1

 017-026

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

NITETEK LICENSING LLC,

 Plaintiff,

 v.

HMS INDUSTRIAL NETWORKS INC.,

 Defendant.

Civil Action No.: 2020 CV 3193

TRIAL BY JURY DEMANDED

COMPLAINT FOR INFRINGEMENT OF PATENT

Now comes, Plaintiff Nitetek Licensing LLC (“Plaintiff” or “Nitetek”), by and through its 

counsel, Luke A. Casson, Andreou & Casson, Ltd., and respectfully alleges, states, and prays as 

follows:

NATURE OF THE ACTION

1. This is an action for patent infringement under the Patent Laws of the United States, 

Title 35 United States Code (“U.S.C.”) to prevent and enjoin Defendant HMS Industrial Networks 

Inc., (hereinafter, “Defendant”), from infringing and profiting, in an illegal and unauthorized 

manner, and without authorization and/or consent from Plaintiff from U.S. Patent Nos. 7,020,105

(hereinafter, the “‘105 Patent”) and 6,661,783 (hereinafter, the “’783 Patent”)(collectively, the 

“Patents-in-Suit”), which are attached hereto as Exhibits A and B, respectively, and are 

incorporated herein by reference, and pursuant to 35 U.S.C. §271, and to recover damages, 

attorney’s fees, and costs. 

THE PARTIES

Case: 1:20-cv-03193 Document #: 1 Filed: 05/29/20 Page 1 of 12 PageID #:1
2

2. Plaintiff is a Texas limited liability company with its principal place of business at 

6001 W. Parmer Ln, Suite 370-1070, Austin, TX 78727-3908.

3. Upon information and belief, Defendant is a corporation organized under the laws 

of Illinois, having a principal place of business at 35 E. Wacker Drive, Suite 1900, Chicago, Illinois 

60601. Upon information and belief, Defendant may be served with process c/o its registered 

agent: The Corporation Trust Company, 208 So. LaSalle St., Suite 814, Chicago, Illinois 60604. 

4. Plaintiff is further informed and believes, and on that basis alleges, that Defendant 

operates the website, www.hms-networks.com, which is in the business of making industrial 

devices and systems that communicate through the use of intelligent and networked devices. See

https://www.hms-networks.com/. Upon information and belief, Defendant derives a portion of its 

revenue from sales and distribution via transactions initiated from its Internet website located at 

www.hms-networks.com, and its incorporated and/or related systems (collectively, the “HMS

Website”). Plaintiff is informed and believes, and on that basis alleges, that, at all times relevant 

hereto, Defendant has done and continues to do business in this judicial district, including, but not 

limited to, providing products/services to customers located in this judicial district by way of the 

HMS Website.

JURISDICTION AND VENUE

5. This is an action for patent infringement in violation of the Patent Act of the United 

States, 35 U.S.C. §§1 et seq.

6. The Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. 

§§1331 and 1338(a). 

Case: 1:20-cv-03193 Document #: 1 Filed: 05/29/20 Page 2 of 12 PageID #:2
3

7. This Court has personal jurisdiction over Defendant by virtue of its systematic and 

continuous contacts with this jurisdiction and its residence in this District, as well as because of 

the injury to Plaintiff, and the cause of action Plaintiff has risen in this District, as alleged herein.

8. Defendant is subject to this Court’s specific and general personal jurisdiction 

pursuant to its substantial business in this forum, including: (i) at least a portion of the 

infringements alleged herein; (ii) regularly doing or soliciting business, engaging in other 

persistent courses of conduct, and/or deriving substantial revenue from goods and services 

provided to individuals in the forum state and in this judicial District; and (iii) being incorporated 

in this District. 

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

Defendant resides in this District under the Supreme Court’s opinion in TC Heartland v. Kraft 

Foods Group Brands LLC, 137 S. Ct. 1514 (2017) through its incorporation, and regular and 

established place of business in this District. 

FACTUAL ALLEGATIONS

A. The ’105 Patent

10. On March 28, 2006, the United States Patent and Trademark Office (“USPTO”) 

duly and legally issued the ‘105 Patent, entitled “DYNAMIC RESOURCE ALLOCATION IN 

PACKET DATA TRANSFER” after a full and fair examination. The ‘105 Patent is attached hereto 

as Exhibit A and incorporated herein as if fully rewritten. 

11. Plaintiff is presently the owner of the ‘105 Patent, having received all right, title 

and interest in and to the ‘105 Patent from the previous assignee of record. Plaintiff possesses all 

rights of recovery under the ‘105 Patent, including the exclusive right to recover for past 

infringement.

Case: 1:20-cv-03193 Document #: 1 Filed: 05/29/20 Page 3 of 12 PageID #:3
4

12. The invention claimed in the ‘105 Patent discloses a “method for control of packet 

data transmissions in a TDMA wireless network to provide for additional choices in the allocation

of communication channels.” See Exhibit A, Abstract.

13. The ‘105 Patent contains twenty-four (24) total claims with eight (8) claims being

independent claims.

14. For example, Claim 1 of the ‘105 Patent states:

1. A communication method used in a mobile station apparatus 

which performs communication using a TDMA frame formed 

by eight slots, a start of a TDMA frame on an uplink being 

delayed by three slots or three slots minus a fraction of a slot 

from a start of a TDMA frame on a downlink, the method 

comprising: 

receiving using a reception slot of the TDMA frame on the 

downlink after getting ready to receive; 

transmitting using a transmission slot of the TDMA frame on the 

uplink after getting ready to transmit; and 

performing adjacent cell signal level measurement before either 

getting ready to receive or getting ready to transmit, 

wherein (I) when a number of transmission slots used in one 

TDMA frame on the uplink is below a predetermined 

number, then, after transmitting using a trans mission slot of 

the TDMA frame on the uplink, a time allocation of two 

consecutive slots shall apply for performing adjacent cell 

signal level measurement and getting ready to receive and 

(ii) when the number of transmission slots used in one 

TDMA frame on the uplink is the predetermined number, 

then, after receiving using a reception slot of the TDMA 

frame on the downlink, a time allocation of two consecutive 

slots shall apply for performing adjacent cell signal level 

measurement and getting ready to transmit.

See Exhibit A.

Case: 1:20-cv-03193 Document #: 1 Filed: 05/29/20 Page 4 of 12 PageID #:4
5

15. Defendant commercializes, inter alia, a device having all the elements and 

components recited in at least one claim of the ‘105 Patent. More particularly, Defendant 

commercializes, inter alia, a device using the method as recited in Claims 1-24 of the ‘105 Patent. 

Specifically, Defendant makes, uses, sells, offers for sale, or imports a device using the method

that is covered by all claims of the ‘105 Patent.

B. The ’783 Patent

16. On December 9, 2003, the United States Patent and Trademark Office (“USPTO”) 

duly and legally issued the ‘783 Patent, entitled “CDMA TRANSMISSION APPARATUS” after 

a full and fair examination. The ‘783 Patent is attached hereto as Exhibit B and incorporated herein 

as if fully rewritten. 

17. Plaintiff is presently the owner of the ‘783 Patent, having received all right, title 

and interest in and to the ‘783 Patent from the previous assignee of record. Plaintiff possesses all 

rights of recovery under the ‘783 Patent, including the exclusive right to recover for past 

infringement.

18. The invention claimed in the ‘783 Patent comprises an improvement to CDMA 

transmission apparatuses used for cellular systems.

19. The ‘783 Patent contains ten (10) total claims with six (6) claims being independent 

claims.

20. For example, Claim 3 of the ‘783 Patent states:

3. A spreading code selection method, which selects as the 

spreading code for asymmetric communications, a hierarchic 

orthogonal type spreading code which is a spreading code of a 

hierarchy which contains spreading codes of a longer length than 

spreading codes used for symmetric communication lines and is 

Case: 1:20-cv-03193 Document #: 1 Filed: 05/29/20 Page 5 of 12 PageID #:5
6

orthogonal to spreading codes used for other asymmetric 

communication lines. 

See Exhibit B.

4. Defendant commercializes, inter alia, a device having all the elements and 

components recited in at least one claim of the ‘783 Patent. More particularly, Defendant 

commercializes, inter alia, a device as recited in Claims 3 and 4 of the ‘783 Patent. Specifically, 

Defendant makes, uses, sells, offers for sale, or imports a device that encompasses that which is 

covered by at least Claims 3 and 4 of the ‘783 Patent.

DEFENDANT’S PRODUCTS

5. During the enforceability period of the Patents-in-Suit, Defendant offered 

solutions, such as the “Netbiter EC350” (hereinafter, the “Accused Product”), a device used for 

connecting field equipment via several connection methods. A non-limiting and exemplary claim 

chart comparing the Accused Product to each claim of the ‘105 Patent is attached hereto as Exhibit 

C and is incorporated herein as if fully rewritten. Additionally, a non-limiting and exemplary 

claim chart comparing the Accused Product to Claims 3 and 4 of the ‘783 Patent is attached hereto 

as Exhibit D and is incorporated herein as if fully rewritten. 

6. As recited in Claim 1 of the ‘105 Patent, the Accused Product can communicate via 

a GSM cellular connection and would adhere to the 3GPP TS 45.002 V6.12.0 (2005-11) standard 

defining GSM. See Exhibit C.

7. As recited in Claim 1 of the ‘105 Patent, the Accused Product uses the 3GPP TS 

45.002 V6.12.0 (2005-11) standard to provide a communication method used in a mobile station 

apparatus (e.g. mobile station) which performs communication using a TDMA frame formed by 

eight slots (e.g. eight timeslots shall form a TDMA frame), a start of a TDMA frame on an uplink 

Case: 1:20-cv-03193 Document #: 1 Filed: 05/29/20 Page 6 of 12 PageID #:6
7

being delayed by three slots (e.g. the uplink is delayed by the fixed period of three timeslots from 

the start of the TDMA). See Exhibit C.

8. As recited in Claim 1 of the ‘105 Patent, the Accused Product uses the 3GPP TS 

45.002 V6.12.0 (2005-11) standard for receiving (e.g. Rx) using a reception slot of the TDMA 

frame on the downlink (e.g. at frame 3 on downlink) after getting ready to receive (e.g. red 

highlight frames 0-2 on downlink). See Exhibit C at 1(a).

9. As recited in Claim 1 of the ‘105 Patent, the Accused Product uses the 3GPP TS 

45.002 V6.12.0 (2005-11) standard to provide transmitting (e.g. Tx) using a transmission slot of 

the TDMA frame on the uplink (e.g. frame 3 on uplink) after getting ready to transmit (e.g. red 

highlight frames 0-2 on uplink). See Exhibit C at 1(b).

10. As recited in Claim 1 of the ‘105 Patent, the Accused Product uses the 3GPP TS 

45.002 V6.12.0 (2005-11) standard to provide performing adjacent cell signal level measurement 

before either getting ready to receive or getting ready to transmit (e.g. Tta and/or Tra). See Exhibit 

C at 1(c).

11. As recited in Claim 1 of the ‘105 Patent, the Accused Product uses the 3GPP TS 

45.002 V6.12.0 (2005-11) standard to provide (I) when a number of transmission slots used in one 

TDMA frame on the uplink is below a predetermined number, then, after transmitting using a 

transmission slot of the TDMA frame on the uplink, a time allocation of two consecutive slots 

shall apply for performing adjacent cell signal level measurement (e.g. Tra) and getting ready to 

receive (e.g. Ttb) and (ii) when the number of transmission slots used in one TDMA frame on the 

uplink is the predetermined number, then, after receiving using a reception slot of the TDMA 

frame on the downlink, a time allocation of two consecutive slots shall apply for performing 

Case: 1:20-cv-03193 Document #: 1 Filed: 05/29/20 Page 7 of 12 PageID #:7
8

adjacent cell signal level measurement (e.g. Tta) and getting ready to transmit (e.g. Trb). See

Exhibit C at 1(d).

12. As recited in Claim 3 of the ‘783 Patent, the Accused Product, at least in internal 

testing and usage, practices selecting as the spreading code (e.g., OVSF code as channelization 

code) for asymmetric communications, a hierarchic orthogonal type spreading code (e.g., 

hierarchical OVSF codes) which is a spreading code of a hierarchy which contains spreading codes 

of a longer length than spreading codes used for symmetric communication lines and is orthogonal 

to spreading codes used for other asymmetric communication lines. See Exhibit D at 3.

13. As recited in Claim 3 of the ‘783 Patent, the Accused Product provides different 

users in UMTS-FDD using different spreading codes which are mutually orthogonal and therefore 

spreading codes for asymmetric communication line between a user and a base station and that of 

another user and the base station respectively happen to be orthogonal. The Accused Product is 

equipped with UMTS which has UMTS-FDD as one of its variants. See Exhibit D at 3.

14. The elements described in paragraphs 5-13 are covered by at least Claim 3 of the 

‘783 and Claim 1 of the ‘105 Patent, for example. See Exhibits C and D. Thus, Defendant’s use 

of the Accused Product is enabled by the device described in the Patents-in-Suit.

COUNT I:

INFRINGEMENT OF THE ‘105 PATENT

15. Plaintiff realleges and incorporates by reference all of the allegations set forth in 

the preceding Paragraphs.

16. In violation of 35 U.S.C. §271, Defendant has directly infringed the ‘105 Patent.

17. Defendant has had knowledge of infringement of the ‘105 Patent at least as of the 

service of the present Complaint.

Case: 1:20-cv-03193 Document #: 1 Filed: 05/29/20 Page 8 of 12 PageID #:8
9

18. Defendant has directly infringed at least one claim of the ‘105 Patent by using, at 

least through internal testing or otherwise, the Accused Product without authority in the United 

States. As a direct and proximate result of Defendant’s direct infringement of the ‘105 Patent, 

Plaintiff has been damaged.

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

thus liable for infringement of the ‘105 Patent, pursuant to 35 U.S.C. §271.

20. Defendant has committed these acts of infringement without license or 

authorization.

21. As a result of Defendant’s infringement of the ‘105 Patent, 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. 

22. Plaintiff reserves the right to modify its infringement theories as discovery 

progresses in this case; it shall not be estopped for infringement contention or claim construction 

purposes by the claim charts that it provides with this Complaint. The claim chart depicted in 

Exhibit C is intended to satisfy the notice requirements of Rule 8(a)(2) of the Federal Rule of 

Civil Procedure and does not represent Plaintiff’s preliminary or final infringement contentions 

or preliminary or final claim construction positions.

COUNT II:

INFRINGEMENT OF THE ‘783 PATENT

23. Plaintiff realleges and incorporates by reference all of the allegations set forth in 

the preceding Paragraphs.

24. In violation of 35 U.S.C. §271, Defendant has directly infringed the ‘783 Patent.

Case: 1:20-cv-03193 Document #: 1 Filed: 05/29/20 Page 9 of 12 PageID #:9
10

25. Defendant has had knowledge of infringement of the ‘783 Patent at least as of the 

service of the present Complaint.

26. Defendant has directly infringed at least one claim of the ‘783 Patent by using, at 

least through internal testing or otherwise, the Accused Product without authority in the United 

States. As a direct and proximate result of Defendant’s direct infringement of the ‘783 Patent, 

Plaintiff has been damaged.

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

thus liable for infringement of the ‘783 Patent, pursuant to 35 U.S.C. §271.

28. Defendant has committed these acts of infringement without license or 

authorization.

29. As a result of Defendant’s infringement of the ‘783 Patent, 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. 

30. Plaintiff reserves the right to modify its infringement theories as discovery 

progresses in this case; it shall not be estopped for infringement contention or claim construction 

purposes by the claim charts that it provides with this Complaint. The claim chart depicted in 

Exhibit D is intended to satisfy the notice requirements of Rule 8(a)(2) of the Federal Rule of 

Civil Procedure and does not represent Plaintiff’s preliminary or final infringement contentions 

or preliminary or final claim construction positions.

DEMAND FOR JURY TRIAL

31. Plaintiff demands a trial by jury of any and all causes of action.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff prays for the following relief: 

Case: 1:20-cv-03193 Document #: 1 Filed: 05/29/20 Page 10 of 12 PageID #:10
11

a. That Defendant be adjudged to have directly infringed the ‘105 Patent either literally 

or under the doctrine of equivalents; 

b. That Defendant be adjudged to have directly infringed the ‘783 Patent either literally 

or under the doctrine of equivalents; 

c. An accounting of all infringing sales and damages including, but not limited to, those 

sales and damages not presented at trial;

d. An award of damages pursuant to 35 U.S.C. §284 sufficient to compensate Plaintiff for 

the Defendant’s past infringement, including compensatory damages; 

e. An assessment of pre-judgment and post-judgment interest and costs against 

Defendant, together with an award of such interest and costs, in accordance with 35 U.S.C. §284;

f. That Defendant be directed to pay enhanced damages, including Plaintiff’s attorneys’ 

fees incurred in connection with this lawsuit pursuant to 35 U.S.C. §285; and

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

proper. 

Dated: May 29, 2020 Respectfully submitted,

ANDREOU & CASSON, LTD.

/s/Luke A. Casson_________________

Luke A. Casson

Andreou & Casson, Ltd.

661 West Lake St., Suite 2N

Chicago, Illinois 60661

P: 312.935.2000

F: 312.935.2001

Email: lcasson@andeou-casson.com

Case: 1:20-cv-03193 Document #: 1 Filed: 05/29/20 Page 11 of 12 PageID #:11
12

Case: 1:20-cv-03193 Document #: 1 Filed: 05/29/20 Page 12 of 12 PageID #:12