CAP Co., Ltd. v. McAfee, Inc.

Filing 63

Order by Hon. James Donato re 61 Motion for Leave to Move for Reconsideration. (jdlc3S, COURT STAFF) (Filed on 7/13/2015)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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CAP CO., LTD.,

Case No. 14-cv-05068-JD

Plaintiff,
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v.

United States District Court
Northern District of California

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MCAFEE, INC.,
Defendant.

ORDER GRANTING MOTION FOR
LEAVE TO MOVE FOR
RECONSIDERATION AND DENYING
IN PART MOTION TO DISMISS

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In the Court’s June 26, 2015, motion to dismiss order, the Court stated that the motion was

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moot with respect to U.S. Patent No. RE42,196, because that patent had been dropped from the

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case. Order at 1:21-23, Dkt. No. 59. But as defendants point out in a motion for leave to seek

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reconsideration, only certain claims of the ’196 patent were dropped, and the motion to dismiss

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remains live with respect to the remaining claims of that patent. Defendants agree to submit the

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issue on the currently-filed papers for reconsideration purposes.

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The Court grants defendants’ motion to request reconsideration, and denies the underlying

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motions to dismiss CAP’s direct infringement allegations for the ’196 patent on the merits. As the

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Court stated in the motion to dismiss order:

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[The pleading standard set forth in Bell Atlantic Corp. v. Twombly,
550 U.S. 544, 554-55 (2007), and Ashcroft v. Iqbal, 556 U.S. 662,
678 (2009),] applies to claims of indirect patent infringement. See
In re Bill of Lading Transmission & Processing Sys. Patent Litig.,
681 F.3d 1323, 1336 (Fed. Cir. 2012).
Claims of direct
infringement are treated to a far lighter review. The Federal Circuit
has held that a complaint need not provide any more factual
specificity than the sample complaint for direct patent infringement
found at Form 18 in the Appendix of Forms that accompanies the
Federal Rules of Civil Procedure, even if Iqbal and Twombly would
require more. See id. at 1334. Form 18 requires only:

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(1) an allegation of jurisdiction; (2) a statement that the
plaintiff owns the patent; (3) a statement that defendant has
been infringing the patent ‘by making, selling, and using [the
device] embodying the patent’; (4) a statement that the
plaintiff has given the defendant notice of its infringement;
and (5) a demand for an injunction and damages.

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Id. at 2:18-3:2. Defendants nevertheless claim that the direct infringement allegations for the ’196

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patent must be dismissed because CAP does not plead that defendants perform all elements of the

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claims itself or that they exercise sufficient control over the other actors involved in infringing the

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claim. Claim 1 of the ’196 patent, which is representative, recites:

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United States District Court
Northern District of California

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A method for blocking in real time harmful information in a file to
be executed, the method comprising the steps of:
(a) on a computer network through which a web server and
a client system are linked to each other, the web server
receiving a connection request from the client system over
the computer network;
(b) the web server transmitting a harmful information
blocking code module to the client system; and
(c) once the transmission of the harmful information
blocking code module is completed, the harmful information
blocking code module automatically running on the client
system to block in real time harmful information including
computer viruses, wherein the step (c) comprises steps of:
(c1) inspecting file input/output (I/O) on the client
system by hooking up file I/O routines,
(c2) determining whether the file to be executed
corresponding to the inspected file input/output in the
step (c1) is harmful or not; and
(c3) treating a file determined to be harmful in the
step (c2) and executing the file, if it can be treated,
and aborting the execution of the file determined to
be harmful in the step (c2), if it cannot be treated.

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’196 patent, claim 1 (emphasis added).
The implicit premise of defendants’ argument seems to be that the “web server” and “client

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system” recited in the claims of the ’196 patent necessarily must be performed by different actors.

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That is not a conclusion that the Court can reach prior to claim construction.

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Since the Court must assume that it is at least possible at this stage that defendants could

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perform all elements of the claim themselves, the question becomes whether CAP must

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specifically plead that defendants perform each element. Given the low pleading standards

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patentees face in pleading direct infringement, it does not. See Bill of Lading, 681 F.3d at 1336.
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Consequently, the Court will not dismiss the direct infringement allegations with respect to the

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’196 patent.

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IT IS SO ORDERED.
Dated: July 13, 2015

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________________________
JAMES DONATO
United States District Judge

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United States District Court
Northern District of California

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