Emblaze Ltd. v. Apple Inc.

Filing 137

ORDER by Judge ARMSTRONG granting in part and denying in part 105 Motion to Dismiss; denying 124 Motion to Strike (lrc, COURT STAFF) (Filed on 11/27/2012)

1
2
3

UNITED STATES DISTRICT COURT

4

FOR THE NORTHERN DISTRICT OF CALIFORNIA

5

OAKLAND DIVISION

6
7

EMBLAZE LTD,
Plaintiff,

8

vs.

9
10

15
16
17
18
19
20
21
22

Docket 105, 124

Defendant.

12

14

ORDER

APPLE INC., a California Corporation,

11

13

Case No: C 11-01079 SBA

Emblaze, Ltd. ("Emblaze" or "Plaintiff") brings the instant patent infringement
action against Apple, Inc. ("Apple" or "Defendant"). The parties are presently before the
Court on Apple's motion to dismiss under Rule 12(b)(6) of the Federal Rules of Civil
Procedure and motion to strike objection to reply evidence under Civil Local Rule 7-3(d).
Dkt. 105, 124. Having read and considered the papers filed in connection with these
matters and being fully informed, the Court hereby DENIES Apple's motion to strike
objection to reply evidence and GRANTS IN PART AND DENIES IN PART Apple's
motion to dismiss, for the reasons stated below. The Court, in its discretion, finds these
matters suitable for resolution without oral argument. See Fed.R.Civ.P. 78(b); N.D. Cal.
Civ. L.R. 7-1(b).
I.

BACKGROUND

23

A.
24
25
26
27
28

Factual Summary

Emblaze is an Israeli corporation doing business world-wide in the "development
and marketing of innovative high-tech technologies and products." First Am. Compl.
("FAC") ¶ 1, Dkt. 100. It is the owner of United States Patent No. 6,389,473 (the " '473
patent"), which "claims methods for real-time broadcasting over a network, such as over
the Internet." Id. ¶¶ 6-7.

1
2
3
4
5
6
7

Emblaze "developed the technology described and claimed in the '473 patent and has
used this technology in its products." FAC ¶ 8. The technology is live streaming and
allows transmission of live audio and video to multiple devices, saves on data traffic, does
not require devoted streaming servers, and allows reliable streaming even through firewalls.
Id. ¶ 9. Though the '473 patent was issued on May 14, 2002, Emblaze first unveiled the
technology in a live video streaming broadcast from the White House in April 1998. Id. ¶
9, Exh. A at 1.

8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27

On or about mid-2009, Apple announced that its "HTTP Live Streaming Standard
technology" is incorporated into various products, including, among others, Macbook,
Macbook Air, Safari browser version 5 and later for Mac OS, iPod touch 3rd and 4th
generations, iPhone 3GS, 4, and 4S, iPad 1 and 2, and Apple TV 4.0, 4.3 and 4.4, and all
Apple devices including iTunes 10.1 and later. See FAC ¶ 11. According to Emblaze,
Apple has "used and continues to use, sold and/or offer[s] to sell in New York and
elsewhere and/or imported into New York and elsewhere products incorporating 'HTTP
Live Streaming Standard technology' that have been and can be used for realtime
broadcasting and that infringe at least claims 1, 2, 8, 9, 10, 11, 12, 13, 14, 21, 23, 24, 25,
26, 27, 28, 29, 36, 37, 38, 40, and 41 of the '473 patent in violation of 35 U.S.C. § 271." Id.
¶ 10.
Shortly after Apple announced the incorporation of its "HTTP Live Streaming
Standard technology" into its products, Emblaze informed Apple that this technology
infringes the '473 patent and offered Apple a license to practice under the '473 patent. FAC
¶ 13. To date, Apple has declined to take a license under the '473 patent. Id. ¶ 14.
Emblaze alleges that "the acts of infringement by Apple are willful, intentional and
in conscious disregard of Emblaze's rights under the '473 patent." FAC ¶ 12. Emblaze
further alleges that as a result of Apple's infringement of the '473 patent, Apple has made
and will continue to make unlawful gains and profits, and that Emblaze has been and will
continue to be deprived of revenue that it would otherwise have generated but for such

28
-2-

1
2

infringement. Id. ¶ 15. According to Emblaze, it "has been and will continue to be
irreparably harmed by Apple's infringement of the '473 patent." Id. ¶ 16.

3
4
5
6
7
8

Emblaze's prayer for relief requests, among other things, a judgment that Apple has
infringed the '473 patent in violation of § 271(a)-(c). See FAC. In other words, Emblaze
claims that Apple is liable as a direct infringer, as an entity that induced infringement, and
as a contributory infringer. 35 U.S.C. § 271(a)-(c). Emblaze also requests a judgment that
Apple's infringement has been willful, knowing, and in deliberate disregard of Emblaze's
patent rights. See id.

9

B.
10
11
12
13
14

On July 28, 2010, Emblaze commenced the instant action in the Southern District of
New York. Compl., Dkt 1. On November 18, 2010, Apple moved to transfer the case to
the Northern District of California. Dkt. 13. On February 25, 2011, the case was
transferred to this District. Dkt. 24. The case was assigned to the undersigned on April 26,
2011. Dkt. 31.

15
16
17
18

On April 27, 2012, Emblaze filed a FAC. FAC, Dkt. 100. On May 14, 2012, Apple
filed a motion to dismiss the FAC under Rule 12(b)(6). Dkt. 105. Emblaze filed an
opposition on June 5, 2012. Dkt. 114. On June 14, 2012, Apple filed a reply brief. Dkt.
116.

19
20
21
22
23
24
25
26
27

Procedural History

On July 16, 2012, Emblaze filed an objection to reply evidence under Local Rule 73(d)(1). Dkt. 122. On July 17, 2012, Apple filed a motion to strike Emblaze's objection to
reply evidence. Dkt. 124. Emblaze filed an opposition to Apple's motion on July 20, 2012.
Dkt. 126. Apple did not file a reply brief.
II.

DISCUSSION
A.

Motion to Strike Objection to Reply Evidence

Apple moves to strike Emblaze's objection to reply evidence on the ground that
Emblaze does not object to "new evidence" submitted by Apple in its reply brief. Def.'s
Mtn. at 2. Instead, Apple argues that Emblaze's objection is a "thinly veiled attempt at a

28
-3-

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

sur-reply that plainly violates Civil L.R. 7-3(d)." Id. In addition, Apple moves to strike the
objection on the ground that it is untimely. Id.
The Civil Local Rules preclude parties from submitting any memoranda, papers or
letters to the Court in connection with a pending motion after the reply has been filed,
except in two narrow circumstances: (1) if new evidence has been submitted in the reply; or
(2) if the additional memoranda, paper or letter brings to the Court's attention a relevant
judicial opinion published after the date the opposition or reply was filed. Civ. L.R. 7-3(d).
Any objection to reply evidence "must be filed and served not more than 7 days after the
reply was filed." Civ. L.R. 7-3(d)(1).
Apple's reply brief in support of its motion to dismiss was filed on June 14, 2012.
Emblaze, however, did not file its objection to reply evidence until over a month later on
July 16, 2012. Thus, Emblaze's objection is untimely. Moreover, as Apple correctly points
out, Emblaze has not objected to evidence. Instead, Emblaze objects to an argument Apple
made in its reply brief. Specifically, Emblaze objects to Apple's contention that "Emblaze
concedes that it does not accuse Apple of direct infringement," Pl.'s Obj. Reply Evid. at 2,
which is based on Emblaze's statement in its opposition brief that "Apple is well aware that
Emblaze's infringement contentions do not accuse Apple's devices of direct infringement,
but rather accuses Apple of inducing direct infringement . . ." Def.'s Opp. at 9.
While it is clear that Emblaze's objection to reply evidence violates the Civil Local
Rules because it is untimely and does not object to evidence submitted by Apple in
connection with its reply brief, the Court DENIES Apple's motion to strike. The Court
finds that the supplemental memorandum submitted by Emblaze is helpful to resolving the
instant motion insofar as it clarifies Emblaze's position with respect to its direct
infringement claim. The Court also finds that consideration of the supplemental
memorandum will not cause any prejudice to Apple. In the future, however, Emblaze is
advised to comply with the Local Rules before filing supplemental material. Under the
circumstances, Emblaze should have requested leave of Court before filing supplemental
material.
-4-

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

B.

Motion to Dismiss
1.

Legal Standard

A complaint may be dismissed under Rule 12(b)(6) for failure to state a claim if the
plaintiff fails to state a cognizable legal theory, or has not alleged sufficient facts to support
a cognizable legal theory. Balistreri v. Pacifica Police Dep't, 901 F.2d 696, 699 (9th Cir.
1988). A complaint must allege "enough facts to state a claim to relief that is plausible on
its face," Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007), and "give the defendant
fair notice of what . . . the claim is and the grounds upon which it rests," Erickson v.
Pardus, 551 U.S. 89, 93 (2007) (internal quotation marks omitted). "[A] plaintiff's
obligation to provide the 'grounds' of his 'entitlement to relief' requires more than labels and
conclusions, and a formulaic recitation of the elements of a cause of action will not do."
Twombly, 550 U.S. at 555.
When considering a motion to dismiss under Rule 12(b)(6), the Court "accept[s] as
true all well-pleaded allegations of material fact, and construe[s] them in the light most
favorable to the non-moving party." Daniels–Hall v. Nat'l Educ. Ass'n, 629 F.3d 992, 998
(9th Cir. 2010). However, "the tenet that a court must accept as true all of the allegations
contained in a complaint is inapplicable to legal conclusions. Threadbare recitals of the
elements of a cause of action, supported by mere conclusory statements, do not suffice."
Ashcroft v. Iqbal, 129 S.Ct. 1937, 1949-1950 (2009). "While legal conclusions can provide
the complaint's framework, they must be supported by factual allegations." Id. at 1950.
Those facts must be sufficient to push the claims "across the line from conceivable to
plausible[.]" Id. at 1951 (quoting Twombly, 550 U.S. at 557). In the event dismissal is
warranted, it is generally with leave to amend, unless it is clear the complaint cannot be
saved by any amendment. See Sparling v. Daou, 411 F.3d 1006, 1013 (9th Cir. 2005);
Gompper v. VISX, Inc., 298 F.3d 893, 898 (9th Cir. 2002).
2.

Patent Infringement Claims

Apple moves to dismiss Emblaze's claims for direct infringement, indirect
infringement, and willful infringement. Apple contends that Emblaze has failed to plead
-5-

1
2

sufficient facts to state a cognizable claim for relief. Apple's arguments are discussed in
turn below.1

3
4
5
6
7
8
9
10
11
12
13

a.

Direct Infringement

Direct infringement claims are governed by § 271(a), which states, "whoever
without authority makes, uses, offers to sell, or sells any patented invention . . . during the
term of the patent therefor, infringes the patent." Whether a complaint adequately pleads
direct infringement is to be measured by the specificity required by Form 18. In re Bill of
Lading Transmission and Processing System Patent Litigation, 681 F.3d 1323, 1331 (Fed.
Cir. 2012). Form 18 in the Appendix to the Federal Rules of Civil Procedure provides a
sample complaint for direct patent infringement. See also Fed.R.Civ.P. 84 ("The forms in
the Appendix suffice under these rules and illustrate the simplicity and brevity that these
rules contemplate.").
To state a claim for direct infringement, the FAC must include:

14
15
16
17
18
19
20
21
22

(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.
In re Bill of Lading, 681 F.3d at 1334; see also Athena Feminine Technologies Inc. v.
Wilkes, 2011 WL 4079927, at *5 (N.D. Cal. 2011) (Armstrong, J.) (citing McZeal v. Sprint
Nextel Corp., 501 F.3d 1354, 1357 (Fed. Cir. 2007)).
In the instant motion, Apple moves to dismiss Emblaze's direct patent infringement
claim on the ground that the allegations of direct infringement fail to satisfy the minimum
pleading requirements of Twombly and Iqbal. Def.'s Mtn. at 6. Emblaze counters by

23
24
1

Preliminarily, the Court notes that at the end of its opposition, Emblaze argues that
Apple's motion to dismiss should be denied in its entirety because Apple did not assert the
defense of failure to state a claim in response to Emblaze's original complaint. Pl.'s Opp. at
26 13-14. According to Emblaze, by answering the original complaint and not asserting a
Rule 12(b)(6) defense, Apple has taken inconsistent positions by filing a motion to dismiss
27 the FAC, which it should not be permitted to do. Id. The Court rejects this argument.
Emblaze failed to cite any controlling authority holding that it is improper for Apple to file
28 a motion to dismiss in response to the filing of the FAC.
25

-6-

1
2
3
4
5
6

arguing that it has sufficiently pled that Apple is infringing the '473 patent by using,
offering to sell, and selling products that incorporate HTTP Live Streaming Standard
technology. Pl.'s Opp. at 7. According to Emblaze, it has exceeded the requirements for
pleading a claim of infringement because the FAC sets forth the nature of its patent,
identifies the specific patent claims alleged to be infringed, identifies when Apple started
infringing, and lists the specific Apple products that are alleged to be infringing. Id.

7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

As an initial matter, the Court notes that in response to Apple's claim that it does not
understand how or why each of the many disparate accused Apple products directly
infringe Emblaze's asserted method and system claims, Emblaze states that "Apple is well
aware that Emblaze's infringement contentions do not accuse Apple's devices of direct
infringement, but rather accuse Apple of inducing direct infringement by requiring
companies . . . to directly infringe by using Emblaze's patented technology for live
streaming of content over the internet if such companies want to stream live broadcasts to
Apple devices." Pl.'s Opp. at 8-9. As discussed above, in a supplemental filing, Emblaze
clarified that "Apple is directly infringing both by practicing the methods claims in the suit
patent and by operating systems that infringe the system claims of the suit patent." Dkt.
122.
In light of Emblaze's supplemental filing, the Court rejects Apple's contention that
Emblaze has conceded it does not accuse Apple of direct infringement. To the contrary, the
supplemental memorandum filed by Emblaze expressly states that it accuses Apple
products of direct infringement. See id. Moreover, the position taken by Emblaze in its
supplemental memorandum is consistent with the allegations set forth in the FAC.
As for the sufficiency of the allegations regarding direct infringement, the Court
finds that Emblaze has satisfied the pleading requirements established by In re Bill of
Lading. The FAC includes each of the five elements required under Form 18. The FAC
contains: (1) an allegation of jurisdiction, FAC ¶ 4; (2) a statement that Emblaze owns the
'473 patent, id. ¶ 6; (3) a statement that Apple has infringed the '473 patent because it has
"used and continues to use, sold and/or offered to sell . . . products incorporating 'HTTP
-7-

1
2
3
4
5
6
7
8
9

Live Streaming Standard technology" that have been and can be used for real-time
broadcasting," id. ¶ 10; (4) a statement that Emblaze has given Apple notice of its
infringement, id. ¶ 13; and (5) a demand for an injunction and damages, id. at 4. To the
extent Apple contends that the pleading standard articulated in Iqbal and Twombly applies
to direct infringement claims, the Court disagrees. The Federal Circuit recently held that to
the extent that [a party argues] that Twombly and its progeny conflict with the Forms and
create differing pleading requirements, the Forms control." In re Bill of Lading, 681 F.3d
at 1334. Accordingly, for the reasons stated above, Apple's motion to dismiss Emblaze's
direct infringement claim is DENIED.

10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

b.

Indirect Infringement

There are two theories under which a party may be held liable for indirect
infringement: (1) induced infringement under § 271(b); and (2) contributory infringement
under § 271(c). According to Emblaze, the FAC alleges claims under both theories. Pl.'s
Opp. at 7.
Under § 271(b), "[w]hoever actively induces infringement of a patent shall be liable
as an infringer." Liability under § 271(b) "requires knowledge that the induced acts
constitute patent infringement." Global-Tech Appliances, Inc. v. SEB S.A., 131 S.Ct.
2060, 2068 (2011); In re Bill of Lading, 681 F.3d at 1339; see also DSU Med. Corp. v.
JMS Co., 471 F.3d 1293, 1306 (Fed. Cir. 2006) ("[I]nducement requires that the alleged
infringer knowingly induced infringement and possessed specific intent to encourage
another's infringement."). To induce infringement, a defendant must have " 'actively and
knowingly aided and abetted another's direct infringement.' " DSU Med., 471 F.3d at 1305
(alterations omitted).
Under § 271(c), "[w]hoever offers to sell or sells within the United States or imports
into the United States a component of a patented machine, manufacture, combination or
composition, or a material or apparatus for use in practicing a patented process, constituting
a material part of the invention, knowing the same to be especially made or especially
adapted for use in an infringement of such patent, and not a staple article or commodity of
-8-

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

commerce suitable for substantial noninfringing use, shall be liable as a contributory
infringer." 35 U.S.C. § 271(c). "Contributory infringement imposes liability on one who
embodies in a non-staple device the heart of a patented process and supplies the device to
others to complete the process and appropriate the benefit of the patented invention." Vita–
Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1327 (Fed. Cir. 2009). To establish
contributory infringement, a plaintiff must show the following elements: "1) that there is
direct infringement, 2) that the accused infringer had knowledge of the patent, 3) that the
component has no substantial noninfringing uses, and 4) that the component is a material
part of the invention." Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, 1326 (Fed. Cir. 2010).
The FAC alleges that the '473 patent claims methods for real-time broadcasting over
a network such as the Internet, and that this "live streaming technology allows transmission
of live audio and video to multiple devices, saves on data traffic, does not require devoted
streaming servers, and allows reliable streaming even through firewalls." FAC ¶¶ 7, 9.
The FAC also alleges that shortly after Apple announced the incorporation of its "HTTP
Live Streaming Standard technology" into its products in about mid-2009, Emblaze
informed Apple that its technology infringes the '473 patent. Id. ¶¶ 11, 13. The FAC
further alleges that "Apple has used and continues to use, sold and/or offer[s] to sell in New
York and elsewhere . . . products incorporating 'HTTP Live Streaming Standard
technology' that have been and can be used for real-time broadcasting and infringe
[numerous] claims . . . of the '473 patent in violation of 35 U.S.C. § 271." Id. ¶ 10.
Emblaze's prayer for relief requests a "judgment that Apple has infringed the '473 Patent in
violation of 35 U.S.C. §§ 271(a)-(c)." See FAC. In other words, Emblaze claims that
Apple is liable as a direct infringer, as an entity that induced infringement, and as a
contributory infringer. 35 U.S.C. § 271(a)-(c).
In the instant motion, Apple moves to dismiss Emblaze's indirect patent
infringement claims on the ground that Emblaze has failed to plead any facts to support its
claims for inducement of infringement and contributory infringement. See Def.'s Mtn. at 68. Specifically, Apple argues that Emblaze has failed to allege facts establishing indirect
-9-

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

infringement because the FAC does not contain allegations accusing a third party of direct
infringement. Id. at 8. In addition, Apple argues that Emblaze did not properly plead
inducement because the FAC does not allege that Apple had the "specific intent" to
encourage any third party's direct infringement. Id. Finally, Apple argues that Emblaze has
failed to allege facts establishing contributory infringement because the FAC does not
allege that the "accused Apple products constitute a 'material' part of the claimed invention,
and do not have any substantial non-infringing uses." Id.
In response, Emblaze does not contend that the allegations in the FAC satisfy the
pleading standard articulated by the Supreme Court in Iqbal and Twombly. See In re Bill
of Lading, 681 F.3d at 1336-1337 (unlike direct infringement, claims for indirect for
infringement are evaluated under the standard of Iqbal and Twombly). Instead, Emblaze
argues that dismissal is not warranted because its infringement contentions identify the
direct infringement and describe the acts of the alleged indirect infringer that contribute to
or are inducing that direct infringement. Pl.'s Opp. at 7 (emphasis added). Emblaze,
however, does not cite any authority supporting the proposition that the Court may consider
its infringement contentions, which are not set forth in the FAC, in deciding whether it has
pled cognizable claims for relief. See Van Buskirk v. Cable News Network, Inc., 284 F.3d
977, 980 (9th Cir. 2002) ("Ordinarily, a court may look only at the face of the complaint to
decide a motion to dismiss.").
The Court construes Emblaze's failure to specifically argue that it has alleged facts
satisfying Twombly and Iqbal's plausibility standard as a concession that the FAC fails to
state cognizable claims for relief premised upon induced infringement and contributory
infringement. Moreover, the Court finds that the allegations in the FAC do not meet the
pleading standard set forth in Twombly and Iqbal. The FAC does not allege facts giving
rise to a plausible claim for relief premised upon induced infringement or contributory
infringement. Specifically, as for induced infringement, Emblaze has failed to allege any
facts plausibly showing that Apple knowingly induced any third party to engage in direct
infringement of the '473 patent with the specific intent of encouraging the infringement.
- 10 -

1
2
3
4
5
6
7
8
9
10
11
12

The FAC is devoid of allegations alleging how Apple actively induced infringement with
the knowledge that the induced acts constitute patent infringement.2 As for contributory
infringement, Emblaze has failed to allege facts plausibly showing direct infringement by
any third party. Nor has Emblaze alleged that the component of the accused Apple
products that practices the patented method has no substantial non-infringing uses,3 or that
the component constitutes a material part of the invention.
In short, the allegations in support of Emblaze's indirect infringement claims provide
nothing more than "naked assertions devoid of further factual enhancement." Iqbal at 1949.
Emblaze is required to do more than state in a conclusory manner that Apple has infringed
the '473 patent in violation of § 271(b)-(c). Accordingly, Apple's motion to dismiss
Emblaze's indirect infringement claims is GRANTED. These claims are DISMISSED with
leave to amend.

13
14
15
16
17
18
19

c.

Willful Infringement

To "willfully infringe a patent, the patent must exist, and one must have knowledge
of it." State Indus., Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236 (Fed. Cir. 1985)
(emphasis omitted). The Federal Circuit has found that willful infringement was
sufficiently pled where the plaintiff alleged that the "infringements have been willful and
with full knowledge of the [patents at issue]." See Sentry Protection Prods., Inc. v. Eagle
Mfg. Co., 400 F.3d 910, 918 (Fed. Cir. 2005) (citing Dunlap v. Schofield, 152 U.S. 244,

20
21
2

According to Emblaze, it has explained in its infringement contentions that "Apple
induces third parties to directly infringe the '473 patent by requiring them to use HTTP Live
Streaming to communicate real-time broadcasts to Apple's devices, such as iPhone, iPad,
23 iPod Touch, Apple TV, and Mac OS X computers." Pl.'s Opp. at 7. Emblaze also states
that its infringement contentions "identify Akamai Technologies, Inc., Brightcove, Inc.,
24 Limelight Networks, Inc., and other parties unknown to Emblaze at this time, as third
parties induced by Apple to directly infringe the '473 patent. Id. at 7-8. The FAC,
25 however, does not allege these facts. Therefore, the FAC does not allege enough facts to
survive a motion to dismiss under the fair notice standard.
22

26

3

In cases where, as here, the alleged method is embodied in a larger product, the
Court must examine whether the particular component that allegedly practices the patented
method has substantial non-infringing uses, and not the entire product as a whole. See
28 Fujitsu, 620 F.3d at 1330-1331.
27

- 11 -

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

249 (1894) (requiring a pleading equivalent to "with a knowledge of the patent and of his
infringement")).
In the instant motion, Apple contends that dismissal of Emblaze's claim for willful
infringement is warranted because, although the FAC alleges pre-suit knowledge of the
patent in suit, there are no facts supporting a plausible inference that "Apple acted with an
objectively high likelihood, much less 'objective recklessness,' that its actions would
constitute infringement" of a valid patent. See Def.'s Mtn. at 8-9 (citing In re Seagate
Tech., LLC, 497 F.3d 1360, 1371 (Fed Cir. 2007) ("to establish willful infringement, a
patentee must show by clear and convincing evidence that the infringer acted despite an
objectively high likelihood that its actions constituted infringement of a valid patent.")). In
response, Emblaze argues that it has sufficiently alleged facts to state a willful infringement
claim, and that Seagate is inapposite because it only addresses what is necessary to prove a
claim of willfulness, and not whether the operative complaint is sufficiently pled. Pl.'s
Opp. at 11-13.
The FAC alleges that shortly after Apple announced the incorporation of its "HTTP
Live Streaming Standard technology into its products, Emblaze informed Apple that
Apple's HTTP Live Streaming Standard technology infringes the '473 patent and offered
Apple a license to practice under the '473 patent. . . . To date, Apple has declined to take a
license under the '473 patent." FAC ¶¶ 13-14. The FAC also alleges that "the acts of
infringement by Apple are willful, intentional and in conscious disregard of Emblaze's
rights under the '473 patent." Id. ¶ 12.
The Court finds that Apple has failed to demonstrate that dismissal of Emblaze's
willful infringement claim is appropriate. Here, the FAC identifies the specific accused
products, FAC ¶ 11, alleges that Apple received pre-suit notice that its HTTP Live
Streaming Standard technology infringes the '473 patent, id. ¶¶ 11, 13, alleges that "the acts
of infringement by Apple are willful, intentional and in conscious disregard of Emblaze's
rights under the '473 patent," id. ¶ 12, and alleges that "Emblaze has been and will continue
to be irreparably harmed by Apple's infringement of the '473 patent." Id. ¶ 16. These
- 12 -

1
2
3
4
5
6
7
8
9
10
11
12

allegations are sufficient to state a claim for willful infringement. See Oracle Corp. v.
DrugLogic, Inc., 807 F.Supp.2d 885, 902-903 (N.D. Cal. 2011) (finding that plaintiff
stated sufficient facts to support a claim for willful infringement by alleging that the
defendant was aware of the patent in suit, had "actual notice" of plaintiff's infringement
claims, and "continued their actions"); Cloud Farm Associates, L.P. v. Volkswagen Group
of America, Inc., 2012 WL 3069390, at *3-4 (D. Del. 2012) (finding that proposed
amended complaint sufficiently pled claim for willful infringement where it alleged that
defendants had actual knowledge of the patent in suit before the filing of the lawsuit, and
that defendants' infringement "has been and continues to be willful and deliberate"); see
also Sentry, 400 F.3d at 918 (finding willful infringement sufficiently pled where plaintiff
alleged that the "infringements have been willful and with full knowledge of the [patents at
issue]").

13
14
15
16
17
18
19
20
21
22
23
24
25
26
27

The Court finds that Emblaze has alleged sufficient facts to state a plausible claim
for willful infringement. The Court also finds that Apple's reliance on Seagate is
misplaced. Seagate is distinguishable because it addresses what is necessary to prove a
claim of willfulness, not whether a plaintiff has sufficiently alleged willful infringement as
a pleading matter. See Oracle, 807 F.Supp.2d at 903 (citing cases). Accordingly, Apple's
motion to dismiss Emblaze's willful infringement claim is DENIED.
III.

CONCLUSION
For the reasons stated above, IT IS HEREBY ORDERED THAT:
1.

Apple's motion to strike objection to reply evidence is DENIED.

2.

Apple's motion to dismiss is GRANTED IN PART AND DENIED IN PART.

Emblaze shall have twenty-one (21) days from the date this Order is filed to file a second
amended complaint that cures the deficiencies discussed above.
3.

This Order terminates Docket 105 and Docket 124.

IT IS SO ORDERED.
Dated: 11/27/12

______________________________
SAUNDRA BROWN ARMSTRONG
United States District Judge

28
- 13 -