Defendant’s 

infringement.

41. Defendant’s actions complained of herein will continue unless Defendant is 

enjoined by this Court. 

42. The ’221 Patent is valid, enforceable, and was duly issued in full compliance with 

Title 35 of the United States Code. 

43. A copy of the ’221 Patent, titled “System and Method for Storing Broadcast 

Content in a Cloud-based Computing Environment,” is attached hereto as Exhibit A.

44. By engaging in the conduct described herein, Defendant has injured Plaintiff and is 

liable for infringement of the ’221 Patent, pursuant to 35 U.S.C. § 271.

45. Defendant has committed these acts of literal infringement, or infringement under 

the doctrine of equivalents of the ’221 Patent, without license or authorization.

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46. As a result of Defendant’s infringement of the ’221 Patent, injured Plaintiff has 

suffered monetary damages and is entitled to a monetary judgment in an amount adequate to 

compensate for Defendant’s past infringement, together with interests and costs. 

47. Plaintiff is in compliance with 35 U.S.C. § 287.

48. As such, Plaintiff is entitled to compensation for any continuing and/or future 

infringement of the ’221 Patent up until the date that Defendant ceases its infringing activities. 

DEMAND FOR JURY TRIAL 

49. Rothschild Broadcast Distribution Systems, under Rule 38 of the Federal Rules of 

Civil Procedure, requests a trial by jury of any issues so triable by right.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff asks the Court to:

(a) Enter judgment for Plaintiff on this Complaint on all cases of action asserted herein;

(b) Enter an Order enjoining Defendant, its agents, officers, servants, employees, 

attorneys, and all persons in active concert or participation with Defendant who receives notice of 

the order from further infringement of United States Patent No. 8,856,221 (or, in the alternative, 

awarding Plaintiff running royalty from the time judgment going forward);

(c) Award Plaintiff damages resulting from Defendants infringement in accordance with 

35 U.S.C. § 284;

(d) Award Plaintiff such further relief to which the Court finds Plaintiff entitled under law 

or equity.

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Dated: August 16, 2023 Respectfully Submitted,

/s/ René A. Vazquez 

Randall Garteiser

 Texas Bar No. 24038912

 rgarteiser@ghiplaw.com

M. Scott Fuller

 Texas Bar No. 24036607

 rgarteiser@ghiplaw.com

Christopher A. Honea

 chonea@ghiplaw.com

GARTEISER HONEA, PLLC

119 W. Ferguson Street

Tyler, Texas 75702

Telephone: (903) 705-7420

Facsimile: (903) 405-3999

COUNSEL FOR PLAINTIFF

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