Software Research, Inc. v. Dynatrace LLC

Filing 53

ORDER by Judge Edward M. Chen Granting in Part and Denying in Part 39 Defendant's Motion to Dismiss. (emcsec, COURT STAFF) (Filed on 7/3/2018)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SOFTWARE RESEARCH, INC.,
Plaintiff,

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United States District Court
Northern District of California

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Case No. 18-cv-00232-EMC
ORDER GRANTING IN PART AND
DENYING IN PART DEFENDANT’S
MOTION TO DISMISS

v.
DYNATRACE LLC,

Docket No. 39

Defendant.

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I.

INTRODUCTION

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Plaintiff Software Research, Inc. (―SRI‖) initiated this patent infringement suit against

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Defendant Dynatrace LLC (―Dynatrace‖), alleging that Dynatrace has directly, indirectly, and

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willfully infringed six of its patents—United States Patent Nos. 7,757,175 (the ―‘175 Patent‖);

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8,327,271 (the ―‘271 Patent‖); 8,392,890 (the ―‘890 Patent‖); 8,495,585 (the ―‘585 Patent‖);

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8,650,493 (the ―‘493 Patent‖), and 8,984,491 (the ―‘491 Patent‖) (collectively, the ―patents-in-

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suit‖), and continue to do so through the present date. See Docket No. 31 (―FAC‖) ¶ 2. Dynatrace

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moves to dismiss the action pursuant to Federal Rule of Civil Procedure 12(b)(6), arguing that SRI

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has failed to ―‗state a claim to relief that is plausible on its face.‘‖ Ashcroft v. Iqbal, 556 U.S. 662,

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678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)).

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II.

FACTUAL AND PROCEDURAL BACKGROUND

On January 10, 2018, SRI filed this patent infringement suit against Dynatrace, and

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Dynatrace subsequently filed a motion to dismiss on April 4, 2018. See Docket Nos. 1 and 27.

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SRI then filed an amended complaint (―FAC‖) on April 13, 2018, Dynatrace later withdrew its

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initial motion to dismiss to SRI‘s complaint and filed the instant motion to dismiss SRI‘s FAC.

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See Docket Nos. 31, 32, 39.

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The patents-in-suit claim methods and systems for testing websites, and functionalities of a
test-enabled browser. The following is an introductory extract on the technology at issue:

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[A] user controls a test-enabled web browser via a set of pull-down
menus, thereby choosing between alternative testing and analysis
functional capabilities, selecting files in which to store recordings
(scripts), choosing files into which to place test results and
messages, and setting various parameters that affect how the testing
and analysis functions are performed. When the user requests it, the
representative embodiment provides for deep recording of user
interactions as they relate to a specific web page currently on display
in the browser view area, for extracting key information from the
current web page sufficient to validate that a future playback does or
does not produce the same effects on the chosen website page, for
playing back a prior recording to confirm that a website page
continues to pass the user-defined tests, and for providing detailed
analyses based on the specific contents of the current website page.
The general result of systematic use of the test-enabled browser on
websites is improved content quality, demonstrated website server
behavior for deep tests, quicker delivery by the website server, and
better serviceability for e-business.

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United States District Court
Northern District of California

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See Docket No. 31-1 (―Exh. A‖) at 2; see also Docket No. 31-2 (―Exh. B‖) at 2.
SRI alleges that Dynatrace has violated 35 U.S.C. § 271(a) by directly infringing (i) claim

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17 of the ‗175 Patent, (ii) claim 1 of the ‗271 Patent, (iii) claim 6 of the ‗890 Patent, (iv) claim 1 of

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the ‗585 Patent, (v) claim 1 of the ‗493 Patent, and (vi) claim 1 of the ‗491 Patent. See FAC ¶¶ 44,

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66, 88, 110, 132, 154. SRI also alleges that to the extent Dynatrace do not directly infringe the

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above mentioned-patents, it contributes to infringement of the same under 35 U.S.C. § 271(c)

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inasmuch as the ―Infringing Products‖ offered for sale and sold by Dynatrace are each a

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component of a patented machine or an apparatus used in practicing a patented process,

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constituting a material part of SRI‘s invention, and Dynatrace knows the same to be especially

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made or especially adapted for use in infringement of the patents-in-suit. See FAC ¶¶ 46, 68, 90,

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112, 134, 156.

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SRI further alleges that Dynatrace has actively encouraged their customers to use its

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products in an infringing manner, provided ―detailed documentation instructing users on how to

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use the products in an infringing manner,‖ and actively induced patent infringement of the patents-

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in-suit, in violation of 35 U.S.C. §271(b). See FAC at ¶¶ 48-51, 70-73, 92-95, 114-117, 136-139,

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158-161.
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Lastly, SRI alleges that it has informed Dynatrace‘s predecessors-in-interest about the

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patents-in-suit, see FAC at ¶¶ 19, 22-25, 29-35, and Dynatrace has willfully infringed the patents-

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in-suit, in violation of 35 U.S.C. § 284. See FAC at ¶¶ 56, 78, 100, 122, 144, 166.
III.

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A.

DISCUSSION

Legal Standard
―A motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) for failure to state a

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claim upon which relief can be granted ‗tests the legal sufficiency of a claim.‘‖ Conservation

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Force v. Salazar, 646 F.3d 1240, 1241-42 (9th Cir. 2011) (quotation omitted). The Court accepts

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as true all well-pled factual allegations but does not ―accept as true allegations that contradict
matters properly subject to judicial notice‖ or ―allegations that are merely conclusory, unwarranted

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United States District Court
Northern District of California

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deductions of fact, or unreasonable inferences.‖ In re Gilead Scis. Sec. Litig., 536 F.3d 1049,

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1055 (9th Cir. 2008) (internal quotation marks and citations omitted). It is well-settled that a

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complaint ―must contain sufficient factual matter, accepted as true, to ‗state a claim to relief that is

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plausible on its face.‘‖ Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v.

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Twombly, 550 U.S. 544, 570 (2007)).

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Direct infringement allegations must be plausible under Iqbal, and ―contain factual

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allegations that the accused product practices every element of at least one exemplary claim.‖

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Novitaz Inc. v. inMarket Media, LLC, 2017 WL 2311407, *3 (N.D. Cal. May 26, 2017); see also

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e.Digital Corp., No. 15-CV-05790-JST, 2016 WL 4427209, *5 (FAC failed to state a claim where

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plaintiff ―ha[d] not attempted to map [a] limitation onto any allegations in the FAC‖ and ―based

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on the Court‘s own independent review, it cannot discern how the FAC could be said to plausibly

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allege this limitation‖); Atlas IP LLC v. Pac. Gas & Elec. Co., 2016 WL 1719545, *2 (N.D. Cal.

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Mar. 9, 2016) (―[S]imply reciting some of the elements of a representative claim and then

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describing generally how an accused product operates, without specifically tying the operation to

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any asserted claim or addressing all of the claim requirements, is insufficient.‖); Atlas IP, LLC v.

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Exelon Corp., No. 15-cv-10746, 2016 WL 2866134, *5 (N.D. Ill. May 1, 2016) (―[F]actual

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allegations that do not permit a court to infer that the accused product infringes each element of at

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least one claim are not suggestive of infringement—they are merely compatible with
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infringement.‖). ―[F]ailure to meet a single limitation is sufficient to negate infringement of [a]

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claim.‖ Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991).

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When considering a motion to dismiss, the Court ―accept[s] factual allegations in the

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complaint as true and construe[s] the pleadings in the light most favorable to the nonmoving

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party.‖ Manzarek v. St. Paul Fire & Marine Ins. Co., 519 F.3d 1025, 1031 (9th Cir. 2008).

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Although courts do not require ―heightened fact pleading of specifics,‖ Twombly, 550 U.S. at 570,

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a plaintiff must allege ―‗enough fact[s] to raise a reasonable expectation that discovery will reveal‘

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the defendant is liable for the misconduct alleged.‖ In re Bill of Lading Transmission &

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Processing Sys. Patent Litig., 681 F.3d 1323, 1341 (Fed. Cir. 2012) (quoting Twombly, 550 U.S.
at 556). ―The party moving for dismissal has the burden of proving that no claim has been stated.‖

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United States District Court
Northern District of California

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Lester v. Mineta, No. 04-cv-3074-SI, 2006 WL 463515, at *2 (N.D. Cal. Feb. 24, 2006).

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B.

Direct Infringement

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1.

Whether SRI Has Sufficiently Identified the Accused Product(s)

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In order to state a claim for direct infringement, a patent complaint ―must identify the

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specific products accused.‖ Bender v. LG Elecs. U.S.A., Inc., No. 09-cv-2114-JF-PVT, 2010 WL

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889541, at *4 (N.D. Cal. Mar. 11, 2010). Dynatrace argues that SRI‘s boilerplate allegations fail

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to plausibly allege direct infringement, and makes no specific factual allegations sufficient to

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identify an accused product or to explain its relevant functions. See Docket No. 39 (―Mot.‖) at 11.

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The FAC identifies the infringing products as,

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―Defendants‘ web application monitoring and scripting tool software
products titled, upon information and belief, [Dynatrace
Performance Management] and/or other related software products
and services offered by Dynatrace.‖

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FAC ¶¶ 44, 66, 88, 110, 132, 154. Dynatrace argues that SRI does not provide any facts to show

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that the allegedly infringing product, Dynatrace Performance Management (―DPM‖), is actually a

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product and not simply a product or service category or marketing term and Dynatrace should not

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have to guess about what is at issue in this case, and SRI‘s failure to specify an accused product is

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fatal to its claims. See Mot. at 11. Dynatrace argues that SRI merely refers to a category of

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generic functionalities, such as testing, scripting, recording and playback, without specifying an
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actual product, and as such, SRI‘s claims should be dismissed. Id.; see also FAC ¶¶ 44, 66, 88,

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110, 132, 154.

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Dynatrace‘s arguments are unpersuasive. SRI expressly defines the ―Infringing Products‖

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as a ―web application monitoring and scripting tool software products‖ and makes specific

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reference to DPM. See FAC ¶ 44. SRI refers to that definition when alleging direct infringement.

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See FAC ¶¶ 44, 66, 88, 110, 132, 154. Dynatrace‘s argument that SRI must identify specific

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products by name in order for it to be able to respond is disingenuous. Dynatrace‘s own website

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describes DPM and its functionality. When pressed at argument, Dynatrace‘s counsel could not

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convincingly deny that DPM provided the functionality described in SRI‘s complaint. Nor could
counsel assert and identify any specific products under DPM rubric. Rather than providing any

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United States District Court
Northern District of California

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explanation of what DPM is, Dynatrace only conclusorily asserts that DPM was merely a

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marketing term. Dynatrace‘s evasive and amorphous description of DPM underscores the point

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that SRI cannot be expected to identify a particular product name beyond DPM. Nor has

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Dynatrace made a convincing showing that it cannot defend this suit without greater specificity in

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the FAC. At bottom, Dynatrace appears to know what SRI is talking about when SRI identifies

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DPM as the infringing product. Since the Court must ―accept factual allegations in the complaint

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as true and construe the pleadings in the light most favourable to the non-moving party,‖ the Court

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finds that SRI has sufficiently identified DPM as the accused product. Manzarek v. St. Paul Fire

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& Marine Ins. Co., 519 F.3d 1025, 1031 (9th Cir. 2008).

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Cases cited by Dynatrace in support of its motion are neither dispositive nor persuasive.

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Cf. Big Baboon, Inc. v. SAP America, Inc., 2018 WL 1400443, *4 (N.D. Cal. Mar. 20, 2018)

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(dismissing direct infringement claims ―in the absence of a single factual allegation identifying a

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specific infringing product‖ where plaintiff referred generally to ―functionalities‖ incorporating

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the patent); see also MACOM Tech. Solutions Holdings, Inc. v. Infineon Techs, AG, 2017 WL

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3449596, *5 (C.D. Cal. Jun. 5, 2017) (dismissing direct infringement claims and noting that

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―reliance upon MACOM‘s general marketing claims is insufficient to state a plausible claim for

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infringement.‖) In Big Baboon, Inc. v. SAP America, Inc., No. 17-cv-2082-HSG, 2018 WL

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1400443 (N.D. Cal. Mar. 20, 2018), the plaintiff generally alleged as the basis for both claims that
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Defendants directly infringed and are infringing claims 15 and 20–34 of the ‘275 Patent by

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―making, using, or selling ... the inventions claimed in the ‘275 Patent‖; the court then found that

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the plaintiff‘s allegations failed because ―whenever the allegations assert infringement in the

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complaint, Plaintiff fail[ed] to identify an infringing product,‖ and ―whenever the allegations

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mention product families . . . they do not state that the product families infringe.‖ Id. at *3. The

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FAC in this case is clearly distinguishable from Big Baboon as Dynatrace has identified DPM as

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the infringing product, and unlike the FAC in Big Baboon, the allegations are not ―formulaic

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recitation of the elements of‖ direct infringement. Iqbal, 556 U.S. at 678; see also FAC ¶¶ 44, 66,

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88, 110, 132, 154.

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In Bender, 2010 WL 889541, the plaintiff ―provide[d] a list of allegedly infringing

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products‖ that comprised approximately 20 broad categories of products, but no specific model

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names or even names of product lines; the broad and vague categories included, for example,

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―Desktop PCs,‖ ―Monitors,‖ ―PDAs,‖ and ―Home Theater Systems.‖ Id. at *2. In contrast, the

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FAC identifies a particular product—DPM—and provides citations to specific infringing

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functionality of that product. See FAC ¶ 44. Dynatrace has not demonstrated DPM merely refers

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to a multitude of broad categories of products.

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Finally, Dynatrace suggests that the facts of this case is analogous to MACOM Tech. Sols.

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Holdings, Inc. v. Infineon Techs. AG, No. 16-cv-2859-CAS-PLAx, 2017 WL 3449596 (N.D. Cal.

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June 5, 2017) because SRI, like the counter-claimant in MACOM, relied upon Dynatrace‘s

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marketing materials to allege patent infringement, and this Court should find that ―reliance upon

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[sic] general marketing claims is insufficient to state a plausible claim for infringement.‖ Id. at *5.

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However, the court in MACOM did not find that the counter-claimant failed to identify the

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infringing products. Instead, the MACOM court dismissed the claims on the grounds that the

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counter-claimant failed to map any of the claim elements to MACOM‘s products. Id. at *6.

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Dynatrace‘s citation to this case is inapposite to SRI‘s identification of the accused product—

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DPM. Dynatrace fails to establish that DPM is simply marketing material and nothing more.

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2.

Whether SRI Has Sufficiently Described the Functionality of the Accused
Product(s) and Tied It to the Asserted Claim Limitations

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Apart from arguing that SRI has failed to sufficiently identify the accused product(s),

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Dynatrace argues that SRI‘s direct infringement claims are deficient because the FAC recites some

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claim elements and conclusory allegations that DPM ―practices the method in the‖ patent or

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―consists of‖ the claim elements, and then cites to the same or similar ―examples‖ from the alleged

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Dynatrace website without further explanation. See FAC ¶ 46. Dynatrace posits that these

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examples are in fact meaningless, out of context references to webpages that do not show that any

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particular claim limitations are plausibly met. See Atlas IP LLC v. Pac. Gas and Elec. Co., Case
No. 15-cv-05469-EDL, 2016 WL 1719545, *2 (N.D. Cal. Mar. 9, 2016) (noting that ―simply

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Northern District of California

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reciting some of the elements of a representative claim and then describing generally how an

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accused product operates, without specifically tying the operation to any asserted claim or

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addressing all of the claim requirements, is insufficient‖ to withstand a motion to dismiss.).

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By way of example, Dynatrace brings the Court‘s attention to direct patent infringement

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allegations with regards to claim 17 of the ‗175 patent, arguing that SRI did not even attempt to

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show or explain how ―DPM‖ meets the limitations of the asserted claim:

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17. A method for testing a website residing on a network using a
test-enabled browser, said method comprising: accessing a website
to be tested using the test-enabled browser; selecting a validation
test to be performed; and performing the validation test using the
test-enabled browser, wherein prior to said performing of the
validation test for a particular web page, the particular web page is
rendered by the test-enabled browser and examined so as to at least
(i) extract details of the particular web page using Document Object
Model (DOM) elements pertaining to the web page with their
associated at least one index and their values, and (ii) store the
details of the particular web page in a recorded script, and wherein
during said performing, the particular web page is newly rendered
by the test-enabled browser and details for the particular web page
as newly rendered are com- pared to the stored details in the
recorded script.
See Docket No. 31-1 (―Exh. A‖) at 17; see also Docket No. 39 at 12.
However, a comparison of the complaint and the claim limitations suggests that each claim
limitation of the ‘175 Patent has been met by the DPM:

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Claim
language (’175
patent, claim
17)

Accused product
Citation to Dynatrace materials (FAC ¶ 44)
functionality (FAC ¶ 44)

A method for
testing a
website
residing on a
network using a

the method disclosed in
the ‘175 Patent for testing
a website residing on a
network using a testenabled browser

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test-enabled
browser, said
method
comprising:

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accessing a
website to be
tested using the
test-enabled
browser;

by accessing a website to
be tested using the testenabled browser

resides on a network, and DPM utilizes any
number of browsers as its ―test- enabled
browser,‖
https://www.dynatrace.com/technologies/)

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selecting a
validation test
to be
performed; and

selecting a validation test
to be performed, such as
the ―Validate‖ and ―Wait
for
Validation‖

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functionality detailed in

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the literature available on
Dynatrace‘s website

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(for example, DPM‘s synthetic monitoring
tests a website by ―[p]lay[ing] back scripted
transactions,‖
https://www.dynatrace.com/capabilities/synth
etic- monitoring/, the website necessarily

(for example, DPM‘s synthetic monitoring
includes both a recorder and play back engine
used to record and later select and play back
validation tests,
https://www.dynatrace.com/support/doc/synth
etic/recorder /;
https://www.dynatrace.com/support/doc/synth
etic/recorder /using-the-webrecorder/recording-a-transaction/;
https://www.dynatrace.com/support/doc/synth
etic/recorder /using-the-webrecorder/reviewing-and-editing-atransaction/; these validation tests include
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Claim
language (’175
patent, claim
17)

Accused product
Citation to Dynatrace materials (FAC ¶ 44)
functionality (FAC ¶ 44)

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―Validate‖ and ―Wait for Validation‖
functionality,
https://www.dynatrace.com/support/doc/synth
etic/recorder /using-the-web-recorder/webrecorder-actions/;

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https://www.dynatrace.com/support/doc/synth
etic/recorder /using-the-windowsrecorder/script-actions/wait-script- action/;
https://www.dynatrace.com/support/doc/synth
etic/recorder /advanced-scripting-guide/scriptactions-and- properties/validate-actions/)

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Northern District of California

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performing the
validation test
using the testenabled
browser,

performing the selected
validation test using the
test- enabled browser

wherein prior to
said performing
of the
validation test
for a particular
web page, the
particular web
page is
rendered by the

newly rendering the
webpage to be tested by
the test-enabled browser
so as to extract details of
that page using Document
Object Model (“DOM”)
elements, and store the
same in a recorded script,
such as via the testing

validation tests,
https://www.dynatrace.com/support/doc/synth
etic/recorder /;
https://www.dynatrace.com/support/doc/synth
etic/recorder /using-the-webrecorder/recording-a-transaction/;
https://www.dynatrace.com/support/doc/synth
etic/recorder /using-the-webrecorder/reviewing-and-editing-atransaction/)

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(for example, DPM‘s synthetic monitoring
includes both a recorder and play back engine
used to record and later select and play back

(for example, the Validate and Wait for
Validation functionality set forth above
operates by ―validat[ing] against‖ ―a specific
DOM element,‖
https://www.dynatrace.com/support/doc/synth
etic/recorder /using-the-web-recorder/webrecorder-actions/;
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Claim
language (’175
patent, claim
17)
test- enabled
browser and
examined so as
to at least (i)
extract details
of the particular
web page using
Document
Object Model
(DOM)
elements
pertaining to
the web page
with their
associated at
least one index
and their
values, and (ii)
store the details
of the particular
web page in a
recorded script,
and
wherein during
said
performing, the
particular web
page is newly
rendered by the
test-enabled
browser and
details for the
particular web
page as newly
rendered are
compared to the
stored details in
the recorded
script.

Accused product
Citation to Dynatrace materials (FAC ¶ 44)
functionality (FAC ¶ 44)

component of DPM

https://www.dynatrace.com/support/doc/synth
etic/recorder /using-the-windowsrecorder/script-actions/wait-script- action/;
https://www.dynatrace.com/support/doc/synth
etic/recorder /advanced-scripting-guide/scriptactions-and- properties/validate-actions/)

and comparing the details
in the newly rendered
page against those stored
in the recorded script

(for example, the Validate and Wait for
Validation functionality set forth above
operates by ―validat[ing] against‖ ―a specific
DOM element,‖
https://www.dynatrace.com/support/doc/synth
etic/recorder /using-the-web-recorder/webrecorder-actions/;
https://www.dynatrace.com/support/doc/synth
etic/recorder /using-the-windowsrecorder/script-actions/wait-script- action/;
https://www.dynatrace.com/support/doc/synth
etic/recorder /advanced-scripting-guide/scriptactions-and- properties/validate-actions/)

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See Docket No. 41-1. Contrary to Dynatrace‘s arguments that ―SRI does not provide any factual

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detail to make its direct infringement allegations plausible‖, the chart above clearly illustrates that

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SRI has referenced specific product descriptions and functionalities of DPM to allege direct patent

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infringement allegations.1
Dynatrace further argues that SRI has failed to address several of the elements in the

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asserted claim 6 of the ‗890 Patent, and in claim 1 of the ‗493 Patent. See Mot. at 12. However,

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Dynatrace provides little explanation in support of its arguments and fails to address how ―several

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of the elements‖ of claim 6 of the ‗890 Patent, and claim 1 of the ‗491 Patent, were not addressed

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in the FAC. Claim 6 of the ‗890 Patent reads:

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6. A non-transitory computer readable medium including at least
computer program code for providing a test enabled web browser,
said computer readable medium comprising:
computer program code for providing web browsing capabilities;
and computer program code for testing capabilities of a website
hosted by a server and accessible to the computer via a network,
wherein the computer program code for testing capabilities of the
website provides playback of one or more test scripts, the one or
more test scripts being separate from the website,
wherein the computer program code for testing capabilities is
configured to keep track of named DOM element property values
within a webpage of the website to provide support for playback of
one or more test scripts that were recorded from and/or are played
back via the test enabled web browser,
wherein the use of the named DOM element property values
provides support for synchronizing playback of the one or more test
scripts and allows the computer program code for testing capabilities
of the website of the test enabled web browser to compensate for at
least a portion of the webpage being dynamically generated by
AJAX programming, and
wherein at least one command is provided in the one or more test
scripts, and the at least one command operates, when performed, to:
find a current index of at least one DOM element of the webpage
based on a specified property name and/or property value; and (i)
submit a named event to the at least one DOM element of the
webpage having the current index, or (ii) insert or verify a value in
the at least one DOM element of the webpage having the current
index.

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Dynatrace also argues that ―SRI truncates and omits portions of the limitations (for example, SRI
appears to omit the order of performing the validation test step even though claim 17 of the ‗175
Patent states that the particular web page is rendered ―prior to‖ the test)‖. See Docket No. 42 at 4.
Dynatrace‘s arguments are unpersuasive since the FAC states that the ―test-enabled browser newly
[renders] the webpage to be tested,‖ see FAC ¶ 44, which suggests that the web page is rendered
―prior to‖ the test.
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See Docket No. 31-3 at 20. It appears that each of the claim limitations have been addressed in the

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FAC:

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23
24
25
26
27
28

Defendants have been, and are currently, directly infringing at least
claim 6 of the ‘890 Patent in violation of 35 U.S.C. § 271(a),
literally or under the doctrine of equivalents, by making, using,
selling, and offering for sale Defendants‘ Infringing Products,
which, as set forth in documentation available on Defendants‘
website, consist of non-transitory computer readable media—both as
maintained in Defendants‘ files and those of the users to whom
Defendants offer and sell the Infringing Products—including at least
computer program code stored therein for providing a test-enabled
web browser, said medium comprising computer program code for
providing web browsing capabilities for example, DPM’s synthetic
monitoring tests a website by “[p]lay[ing] back scripted
transactions,” https://www.dynatrace.com/capabilities/syntheticmonitoring/, the website necessarily resides on a network, and
DPM utilizes any number of browsers as its “test-enabled
browser,” https://www.dynatrace.com/technologies/); computer
program code for testing capabilities of a website hosted by a server
and accessible to the computer via a network wherein the computer
program code for testing capabilities of the website provides
playback of one or more test scripts, including through the testing
component of the Infringing Products, the one or more test scripts
being separate from the website (for example, DPM’s synthetic
monitoring includes both a recorder and play back engine used to
record and later select and play back validation tests, play back
engine used to record and later select and play back validation
tests, https://www.dynatrace.com/support/doc/synthetic/recorder/;
https://www.dynatrace.com/support/doc/synthetic/recorder/usingthe-web-recorder/recording-a-transaction/;
https://www.dynatrace.com/support/doc/synthetic/recorder/usingthe-web-recorder/reviewing-and-editing-a-transaction/); wherein the
computer program code for testing capabilities is configured to keep
track of named DOM element property values within a webpage of
the website to provide support for playback of one or more test
scripts that were recorded from and/or are played back via the test
enabled web browser, wherein the use of the named DOM element
property values provides support for synchronizing playback of the
one or more test scripts and allows the computer program code for
testing capabilities of the website of the test enabled web browser to
compensate for at least a portion of the webpage being dynamically
generated by AJAX programming (for example, DPM’s synthetic
monitoring includes both a recorder and play back engine used to
record and later select and play back validation tests,
https://www.dynatrace.com/support/doc/synthetic/recorder/;
https://www.dynatrace.com/support/doc/synthetic/recorder/usingthe-web-recorder/recording-a-transaction/;
https://www.dynatrace.com/support/doc/synthetic/recorder/usingthe-web-recorder/reviewing-and-editing-a-transaction/; these
validation tests include “Validate” and “Wait for Validation”
functionality that operate by “validat[ing] against” “a specific
DOM element,”
https://www.dynatrace.com/support/doc/synthetic/recorder/using12

the-web-recorder/web-recorder-actions/;
https://www.dynatrace.com/support/doc/synthetic/recorder/usingthe-windows-recorder/script-actions/wait-script-action/;
https://www.dynatrace.com/support/doc/synthetic/recorder/advance
d-scripting-guide/script-actions-and-properties/validate-actions/));
and wherein at least one command is provided in the one or more
test scripts, and the at least one command operates, when performed,
to find a current index of at least one DOM element of the webpage
based on a specified property name and/or property value, and (i)
submit a named event to the at least one DOM element of the
webpage having the current index, or (ii) insert or verify a value in
the at least one DOM element of the webpage having the current
index, such as through the ―Validate‖ and ―Wait for Validation‖
features described in Defendants‘ technical literature (for example,
the Validate and Wait for Validation functionality set forth above
operates by “validat[ing] against” “a specific DOM element,”
https://www.dynatrace.com/support/doc/synthetic/recorder/usingthe-web-recorder/web-recorder-actions/;
https://www.dynatrace.com/support/doc/synthetic/recorder/usingthe-windows-recorder/script-actions/wait-script-action/;
https://www.dynatrace.com/support/doc/synthetic/recorder/advance
d-scripting-guide/script-actions-and-properties/validate-actions/), as
disclosed in the ‘890 Patent.

1
2
3
4
5
6
7
8
9
10

United States District Court
Northern District of California

11
12
13

See FAC ¶ 88 (emphasis added). A comparison of the asserted claim 6 of the ‗890 Patent and the

14

FAC reveals that each claim limitation has been addressed in the FAC (e.g. a computer program

15

code, a playback mechanism, a command that tests one or more scripts, and the verification of

16

DOM elements):

17
18
19
20
21

22
23
24
25
26
27
28

Claim
language
(’890 patent,
claim 6)
A nontransitory
computer
readable
medium
including at
least computer
program code
for providing a
test enabled
web browser,

Accused product
functionality (FAC ¶
88)

Citation to Dynatrace materials (FAC ¶
88)

consist of non-transitory
computer readable media,
[sic], including at least
computer program code
stored therein for
providing a test-enabled
web browser,

13

1
2
3
4
5
6
7
8
9
10

Claim
language
(’890 patent,
claim 6)

Citation to Dynatrace materials (FAC ¶
88)

said computer
readable
medium
comprising:
computer
program code
for providing
web browsing
capabilities;
and

computer program code
stored therein for
providing a test-enabled
web browser, computer
program code stored
therein for providing a
test-enabled web
browser, said medium
comprising computer
program code for
providing web browsing
capabilities

(for example, DPM’s synthetic monitoring
tests a website by “[p]lay[ing] back scripted
transactions,”
https://www.dynatrace.com/capabilities/synth
etic-monitoring/, the website necessarily
resides on a network, and DPM utilizes any
number of browsers as its “test-enabled
browser,”
https://www.dynatrace.com/technologies/)

computer
program code
for testing
capabilities of
a website
hosted by a
server and
accessible to
the computer
via a network,
wherein the
computer
program code
for testing
capabilities of
the website
provides
playback of
one or more

computer program code
for testing capabilities of
a website hosted by a
server and accessible to
the computer via a
network wherein the
computer program code
for testing capabilities of
the website provides
playback of one or more
test scripts, including
through the testing
component of the
Infringing Products, the
one or more test scripts
being separate from the
website

(for example, DPM’s synthetic monitoring
includes both a recorder and play back engine
used to record and later select and play back
validation tests, play back engine used to
record and later select and play back
validation tests,
https://www.dynatrace.com/support/doc/synt
hetic/recorder/;
https://www.dynatrace.com/support/doc/synt
hetic/recorder/using-the-webrecorder/recording-a-transaction/;
https://www.dynatrace.com/support/doc/synt
hetic/recorder/using-the-webrecorder/reviewing-and-editing-atransaction/)

11
United States District Court
Northern District of California

Accused product
functionality (FAC ¶
88)

12
13
14
15
16
17
18
19
20
21

22
23
24
25
26
27
28

14

1
2
3
4
5
6
7
8
9
10

United States District Court
Northern District of California

11
12
13
14
15
16
17
18
19
20
21

22
23
24
25
26
27
28

Claim
language
(’890 patent,
claim 6)

Accused product
functionality (FAC ¶
88)

Citation to Dynatrace materials (FAC ¶
88)

wherein the computer
program code for testing
capabilities is configured
to keep track of named
DOM element property
values within a webpage
of the website to provide
support for playback of
one or more test scripts
that were recorded from
and/or are played back
via the test enabled web
browser,

(for example, DPM‘s synthetic monitoring
includes both a recorder and play back engine
used to record and later select and play back
validation tests,
https://www.dynatrace.com/support/doc/synt
hetic/recorder/;
https://www.dynatrace.com/support/doc/synt
hetic/recorder/using-the-webrecorder/recording-a-transaction/;
https://www.dynatrace.com/support/doc/synt
hetic/recorder/using-the-webrecorder/reviewing-and-editing-atransaction/;)

wherein the use of the
named DOM element
property values provides
support for synchronizing
playback of the one or
more test scripts and

(these validation tests include ―Validate‖ and
―Wait for Validation‖ functionality that
operate by ―validat[ing] against‖ ―a specific
DOM element,‖
https://www.dynatrace.com/support/doc/synt
hetic/recorder/using-the-web-recorder/web-

test scripts, the
one or more
test scripts
being separate
from the
website,
wherein the
computer
program code
for testing
capabilities is
configured to
keep track of
named DOM
element
property values
within a
webpage of the
website to
provide
support for
playback of
one or more
test scripts that
were recorded
from and/or are
played back
via the test
enabled web
browser,
wherein the
use of the
named DOM
element
property values
provides

15

1
2
3
4
5
6
7
8
9
10

United States District Court
Northern District of California

11
12
13
14
15
16
17
18
19
20
21

22
23
24
25
26
27
28

Claim
language
(’890 patent,
claim 6)
support for
synchronizing
playback of the
one or more
test scripts and
allows the
computer
program code
for testing
capabilities of
the website of
the test enabled
web browser to
compensate for
at least a
portion of the
webpage being
dynamically
generated by
AJAX
programming,
and
wherein at
least one
command is
provided in the
one or more
test scripts, and
the at least one
command
operates, when
performed, to:
find a current
index of at
least one DOM
element of the
webpage based

Accused product
functionality (FAC ¶
88)

Citation to Dynatrace materials (FAC ¶
88)

allows the computer
program code for testing
capabilities of the
website of the test
enabled web browser to
compensate for at least a
portion of the webpage
being dynamically
generated by AJAX
programming

recorder-actions/;
https://www.dynatrace.com/support/doc/synt
hetic/recorder/using-the-windowsrecorder/script-actions/wait-script-action/;
https://www.dynatrace.com/support/doc/synt
hetic/recorder/advanced-scriptingguide/script-actions-and-properties/validateactions/)

wherein at least one
command is provided in
the one or more test
scripts, and the at least
one command operates,
when performed, to find
a current index of at least
one DOM element of the
webpage based on a
specified property name
and/or property value,
and (i) submit a named
event to the at least one
DOM element of the
webpage having the

(for example, the Validate and Wait for
Validation functionality set forth above
operates by ―validat[ing] against‖ ―a specific
DOM element,‖
https://www.dynatrace.com/support/doc/synt
hetic/recorder/using-the-web-recorder/webrecorder-actions/;
https://www.dynatrace.com/support/doc/synt
hetic/recorder/using-the-windowsrecorder/script-actions/wait-script-action/;
https://www.dynatrace.com/support/doc/synt
hetic/recorder/advanced-scriptingguide/script-actions-and-properties/validateactions/)

16

1
2
3
4
5
6
7
8
9
10

United States District Court
Northern District of California

11
12
13
14
15
16

Claim
language
(’890 patent,
claim 6)
on a specified
property name
and/or property
value; and (i)
submit a
named event to
the at least one
DOM element
of the webpage
having the
current index,
or (ii) insert or
verify a value
in the at least
one DOM
element of the
webpage
having the
current index.

Accused product
functionality (FAC ¶
88)

Citation to Dynatrace materials (FAC ¶
88)

current index, or (ii)
insert or verify a value in
the at least one DOM
element of the webpage
having the current index,
such as through the
“Validate” and “Wait for
Validation” features
described in Defendants’
technical literature

17

See Docket No. 31-3 at 20; see also FAC ¶ 88. As evidenced in the chart above, there are

18

numerous references to DPM which map the functionalities of DPM to the claim limitations of the

19

asserted claim 6 of the ‘890 patent.

20

Dynatrace also argues that SRI has failed to address several elements in claim 1 of the ‘493

21

Patent but provides little explanation to support its argument. See Mot. at 12. Claim 1 of the ‘493

22

Patent reads:

23
24
25
26
27
28

1. A non-transitory computer readable medium including at least
computer program code stored therein for providing a test-enabled
browser for testing a website residing on a network, said computer
readable medium comprising:
computer program code for interfacing with web browsing
components, the web browsing components including Document
Object Model (DOM) access methods included in Dynamic Linked
Libraries associated with a browser code library;
computer program code for accessing a website to be tested;
computer program code for rendering and examining at least one
web page of the website so as to at least (i) extract details of
17

elements of the web page, and (ii) store the details of the web page
in a recorded script;
computer program code for selecting a validation test to be
performed; and
computer program code for performing the validation test using at
least one of the DOM access methods of the web browsing
components, wherein during the validation test, the at least one web
page is newly rendered and details of elements for the at least one
web page as newly rendered are accessed via the at least one of the
DOM access methods and compared to the stored details in the
recorded script.

1
2
3
4
5
6
7

See Docket No. 31-5 at 16-17. In comparison with the FAC, it appears that each claim limitation

8

has been met:

9
10

United States District Court
Northern District of California

11
12
13

Claim
language (’493
patent, claim
1)

Accused product
functionality (FAC ¶
132)

Citation to Dynatrace materials (FAC ¶
132)

14
15
16
17
18
19
20
21

22
23
24
25
26
27
28

A nontransitory
computer
readable
medium
including at
least computer
program code
stored therein
for providing a
test-enabled
browser for
testing a
website
residing on a
network, said
computer
readable
medium
comprising:

consist of non-transitory
computer readable media
[sic]
including at least computer
program code
stored therein for
providing a test-enabled
browser for testing a
website residing on a
network

computer
program code
for interfacing
with web
browsing
components,

said medium comprising
computer program code
for interfacing with web
browsing components, the
web browsing components

(for example, DPM‘s synthetic monitoring tests
a website by ―[p]lay[ing] back scripted
transactions,‖
https://www.dynatrace.com/capabilities/syntheti
c-monitoring/, the website necessarily resides

18

1
2
3
4

Claim
language (’493
patent, claim
1)

Accused product
functionality (FAC ¶
132)

Citation to Dynatrace materials (FAC ¶
132)

5
6
7
8
9
10

United States District Court
Northern District of California

11
12
13
14
15
16

the web
browsing
components
including
Document
Object Model
(DOM) access
methods
included in
Dynamic
Linked
Libraries
associated with
a browser code
library;

including DOM access
methods

on a network, and DPM utilizes any number of
browsers as its ―test-enabled browser,‖
https://www.dynatrace.com/technologies/);

computer
program code
for accessing a
website to be
tested;

computer program code
for accessing a website to
be tested

(for example, DPM‘s synthetic monitoring tests
a website by ―[p]lay[ing] back scripted
transactions,‖
https://www.dynatrace.com/capabilities/syntheti
c-monitoring/, the website necessarily resides
on a network, and DPM utilizes any number of
browsers as its ―test-enabled browser,‖
https://www.dynatrace.com/technologies/);

computer
program code
for rendering
and examining
at least one web
page of the
website so as to
at least (i)
extract details
of elements of
the web page,
and (ii) store
the details of
the web page in
a recorded
script;

computer program code
for rendering and
examining at least one web
page of the website so as
to extract details of
elements of the web page,
and store the details of the
web page in a recorded
script, such as via the
testing component of the
Infringing Products

(for example, DPM‘s synthetic monitoring
includes both a recorder and play back engine
used to record and later select and play back
validation tests,
https://www.dynatrace.com/support/doc/synthet
ic/recorder/;
https://www.dynatrace.com/support/doc/synthet
ic/recorder/using-the-web-recorder/recording-atransaction/;
https://www.dynatrace.com/support/doc/synthet
ic/recorder/using-the-web-recorder/reviewingand-editing-a-transaction/);

17
18
19
20
21

22
23
24
25
26
27
28

19

1
2
3
4

Claim
language (’493
patent, claim
1)

Accused product
functionality (FAC ¶
132)

Citation to Dynatrace materials (FAC ¶
132)

5
6
7
8

computer
program code
for selecting a
validation test
to be
performed; and

computer program code
for selecting a validation
test to be performed, such
as the ―Validate‖ and
―Wait for Validation‖
features described in
Defendants‘ technical
documentation

(for example, DPM‘s synthetic monitoring
includes both a recorder and play back engine
used to record and later select and play back
validation tests,
https://www.dynatrace.com/support/doc/synthet
ic/recorder/;
https://www.dynatrace.com/support/doc/synthet
ic/recorder/using-the-web-recorder/recording-atransaction/;
https://www.dynatrace.com/support/doc/synthet
ic/recorder/using-the-web-recorder/reviewingand-editing-a-transaction/; these validation tests
include ―Validate‖ and ―Wait for Validation‖
functionality,
https://www.dynatrace.com/support/doc/synthet
ic/recorder/using-the-web-recorder/webrecorder-actions/;
https://www.dynatrace.com/support/doc/synthet
ic/recorder/using-the-windows-recorder/scriptactions/wait-script-action/;
https://www.dynatrace.com/support/doc/synthet
ic/recorder/advanced-scripting-guide/scriptactions-and-properties/validate-actions/);

computer
program code
for performing
the validation
test using at
least one of the
DOM access
methods of the
web browsing
components,
wherein during
the validation
test, the at least
one web page is
newly rendered
and details of
elements for the
at least one web

and computer program
code for performing the
validation test using at
least one of the DOM
access methods of the web
browsing components,
wherein during the
validation test, the at least
one web page is newly
rendered and details of
elements for the at least
one web page as newly
rendered are accessed via
the at least one of the
DOM access methods and
compared to the stored

(for example, the Validate and Wait for
Validation functionality set forth above operates
by ―validat[ing] against‖ ―a specific DOM
element,‖
https://www.dynatrace.com/support/doc/synthet
ic/recorder/using-the-web-recorder/webrecorder-actions/;
https://www.dynatrace.com/support/doc/synthet
ic/recorder/using-the-windows-recorder/scriptactions/wait-script-action/;
https://www.dynatrace.com/support/doc/synthet
ic/recorder/advanced-scripting-guide/scriptactions-and-properties/validate-actions/),

9
10

United States District Court
Northern District of California

11
12
13
14
15
16
17
18
19
20
21

22
23
24
25
26
27
28

20

1
2
3
4

Claim
language (’493
patent, claim
1)

Accused product
functionality (FAC ¶
132)

Citation to Dynatrace materials (FAC ¶
132)

5
6
7
8
9
10

page as newly
details in the recorded
rendered are
script
accessed via the
at least one of
the DOM
access methods
and compared
to the stored
details in the
recorded script.

United States District Court
Northern District of California

11
12

See Docket No. 31-5 at 16-7; see also FAC ¶ 132.2 The charts above clearly illustrate how SRI

13

has mapped DPM‘s functionalities onto the elements of the asserted claims. Dynatrace has failed

14

to address how any claim limitations has not been addressed in the FAC and the Court thus finds

15

that SRI has pled sufficient factual detail to make its direct infringement allegations plausible. See

16
17
18
19
20
21

22
23
24
25
26
27
28

2

Dynatrace argues that SRI truncates and omits portions of the limitations and by way of example,
brings the Court‘s attention to claim 1 of the ‗493 Patent, arguing that SRI makes no reference to
―browser code library‖. See Docket No. 42 at 4. SRI‘s failure to reference ―browser code library‖
is not dispositive. The operative part of the claim limitation of claim 1 of the ‘493 Patent requires
―computer program code for interfacing with web browsing components, the web browsing
components including Document Object Model (DOM) access methods included in Dynamic
Linked Libraries associated with a browser code library‖; the FAC alleges ―computer program
code for interfacing with web browsing components, the web browsing components including
Document Object Model (DOM) access methods.‖ See FAC ¶ 132; compare with Docket No. 315 at 16-7. In other words, the operative element of claim 1 of the ‘493 Patent might be construed
as illustrative of the DOM access methods, ―[which are] included in Dynamic Linked Libraries
associated with a browser code library‖, and not the ―browser code library‖ itself. See id. The
specifications in the ‘493 Patent emphasizes the DOM element. See Docket No. 31-5 at 16 (―A
method for extracting details from a current page, e.g. text, or image checksums, or HTML item
count, etc. This is accomplished using the Document Object Model (DOM) available within the
underlying Windows environment that emulates operation of the IE technology. In one
embodiment, a current page is analyzed for properties of interest to the user, as specified and
selected with user pull-down menus, and the required data is recorded into a script file for later
comparative use during playback.‖) (emphasis added). In any case, Dynatrace‘s argument that
―browser code library‖ is part of the claims limitation is a matter for claim construction.
21

1

FAC ¶¶ 44, 66, 88, 110, 132, 154; see also Lester v. Mineta, no. 04-cv-3074-SI, 2006 WL 463515,

2

at *2 (N.D. Cal. Feb. 24, 2006) (―The party moving for dismissal has the burden of proving that no

3

claim has been stated.‖).

4

Since SRI has (i) sufficiently identified the accused product—DPM, and (ii) sufficiently

5

described the functionality of DPM and tied it to the claim limitations in the patents-in-suit, the

6

Court DENIES Dynatrace‘s motion to dismiss with regards to SRI‘s direct infringement

7

allegations.

8

C.

Indirect Infringement/Willful Infringement
Apart from the direct infringement allegations, Dynatrace also moves the Court to dismiss

9

the indirect infringement allegations (both inducing infringement and contributory infringement

11
United States District Court
Northern District of California

10

under 35 U.S.C. § 271(b) and § 271(c)) and willful infringement allegations under 35 U.S.C. §

12

284.

13

1.

Inducing Infringement (35 U.S.C. § 271(b))

14

35 U.S.C. § 271(b) provides that ―[w]hoever actively induces infringement of a patent

15

shall be liable as an infringer.‖ Liability under Section 271(b) ―can only attach if the defendant

16

knew of the patent and knew as well that ‗the induced acts constitute patent infringement.‖ See

17

Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920, 1926-28 (2015) (quoting Global- Tech

18

Appliances, Inc. v. SEB S.A., 563 U.S. 754 (2011)); see also Radware, Ltd. v. A10 Networks, Inc.,

19

2013 WL 5373305, *2-4 (N.D. Cal. Sept. 24, 2013), (dismissing all claims for indirect

20

infringement based on activities occurring before knowledge of patent-in-suit). Dynatrace argues

21

that the FAC has not sufficiently pled Dynatrace‘s pre-suit knowledge. See Mot. at 13-14. On the

22

other hand, SRI argues that it has pled SRI argues that it has pled a ―constellation of facts‖

23

demonstrating Dynatrace had pre-suit knowledge of the patents-in-suit: (i) letters were sent from

24

SRI to three different predecessors-in-interest to Dynatrace regarding SRI‘s patent portfolio, FAC

25

¶¶ 17–25, (ii) SRI entered into a Mutual Nondisclosure Agreement to share confidential technical

26

information with one of those predecessors-in-interest, id. ¶ 26, (iii) six different patent

27

applications filed by another predecessor-in-interest cite to SRI‘s patent portfolio, FAC ¶¶ 30–35,

28

and (iv) during prosecution of a seventh patent application filed by that same predecessor-in22

1

interest, the U.S. PTO rejected the application as being unpatentable over, inter alia, a ―published

2

application of the parent application of [certain of] the [patents-in-suit].‖ FAC ¶¶ 27–29; see also

3

Docket No. 41 at 11. SRI‘s arguments are unpersuasive for several reasons.

4
5

a.

Content and Context of Letters

First, two of the three letters were sent nearly a decade ago to other companies that do not

6

mention any of the asserted patents, but merely patent applications, which eventually became a

7

patent that is not amongst the patents-in-suit. See FAC ¶¶ 17-25. It appears that only one letter

8

referenced applications that matured into certain patents-in-suit, but there is limited detail with

9

regards the contents of this letter. See FAC ¶ 20-22. A patent application does not provide notice
of the resulting patent for indirect or willful infringement, and certainly not when application is

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United States District Court
Northern District of California

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not for the patent-in-suit. See VIA Techs., Inc. v. ASUS Computer Int’l, 2015 WL 3809382, *3

12

(N.D. Cal. Jun. 18, 2015) (―The general rule in this district is that knowledge of a patent

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application alone is insufficient to meet the knowledge requirement for either a willful or induced

14

infringement claim.‖); see also State Indus., Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236 (Fed.

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Cir. 1986) (―[f]iling an application is no guarantee any patent will issue and a very substantial

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percentage of applications never result in patents. What the scope of the claims in patents that do

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issue will be is something totally unforeseeable.‖) As (i) the letters were sent before the patents

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existed, (ii) the content of the letters referenced a patent application which became a patent not

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asserted in this case, and (iii) ―[t]he requisite knowledge of the patent allegedly infringed simply

20

cannot be inferred from mere knowledge of other patents, even if somewhat similar,‖ or from

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―alleged awareness of the [ ] patent application,‖ Vasudevan Software, Inc. v. TIBCO Software

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Inc., No. 11–6638, 2012 WL 1831543 at *3 (N.D. Cal. May 18, 2012), the content and context of

23

the letters here provide no plausible basis for inferring that Dynatrace had pre-suit knowledge of

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any of the patents-in-suit.

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26

b.

Predecessors-in-Interest

Second, even if the Court finds that the content and context of the letters form a plausible

27

basis for inferring Dynatrace‘s pre-suit knowledge, the communications between SRI and

28

Dynatrace‘s predecessors-in-interest do not establish that Dynatrace knew of any of the patents-in23

1

suit. In SoftView LLC v. Apple Inc., Civ. No. 10-389-LPS, 2012 WL 3061027, *5 (D. Del. 2012),

2

the court found that the allegation that a defendant had pre-suit knowledge of a patent because its

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subsidiary ―had cited the published application of the parent application of the [patent-at-issue]

4

during the prosecution of one of [the subsidiary‘s] own patents[,]‖ did not provide a plausible

5

basis to infer the defendant‘s knowledge of the patent. Similarly in Varian Medical Systems, Inc.

6

v. Elekta AB, 2016 WL 3748772 at *5 (D. Del. 2016), the court found that the ―[p]laintiff needs to

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set out more than just the bare fact of the parent/subsidiary relationship in order to make out a

8

plausible claim that‖ subsidiary‘s knowledge can be imputed to the parent. Here, SRI pleads that

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Keynote Systems, Gomez, and Compuware, are Dynatrace‘s predecessors-in-interest but provide
no details as to the nature of the relationship between those entities and Dynatrace. We do not

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United States District Court
Northern District of California

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know, for instance, whether these companies were only those whose assets were acquired or

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whether they were part of a merger with Dynatrace. See FAC ¶¶ 17-28. We know nothing about

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any due diligence Dynatrace may have performed in connection with the prior succession. Nor do

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we know whether these entities were part of a long chain of predecessors several steps removed

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from Dynatrace. It is thus implausible to infer from the complaint that Dynatrace had pre-suit

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knowledge from communications between SRI and Dynatrace‘s predecessors.
c.

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Constellation of Facts

Third, the Court finds that SRI‘s pleadings do not amount to a ―constellation of facts‖

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sufficient to find pre-suit knowledge. See Docket No. 41 at 11; cf. Softview LLC v. Apple Inc.,

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Civ. No. 10-389-LPS, 2012 WL 3061027, *5-6 (D. Del. July 2012) (finding three different alleged

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bases of pre-suit knowledge to be, individually, ―inadequate allegations,‖ but denying motion to

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dismiss because, ―[t]aken in combination, the Court conclude[d] that Softview has alleged a

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plausible basis from which one might reasonable infer that AT&T had knowledge of the patents-

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in-suit prior to this litigation.‖) While the court in Softview3 found that three separately inadequate

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First, SoftView alleged that AT&T became aware of the ‗353 patent through its subsidiary,
BellSouth Intellectual Property Corp., which previously had cited the published application of the
parent application of the ‗353 patent during the prosecution of one of its own patents. Second,
SoftView alleged that AT&T also acquired pre-suit knowledge of the ‗353 patent through its
connection with inventor and SoftView General Manager Gary Rohrabaugh. Third, SoftView
contended that AT&T learned of the ‗353 patent from Apple in the course of its relationship with
24

1

allegations, when taken in combination, could amount to plausible basis to infer knowledge, the

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Court finds that the facts— the letters sent from SRI to three different predecessors-in-interest

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which do not discuss the patents-in-suit, the mutual nondisclosure agreement between SRI and one

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of Dynatrace‘s predecessors-in-interest, and the various patent applications—could not amount,

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even in the aggregate, to a plausible basis from which Dynatrace‘s pre-complaint knowledge may

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reasonably be inferred.

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Thus, the Court GRANTS Dynatrace‘s motion to dismiss with regards to SRI‘s inducing
infringement allegations as to pre-filing conduct.
d.

Specific Intent and Post-Filing conduct

The Court next considers whether SRI has pled sufficiently for its inducing infringement

United States District Court
Northern District of California

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allegations with regards to Dynatrace‘s post-filing conduct. Dynatrace argues that SRI has not

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pled sufficient facts to show that Dynatrace specifically intended others to infringe. See Mot. at

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15; see also Eli Lilly & Co. v. Teva Parenteral Meds., Inc., 845 F.3d 1357, 1368 (Fed. Cir. 2017)

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(citations omitted) (―mere knowledge of acts alleged to constitute infringement is not sufficient;

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rather the plaintiff must show ―specific intent and action to induce infringement.‖) Dynatrace

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argues that SRI alleges that Dynatrace has unspecified ―detailed documentation instructing users

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on how to use the Infringing Products in an infringing manner,‖ but fails to provide it, explain its

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content or how it shows that Dynatrace specifically intended infringement. See Mot. at 15; see

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also FAC ¶ 48. Dynatrace cites to CAP Co., Ltd. v. McAfee, Inc., No. 14-cv-5068-JD, 2015 WL

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3945875, at *15 (N.D. Cal. June 26, 2015) and argues that SRI, like the plaintiff CAP made

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passing references to ―user manuals guides, and support articles,‖ without ever saying what those

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materials contain. Id. The facts of this case, however, are not analogous to CAP. SRI has pled

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numerous references to public material on Dynatrace‘s website, which gives rise to an inference of

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specific intent. For instance, for the claim limitation ―selecting a validation test to be performed;

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and performing the validation test using the test-enabled browser‖ under claim 17 of the ‘175

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Apple as the exclusive seller of the iPhone from June 2007 to March 2009, based on Apple‘s
previous discussions with SoftView involving the ‗353 patent. SoftView similarly alleged that
AT&T also learned of the ‗926 patent through its exclusive relationship with Apple.
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Patent, Dynatrace‘s materials recite step-by-step instructions, including specific steps as to how to

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―record [a user‘s] transaction‖ with a webpage, steps following that which include ―play[ing] back

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the transaction‖, including ―1. On the action‘s detail page, click Add Custom Validation to display

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the validation fields[;] 2. Select the validation type from the Criteria list [sic][;] 3. Type the

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validation string in the specify text field[;] 4. If you selected to [m]atch against an element, click

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Add Locator to define the element locators. Select whether the locator is CSS, DOM or XPath

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type . . .‖ See e.g. FAC ¶ 44; see also

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https://www.dynatrace.com/support/doc/synthetic/recorder/using-the-web-recorder/web-recorder-

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actions/; https://www.dynatrace.com/support/doc/synthetic/recorder/using-the-windowsrecorder/script-actions/wait-script-action/;

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Northern District of California

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https://www.dynatrace.com/support/doc/synthetic/recorder/advanced-scripting-guide/script-

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actions-and-properties/validate-actions/. Contrary to Dynatrace‘s arguments, there are detailed

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allegations as to how Dynatrace instructed its users, giving rise to a plausible inference that

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Dynatrace specifically intended others to infringe the patents-in-suit.

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The Court GRANTS Dynatrace‘s motion to dismiss with regards to SRI‘s inducing
infringement allegations as to pre-filing conduct, but DENIES it as to post-filing conduct.

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2.

Contributory Infringement (35 U.S.C. § 271(c))

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―In order to state a claim for contributory infringement, a complaint must further plead (in

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addition to knowledge) that the accused product ―has no substantial non-infringing uses, and is

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known by the [defendant] to be especially made or especially adapted for use in an infringement‖

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of the patents-in-suit.‖ In re Bill of Lading, 681 F. 3d at 1337. A plaintiff ―need not prove that the

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accused products have no substantial non-infringing uses at the pleading stage; rather it must

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allege some facts that take its statements from mere lawyerly fiat to a plausible conclusion—for

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example, by alleging one or more infringing uses of the accused products and alleging that the

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products have no other uses.‖ Id. at *6 (internal citations omitted).

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Dynatrace argues that the Court should dismiss the contributory infringement claims on the

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grounds that SRI (a) has not plausibly alleged direct infringement, (b) has not shown pre-suit

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notice of the patents and knowledge that its acts contribute to the alleged infringement, (c) never
26

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states any non-conclusory facts showing Dynatrace knew that an actual accused product (beyond

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general functionalities) was ―especially made or adapted to infringe,‖ In re Bill of Lading, 681 F.

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3d at 1337, and (d) does not allege that it lacks substantial non-infringing uses. See Mot. at 16-17.

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With regards to (a), as discussed above, the Court finds that SRI has plausibly alleged direct

5

infringement. With regards to (b), as mentioned above, the Court finds that SRI has not alleged

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facts plausibly showing that pre-suit knowledge of the patents-in-suit. With regards to (c) and (d),

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to the extent SRI‘s contributory infringement claims survive based on post-filing conduct as to

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knowledge, the question is whether SRI has sufficiently pled that DPM, the infringing product,

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was ―especially made or adapted to infringe the patents-in-suit.‖ In re Bill of Lading, 681 F. 3d at
1337. The FAC pleads that Dynatrace knows the infringing products to be ―especially made or

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United States District Court
Northern District of California

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especially adapted for use in infringement,‖ and that ―DPM‘s synthetic monitoring, when used in its

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normal and intended usage (pursuant to the instructions set forth on Dynatrace‘s website), infringes . . .

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.‖ FAC ¶ 44-46; see also FAC ¶¶ 66-68, 88-90, 110-112, 132-134, 154-156. The FAC sufficiently

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suggests that there are no other substantial uses of DPM that do not infringe. Thus, the Court

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GRANTS Dynatrace‘s motion to dismiss SRI‘s contributory infringement claims with regards to the

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Dynatrace‘s pre-filing conduct, but DENIES it with respect to post-filing conduct.

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3.

Willful Infringement

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SRI alleges that Dynatrace has willfully infringed the patents-in-suit, in violation of 35

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U.S.C. § 284. See FAC at ¶¶ 56, 78, 100, 122, 144, 166. Recovery of enhanced damages for

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willful patent infringement is governed by 35 U.S.C. § 284 as interpreted by the United States

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Supreme Court in Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1935 (2016). In Halo,

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the Supreme Court held that the ―sort of conduct warranting enhanced damages has been variously

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described in our cases as willful, wanton, malicious, bad- faith, deliberate, consciously wrongful,

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flagrant, or—indeed—characteristic of a pirate.‖ Id. at 1932. Thus, under Halo, while ―courts

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should continue to take into account the particular circumstances of each case,‖ enhanced damages

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are generally limited to ―egregious cases of misconduct beyond typical infringement,‖ such as

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those ―typified by willful misconduct.‖ Id. at 1933-35. In addition, the Federal Circuit has

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confirmed that ―[k]nowledge of the patent alleged to be willfully infringed continues to be a
27

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prerequisite to enhanced damages.‖ WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1341 (Fed. Cir.

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2016).

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SRI argues that the FAC has pled ―specific factual allegations about [a defendant‘s]

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subjective intent, or any other aspect of [defendant‘s] behavior that would suggest its behavior was

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egregious.‖ Finjan, Inc. v. Cisco Systems, Inc., no. 17-cv-72-BLF, 2017 WL 2462423, at *5 (N.D.

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Cal. June 7, 2017). SRI draws the Court to the following paragraph(s) in the FAC:

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United States District Court
Northern District of California

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Defendants‘ infringement has been and is willful and, pursuant to 35
U.S.C. § 284, SRI is entitled to treble damages. Defendants‘ willful
infringement is based at least on Defendants‘ knowledge of SRI, its
products, and its patents since at least as early as 2009 as set forth
above. Defendants have either willfully and wantonly infringed the
‘175 Patent or have recklessly avoided knowledge of their own
infringement, even when faced with knowledge of SRI‘s own
products and patents.

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FAC, ¶ 56, 78, 100, 122, 144, 166. These allegations are insufficient under the standard in Halo

13

and may be contrasted from Finjan. In Finjan, Finjan alleged a more than twenty year direct

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relationship between itself and the defendant that included contracts, presentations, and discussion

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of the patent portfolio and that the defendant was an investor in Finjan for years before the suit.

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See Finjan, 2017 WL 2462423, at *2 (N.D. Cal. Jun. 2017). Those allegations in Finjan are more

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detailed and included a more direct relationship than the parties in this case and even then, the

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Finjan court found the allegations insufficient for a willful infringement claim. The Finjan court

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explained that the complaint ―makes no specific factual allegations about Cisco‘s subjective intent,

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or any other aspects of Cisco‘s behavior that would suggest its behavior was ‗egregious.‘‖ Id., at

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*5 (―because Finjan has failed to make sufficient factual allegations that it had pre-suit knowledge

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of the Asserted Patents or that Cisco‘s behavior was ―egregious ... beyond typical infringement,‖ it

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has failed to state a claim for willful infringement.‖). As noted above, SRI fails to plausibly allege

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pre-suit knowledge by Dynatrace. SRI does not allege that it notified Dynatrace of any of the

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asserted patents themselves or discussed them with Dynatrace before filing suit. Hence, SRI does

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not allege facts which amount to ―willful, wanton, malicious, bad- faith, deliberate, consciously

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wrongful, flagrant, or—indeed—characteristic of a pirate.‖ Halo at 1932. The Court thus

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GRANTS Dynatrace‘s motion to dismiss SRI‘s willful infringement claims.
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D.

Prayer for Injunctive Relief
Lastly, Dynatrace argues in a footnote that SRI‘s prayer for injunctive relief should also be

2
3

dismissed and/or stricken, given its status as a non-practicing entity (―NPE‖). However,

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Dynatrace cites no allegations or evidence establishing that SRI is a non-practicing entity. See

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Mot. at 19; see also Docket No. 42 at 8. SRI has alleged that it exploits the patents-in-suit ―by

6

making, marketing, selling, and using products covered by the‖ patents-in-suit, ―including its

7

popular eValid™ software products.‖ FAC ¶¶ 40, 62, 84, 106, 128, 150. In support of its legal

8

argument, Dynatrace cites eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006). The Supreme

9

Court in eBay held that:

10

14

The traditional four-factor test applied by courts of equity when
considering whether to award permanent injunctive relief to a
prevailing plaintiff applies to disputes arising under the Patent
Act. That test requires a plaintiff to demonstrate: (1) that it has
suffered an irreparable injury; (2) that remedies available at law are
inadequate to compensate for that injury; (3) that considering the
balance of hardships between the plaintiff and defendant, a remedy
in equity is warranted; and (4) that the public interest would not be
disserved by a permanent injunction.

15

See id. But the Court cannot find as a matter of law on a motion to dismiss that SRI cannot satisfy

16

the eBay criteria. Indeed, non-practicing entities have successfully managed to get injunctive

17

relief post-eBay where they have shown potential injury to its licensing program.4

United States District Court
Northern District of California

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IV.

18

CONCLUSION

For the foregoing reasons, Dynatrace‘s motion to dismiss is GRANTED IN PART and

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20

DENIED IN PART. The Court DENIES Dynatrace‘s motion to dismiss with regards to (i) SRI‘s

21

direct infringement claims, (ii) SRI‘s inducement infringement claims to the extent based on post-

22

filing conduct, (iii) SRI‘s contributory infringement claims to the extent based on post-filing conduct,

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4

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27
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See e.g. Commonwealth Scientific and Indus. Research Organisation v. Buffalo Technology Inc.,
No. 6:06-cv-324, 2007 U.S. Dist. Lexis 43832 (E.D. Tex. June 15, 2007) (Although plaintiff does
not practice the invention, an injunction was warranted because plaintiff is a research institution
and relies heavily on the ability to license its IP to finance plaintiff‘s R&D.); see also Acticon
Tech. v. Heisei Elecs. Co., No. 06-cv-4316 (KMK), 2008 WL 356872 (S.D. N.Y. Feb. 5, 2008)
(The injunction was entered following a default judgment against defendant. Because no
discovery was taken in this case, there are few facts contained in the magistrate judge‘s report and
recommendation, which was adopted by the district court. Based on a review of plaintiff Acticon
Technologies‘ website, it appears that Acticon is involved solely in licensing its intellectual
property and does not practice its patents.).
29

1

and (iii) SRI‘s prayer for injunctive relief. It GRANTS Dynatrace‘s motion to dismiss with regards to

2

(i) SRI‘s inducement infringement claims to the extent based on pre-filing conduct, (ii) SRI‘s

3

contributory infringement claims to the extent based on pre-filing conduct, and (iii) SRI‘s willful

4

infringement claims.

5

This order disposes of Docket No. 39.

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7

IT IS SO ORDERED.

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9

Dated: July 3, 2018

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United States District Court
Northern District of California

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______________________________________
EDWARD M. CHEN
United States District Judge

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